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 .
This is in response to the Amendment dated July 21, 2026. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Amendment
Claim Rejections - 35 USC § 103
I. Claim(s) 1, 3, 5 and 7 stand rejected under 35 U.S.C. 103 as being unpatentable over JP 2019-105637 (‘637) in view of EP 1798790 (‘790) and TW M554393 (‘393).
Regarding claim 1, JP ‘637 teaches an electrode (= the electrode film 1) [ρ [0023]],
comprising:
• a resin film (= examples of the flexible substrate 2 include polymer films and examples
of polymer film materials include polyester resins) [ρ [0025]],
• a metal underlayer (= specifically, examples of functional layer 3 include an inorganic layer (ρ [0035]) and examples of inorganic layers include metal layers (ρ [0036])), and
• a conductive carbon layer (= the conductive carbon layer 4) [ρ [0049]] in sequence in a thickness direction (= specifically, as shown in Figure 1, the electrode film 1 comprises a flexible substrate 2, a functional layer 3 positioned on the upper side (one side in the thickness direction) of the flexible substrate 2, and a conductive carbon layer 4 positioned on the upper
side of the functional layer 3) [ρ [0023]; and Fig. 1:
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],
wherein a surface of the conductive carbon layer has an arithmetic average roughness Ra of 1.50 nm or less (= the surface roughness Ra of the conductive carbon layer 4 (i.e., the upper surface of the electrode film 1) in the electrode film 1 is preferably 2.0 nm or less) [ρ [0083]].
JP ‘637 does not explicitly teach wherein a surface of the conductive carbon layer has a skewness Rsk of 0.00 or more.
EP ‘790 teaches that:
Fig. 1 is an explanatory diagram of skewness, and is a diagram showing the relationship
between the surface roughness curve and the probability density function, where A represents the surface roughness curve in which valley portions are wider than peak portions, and B represents the surface roughness curve in which peak portions are wider than valley portions (ρ [0012]; and Fig. 1:
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606
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).
TW ‘393 teaches that:
Please refer to Figure 7. In this embodiment, since the electrode layer 212 has a uniformly rough microstructure formed by multiple protrusions P evenly distributed on its surface at the position corresponding to the polishing area S1, although the charge will accumulate at each protrusion P, the charge is evenly distributed on the protrusions P evenly distributed on the surface of the electrode layer 212 as a whole. Therefore, the charge in the electrode layer 212 can be effectively evenly distributed as a whole (ρ [00064]; and Fig.7:
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).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify a surface of the conductive carbon layer taught by JP ‘637 with wherein a surface of the conductive carbon layer has a skewness Rsk of
0.00 or more. The person with ordinary skill in the art would have been motivated to make this modification because an electrode surface having a skewness of Rsk >0 would have had a
uniformly rough microstructure formed by multiple protrusions where valley portions are wider than peak portions evenly distributed on its surface as shown by EP ‘790 in Fig. 1(A) which would have accumulated the charge at each protrusion as taught by TW ‘393 in [0064] and Fig. 7 where the charge in the electrode layer can be effectively evenly distributed as a whole.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing
more than predictable results.
Regarding claim 3, JP ‘637 teaches wherein the metal is titanium (= preferably, the metal layer is a titanium layer) [ρ [0037]].
Regarding claim 5, JP ‘637 teaches the electrode being an electrode for electrochemical measurement (= an electrode film, which is an electrode for electrochemical measurement) [ρ [0016]].
Regarding claim 7, JP ‘637 teaches the electrode being an electrode for electrochemical measurement (= an electrode film, which is an electrode for electrochemical measurement) [ρ [0016]].
II. Claim(s) 2, 4, 6 and 8 stand rejected under 35 U.S.C. 103 as being unpatentable over JP
2019-105637 (‘637) in view of EP 1798790 (‘790) and TW M554393 (‘393) as applied to claims 1, 3, 5 and 7 above, and further in view of WO 2010/004690 (‘690).
Regarding claim 2, JP ‘637, EP ‘790 and TW ‘393 teach the electrode of at least claims 1, 3, 5 and 7 as applied above. The references do not teach wherein the conductive carbon layer comprises metal, the metal is in a proportion of 5% by mass or more and 50% by mass or less
relative to the conductive carbon layer.
