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 .
Election/Restrictions
Applicant’s election without traverse of claims 1, 3, 4, 6-10, 12, 14, 16-20, 22-24, and 26 in the reply filed on October 3rd, 2025 is acknowledged.
Claim Interpretation
Claims 12 and 26 include the term “solid fraction”. Page 15 of the present specification defines the solid fraction of the textured surface as “the combined surface area of the top surface of all microscale features divided by the surface area of the electroactive surface if there were no microscale features and it was flat.” Microscale features are defined as structures that protrude from or are indented into the electroactive surface that has a least one cross-sectional dimension has a size between 1 and 1000 µm.
Claims 4, 6, 9, 10, and 14 mention a “cross-sectional dimension” of the microscale protrusions. Paragraph [0068] of the published application states that “the smallest cross-sectional dimension of a microscale protrusion is the smallest dimension of the microscale protrusion in a direction parallel to the surface from which the microscale protrusion extends (i.e., the smallest dimension in a direction in the XY-plane as illustrated in the figures) measured through the geometric center of the section being measured.” This is the definition that will be used when referring to the cross-sectional dimensions of the microscale protrusions.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 4, 6-10, 12, 14, 16-20, 22-24, and 26 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. All of these claims, explicitly or implicitly, contain a phrase “but under otherwise identical conditions”. This phrase is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear what these “identical conditions” are. The conditions could include, but are not limited to, the temperature of the battery, the pressure of vapor within the battery, the composition of the electrolyte, the composition of the electroactive surfaces, or the viscosity of the electrolyte. Any condition that may be a part of the environment of a functioning electrode may be interpreted as a “condition” for the sake of prior art rejections.
Claims 8 and 9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. All of these claims include the limitation of “in an otherwise identical system without the microscale protrusions”. One of ordinary skill in the art would not be able to reasonably determine the functioning of any electrical or mechanical system if only feature was removed, especially if the conditions of that system are not described. Therefore, the aforementioned limitation is indefinite.
Claims 18, 19, 22, and 23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. All of these claims include the limitation of “in an otherwise identical system without the microscale indentations”. One of ordinary skill in the art would not be able to reasonably determine the functioning of any electrical or mechanical system if only feature was removed, especially if the conditions of that system are not described. Therefore, the aforementioned limitation is indefinite.
In Claim 1, the term “reduced relative to” is a relative term which renders the claim indefinite. The term “reduced relative to” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In the context of this claim, “Object A” is reduced relative to “Object B”. In order to clearly define the metes and bounds of how “Object A” is reduced relative to “Object B”, both objects must be themselves clearly defined.
In this claim, Object A comprises the limitations before the term “reduced relative to”, which is “the median size of bubbles produced during the reaction and/or the total surface area of the electroactive surface covered by bubbles produced during the reaction”. Object B comprises the limitations of “the median size of bubbles produced on an electrode lacking the surface texture but under otherwise identical conditions and/or the total surface area of the electroactive surface covered by bubbles produced on an electrode lacking the surface texture but under otherwise identical conditions”. Object B comprises the indefinite limitation of “but under otherwise identical conditions”. Therefore, Object B is indefinite. Since Object B is indefinite, the claimed concept of “Object A is reduced relative to Object B” is also indefinite. This rationale will be similarly applied in the 112(b) rejections of claims 8, 9, 18, 19, 22, and 23 below.
Claim 8 requires that “a median smallest cross-sectional dimension” be less than or equal to “the median bubble size produced during use in an otherwise identical system without the microscale protrusions”. In other words, Object A must be less than or equal to Object B. Object B contains the indefinite limitation of “in an otherwise identical system”. Therefore, the comparison is rendered indefinite and so is the limitation of “wherein the microscale protrusions have a median smallest cross-sectional dimension of less than or equal to the median bubble size produced during use in an otherwise identical system without the microscale protrusions”.
Claim 9 requires that “a median smallest cross-sectional dimension” be greater than or equal to “0.1 times the median bubble size produced during use in an otherwise identical system without the microscale protrusions” and also be less than or equal to “the median bubble size produced during use in an otherwise identical system without the microscale protrusions”. In other words, Object A must be greater than or equal to Object B1 as well as be less than or equal to Object B2. Both Object B1 and Object B2 include the indefinite limitation of “in an otherwise identical system without the microscale protrusions”. Therefore, the comparison between Objects A, B-1, and B2 is indefinite and so is the limitation of “wherein the microscale protrusions have a median smallest cross-sectional dimension of greater than or equal to 0.1 times the median bubble size produced during use in an otherwise identical system without the microscale protrusions and less than or equal to the median bubble size produced during use in an otherwise identical system without the microscale protrusions”.
Claim 18 requires that “a median spacing” be less than or equal to “the median bubble size produced during use in an otherwise identical system without the microscale indentations”. In other words, Object A must be less than or equal to Object B. Object B includes the indefinite limitation of “in an otherwise identical system without the microscale indentations”. Therefore, the comparison between Objects A and B is indefinite and so is the limitation of “wherein the microscale indentations have a median spacing of less than or equal to the median bubble size produced during use in an otherwise identical system without the microscale indentations”.
