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
Newly submitted claim 1 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 1 is drawn to a method of producing an electrode and the invention originally claimed is drawn to an electrode. Claim 1 and the invention originally claimed are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the invention originally claimed, an electrode, can be made by a materially different process than that of claim 1 such as forming the groove via means other than laser process (e.g. liquid etching).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 1 and 2 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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) 3-8, 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhu (US 20140248543 A1) and optionally further in view of Ko et al. (KR 20180113404 A; see attached machine translation).
Regarding claim 3, Zhu discloses Zhu discloses an electrode (claim 128, “working electrode”) comprising: an active material layer (claim 128, “substrate structure comprising one or more LIB current collector structures and/or one or more LIB active material structures”), wherein a groove (para 154, “trenches or indentations 4264”; fig. 42A-42C) is formed on a surface of the active material layer, at least part of an inner surface of the groove is covered with a nanostructure layer (para 154, “nanostructures 4220”; fig. 42A-42C), and the nanostructure layer includes a nanostructure (para 154).
Zhu does not explicitly disclose the groove has a width from 10 to 1000 μm. However, Zhu discloses “the discrete surface protrusions have a height and/or width of 1 μm or less” (para 157). Zhu additionally discloses “the size… of the discrete substrate surface (trenches/ indentations 4264) can be adjusted to control size…of the nanostructures formed on the substrate surface” (para 150). The width of the groove is a result effective variable. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the groove Zhu to have width of 10-1000 μm as doing such controls the size of the nanostructures (para 150).
In order to facilitate compact prosecution, the examiner additionally notes that Ko, drawn also to the lithium battery art, discloses voids having a width in range of 10-1000 um and grooves having width in range of 1-100 um on active material (Abstract). As such, and further in view of the disclosure provided above in Zhu, it would have been obvious for groove to have a width from 10-1000 um. This is even further obvious in light of the fact that Ko discloses such width enhances the electrolyte impregnability (Abstract).
Regarding claim 4, Zhu discloses the nanostructures “can be of essentially any desired size” (para 98). Zhu additionally discloses nanostructures have an average thickness (length) of “less than about 10 µm” (para 98, figs. 2A-2K).
Regarding claim 5, Regarding claim 5, Zhu discloses nanostructures can have “a diameter of about 10 nm to about 500 nm” (para 98). The diameter range disclosed by Zhu overlaps the diameter range of 10 to 300 nm claimed in the instant application. It has been held that in the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP 2144.05
Zhu does not explicitly disclose the diameter is a feret diameter. Zhou discloses the diameter “refers to the width or diameter of a cross-section normal to a first axis of the nanostructure, where the first axis has the greatest difference in length with respect to the second and third axes” (para 53). Zhou additionally discloses that “where the cross-section is not circular, the width or diameter is the average of the major and minor axes of that cross-section” (para 53). This constitutes a geometric distance across the particle at defined orientation which corresponds to a feret diameter.
Regarding claim 6, Zhu discloses the active material layer has a first chemical composition (claim 15, “active material substrate structure comprises graphite”), the nanostructure has a second chemical composition (claim 4, “nanostructures comprise silicon (Si)”).
Zhu fails to explicitly disclose the second chemical composition has a smaller oxygen composition ratio and a smaller carbon composition ratio than the first chemical composition.
Zhu discloses active material layer can comprise graphite and an inactive material (para 80); and a nanostructure can comprise silicon, inactive materials, conductive materials and any mixtures thereof (para 108). Zhu additionally discloses nanostructures of varying materials and mixtures (para 109; figs. 3A-3I). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to select these materials to optimize conductivity, adhesion or other certain characteristics (para 79). A skilled artisan would have known that silicon naturally contains less oxygen and carbon than graphite based active material and thus the second chemical composition would have a smaller oxygen composition ratio and a smaller carbon composition ratio than the first chemical composition.
Regarding claim 7, Zhu discloses the nanostructure layer extends to an outside of the groove (fig. 43 D).
