DETAILED ACTION
This is the first office action for 18/233,411, filed 8/14/2023, which is a continuation of 16/422,304 (now U.S. Patent 11,764,353), filed 5/24/2019, which claims priority to provisional application 62/676,049, filed 5/24/2018, after the request for continued examination filed 9/25/2025.
Claims 39-52 and 55-65 are pending, and are considered herein.
In light of the claim amendments, the prior art rejections are withdrawn, and new grounds of rejection are presented herein.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/25/2025 has been entered.
Additional Prior Art
The Examiner wishes to apprise the Applicant of the following references, which are not currently applied in a rejection.
U.S. Patent Application Publication 2016/0118652 A1: This reference teaches the use of multi-layered lithium-intercalating active materials for use in an anode for a lithium battery (Figs. 1-2). The outermost layer of each particle is covered in a layer 14 of Li (paragraphs [0030]-[0037]).
U.S. Patent Application Publication 2017/0294688 A1: This reference teaches the use of a multi-layered anode for a lithium battery, in which the anode comprises high-capacity materials and a layer of pure lithium (Figs. 2-8, paragraphs [0052]-[0066]).
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 64-65 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 64 recites “the second electrode” in line 4. There is insufficient antecedent basis for this limitation, because there is no prior recitation of “a second electrode” in Claim 39, merely “a second electrode material.”
For the purposes of examination, “the second electrode” in line 4 will be interpreted to include “the second electrode material.”
Claim 65 recites “the second electrode” in line 2. There is insufficient antecedent basis for this limitation, because there is no prior recitation of “a second electrode” in Claim 49, merely “a second electrode material.”
For the purposes of examination, “the second electrode” in line 2 will be interpreted to include “the second electrode material.”
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.
Claims 39-42, 44, 46-48 and 64 are rejected under 35 U.S.C. 103 as being unpatentable over Chiang, et al. (U.S. Patent Application Publication 2014/0170524 A1), in view of Tatsuhiro, et al. (U.S. Patent Application Publication 2015/0004494 A1).
In reference to Claim 39, Chiang teaches an electrode 120/150 (Fig. 1, paragraphs [0036]-[0101]).
The electrode of Chiang comprises a current collector, corresponding to the copper current collector described in paragraph [0038]).
The electrode of Chiang comprises a first electrode material disposed on the current collector and having a first surface area, corresponding to the carbon coating on the copper current collector, described in paragraph [0038]).
Chiang does not teach that the first electrode material includes an electroactive material and a conductive material.
Instead, he teaches that the first electrode material merely comprises a layer of carbon (paragraph [0038]).
To solve the same problem of providing an anode for a lithium battery, wherein the anode comprises a copper current collector, Tatsuhiro teaches an anode for a lithium battery, wherein the anode comprises a copper current collector (as in Chiang) and a series of alternating layers of Si and graphene disposed on the copper current collector surface (Fig. 1, paragraph [0025]).
Tatsuhiro further teaches that the anode of his invention provides the benefit of having good conductivity (due to the graphene) (paragraph [0007]) and high capacity (due to the silicon) (paragraph [0010]), and that superior performance is obtained from anodes with 7 repeated Si/graphene layers (paragraph [0009]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have replaced the carbon coating in the anode of Chiang with the multilayered silicon/graphene electrode structure of Tatsuhiro, comprising 7 repeat layer pairs, because Tatsuhiro teaches that the anode of his invention provides the benefit of having good conductivity (due to the graphene) (paragraph [0007]) and high capacity (due to the silicon) (paragraph [0010]).
Replacing the carbon coating in the anode of Chiang with the multilayered silicon/graphene electrode structure of Tatsuhiro, teaches the limitations of Claim 39, wherein the first electrode material comprises an electroactive material (i.e. the silicon) and a conductive material (i.e. the graphene).
Replacing the carbon coating in the anode of Chiang with the multilayered silicon/graphene electrode structure of Tatsuhiro teaches the limitations of Claim 48, wherein the first electrode material includes graphene sheets.