WO ‘690 teaches that:
Furthermore, the carbon film 3 may contain elements other than carbon. The
conductivity of carbon film 3 is improved by including elements other than carbon. Furthermore, hardness and chemical resistance are improved. These elements can include all elements commonly used in doping, as well as metallic elements. Examples include Cr, Ti, Si, N, B, Ar, Au, Pt, Cu, Ag, Fe, S, P, and H (pages 11-12, bridging paragraph).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the conductive carbon layer taught by JP ‘637 with wherein the conductive carbon layer comprises metal. The person with ordinary skill in the art would have been motivated to make this modification because including metallic elements such as Cr, Ti, Si, N, B, Ar, Au, Pt, Cu, Ag and Fe in the carbon film would have improved the conductivity of the carbon film as taught by WO ‘690 on pages 11-12, bridging paragraph.
As to “the metal is in a proportion of 5% by mass or more and 50% by mass or less relative to the conductive carbon layer,” considering that WO ‘690 is silent as to the specific concentration of the metallic elements in the carbon film, and hence could vary in a wide range, it would have been obvious to one having ordinary skill in the art to have optimized the
concentration of the metallic elements in the carbon film through routine experimentation for best results. As to optimization of results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness (MPEP § 2144.05).
MPEP § 2144.05(II)(A)) states that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
Regarding claim 4, JP ‘637 teaches wherein the metal is titanium (= preferably, the metal layer is a titanium layer) [ρ [0037]].
Regarding claim 6, JP ‘637 teaches the electrode being an electrode for electrochemical measurement (= an electrode film, which is an electrode for electrochemical measurement) [ρ [0016]].
Regarding claim 8, JP ‘637 teaches the electrode being an electrode for electrochemical measurement (= an electrode film, which is an electrode for electrochemical measurement) [ρ [0016]].
Response to Arguments
Applicant’s arguments filed July 21, 2026 have been fully considered but they are not persuasive. The standing prior art rejections have been maintained for the following reasons:
• Applicant states that EP ‘790 does not teach or suggest the claimed positive skewness.
In response, EP ‘790 does teach a positive skewness (=
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)
[Fig. 1A].
The disclosure of reference must be considered for what it fairly teaches one of ordinary skill in the art, pertinence of non-preferred disclosure must be reviewed in such light. In re Meinhardt 157 USPQ 270; and MPEP § 2123 and § 2141.02(VI).
All disclosures of the prior art, including non-preferred embodiments, must be considered, In re Lamberti and Konort, 192 USPQ 278 (CCPA 1967). All disclosure in the prior art, not just specific examples, must be evaluated for what it fairly teaches those of ordinary skill in the art, In re Snow and Steinhards,176 USPQ, 328, 329 (CCPA 1973). Non-preferred embodiments can be indicative of obviousness, see Merck & Co. v. Biocraft Laboratories Inc. 10 USPQ 2d 1843 (Fed. Cir. 1989); In re Lamberti, 192 USPQ 278 (CCPA 1976); In re Kohler, 177 USPQ 399.
• Applicant states that the Office builds the “skewness Rsk of 0.00 or more” limitation from EP ‘790 Fig. 1(A) and TW ‘393 (see Office Action, pp. 4-5), but neither reference discloses an electrode surface having a positive skewness (Rsk greater than 0).
In response, there is no requirement that the presently claimed features be expressly articulated in one or more of the references. The teaching, suggestion or inference can be found not only in the references but also from knowledge generally available to one of ordinary skill in the art. Ashland Oil v. Delta Resins 227 USPQ 657 (CAFC 1985). The test for combining references is what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. In re McLaughlin 170 USPQ 209 (CCPA 1971); In re Rosselet 146 USPQ 183 (CCPA 1960). References are evaluated by what they collectively suggest to one versed in the art, rather than by their specific disclosures. In re Simon 174 USPQ 114 (CCPA 1972); In re Richman 165 USPQ 509, 514 (CCPA 1970).
EP ‘790 teaches that:
The skewness (Rsk) represents the asymmetry of the surface roughness curve. An example thereof will be described below with reference to Fig. 1 (ρ [0031]).