Regarding claim 8, Zhu discloses a surface of the active material layer, except an inner surface of the groove, has no nanostructure (fig. 42 C).
Regarding claim 10, as stated in rejection of claim 1, Zhu does not explicitly disclose the groove has a depth from 10 to 100 μm. However, Zhu discloses “the discrete surface protrusions have a “height (depth) of 10 nm - 1 μm” (para 157). Zhu additionally discloses “the size… of the discrete substrate surface (trenches/ indentations 4264) can be adjusted to control size…of the nanostructures formed on the substrate surface” (para 150). The depth of the groove is a result effective variable. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the groove Zhu to have depth of 10-100 μm as doing such controls the size of the nanostructures (para 150).
In order to facilitate compact prosecution, the examiner additionally notes that Ko, drawn also to the lithium battery art, discloses the groove of the micro pattern “may have depth of 5 μm to the thickness of the electrode active material layer” (para 18). Ko later discloses the thickness of electrode active material layer is 60/65 μm (para 89/91). The range disclosed by Ko lies inside the range disclosed by instant application. It has been held that in the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP 2144.05. As such, and further in view of the disclosure provided above in Zhu, it would have been obvious for groove to have a width from 10-1000 μm. This is even further obvious in light of the fact that Ko discloses such width enhances the electrolyte impregnability (Abstract).
Regarding claim 11, Zhu discloses groove has depth of 10 nm- 1 μm (para 157) and the thickness of active material layer is 1 μm -100 μm (para 157). Zhu discloses a ratio of a depth of the groove to a thickness of the active material layer is from 0.1 to 0.9 because
1
μ
m
/
2
μ
m
=
0.5
.
Regarding claim 12, Zhu discloses nanostructure can include inactive material such as carboxylmethyl cellulose (CMC) which has oxygen (para 113). Accordingly, Zhu discloses second composition comprises oxygen.
Regarding claim 13, Zhu discloses nanostructures comprise graphite (para 113). Accordingly, Zhu discloses second chemical composition comprises carbon.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhu (US 20140248543 A1) and Li et al. (Surface Nanostructuring via Femtosecond Lasers).
Regarding claim 9, Zhu discloses modification of the substrate surface (trenches/indentations) can be achieved by various processes including laser ablation (para 148). Zhu further discloses nanostructures are formed on these features via electrochemical deposition (ECD)(para 156).
Zhu does not explicitly disclose the nanostructure is formed by laser irradiation of the active material layer.
Although Zhu forms nanostructures via ECD on substrate surface modifications, it was well known in the art, at the time of invention that laser ablation/irradiation generates nanoscale surface structures and texturing such as laser-induced periodic surface structures (LIPSS) in the irradiated regions. For example, Li et al. teaches that pulsed laser irradiation forms nanostructures (laser-induced periodic surface structures (LIPSS)) on irradiated materials (Introduction).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, that laser ablation used by Zhu to form the indentations would also form nanoscale surface structures on the active material, resulting in nanostructures formed by laser irradiation.
Response to Arguments
Applicant's arguments filed 5/20/2026 have been fully considered but they are either not persuasive or moot in light of the new grounds of rejection detailed above.
The applicant argues, specifically, that the specified range of 10-1000 um renders the claim patentably distinct.
The argument has been fully considered but is not persuasive. As set forth in the rejection above, Zhu teaches that the size of the discrete substrate surface features may be adjusted to control the size of the nanostructures formed on the substrate surface, and further discloses protrusion dimensions of 10 nm to 1 μm. Ko likewise discloses a groove depth of 5 μm up to the thickness of the electrode active material layer, with the layer thickness disclosed as 60/65 μm. Thus, Ko teaches a groove dimension of 5–65 μm, which falls within the presently claimed range of 10–1000 μm and therefore renders it obvious.
Conclusion
THIS ACTION IS MADE FINAL. 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 ARTI KHANAL whose telephone number is (571)272-8608. The examiner can normally be reached Mon-Fri 7:00am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael N Orlando can be reached at (571) 270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.K./Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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