The electrode of Chiang comprises a second electrode material 150 disposed on the first electrode material. This “second electrode material” corresponds to the semi-solid electrode material 150, which is taught to comprise active materials and conductive materials suspended in a liquid electrolyte (paragraph [0043]).
It is the Examiner’s position that, because the second electrode material 150 comprises a plurality of particles suspended in a liquid electrolyte, and because the first electrode material is flat layer on the current collector (see Fig. 1 of Tatsuhiro), modified Chiang teaches that the second electrode material has a second surface area greater than the first surface area.
Chiang teaches that the second electrode material includes a semi-solid mixture of an active material and a conductive material in a liquid electrolyte (paragraph [0043]).
Replacing the carbon coating in the anode of Chiang with the multilayered silicon/graphene electrode structure of Tatsuhiro teaches the limitations of Claim 40, wherein the first electrode material (i.e. the graphene/silicon layered structure taught by Tatsuhiro) comprises a solid high-capacity electrode layer, corresponding to one of the silicon layers of the multilayered structure.
Replacing the carbon coating in the anode of Chiang with the multilayered silicon/graphene electrode structure of Tatsuhiro teaches the limitations of Claim 41, wherein the solid high-capacity electrode layer includes silicon.
In reference to Claim 42, Chiang teaches that the thickness of the second electrode layer 150 is 250-2000 microns (paragraph [0026]), and Tatsuhiro teaches that the thickness of the “first electrode layer” of the combination is 7 x (less than 50 nm) = less than 350 nm (paragraphs [0009] and [0027]).
Therefore, the combined thicknesses of the first and second electrode layers is ~250.35 microns-~2000.35 microns.
Therefore, modified Chiang teaches the limitations of Claim 42, wherein the first electrode material and the second electrode material have a combined thickness of 150-2000 microns.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I. In the instant case, the claimed range of “150-2,000 microns” overlaps with the taught range of ~250.35 microns-~2000.35 microns.
In reference to Claim 44, Chiang teaches that the thickness of the second electrode layer 150 is 250-2000 microns (paragraph [0026]), and Tatsuhiro teaches that the thickness of the “first electrode layer” of the combination is 7 x (less than 50 nm) = less than 350 nm (paragraphs [0009] and [0027]).
Therefore, the thickness of the first electrode material is from ~ 0.35 microns/~250.35 microns = 0.14% of the total thickness of the electrode to ~ 0.35 microns/~2000.35 microns = 0.017% of the total thickness of the first and second electrode layers, without considering the thickness of the current collector.
This disclosure teaches the limitations of Claim 44, wherein the first electrode material has a thickness that is less than about 10% of the total thickness of the electrode.
In reference to Claim 46, Chiang does not teach that the electrode necessarily comprises a lithium-containing material disposed between the first electrode material and the second electrode material.
However, he teaches that some of several materials suitable for use as the active material in the second electrode layer 150 includes lithium-intercalated carbon, and lithium-alloy-forming compounds of silicon (paragraph [0027]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used lithium-intercalated carbon or lithium-alloy-forming compounds of silicon as the active materials in layer 150, because Chiang teaches that these are suitable for use as the active materials of his layer 150.
Using lithium-intercalated carbon or lithium-alloy-forming compounds of silicon as the active materials in layer 150 teaches the limitations of Claim 46, wherein the electrode comprises a lithium-containing material (corresponding to a portion of the lithium-intercalated carbon or lithium alloy material of the active material disposed immediately adjacent to the “first electrode material”) disposed between the first electrode material and the second electrode material (which corresponds to the remainder of the “second electrode material” 150).
In reference to Claim 47, it is the Examiner’s position that, because the electrode comprises layers of different materials, and each material has its own theoretical energy density, modified Chiang teaches that the theoretical energy density changes across the thickness of the electrode.
In reference to Claim 64, it is noted that Claim 64 is indefinite, as described above. The following rejection represents the Examiner’s best understanding of the indefinite claim limitations.
