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
The Amendment filed on 3/30/2026 has been entered. Claims 1-8 remain pending in the application. Applicant’s amendments to the claims have overcome each and every objection and 112(b) rejection previously set forth in the Non-Final Office Action mailed 12/29/2025.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 62/396,759, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claim 1 of the instant application recites a composition of an electrochemical bath, wherein the composition of the electrochemical bath comprises one of compositions (a)-(e). Several of the compositions (a)-(e) recite a range of the concentration of borate, citrate, and Cl- starting at 0 g L-1. This subject matter was not described in the disclosure of the prior-filed provisional application ‘759 in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. In all instances where the composition of the electrochemical bath is described in the disclosure of ‘759, there is no disclosure that the electrochemical bath may comprise 0 g L-1 of borate, citrate, or Cl-. The disclosure of ‘759 recites that the concentration of the borate, citrate, or Cl- may only be as low as 0.001 g L-1 [see ‘759 claim 1, specification page 3 lines 2-9, and Tables 1, 3, 5, 7, and 9]. Accordingly, claim 1 and dependent claims 2-7 of the instant application are not entitled to the benefit of the prior application.
Claim 8 of the instant application similarly recites a composition of an electrochemical bath, wherein the composition of the electrochemical bath comprises borate in a range of 0-45 g L-1. As described above, the range of the concentration of borate in the disclosure of ‘759 only goes as low as 0.001 g L-1, therefore the subject matter of claim 8 was not described in the disclosure of the prior-filed provisional application ‘759 in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. Accordingly, claim 8 of the instant application is not entitled to the benefit of the prior application.
Claim 2 of the instant application recites that the film comprises “at least 90 wt % of Ni, Co, NiFe, NiCo, FeCo, NiFeCo or a combination thereof”. This subject matter was not described in the disclosure of the prior-filed provisional application ‘759 in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. The disclosure of ‘759 does not describe a numerical range for the amount of Ni, Co, NiFe, NiCo, FeCo, NiFeCo or a combination thereof in the film anywhere. Accordingly, claim 2 and dependent claim 3 of the instant application are not entitled to the benefit of the prior application.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Tour et al. (US 2016/0379764, hereinafter "Tour") in view of Qiu et al.(Fabrication of large-scale nanoporous nickel with a tunable pore size for energy storage, hereinafter "Qiu").
Regarding claims 1 and 8, Tour teaches a nickel-based material which may be in the form of a film [Abstract, “The nickel-based material may be a nickel foil in the form of a film”]. Tour further teaches that the nickel-based material may be a nickel foil [0036, “In some embodiments, the nickel-based material is a nickel foil”], and that it may be in the form of a thin film [0039]. Tour does not teach any substrate or the like on the nickel-based material, making it freestanding. Tour also teaches an anodized nickel-based material comprising porous regions (“nanoporous film”) [0047, “Anodization of nickel-based materials generally results in the formation of at least one porous region on a surface of the nickel-based materials”, 0069, “In some embodiments, porous regions are inseparable from the nickel-based material”]. The porous regions may have a pore size of 5 nm to about 100 nm, making them nanoporous [0070, “In some embodiments, the porous regions include pores with sizes ranging from about 5 nm in diameter to about 100 nm in diameter”].
Tour is silent as to whether the nickel-based material is produced by a process comprising at least partially submerging a substrate into an electrochemical deposition bath, wherein a composition of the electrochemical deposition bath comprises at least a metal salt and saccharin, forming a deposit on the substrate, and removing the deposit from the substrate to form a freestanding film. However, the claim is a product-by-process claim, wherein the Courts have held:
“Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [see MPEP 2113(I)].
There is no evidence that the product-by-process language of “a process comprising at least partially submerging a substrate into an electrochemical deposition bath, wherein a composition of the electrochemical deposition bath comprises at least a metal salt and saccharin, forming a deposit on the substrate, removing the deposit from the substrate to form a freestanding film” as recited in claim 1 imparts specific structural characteristics to the product. As such, Tour’s nickel-based material appear to meet the structure set forth. Alternatively, any differences provided by the product-by-process limitations would provide a product that is obvious from the nickel-based material of Tour. Regarding product-by-process limitations, see MPEP 2113.