With respect to the roughness curve in which valley portions are wider than peak portions, as shown in Fig. 1 A, the distribution form of the probability density function is leaning to the valley side. As this tendency is significant, the skewness takes on a large positive value. Conversely, with respect to the roughness curve in which peak portions are wider than valley portions, as shown in Fig. 1 B, the distribution form of the probability density function is leaning to the peak side, and the skewness takes on a large negative value (ρ [0032]).
TW ‘393 teaches that:
Please refer to Figure 7. In this embodiment, since the electrode layer 212 has a uniformly rough microstructure formed by multiple protrusions P evenly distributed on its surface at the position corresponding to the polishing area S1, although the charge will accumulate at each protrusion P, the charge is evenly distributed on the protrusions P evenly distributed on the surface of the electrode layer 212 as a whole. Therefore, the charge in the electrode layer 212 can be effectively evenly distributed as a whole (ρ [00064]).
One having ordinary skill in the art would have had the skill and/or knowledge that making an electrode layer to have a roughness in which valley portions are wider than peak portions, in which the skewness takes on a large positive value, would have provided an evenly distributed charge on the surface of the electrode layer as a whole which would have minimized local field effects, e.g., “hot spots”.
• Applicant states that therefore, the applied references provide no teaching, suggestion, or reason to configure the conductive carbon layer of JP ‘637 to have a positive skewness (Rsk greater than 0), and that feature is supplied only by impermissible reconstruction from claim 1 itself.
• Applicant state that because EP ‘790 directs a person of ordinary skill in the art toward a negative skewness for its electrode, EP ‘790’s teachings undermine the very reason proffered
for configuring the conductive carbon layer of JP ‘637 to have a positive skewness.
In response, there is no requirement that the presently claimed features be expressly articulated in one or more of the references. The teaching, suggestion or inference can be found not only in the references but also from knowledge generally available to one of ordinary skill in the art. Ashland Oil v. Delta Resins 227 USPQ 657 (CAFC 1985). The test for combining references is what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. In re McLaughlin 170 USPQ 209 (CCPA 1971); In re Rosselet 146 USPQ 183 (CCPA 1960). References are evaluated by what they collectively suggest to one versed in the art, rather than by their specific disclosures. In re Simon 174 USPQ 114 (CCPA 1972); In re Richman 165 USPQ 509, 514 (CCPA 1970).
As evidenced by Sharifi-viand et al. (“Determination of Fractal Rough Surface of Polypyrrole Film: AFM and Electrochemical Analysis,” Synthetic Metals (2014 May 1), Vol. 191,
pp. 104-112),
Cyclic voltammograms of PPy thin films are shown in Figure 9 showing an oxidation peak around 0.3 V. Calomel reference electrode (due to oxidation of polymer chains). At the same scan rate, the peak current of the high temperature (rough surface) synthesized film is greater than the low temperature synthesized film, so it can be concluded that the rough surface (greater surface area) film has a greater electrochemical capacitance (equivalent to “greater skewness electrochemical capacitance”).
As can be seen in conjunction with Figure 9, the larger the skewness of the sample has a larger redox potential difference in the cyclic voltammetry curve (equivalent to “the larger the skewness increases the signal intensity and decreases the signal intensity can be suppressed”).
As such, the technical solution of suppressing the decrease in signal strength by increasing skewness has been disclosed by Sharifi-viand et al., and the technical feature has the same role in Sharifi-viand et al. as it has in the present application for increasing the signal strength of the electrode. That is, Sharifi-viand et al. give technical implication of suppressing the
decrease in signal strength by increasing skewness, so that it is motivated by those skilled in the art to apply
the technical features in Sharifi-viand et al. to JP ‘637 to further solve the technical problem thereof.1
• Applicant states that the Office’s proffered reason that a surface with Rsk greater than 0 would evenly distribute charge as described by TW '393 reflects impermissible hindsight.
In response to Applicant’s argument that the Examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
• Applicant states that that is, EP ‘790 associates skewness with resistance to crushing of the negative electrode material and with rate performance of a nonaqueous secondary battery, not with noise or with signal intensity.
• Applicant states that therefore, skewness was not recognized in the applied art as a result-effective variable for suppressing noise or suppressing a decrease in signal intensity.
• Applicant states that a person having ordinary skill in the art who referred to EP ‘790 and TW ‘393 would not have recognized the problem concerning signal intensity, and thus would not
have arrived at the idea of employing the structure having a skewness Rsk of 0.00 or more in JP ‘637 to suppress a decrease in signal intensity.