Tatsuhiro teaches that the first electrode material (i.e. the graphene/silicon layered structure taught by Tatsuhiro) comprises a solid high-capacity electrode layer, corresponding to one of the silicon layers of the multilayered structure.
Chiang teaches that the second electrode layer 150 also includes the high-capacity electroactive material (i.e. silicon, Chiang, paragraph [0027]).
Chiang teaches that the amount of active material (i.e. the high-capacity electroactive material) in the “second electrode material” layer is 20-75 vol% (paragraph [0031]).
Fig. 3 of Tatsuhiro appears to teach that the volume of the high-capacity material (i.e. silicon) in the first electrode layer is ~50%.
Therefore, a volume percentage of the high-capacity electroactive material in the second electrode is about 50%-20% to 50%-75% = 30% less than to 25% more than a volume percentage of the high-capacity electroactive material in the first electrode.
Therefore, modified Chiang teaches the limitations of Claim 64, wherein a volume percentage of the high-capacity electroactive material in the second electrode is about 10-80% less than a volume percentage of the high-capacity electroactive material in the first electrode.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I. In the instant case, the claimed range of “10-80% less than” overlaps with the taught range of “30% less than to 25% more than.”
Claim 64 is rejected under 35 U.S.C. 103 as being unpatentable over Chiang, et al. (U.S. Patent Application Publication 2014/0170524 A1), in view of Tatsuhiro, et al. (U.S. Patent Application Publication 2015/0004494 A1), and further in view of Ishikawa, et al. (WO2019/131195 A1, with reference made to patent family document U.S. Patent Application Publication 2020/0365878 A1).
In reference to Claim 64, it is noted that Claim 64 is indefinite, as described above. The following rejection represents the Examiner’s best understanding of the indefinite claim limitations.
Tatsuhiro teaches that the first electrode material (i.e. the graphene/silicon layered structure taught by Tatsuhiro) comprises a solid high-capacity electrode layer, corresponding to one of the silicon layers of the multilayered structure.
Chiang teaches that the second electrode layer 150 also includes the high-capacity electroactive material (i.e. silicon, Chiang, paragraph [0027]).
Chiang teaches that the amount of active material (i.e. the high-capacity electroactive material) in the “second electrode material” layer is 20-75 vol% (paragraph [0031]).
Tatsuhiro does not explicitly teach that volume of the high-capacity material in the “first electrode” of the invention. Therefore, it is unclear whether modified Chiang as applied to Claim 39 teaches the ratio required by Claim 64.
To solve the same problem of providing a lithium battery comprising a solid anode with a silicon active material, Ishikawa teaches that the amount of the Si-containing high-capacity material in the solid electrode of his invention can be controlled, in order to mitigate volume changes of the electrode material during charging and discharging (paragraph [0040]).
Therefore, one of ordinary skill in the art at the time the instant invention was filed would have been motivated to tune the amount of the Si-containing high-capacity material in the “first electrode” layer of modified Chiang, in order to control the amount of volume change undergone in the first electrode layer during charging and discharging.
It is the Examiner’s position that one of ordinary skill in the art at the time the instant invention was filed would have arrived at the claimed volume ratio range recited in Claim 64, without undue experimentation.
Claims 39-48 are rejected under 35 U.S.C. 103 as being unpatentable over Chiang, et al. (U.S. Patent Application Publication 2014/0170524 A1), in view of Kim, et al. (U.S. Patent Application Publication 2010/0092868 A1).
In reference to Claim 39, Chiang teaches an electrode 120/150 (Fig. 1, paragraphs [0036]-[0101]).
The electrode of Chiang comprises a current collector, corresponding to the copper current collector described in paragraph [0038]).
The electrode of Chiang comprises a first electrode material disposed on the current collector and having a first surface area, corresponding to the carbon coating on the copper current collector, described in paragraph [0038]).
Chiang does not teach that the first electrode material includes an electroactive material and a conductive material.
Instead, he teaches that the first electrode material merely comprises a layer of carbon (paragraph [0038]).
