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 .
Status of Claims
Claims 1-4 were rejected in the Office Action from 02/04/2026.
Applicant filed a response and amended claims 1-4.
Claims 1-10 and 12-21 are currently pending in the application, of claims 5-10 and 12-21 are withdrawn from consideration.
Claims 1-4 are being examined on the merits in this Office Action.
Claim Objections
Claims 2-3 are objected to because of the following informalities:
In claim 2-3, it is suggested to amend “plurality of grooves” to - -plurality of groove parts- - to conform to prior recitation.
Appropriate correction is required.
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.
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(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pekala et al. (WO 2005/069927 A2).
The Examiner has provided original document of WO 2005/069927 A2 (PCT/US2005/001654). The citation of the prior art in this rejection refer to this document.
Regarding claim 1, Pekala teaches a freestanding film (i.e., freestanding polymer film) (40) (paragraph [0013]) comprising a pattern (i.e., ribs) (46) having directionality on at least one surface (i.e., upper major surface) (42) (paragraph [0031]-[0033]). Further, Pekala teaches the freestanding film comprising an active material, a conductive material and a binder (i.e., activated carbon powder, polymeric binders) (paragraph [0011]-[0012], [0017], [0032]). In addition, electrochemical cells require and are well known to include components such as an active material, conductive material, and a binder. As to the limitation “for a secondary battery”, such is directed to the intended use of the product and as provided in the MPEP, a claim containing a recitation with respect to the manner in which a claimed product is intended to be employed does not differentiate the claimed product from a prior art product if the prior art teaches the structural limitations of the claim (See MPEP 2114). Nonetheless, components of an electrochemical cell designed for water purification (as described in Pekala) are well known to be repurposed or adapted to function as a secondary battery, offering a dual-use approach for environmental remediation (water purification) and energy storage (secondary battery).
Regarding claim 2, Pekala teaches the patter is a concave-convex pattern (as shown in figure 3B below) (paragraph [0033]).
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Regarding claim 3, Pekala teaches the pattern has an interval of 25-500µm (paragraph [0031]-[0032]) which overlaps the claimed range. The pattern is between adjacent grooves (48) (paragraph [0032]) (see figure 2). It is noted that Pekala differ in the exact same interval range as recited in the instant claim however, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the interval range of Pekala overlap the instant claimed range and therefore is considered to establish a prima facie case of obviousness. It has been held in the courts that 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).
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Regarding claim 4, Pekala teaches the pattern has a depth of 5% to 100% of the thickness of the freestanding film (i.e., polymer film 40 preferably has a film thickness 50 that is between about 50 microns and about 500 microns, and ribs 46 preferably have a rib height 52 that is between about 5% and about 100% of film thickness 50) (paragraph [0031]-[0033]) which overlaps the claimed range. For instance, a 5% of 50µm is 2.5µm and 100% of 50µm is 50µm. It is noted that Pekala differ in the exact same depth range as recited in the instant claim however, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the depth range of Pekala overlap the instant claimed range and therefore is considered to establish a prima facie case of obviousness. It has been held in the courts that 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).
Allowable Subject Matter
Claim 1 could potentially be allowable if amended as suggested below. In other words, claim 1 would potentially be allowable if rewritten in independent form to incorporate:
all the limitations of claim 1 and claims 2-4 and the suggested additional feature, which would differentiate from the prior art and is supported in the specification.
Applicant is encouraged to consider amending claim 1 accordingly to potentially place the application in condition of allowance. The claim would potentially be allowable if rewritten as follows:
Claim 1. A freestanding film for a secondary battery, comprising an active material; a conductive material; and a binder,
wherein the freestanding film has a pattern having directionality on at least one surface,
wherein the pattern is a concave-convex pattern,
wherein the pattern has an interval of 100 µm to 2000 µm,
the concave-convex pattern includes a plurality of convex parts and a plurality of groove parts, and
the interval is a distance between adjacent ones of the plurality of groove parts,
wherein the pattern has a depth of 1.5 µm to 35 µm,
the depth is a distance from an apex of ones of the plurality of convex parts to a low point of adjacent ones of the plurality of groove parts, and
wherein each of the plurality of groove parts are recessed from adjacent ones of the plurality of convex parts.
Response to Arguments
Applicant’s arguments have been considered but are moot because arguments are drawn to the new amendments which have been fully addressed above taking a different approach of Pekala.
Pertinent Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Jeong et al. (U.S. Patent Application Publication 2019/0173075). Jeong teaches a free standing comprising a pattern (i.e., domes) (241) having directionality on at least one surface (see figure 5) (paragraph [0067]).
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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 CHRISTIAN ROLDAN whose telephone number is (571)272-5098. The examiner can normally be reached Monday - Thursday 9:00 am - 7:00 pm.
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/CHRISTIAN ROLDAN/Primary Examiner, Art Unit 1723
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