Tour is silent regarding the nickel-based material comprising a uniform pore distribution across at least a portion of its surface.
Qiu teaches analogous art of a nanoporous-Ni (np-Ni) that can be used as an electrode in supercapacitors, batteries, and fuel cells [pg. 900, col. 1, “Therefore, large-scale np-Ni samples can be directly used as a bulk electrode in supercapacitors, batteries and fuel cells”]. Qiu further teaches that the np-Ni may be used as a free-standing electrode [pg. 896, Abstract, “The as-dealloyed nanoporous Ni … can be directly used as a free-standing electrode”]. Qiu teaches that the np-Ni has a uniform nanoporous structure across its surface (“uniform pore distribution”) [pg. 897, col. 2, “Fig. 3a is the SEM micrograph of the 1 h dealloyed sample, which shows a uniform nanoporous structure”, pg. 899, Qiu Fig. 3a shows the plane view of np-Ni]. Qiu further teaches that the np-Ni has uniform and tunable porosity [pg. 904, col. 2, “a large scale np-Ni with uniform and tunable porosity has been successfully developed”].
Qiu teaches that the np-Ni shows high areal capacitance and outstanding cycling ability compared to other free-standing electrodes [pg. 904, col. 2, “the nanoporous electrode exhibits excellent capacitive performances with very high areal capacitance and outstanding cycling stability compared to other free-standing electrodes”]. Qiu also teaches that the np-Ni has a large internal surface area and excellent conductivity [pg. 896, Abstract, “The as-dealloyed nanoporous Ni with a large internal surface area, excellent conductivity”].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the nickel-based material taught by Tour to have a uniform nanoporous structure as taught by Qiu, in order to give the nickel-based material high areal capacitance, outstanding cycling ability, a large internal surface area, and excellent conductivity.
Further regarding claim 2, Tour discloses that the nickel-based material is at least 99% pure [0037]. If the nickel-based material is a nickel foil, the nickel-based material would then be 99% nickel, which is within the claimed range. Tour also teaches that the porous regions (“nanostructure”) may have pores with sizes ranging from about 5 nm in diameter to about 100 nm in diameter, which encompasses the claimed range [0070, “In some embodiments, the porous regions include pores with sizes ranging from about 5 nm in diameter to about 100 nm in diameter”]. Tour teaches that the thickness of the nickel-based material can range from about 1 µm to 10mm, which overlaps the claimed range [0041, “in some embodiments, the nickel based materials of the present disclosure have a thickness ranging from about 1 μm to about 10 mm”]. 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) [see MPEP 2144.05(I)].
Further regarding claim 3, Tour teaches the porous region having pore sizes ranging from about 5 nm to about 100 nm [0070], as described in the rejection of instant claim 2, which encompasses the claimed range. 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) [see MPEP 2144.05(I)].
Further regarding claim 4, since the film taught by Tour is a nickel-based material, it must comprise nickel (Ni) [0039].
Further regarding claim 5, Tour teaches that the nickel-based material may serve as a current collector within an electrode [0042]. Tour further teaches that the electrode may be utilized in an energy storage device (“electronic device”) [0083, “The electrodes of the present disclosure can be utilized as components of various energy storage devices”].
Further regarding claim 6, Tour teaches that the energy storage device comprising the nickel-based material may be a lithium-ion battery [0085, “In some embodiments, the energy storage device is a lithium-ion battery”].
Further regarding claim 7, Tour teaches an energy device comprising an electrode [0082, “The methods of the present disclosure can also include a step of incorporating the electrodes of the present disclosure as a component of an energy storage device”]. Tour teaches that the nickel-based material may be included in the electrode [0042]. Tour further teaches that the energy storage device may be a lithium-ion battery [0085, “In some embodiments, the energy storage device is a lithium-ion battery”].
Response to Arguments
Applicant’s arguments with respect to claims 1-8 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.
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 MARIA F OROZCO whose telephone number is (571)272-0172. The examiner can normally be reached M-F 9-6.
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, Ula Ruddock can be reached at (571)272-1481. 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.
/M.F.O./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
Prosecution Insights