To solve the same problem of providing an anode for a lithium battery, wherein the anode comprises a copper current collector, Kim teaches an anode for a lithium battery, wherein the anode comprises a copper current collector (as in Chiang) having a thickness of 100 microns and a composite layer with a thickness of 10 microns, comprising carbon-nanotube-coated silicon/copper particles in a binder (paragraph [0054]).
Kim further teaches that the anode of his invention provides the benefit of having decreased volumetric change during cycling, improved electrical conductivity, decreased SEI formation, high capacity, high output, and prolonged life (paragraphs [0008]-[0010]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have replaced the copper and carbon anode layers of Chiang with the copper current collector and composite electrode layer of Kim, because Kim teaches that the anode of his invention provides the benefit of having decreased volumetric change during cycling, improved electrical conductivity, decreased SEI formation, high capacity, high output, and prolonged life (paragraphs [0008]-[0010])..
Replacing the copper and carbon anode layers of Chiang with the copper current collector and composite electrode layer of Kim teaches the limitations of Claim 39, wherein the first electrode material comprises an electroactive material (i.e. the silicon) and a conductive material (i.e. the carbon nanotubes).
Replacing the copper and carbon anode layers of Chiang with the copper current collector and composite electrode layer of Kim teaches the limitations of Claim 48, wherein the first electrode material includes carbon nanotubes.
The electrode of Chiang comprises a second electrode material 150 disposed on the first electrode material. This “second electrode material” corresponds to the semi-solid electrode material 150, which is taught to comprise active materials and conductive materials suspended in a liquid electrolyte (paragraph [0043]).
It is the Examiner’s position that, because the second electrode material 150 comprises a plurality of particles suspended in a liquid electrolyte, and because the first electrode material is flat layer on the copper current collector (see paragraph [0054] of Kim), modified Chiang teaches that the second electrode material has a second surface area greater than the first surface area.
Chiang teaches that the second electrode material includes a semi-solid mixture of an active material and a conductive material in a liquid electrolyte (paragraph [0043]).
Replacing the copper and carbon anode layers of Chiang with the copper current collector and composite electrode layer of Kim teaches the limitations of Claim 40, wherein the first electrode material (i.e. the carbon nanotube/silicon/copper composite material taught by Kim) comprises a solid high-capacity electrode layer, because Kim teaches that the solid active layer of his invention is a high-capacity layer (paragraph [0009]) that includes silicon, which is a high-capacity material (paragraph [0054]).
Replacing the copper and carbon anode layers of Chiang with the copper current collector and composite electrode layer of Kim teaches the limitations of Claim 41, wherein the solid high-capacity electrode layer includes silicon (Kim, paragraph [0054]).
Replacing the copper and carbon anode layers of Chiang with the copper current collector and composite electrode layer of Kim teaches the limitations of Claim 43, wherein the first electrode material has a thickness between about 1-80 microns, i.e. 10 microns (Kim, paragraph [0054]).
In reference to Claim 42, Chiang teaches that the thickness of the second electrode layer 150 is 250-2000 microns (paragraph [0026]), and Kim teaches that the thickness of the “first electrode layer” of his invention is 10 microns (paragraph [0054]).
Therefore, the combined thicknesses of the first and second electrode layers is 260 microns-2010 microns.
Therefore, modified Chiang teaches the limitations of Claim 42, wherein the first electrode material and the second electrode material have a combined thickness of 150-2000 microns.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I. In the instant case, the claimed range of “150-2,000 microns” overlaps with the taught range of 260-2010 microns.
In reference to Claim 44, Chiang teaches that the thickness of the second electrode layer 150 is 250-2000 microns (paragraph [0026]), and Kim teaches that the thickness of the current collector is 100 microns, while the thickness of the “first electrode layer” is 10 microns (paragraph [0054]).
Therefore, the thickness of the first electrode material is from 10/(10+250+100) microns = 2.8% of the total thickness of the electrode to 10/(10+2000+100) microns = 0.47% of the electrode.
This disclosure teaches the limitations of Claim 44, wherein the first electrode material has a thickness that is less than about 10% of the total thickness of the electrode (i.e. 0.47-2.8%).
