Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed October 23, 2025, have been fully considered but they are not persuasive.
Applicant contends that the teachings of Ustinov are not applicable to iron foils in general, since the example of Ustinov is a Fe-Ni foil. However, Ustinov teaches that grain size controls strength for foils in general. See Ustinov Introduction, penultimate paragraph: "Foils having nanoscaled grains are characterized by high strength." The cited reference [22] refers to Ag-Cd foil. In addition, Ustinov notes that the relationship between hardness and crystallite sizes is known for metal foils including iron (Ustinov 4. Discussion). While the specific examples tested by Ustinov have a high nickel content, similar results would be expected for any iron foil.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 2, and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsukamoto et al (JP H06-310147 A; all citations refer to the English translation attached to the office action mailed July 23, 2025) in view of Nagata et al. (US 2021/0273232 A1) and Liu et al. ("Structure and mechanical properties of iron foil electrodeposited in super gravity field," Surface & Coatings Technology 204(20), pp. 3135-3140, July 2010).
Regarding claim 1, Tsukamoto teaches an electrolytic iron foil with a thickness of 35 µm or less (Tsukamoto Claim 1), which overlaps the range of the instant claim. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Tsukamoto does not teach any particular crystallite size. Nagata teaches that surface hardness should be as low as possible to improve penetration of the electrode material and electrical characteristics of the battery (Nagata [0085]). Liu teaches that the strength and hardness of metal foils is controlled by grain size (Liu Introduction and Fig. 7). Liu teaches that grain size is calculated using the Scherrer equation (for calculating crystallite size) using the (110) peak of iron at approximately 2θ=45° (Liu 3.3. Crystal structure, final paragraph; and Fig. 5a). Crystallite size is therefore a recognized result-effective variable for controlling foil hardness. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to optimize crystallite size as measured by Liu to achieve the appropriate foil hardness, including values within the range of the instant claim.
Tsukamoto does not teach that the iron content of the foil is at least 80 wt%. Tsukamoto teaches that iron is desirable because it is extremely inexpensive (Tsukamoto [0006]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use as much iron as possible, including more than 80 wt%, to reduce the price of the foil as much as possible.
Regarding claim 2, modified Tsukamoto does not teach any particular orientation index of the surfaces. However, at least one orientation index must necessarily be at least 1, since perfectly random orientations would match the theoretical values, and any deviation from perfect randomness will necessarily result in at least one of the values increasing.
Regarding claim 5, modified Tsukamoto teaches that tensile strength should be more than 500 MPa (Nagata [0010]), which falls within the range of the instant claim.
Regarding claims 6 and 7, modified Tsukamoto teaches that the foil is used as a current collector in a non-aqueous battery (Tsukamoto [0011]-[0014]).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsukamoto in view of Nagata and Liu as applied to claim 1 above, and further in view of Ueda (US 2012/0202101 A1).
Regarding claim 4, modified Tsukamoto does not teach any particular elongation. Ueda teaches that the negative electrode current collector should have an elongation of 5-15%, which falls within the range of the instant claim, to prevent separation of the active material and damage to the current collector during bending of the battery (Ueda [0051]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select an elongation of 5-15% to prevent separation of the active material and damage to the current collector.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsukamoto in view of Nagata and Liu as applied to claim 1 above, and further in view of Ueda and Unno et al. (US 2018/0229476 A1).
Regarding claim 3, modified Tsukamoto does not teach any particular crystal grain size. Ueda teaches that the negative electrode current collector should have an elongation of 5-15%to prevent separation of the active material and damage to the current collector during bending of the battery (Ueda [0051]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select an elongation of 5-15% to prevent separation of the active material and damage to the current collector.
Unno teaches that, in order to achieve elongation ~10µm for thin foils, grain size should be 1-10 µm (Unno Abstract, [0027], and [0040]-[0041]), which falls within the range of the instant claim. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select a grain size in the range taught by Unno to achieve the desired elongation described by Ueda.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES A CORNO JR whose telephone number is (571)270-0745. The examiner can normally be reached M-F 9:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niki Bakhtiari can be reached at (571) 272-3433. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.A.C/ Examiner, Art Unit 1722
/ANCA EOFF/ Primary Examiner, Art Unit 1722
Prosecution Insights