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 Group I in the reply filed on 10/30/2025 is acknowledged.
Claim Objections
Claims 2-6 are objected to because of the following informalities: "Claim" which is not a proper noun, should be changed to "claim". Appropriate correction is required.
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 1-6 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.
The terms “optimized characteristics”, “low lithium consumption”, “high Coulombic efficiency”, “high mechanical stability”, and “strong and variable stress action” in at least claims 1,4, and 6 are relative terms which renders the claim indefinite. The terms are 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.
Claim 1 recites “…a columnar film grown on top of another layer where the columns touch each other at the top forming arches having optimized characteristics”, claim 4 recites “…the optimized characteristics include at least one of a low lithium consumption during formation of solid electrolyte interface in Li-Ion Batteries, high Coulombic efficiency, and high mechanical stability pertinent to any application where the surface of the film is under strong and variable stress action”, claim 6 recites “…the optimized characteristics compared with those of the monolayered structure include both a high Coulombic efficiency of a lithium ion battery and the mechanical stability of the film, indicating arch action reinforcement”.
This is ambiguous functional language as there is not a clear cut indication of the scope of the subject matter covered by the claim, the boundaries are not well-defined as the claim language only states a problem solved or result obtained, and one or ordinary skill in the art would not know from the claim terms what structure(s) is/are encompassed by the claim.
Functional language must be evaluated and considered for what it fairly conveys to a person of ordinary skill in the art (see MPEP 2173.05(g)). As noted in MPEP 2173.05(g), Examiners should consider three factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) whether there is a clear cut indication of the scope of the subject matter covered by the claim, (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained, and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim (pg. 7165, 2nd column last paragraph- 3rd column, first paragraph).
Thus, the above claim language does not give a clear cut indication of the scope of the subject matter covered by the claim as well-defined boundaries of the invention are not defined as the language only recites a problem solved or result obtained, and one of ordinary skill in the art would not know from the claim terms what structures are encompassed by the claim. For example, in such as system, a person of ordinary skill in the art would not know what additional components, if any, are necessary; what is considered optimized, high efficiency, low consumption, strong and variable stress, or a comparable battery, and/or what kind of compounds are necessary among the components to obtain the result claimed. Appropriate correction is required.
For compact prosecution purposes, the above portion will be examined such that if the clearly set forth and positively recited structure in the claim is met, specifically “…a columnar film grown on top of another layer where the columns touch each other at the top forming arches”. then the prior art separator will be considered to intrinsically meet the functional feature claimed. The above is founded on MPEP 2173.06:
Thus, when the examiner determines that a claim term or phrase renders the claim indefinite, the examiner should make a rejection based on indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as well as a rejection(s) in view of the prior art under 35 U.S.C. 102 or 103 that renders the prior art applicable based on the examiner’s interpretation of the claim. See In re Packard, 751 F.3d 1307, 1312 (Fed. Cir. 2014) (stating that the prima facie case is appropriately used for making an indefiniteness rejection). When making a rejection over prior art in these circumstances, it is important that the examiner state on the record how the claim term or phrase is being interpreted with respect to the prior art applied in the rejection. By rejecting each claim on all reasonable grounds available, the examiner can avoid piecemeal examination. See MPEP § 707.07(g) ("Piecemeal examination should be avoided as much as possible. The examiner ordinarily should reject each claim on all valid grounds available...").
Claim 6 recites the limitation "the monolayered structure". There is insufficient antecedent basis for this limitation in the claim. For the purpose of compact prosecution, the monolayered structure will be interpreted as a single layer of columnar film, of varying or similar properties.
Claim Rejections - 35 USC § 102
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 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 1-2 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Honda et al. (US 20050118503).
Regarding claim 1, Honda teaches a columnar film grown on top of another layer where the columns touch each other at the top forming arches having optimized characteristics, including increased capacity (abstract; P41-42.78-80.104.139-141; Fig. 2B/C/D.6B/C.14A/B).
Regarding claim 2, Honda teaches the columnar film is an amorphous Si film, or silicon thin film that can be assumed to be in an amorphous state (P80.104) in an annealed state, where it has been heated followed by cooling (P51-53.142).
Regarding claim 4, Honda teaches the optimized characteristics may include high mechanical stability which is interpreted as pertinent in a battery. (P27-29.87.125)
Regarding claim 5, Honda teaches a multilayer composite including at least two vertical repitions of the composite nanoarchitecture of claim 1 (P25-29.41-42.78-87.104-111.139-141; Fig. 2B/C/D.6B/C.14A/B).
Regarding claim 6, Honda teaches the optimized characteristics compared with those of the monolayered structure include both a high Coulombic efficiency of a lithium-ion battery and the mechanical stability of the film, thus indicating arch action reinforcement. (P42.87.111). Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. MPEP 2112
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Honda, as applied to at least claim 1, above, and further in view of Suzuki et al. (US 20140017564).
Regarding claim 3, Honda teaches the columnar film, or silicon thin film, is grown on top of a layer of metallic particles, or metallic collector, such as a copper foil (P67.74.80.91.150-154). The metallic particles, or copper foil layer that the columnar film is grown on top of may include a rust-proofing treatment (P149).
Honda is silent in teaching the metallic particles are nanoparticles; however, Suzuki, in a similar field of endeavor, teaches a copper current collector for use with a silicon active material layer, wherein the metallic particles, or copper current collector has been rust-proofed (P35-37.41).
Suzuki teaches the metal particles should be nanoparticles in order to obtain proper rust proofing and roughness of the surface thus improving adhesion and reduce damage (P40-45.154.274).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to rust proof the surface of Honda, with metallic nanoparticles, as taught by Suzuki, further improving adhesion and efficiency. The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a "base" device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. MPEP 2143 C
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amanda Rosenbaum whose telephone number is (571)272-8218. The examiner can normally be reached Monday-Friday 9:00 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas A. Smith can be reached at (571) 272-8760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Amanda Rosenbaum/Examiner, Art Unit 1752
/Helen Oi K CONLEY/Primary Examiner, Art Unit 1752