In reference to Claim 45, Chiang teaches that the thickness of the second electrode layer 150 is 250-2000 microns (paragraph [0026]), and Kim teaches that the thickness of the current collector is 100 microns, while the thickness of the “first electrode layer” is 10 microns (paragraph [0054]).
Therefore, the thickness of the second electrode material is from 2000 microns/(2000+10+100 microns) = 95% of the total thickness of the electrode to 250 microns/(250+10+100 microns) = 69% of the total thickness of the electrode.
This disclosure teaches the limitations of Claim 45, wherein the second electrode material has a thickness that is at last about 80% of the total thickness of the electrode (i.e. 69-95%).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I. In the instant case, the claimed range of “at least about 80%” overlaps with the taught range of 69-95%.
In reference to Claim 46, Chiang does not teach that the electrode necessarily comprises a lithium-containing material disposed between the first electrode material and the second electrode material.
However, he teaches that some of several materials suitable for use as the active material in the second electrode layer 150 includes lithium-intercalated carbon, and lithium-alloy-forming compounds of silicon (paragraph [0027]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used lithium-intercalated carbon or lithium-alloy-forming compounds of silicon as the active materials in layer 150, because Chiang teaches that these are suitable for use as the active materials of his layer 150.
Using lithium-intercalated carbon or lithium-alloy-forming compounds of silicon as the active materials in layer 150 teaches the limitations of Claim 46, wherein the electrode comprises a lithium-containing material (corresponding to a portion of the lithium-intercalated carbon or lithium allow material of the active material disposed immediately adjacent to the “first electrode material”) disposed between the first electrode material and the second electrode material (which corresponds to the remainder of the “second electrode material” 150).
In reference to Claim 47, it is the Examiner’s position that, because the electrode comprises layers of different materials, and each material has its own theoretical energy density, modified Chiang teaches that the theoretical energy density changes across the thickness of the electrode.
Claims 49-52 and 55-56 are rejected under 35 U.S.C. 103 as being unpatentable over Kim, et al. (U.S. Patent Application Publication 2010/0092868 A1), in view of Ota, et al. (U.S. Patent Application Publication 2016/0126543 A1).
In reference to Claim 49, Kim teaches an electrode (paragraphs [0053]-[0054]).
The electrode of Kim comprises a current collector, corresponding to the 100 micron-thick copper current collector described in paragraph [0054]).
The electrode of Kim comprises a first electrode layer having a solid composition, corresponding to the 10 micron-thick composite layer comprising carbon-nanotube-coated silicon/copper particles and other additives disposed in a binder (paragraph [0054]).
This first electrode layer includes a high-capacity electroactive material including silicon (paragraph [0054]).
The first electrode layer includes a binder (paragraph [0054]).
Kim does not teach that the electrode comprises the second electrode layer of Claim 49.
To solve the same problem of providing a lithium battery, Ota teaches a semi-solid anode material layer 150 (Fig. 1, paragraphs [0030]-[0032]) combined with a solid, carbon-containing anode material (corresponding to the carbon coating on current collector 120, described in paragraph [0027]).
Ota teaches that the semi-solid electrode material of his invention provides the benefit of (1) being thicker than traditional materials, (2) having higher loading of active materials than conventional electrodes, and (3) being simpler to manufacture than traditional electrodes (paragraph [0011]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have modified the electrode of Kim to include the semi-solid electrode layer of Ota, based on Ota’s disclosure of the benefits of the electrode of his invention.
Modifying the electrode of Kim to include the semi-solid electrode layer of Ota as a “second electrode layer” of his device teaches the limitations of Claim 49, wherein the electrode comprises a second electrode layer comprising a semi-solid electrode material including a mixture of an active material (paragraph [0030]) and a conductive material (paragraph [0031]) in a liquid electrolyte (paragraph [0031]).
Ota teaches that the thickness of the second electrode layer 150 is 250-2000 microns (paragraph [0011]). As described above, Kim teaches that the current collector of his invention has a thickness of 100 microns, and that the “first active material layer” has a thickness of 10 microns (paragraph [0054]).
