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
Applicant’s election without traverse of Group II, claims 3-6, in the reply filed on 03/18/2026 is acknowledged.
Claims 1 and 2 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected electrode, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/18/2026.
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.
(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.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Zhu (US 20140248543 A1).
Regarding claim 3, 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).
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).
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.
Claim(s) 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhu (US 20140248543 A1).
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.
Conclusion
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/A.K./Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746