In response, the electrode claims cover what the device is, not what a device does. A product claim may be obvious even if it operates in a different way as the prior art, as long as there are structural differences.
Furthermore, the Applicant has a different reason for, or advantage, resulting from
doing what the prior art relied upon has suggested, it is noted that it is well settled that this is not demonstrative of nonobviousness. The prior art motivation or advantage may be different than that of Applicant’s while still supporting a conclusion of obviousness (MPEP § 2144).
• Applicant states that the objectives pursued by EP ‘790 (improving rate performance
of a secondary battery) and by TW ‘393 (evenly distributing charge for polishing efficiency) have
no application to the electrode film for electrochemical measurement of JP ‘637. JP ‘637 makes no mention of a negative electrode material of a secondary battery or a polisher, and there is no rational reason to import the skewness-related teachings of EP ‘790 or the charge-distribution teachings of TW ‘393 into JP ‘637.
• Applicant state that there is no rational reason to import TW ‘393’s charge-distribution teaching into JP ‘637, which is directed to an electrode film for electrochemical measurement.
In response, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather,
the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
• Applicant states that even if a person of ordinary skill in the art had combined the references, that person would not have expected the surface behavior demonstrated at the much coarser electrode surfaces of EP ‘790 and TW ‘393 to carry over to the nanometer-scale
conductive carbon layer of JP ‘637, and thus would not have had a reasonable expectation that applying a skewness Rsk of 0.00 or more would achieve any benefit in JP ‘637.
In response, the Applicant has a different reason for, or advantage, resulting from
doing what the prior art relied upon has suggested, it is noted that it is well settled that this is not demonstrative of nonobviousness. The prior art motivation or advantage may be different than that of Applicant’s while still supporting a conclusion of obviousness (MPEP § 2144).
Furthermore, inoperativeness of a reference is not established by merely showing that a particular disclosed embodiment is lacking in perfection does not establish nonobviousness. Ex parte Allen 2 USPQ 2d 1425 (BPAI 19870; Decca Ltd. V. United States 191 USPQ 439 (Ct. Cl. 1976); Bennett v. Halahan 128 USPQ 398, 401 (CCPA 1961).
• Applicant states that moreover, the skewness Rsk of 0.00 or more recited by claim 1 suppresses a decrease in signal intensity by a mechanism unrelated to charge distribution, namely that the positive skewness provides steep and sparse protrusions with wider recessed portions that hold a larger amount of measurement target substance so that the substance is measured with good
sensitivity (see original specification, para. [0032]).
In response, the fact that the Applicant has recognized another advantage which would
flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
MPEP § 2144(IV) states that “the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different
problem. It is not necessary that the prior art suggest the combination to achieve the same
advantage or result discovered by applicant.”
• Applicant state that these results demonstrate that the combination of “an arithmetic average roughness Ra of 1.50 nm or less” and “a skewness Rsk of 0.00 or more,” as recited by claim 1, produces unexpected results that are not predictable from the applied art. The Office relied on the rationale that combining known elements yields predictable results (see Office Action, p. 5); the results in Table 1, which cross from failing to satisfying both the noise criterion and the signal-intensity criterion, refute that predictability, and the Office’s predictable-results rationale therefore fails. See MPEP § 2144.05(III)(A).
In response, the data present is not commensurate in scope with the claims. The data only presented for a specific resin film and metal underlayer (see Applicant’s specification, Examples 1-3) where the resin film was made of polyethylene terephthalate (PET) and the metal underlayer was made of titanium.
In contrast, the claims are directed to a far broader range of types and conditions. For example, the claim is directed to a resin film. However, the data presented in the specification is only for resin film was made of polyethylene terephthalate (PET). Thus, it is unclear if the data would be the same across the full claimed ranged. For at least these reasons, the data presented is not commensurate in scope with the far more broadly claimed electrode.
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 EDNA WONG whose telephone number is (571) 272-1349. The examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDNA WONG/Primary Examiner, Art Unit 1795
1 Review opinions from the Office Action issued on March 26, 2026 for the corresponding Chinese Patent Application No. 202180066766.8, along with an English translation (15 pages), recited in Applicant’s IDS filed on May 28, 2026.
Prosecution Insights