Therefore, modified Kim teaches that the second electrode layer has a thickness of 2000 microns/(2000+10+100 microns) = 95% to 250 microns/(250+10+100 microns) = 69% of the total electrode thickness.
It is the Examiner’s position that this disclosure teaches the limitations of Claim 49, wherein the second electrode layer has a thickness of at least 97% of a total thickness of the electrode.
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 I.
In the instant case, the claimed range of “at least 97% of a total thickness of the electrode” does not overlap with, but is sufficiently close to the teachings of modified Kim (who teaches that the thickness range of the second active material layer is 69-95% of the total thickness of the electrode) to render this limitation obvious.
Alternatively, “a total thickness of the electrode” does not require that the “total thickness” be equal to the entirety of the thickness of all electrode layers, merely “a total thickness” of at least some layer(s) of the electrode.
Therefore, modified Kim teaches that the second electrode layer has a thickness of 2000 microns/(2000+10 microns) = 99.5% to 250 microns/(250+10 microns) = 96% of the total thickness of the first and second electrode layers.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I. In the instant case, the claimed range of “at least 97% of a total electrode thickness” overlaps with the taught range of 96-99.5%.
In reference to Claim 50, modified Kim teaches that the electrode is an anode (Kim, paragraph [0054], and Ota, paragraph [0030]) configured to allow intercalation or alloying of lithium ions in each of the first electrode layer and the second electrode layer of the electrode.
Kim teaches that silicon, which is within the “first electrode layer” is configured to allow intercalation of lithium ions (paragraph [0004]).
Ota teaches that the “second electrode layer” (corresponding to the semi-solid anode layer 150 of Ota) is configured to allow intercalation of lithium ions in the second electrode layer (paragraph [0015]).
In reference to Claim 51, Kim teaches that the capacity of the anode of his invention is 368-400 mAh/g (paragraph [0061]).
Ota teaches that the theoretical capacity for graphite is 372 mAh/g (paragraph [0043]).
Therefore, modified Kim teaches that the first electrode layer and the second electrode layer have a combined specific capacity of at least about 200 mAh/g.
In reference to Claim 52, Kim teaches that the first electrode layer has a thickness of 10 microns (paragraph [0054]).
Ota teaches that the thickness of the second electrode layer 150 is 250-2000 microns (paragraph [0011]).
Therefore, modified Kim teaches that the first electrode layer and the second electrode layer have a combined thickness between 260-2010 microns.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I. In the instant case, the claimed range of “between about 150 and 2,000 microns” overlaps with the taught range of 260-2010 microns.
In reference to Claim 55, modified Kim teaches that the first electrode layer is a solid layer and that the second electrode layer is a semi-solid electrode layer, as described in the rejection of Claim 49 above. Based on the instant specification, this structure is the structure required for the behavior recited in Claim 55. Therefore, it is the Examiner’s position that there is reasonable basis to conclude that the electrode of modified Kim is structurally capable of functioning as required by Claim 55.
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
In reference to Claim 56, Kim teaches that the first electrode layer includes carbon nanotubes (paragraph [0054]).
Claim 65 is rejected under 35 U.S.C. 103 as being unpatentable over Kim, et al. (U.S. Patent Application Publication 2010/0092868 A1), in view of Ota, et al. (U.S. Patent Application Publication 2016/0126543 A1), and further in view of Ishikawa, et al. (WO2019/131195 A1, with reference made to patent family document U.S. Patent Application Publication 2020/0365878 A1).
In reference to Claim 65, it is noted that Claim 65 is indefinite, as described above. The following rejection represents the Examiner’s best understanding of the indefinite claim limitations.
Ota teaches that the second electrode layer 150 also includes the high-capacity electroactive material (i.e. silicon, Ota, paragraph [0030]).
Ota teaches that the amount of active material (i.e. the high-capacity electroactive material) in the “second electrode material” layer is 20-90 vol% (paragraph [0036]).
Because the density of the silicon/copper composite particles in the “first electrode” of Kim is not reported, it is unclear whether modified Kim as applied to Claim 49 teaches the ratio required by Claim 65.
