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 .
Election/Restrictions
Claims 1-11 and 17-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 23, 2023 and in the telephonic election dated February 26 and 27, 2026.
Applicant’s election without traverse of Group I in the reply filed on February 23 is acknowledged.
Additionally in response to the incomplete response regarding the species election: During a telephone conversation with Levi Brown on February 26 and 27, 2026 a provisional election was made without traverse to prosecute the invention of species 1, claims 12-16. Affirmation of this election must be made by applicant in replying to this Office action. Claims 17-20 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Information Disclosure Statement
The information disclosure statements filed October 24, 2024 and January 20, 2026 have been placed in the application file and the information referred to therein has been considered as to the merits.
Drawings
The drawings received June 9, 2023 are acceptable.
Claim Objections
Claims 12 and 15 are objected to because of the following informalities: using “the first and second contact surfaces” rather than setting each individual surface apart (i.e. ‘the first contact surface and the second contact surface’) (claim 12, line 9, line 11, line 12, line 13, lines 14-15; claim 15, line 2). Appropriate correction is required.
Claim 13 objected to because of the following informalities: the term “applied” is in the incorrect placement “the applied current is” (line 1), wherein perhaps ‘the current is applied’ was meant instead (similar to claim 12, line 13). 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 12-16 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.
Claim 12 recites “the first and second contact surfaces initially have a first surface area state” (line 11) and later recites back to “the first surface area state” (lines 13-14). However, it is unclear whether the first surface state is the same or different as related to the two different contact surfaces. Is the first surface area state respective to each of the contact surfaces? Thus, the claim is unclear and indefinite. Since claims 13-16 are dependent upon claim 12, they are rejected of the same reason.
Claim 12 recites “the first and second contact surfaces initially have a first amount of atomic surface area” (line 12) and later recites back to “the first amount of atomic surface area” (lines 13-14). However, it is unclear whether the first atomic surface area is the same or different as related to the two different contact surfaces. Is the first atomic surface area respective to each of the contact surfaces? Thus, the claim is unclear and indefinite. Since claims 13-16 are dependent upon claim 12, they are rejected of the same reason.
Claim 12 recites the limitation "the second surface area state" in line 15. There is insufficient antecedent basis for this limitation in the claim. Since claims 13-16 are dependent upon claim 12, they are rejected of the same reason.
Claim 12 recites “the first and second contact surfaces have a second amount of atomic surface area” (lines 14-15). However, it is unclear whether the second atomic surface area is the same or different as related to the two different contact surfaces. Is the second atomic surface area respective to each of the contact surfaces? Thus, the claim is unclear and indefinite. Since claims 13-16 are dependent upon claim 12, they are rejected of the same reason.
Claim 15 recites “the first and second contact surfaces are electrodes” (line 2). However, it is unclear whether the electrodes are the same or different as related to the two different contact surfaces. Thus, the claim is unclear and indefinite.
Claim Rejections - 35 USC § 102/103
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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) 12 and 15-16 is/are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2025/0070187 (Warren et al.).
As to claim 12, Warren et al. teach an energy source (energy storage device; title) that is structured to increase an atomic surface area (roughness described as fractions of µm, thus interpreted to be atomic as well; see para 0040) of contact surfaces (current collector) of the energy source to thereby cause the energy source to increase an amount of energy output the energy source is capable of providing relative to an amount of energy output the energy source was capable of providing prior to the atomic surface area being increased (i.e. via preventing deformation (para 0032); or at least via extra surface area of the active material thereon as introduced via roughening (as applied to figs. 1, 4; roughening can be done via surface layer, also the surface layer may include silicon (active material) (see para 0041, 0062-0063)), the energy source comprising:
a first contact surface (the interface between the metal interlayer [404a] and surface area [405a]) (fig. 4; para 0040-0041); and
a second contact surface (the interface between the metal interlayer [404b] and surface area [405b]) (fig. 4; para 0040-0041);
wherein:
the first and second contact surfaces are structured to facilitate a transfer of energy from the energy source to a receiving unit, the first and second contact surfaces initially have a first surface area state in which the first and second contact surfaces have a first amount of atomic surface area (current density applied for roughening) (para 0041-0042, as applied to fig. 4), and
current is applied to the first and second contact surfaces to change the first surface area state to the second surface area state in which the first and second contact surfaces have a second amount of atomic surface area, which is an increased amount of atomic surface area relative to the first amount of atomic surface area (current density applied for roughening) (para 0041-0042, as applied to fig. 4).
The teaching above is interpreted to be either (1) anticipatory, or in the alternative (2) obvious.
With respect to (1) anticipation: The teachings are generally taught to be applicable to the embodiments (i.e. roughness/roughening of para 0040-0042 to fig. 4). Thus, sufficient specificity exists for anticipation.
Alternative, with respect to (2) obviousness: If it is shown that sufficient specificity does not exist, at the very least combining the teachings of the roughness/roughening of para 0040-0042 and interlayer of para 0062-0063 to the embodiment of fig. 4 would be obvious, as the combination of each element merely performs the same function as it does separately, and thus would yield the predictable result of acting as an electrode within a storage device. Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to combine the teachings of the roughness/roughening of para 0040-0042 and interlayer of para 0062-0063 to the embodiment of fig. 4 would be obvious, as the combination of each element merely performs the same function as it does separately, and thus would yield the predictable result of acting as an electrode within a storage device. “When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id . at ___, 82 USPQ2d at 1396.” See MPEP §2141(I).
As to claim 15, Warren et al. teach the first and second contact surfaces (the interface between the metal interlayer [404a] and surface area [405a], and the interface between the metal interlayer [404b] and surface area [405b])) (fig. 4; para 0040-0041) are electrodes (as the current collector is part of the electrode structure; [400] is the anode (para 0038)).
As to claim 16, Warren et al. teach the current is applied for a predetermined time period (a few seconds to a few minutes) (para 0042).
Claim Rejections - 35 USC § 103
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Warren et al. (The teachings of Warren et al. above, as applicable herein, are incorporated herein but are not reiterated herein for brevity’s sake.)
As to claim 13, Warren et al.t each the current is applied for at least 10 seconds (a few seconds to a few minutes) (para 0042) (overlaps claimed range, thus renders the limitation obvious; see MPEP §2144.05(I)).
As to claim 14, Warren et al. teach the applied current is between about 120 milliamp (mA) and about 500 mA (0.05-0.3 A/cm2) (para 0042) (thus for a 1 cm2 basis, 0.05-0.3 A is 50-300 mA) (overlaps claimed range, thus renders the limitation obvious; see MPEP §2144.05(I)).
Conclusion
Note: No other prior art is considered pertinent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENIA WANG whose telephone number is (571)272-4942. The examiner can normally be reached a flex schedule, generally Monday-Thursday 5:30 -7:30(AM) and 9:00-4:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at 571-272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EUGENIA WANG/Primary Examiner, Art Unit 1759