DETAILED ACTION
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 Amendment
In view of the amendment to claim 1 the U.S.C. 102 rejection of claims 1-5 is withdrawn.
In view of the amendment to claim 1 the U.S.C. 103 rejection of claims 7-8 is withdrawn.
In view of the cancellation of claim 6 the U.S.C. 103 rejection of claim 6 is withdrawn.
The cancellation of claims 14, 15 and 22 Is acknowledged.
Response to Arguments
Applicant argues the black phosphorous layer of Zhang is not sputtered and the sputtering provides a smaller density with improved accommodation of volume expansion. The use of sputtering in paragraph 72 of Zhang mentions not limiting the method film formation and includes sputtering as an alternative and the black phosphorous layer is referred to as a film previously in paragraph 65. Furthermore the limitation of sputtering in claim 1 is not a structural limitation and patentability of the product does not depend on the method of making. The structural difference between sputtering a vapor deposition, including density, as argued by the applicant are not claimed.
Applicant’s arguments with respect to a metal current collector or the black phosphorus as an anode active material have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 and 7 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The additional limitation in line 3 of claim 1 is recited as "the current collector is a metal" and the arguments dated 02/26/26 describe support for this limitation as the current collectors from examples 1-3, however only a copper current collector is described and the specification does not include any other metal or all metals as is claimed.
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.
Claims 1-5 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang( CN111334780 as previously cited), in view of Gong(US20230216035A1), and further in view of Feng (CN114725362A, reference made to attached English translation) and Xiao (US20180287139).
Regarding claim 1 and 7, Zhang discloses a substrate (i.e. current collector) which may be a conductive glass (¶[0068]), a nucleation layer (i.e. induction deposition layer) which may be a phosphorous-containing alloy (¶[0054]) and a black phosphorous layer (¶[0013])) and these materials may act as an electrode in a battery (¶[0095]) but does not specifically describe the black phosphorous as an active material, the use of a metal as a current collector, or holes within the black phosphorus film.
Gong, related to battery electrodes, teaches a black phosphorus film as a negative electrode active material(¶[0007], Fig. 1) deposited on a copper current collector(¶[0009]).
One of ordinary skill in the art would have recognized the electrode components of Gong, including the black phosphorus active material and copper current collector, would have provided a ultra-fast charging and high-capacity (¶[0007]) for the electrode and battery suggested by Zhang.
Therefore, it would have been obvious to provide the electrode components of Gong, including the black phosphorus active material and copper current collector, for the electrode and battery suggested by Zhang to provide ultra-fast charging and high-capacity(¶[0007]).
Feng, related to black phosphorus anodes, teaches adding holes in the form of pores buffers the effects of the large volume expansion black phosphorus displays during charging and discharging(¶[n0022]), but does not teach laser ablated holes smaller than or equal to 0.1 mm.
Xiao, related to making electrodes, teaches adding void spaces(i.e. holes) via laser ablation to accommodate volume expansion in electrode material layers to minimize cracking and damage to the electrode during cycling (¶[0010]) and that a plurality of void spaces may be 50 µm to 5 mm depending on the thickness of the active material layer(¶[0054]).
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). MPEP §2144.05.
If a technique has been used to improve one device (adding holes to an active material layer of an electrode), and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way (such as preventing cracking and damage to the electrode during volume expansion), using the technique is obvious unless its actual application is beyond his or her skill. SEE MPEP § 2141 (III) Rationale C, KSR v. Teleflex (Supreme Court 2007).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the teaching of Feng and Xiao and provided holes by laser ablation within the black phosphorus film of Zhang to reduce damage due to volume expansion during charging.
Claim 1 is considered product-by-process claim by including the limitation of magnetron sputtering and laser ablation. The cited prior art teaches all of6h,m the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
Regarding claim 2, modified Zhang discloses a black phosphorus anode electrode according to claim 1, and Zhang further discloses wherein a thickness of the film of black phosphorus is about 1 µm(¶[0139).
Regarding claim 3, modified Zhang discloses a black phosphorus anode electrode according to claim 1 , and Zhang further discloses wherein the film of black phosphorus is one or more films of black phosphorus and lateral dimension of each of the one or more films of black phosphorus is larger than 100 µm (see example 3, major diameter of several hundred micrometers, ¶[0139).
Regarding claim 4, modified Zhang discloses a black phosphorus anode electrode according to claim 1 , and Zhang further discloses wherein the induction deposition layer comprises a plurality of induction nucleation parts spaced apart from each other, each of the plurality of induction nucleation parts comprises the phosphors-containing alloy (see the induction layer is multiple nucleation points which one of ordinary skill in the art would recognize multiple points must necessarily be spaced apart, ¶[0053]).
Regarding claim 5, modified Zhang discloses a black phosphorus anode electrode according to claim 1, and Zhang further discloses wherein a thickness of the induction deposition layer may be as small as atomic layer thick(¶[0053]) which one of ordinary skill in the art would recognize as smaller than or equal to 5 nm.
Regarding claim 8, modified Zhang discloses a black phosphorus anode electrode according to claim 1, and Gong further teaches the black phosphorus active material may be on both sides of the current collector¶[(0009]).
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.
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/K.J.A./Examiner, Art Unit 1726
/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 12 May 2026
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