To solve the same problem of providing a lithium battery comprising a solid anode with a silicon active material, Ishikawa teaches that the amount of the Si-containing high-capacity material in the solid anode of his invention can be controlled, in order to mitigate volume changes of the anode during charging and discharging (paragraph [0040]).
Therefore, one of ordinary skill in the art at the time the instant invention was filed would have been motivated to tune the amount of the Si-containing high-capacity material in the first electrode layer of modified Kim, in order to control the amount of volume change undergone in the first electrode layer during charging and discharging.
It is the Examiner’s position that one of ordinary skill in the art at the time the instant invention was filed would have arrived at the claimed volume ratio range recited in Claim 65, without undue experimentation.
Claims 57-58 and 60-63 are rejected under 35 U.S.C. 103 as being unpatentable over Chen, et al. (U.S. Patent Application Publication 2013/0224603 A1), in view of Ota, et al. (U.S. Patent Application Publication 2016/0126543 A1), and further as evidenced by Lewis, et al. (U.S. Patent Application Publication 2010/0122816 A1).
In reference to Claim 57, Chen teaches an electrode, comprising a mixture of graphene oxide, SnO2 particles (paragraphs [0123]-[0124]), and acetylene black in a PVDF binder (paragraph [0117]), disposed on a copper foil (paragraph [0117]), and further comprising a lithium foil layer disposed over the composite layer (paragraph [0119]). This structure is shown in Fig. 3A, and is described as “Example 5,” paragraphs [0123]-[0125], with additional details given in paragraphs [0117] and [0119].
The electrode of Chen comprises a current collector, corresponding to the Cu current collector (Fig. 3A, paragraph [0117]).
The electrode of Chen comprises a first electrode layer disposed on the current collector, corresponding to the SnO2/graphene oxide/binder composition (paragraphs [0117] and [0123]-[0124]).
The density of SnO2 is 6.85 g/cm3, the density of PVDF is 1.78 g/cm3, and the density of acetylene black is 1.8-2.1 g/cm3 Therefore, the first density of the first electrode layer (which comprises 85 wt% SnO2, 7 wt% acetylene black, and 8 wt% PVDF (paragraph [0117]) is ~6.09-6.1 g/cm3.
Chen does not teach that the electrode comprises the second electrode layer of Claim 57.
To solve the same problem of providing a lithium battery, Ota teaches a semi-solid anode material layer 150 (Fig. 1, paragraphs [0030]-[0032]) combined with a solid, carbon-containing anode material (corresponding to the carbon coating on current collector 120, described in paragraph [0027]).
Ota teaches that the semi-solid electrode material of his invention provides the benefit of (1) being thicker than traditional materials, (2) having higher loading of active materials than conventional electrodes, and (3) being simpler to manufacture than traditional electrodes (paragraph [0011]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have modified the electrode of Chen to include the semi-solid electrode layer of Ota, based on Ota’s disclosure of the benefits of the electrode of his invention.
Modifying the electrode of Chen to include the semi-solid electrode layer of Ota as a “second electrode layer” of his device teaches the limitations of Claim 57, wherein the electrode comprises a second electrode layer comprising a semi-solid electrode material including a mixture of an active material (paragraph [0030]) and a conductive material (paragraph [0031]) in a liquid electrolyte (comprising ethylene carbonate, paragraph [0031]).
Evidentiary reference Lewis teaches that the density of ethylene carbonate is 1.338 g/cm3 (paragraph [0020]).
Therefore, modified Chen teaches that the second electrode layer has a second density (i.e. the density of ethylene carbonate, 1.338 g/cm3) different than the first density (i.e. ~6.09-6.1 g/cm3).
Chen teaches that a lithium foil layer is disposed directly on the “first electrode layer” (Fig. 3A, paragraph [0119]).
Therefore, modified Chen teaches that the electrode comprises a third electrode layer (i.e. the lithium foil of Chen) between the first electrode layer and the second electrode layer, the third electrode layer comprising lithium.