Claim 19 requires that “a median spacing” be greater than or equal to “0.1 times the median bubble size produced during use in an otherwise identical system without the microscale indentations” and be less than or equal to “the median bubble size produced during use in an otherwise identical system without the microscale indentations”. In other words, Object A must be greater than or equal to Object B1 and less than or equal to Object B-2. Objects B1 and B2 include the indefinite limitation of “in an otherwise identical system without the microscale indentations”. Therefore, the comparison between Objects A, B1, and B2 is indefinite and so is the limitation of “wherein the microscale indentations have a median spacing of greater than or equal to 0.1 times the median bubble size produced during use in an otherwise identical system without the microscale indentations and less than or equal to the media bubble size produced during use in an otherwise identical system without the microscale indentations”.
Claim 22 requires that “a median smallest cross-sectional dimension” be less than or equal to “the median bubble size produced during use in an otherwise identical system without the microscale indentations”. In other words, Object A must be less than or equal to Object B. Object B contains the indefinite limitation of “in an otherwise identical system without the microscale indentations.” Therefore, the comparison between Objects A and B is indefinite and so is the limitation of “wherein the microscale indentations have a median smallest cross-sectional dimension of less than or equal to the median bubble size produced during use in an otherwise identical system without the microscale indentations.
Claim 23 requires that “a median smallest cross-sectional dimension” must be greater than or equal to “0.1 times the median bubble size produced during use in an otherwise identical system without the microscale indentations” and be less than or equal to “the median bubble size produced during use in an otherwise identical system without the microscale indentations”. In other words, Object A must be greater than or equal to Object B1 and less than or equal to Object B-2. Objects B1 and B2 include the indefinite limitation of “in an otherwise identical system without the microscale indentations”. Therefore, the comparison between Objects A, B1, and B2 is indefinite and so is the limitation of “wherein the microscale indentations have a median smallest cross-sectional dimension of greater than or equal to 0.1 times the median bubble size produced during use in an otherwise identical system without the microscale indentations and less than or equal to the median bubble size produced during use in an otherwise identical system without the microscale indentations.”
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3, 4, 6-10, 14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hosseini (WO 2019166999 A1, but citations will be drawn to US 2020/0407857 A1).
Regarding claims 1 and 3, Hosseini discloses an electrode comprised of a surface comprised of a surface texture characterized by micro-pyramidal structures [0414]. Although the limitation of “wherein the surface texture is configured such that, during a gas-generating reaction in a liquid medium adjacent to the electroactive surface, the median size of bubbles produced during the reaction and/or the total surface area of the electroactive surface covered by bubbles produced during the reaction are reduced relative to the median size of bubbles produced on an electrode lacking the surface texture but under otherwise identical conditions” is indefinite, it is also a functional limitation. While intended use recitations and other types of functional language cannot be entirely disregarded. However, in apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). See also MPEP § 2114.
Since Hosseini’s micro-pyramidal structures anticipate the claimed microscale protrusions, their structures are capable of reducing the overall bubble size and/or the total surface area of the electroactive surface that is covered by bubbles.
Regarding claims 4, 6, and 10, the smallest cross-sectional dimension is the width of the base of the pyramidal structures, 50 µm [0414]. This is within the range of 1 µm to 1000 µm as recited in claim 10. The distance from the tip of one pyramidal structure to the next pyramidal structure is 70 µm. This distance is the summation of the distances between the tip and one edge of a first structure, the distance between the first structure and a second structure, and the distance between the edge of the second structure and the tip of the second structure. The distance between the tip of a structure and the edge of the same structure is half the length of the length/width of the base, which is 25 µm. Two of those distances is equal to 50 µm. Therefore, the distance/spacing between the first structure and the second structure is 20 µm (70 µm – 50 µm = 20 µm), which is greater than 0.05 times the smallest cross-sectional dimension (50 µm * 0.05 = 2.5 µm; as required by claim 4) and less than 10 times the smallest cross-sectional dimension (50 µm * 10 = 500 µm; as required by claim 6).
Regarding claim 14, the height of the pyramidal structures is 35 µm [0414], which is greater than 0.1 times the smallest cross-section (50 µm * 0.1 = 5 µm) and less than 10 times the smallest cross-section (50 * 10 = 500 µm).
Regarding claim 16, the height of the pyramidal structures is 35 µm [0414], which is within the claimed range of 1 µm to 1000 µm.
Regarding claims 8 and 9, since Hosseini’s disclosure anticipates the other dependent claims (4, 6, 7, 10, 12, 14, and 16) that refer to microscale protrusions and are dependent upon the same claim, it reasonably follows that they would be able to achieve the functions described in claims 8 and 9 despite their indefinite limitations.
Claims 1, 3, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vandenborre (US 2015/0200401 A1).