In reference to Claim 58, Chen teaches that the first electrode layer includes a high-capacity material, SnO2, wherein the high-capacity material includes tin (paragraphs [0123]-[0124]).
In reference to Claim 60, Chen teaches that the electrode of his invention (which comprises the first and second electrode layers, as described in the rejection of Claim 57 above) is incorporated into a lithium-ion battery (paragraph [0119]).
Chen teaches that the “first electrode layer” is configured to allow intercalation of lithium ions in the first electrode layer (paragraph [0052]).
Ota teaches that the “second electrode layer” (corresponding to the semi-solid anode layer 150 of Ota) is configured to allow intercalation of lithium ions in the second electrode layer (paragraph [0015]).
In reference to Claim 61, Chen teaches that the capacity of the active material in the first electrode layer is 1200 mAh/g (paragraph [0125]).
Ota further teaches that the high-capacity material of his semi-solid anode is pre-lithiated silicon, with a capacity of 4212 mAh/g (paragraph [0044]).
Therefore, modified Chen teaches the limitations of Claim 61, wherein the first electrode layer and the second electrode layer have a combined specific capacity of at least about 200 mAh/g.
In reference to Claim 62, Chen teaches that the first electrode layer has a thickness of less than 100 microns (paragraph [0084]).
Ota teaches that the thickness of the second electrode layer 150 is 250-2000 microns (paragraph [0011]).
Therefore, modified Chen teaches that the first electrode layer and the second electrode layer have a combined thickness between <250-2100 microns.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I. In the instant case, the claimed range of “between about 150 and 2,000 microns” overlaps with the taught range of <250-2100 microns.
In reference to Claim 63, Chen teaches that the first electrode layer includes graphene oxide (paragraphs [0123]-[0124]).
This disclosure teaches the limitations of Claim 63, wherein the first electrode layer includes graphene sheets, because graphene oxide refers to partially oxidized graphene sheets.
Claim 59 is rejected under 35 U.S.C. 103 as being unpatentable over Chen, et al. (U.S. Patent Application Publication 2013/0224603 A1), in view of Ota, et al. (U.S. Patent Application Publication 2016/0126543 A1), and as evidenced by Lewis, et al. (U.S. Patent Application Publication 2010/0122816 A1), and further in view of Ishikawa, et al. (WO2019/131195 A1, with reference made to patent family document U.S. Patent Application Publication 2020/0365878 A1), in view of Ota, et al. (U.S. Patent Application Publication 2016/0126543 A1) and as evidenced by Zhamu, et al. (U.S. Patent Application Publication 2016/0043384 A1).
In reference to Claim 59, modified Chen as applied to Claim 57 does not teach that the first electrode layer includes about 10% to about 20% by volume of the high-capacity material.
However, evidentiary reference Zhamu teaches that SnO2 (the high-capacity material in the first electrode material of Chen) undergoes volume expansion of 200% upon intercalating Li (paragraph [0091]).
To solve the same problem of providing an anode for a lithium battery, wherein the anode comprises a high-capacity material that undergoes volume expansion upon Li intercalation and a conductive carbon material (as in Chen), Ishikawa teaches that the that the ratio of the carbon material to the high-capacity material in such an anode should be controlled, in order to mitigate volume changes within the electrode during charging and discharging (paragraph [0040]).
Therefore, one of ordinary skill in the art at the time the instant invention was filed would have been motivated to tune the amount of high-capacity material in the electrode of modified Chen, in order to control the amount of volume change undergone in the first electrode layer during charging and discharging.
It is the Examiner’s position that one of ordinary skill in the art at the time the instant invention was filed would have arrived at the claimed range recited in Claim 59, without undue experimentation.
Response to Arguments
Applicant’s arguments with respect to the prior art rejections of the claims presented in the final office action of 7/25/2025 have been fully considered and are persuasive. Therefore, these rejections have been withdrawn. However, upon further consideration, new grounds of rejection are presented herein.
Conclusion
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/SADIE WHITE/Primary Examiner, Art Unit 1721