Regarding claims 1 and 3, Vandenborre discloses an electrode comprised of protrusions that may have a height/depth of 600 µm [0057]. Although the limitation of “wherein the surface texture is configured such that, during a gas-generating reaction in a liquid medium adjacent to the electroactive surface, the median size of bubbles produced during the reaction and/or the total surface area of the electroactive surface covered by bubbles produced during the reaction are reduced relative to the median size of bubbles produced on an electrode lacking the surface texture but under otherwise identical conditions” is indefinite, it is also a functional limitation. While intended use recitations and other types of functional language cannot be entirely disregarded. However, in apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). See also MPEP § 2114.
Since Vandenborre’s micro-pyramidal structures anticipate the claimed microscale protrusions, their structures are capable of reducing the overall bubble size and/or the total surface area of the electroactive surface that is covered by bubbles.
Regarding claim 7, Vandenborre discloses that the channels between the protrusions may either be 2600 µm or 3000 µm wide.
Claims 1 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Martirosyan (US 2015/0200431 A1). Martirosyan discloses an electrode with hollow spaces [0041] that comprise a surface texture. The hollow spaces may have a width of 100 µm [0149], rendering them microscale indentations. See Fig. 2 below:
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Furthermore, as mentioned above in the 102 rejections over Hosseini, claim 1 includes a functional limitation. While intended use recitations and other types of functional language cannot be entirely disregarded. However, in apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). See also MPEP § 2114. Therefore, it reasonably follows that Martirosyan’s microscale indentations are capable of reducing the size of bubbles produced during a reaction and/or the total surface area of the electroactive surface that is covered by bubbles.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Vandenborre as applied to claim 3 above. Vandenborre discloses that their protrusions preferably cover 20% to 80% of the surface of the active zone, referring to the base of the protrusions [0058]. Vandenborre continues to disclose that the area of the top side of the protrusions are at least 25%, 50%, or 67% of the area of the base of the protrusions [0068]. Assuming that the top area of the protrusions is 50% the area of their respective bases, that means that the area of the top of the protrusions may cover 10% to 40% of the surface of the active zone. This corresponds with a range of solid fraction between 0.1 and 0.4, which is within the claimed range of greater than zero and less than or equal to 0.5.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). See MPEP 2144.05 (I).
Claims 8, 9, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Hosseini as applied to claim 3 above.
Regarding claims 8 and 9, as mentioned above, it reasonably follows that Hosseini’s structures can achieve the functions described in claims 8 and 9. Furthermore, Hosseini teaches that decreasing the size of the structures may decrease the size of the bubbles [0484]. "[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).
Regarding claim 12, Hosseini discloses that the apices of the surface structures (i.e., the tops of the micro-pyramidal structures mentioned above) may comprise between 0.1% to 50% of the surface area of the surface upon which the structures are located [0103]. This overlaps with the claimed solid fraction range of zero to 0.5. 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). See MPEP 2144.05 (I).
Claims 20, 24, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Martirosyan as applied to claim 17 above.
Regarding claim 20, Martirosyan discloses that the walls of the hollow spaces may have a thickness between 50 µm to 500 µm. Since the walls are the only separation between the hollow spaces, it follows that their thickness is equivalent to the claimed spacing. 50 µm to 500 µm overlaps with the claimed range of 1 µm to 1000 µm. 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). See MPEP 2144.05 (I).
Regarding claim 24, Martirosyan discloses that the widths (the smallest cross-sectional diameter) of the hollow spaces may be between 100 µm and 5000 µm. This range overlaps with the claimed range of 1 µm to 1000 µm. 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). See MPEP 2144.05 (I).
Regarding claim 26, Martirosyan fails to explicitly teach the range of the claimed solid fraction. They do, however, teach that the surface area of the hollow spaces should be between 0.04 mm2 to 50 mm2 [0043] or even more preferably 0.25 mm2 to 16 mm2. Martirosyan also teaches that the width of the hollow spaces should be between 100 µm and 5000 µm [0149]. They continue to teach that if the hollow spaces are too wide (i.e., a width greater than 5000 µm), then the ratio of “active surface of active layer / active layer area” would be lower [0150]. Martirosyan’s ratio is analogous to the claimed solid fraction because both ratios account for the surface area of the microscale indentations relative to the rest of surface area of the surface on which the indentations are located. Martirosyan’s disclosure of preferred surface areas of their microscale indentations as well as a motivation for optimizing the size (and indirectly the surface area) of the microscale indentations to ensure an appropriately sized surface area ratio renders the claimed range of solid fraction routine optimization. "[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). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to use Martirosyan’s surface area benchmarks as a starting point to optimize the surface area covered by the microscale indentations to achieve the claimed solid fraction ratio.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Benjamin (US 1,328,981) provides an example of early battery technology that focuses on the effect of protrusions on electrode surfaces and how it affects bubbles in the battery (page 2).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN K BLACKWELL-RUDASILL whose telephone number is (571)270-0563. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m.
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/R.B.R./Examiner, Art Unit 1722 /NIKI BAKHTIARI/Supervisory Patent Examiner, Art Unit 1722