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 I, claims 1-6, in the reply filed on 15 June 2026, is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6 and 7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 15 June 2026.
Claim Rejections - 35 USC § 103
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.
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.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2017/0021416, previously cited).
Claim 1: Park teaches a three-dimensional metal foam structure with an oxide material coating for use as the anode of a lithium-ion battery (paragraph 0008). The metal foam current collector can be made of at least one of titanium, etc. (paragraph 0013) and the active oxide material is formed on a surface of the porous metal foam current collector and may be a material of at least one of TiO2, etc. (paragraph 0012). Forming the metal foam includes freezing a metal slurry (i.e. a suspension of metal powder particles), forming a porous green-body, and sintering the porous green-body (paragraph 0010) (i.e. the metal foam current collector of titanium is a substrate main body made of a sintered titanium particle body). After sintering, an anatase oxidation layer is formed by oxidizing in an air furnace (paragraph 017) (i.e. a titanium oxide film formed on the substrate main body). The disclosure of an anatase oxidation layer by oxidizing the titanium foam (paragraph 0059) is considered to teach where anatase is the predominant crystal structure of the TiO2, which is supported by Fig. 5 showing XRD peaks only corresponding to titanium and anatase TiO2 (i.e. a proportion of anatase titanium oxide among titanium oxide constituting the titanium oxide film is substantially 100%). This proportion overlaps the instantly claimed proportion and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
While not teaching a singular example of the instantly claimed titanium substrate, it would have been obvious to one of ordinary skill in the art before the effective filing date for the anatase oxidation layer (i.e. the titanium oxide constituting the titanium oxide film) to be substantially all anatase as indicated by the XRD peaks and the teaching of the film being anatase, and one would have had a reasonable expectation of success.
Claim 2: Park teaches that the metal foam structure (i.e. the titanium substrate material as outlined above) is a porous metal foam with pore size ranging from several nanometers to several hundred microns (paragraph 0040) and show an SEM micrograph of a titanium foam with titanium oxide layer formed on the surface in Fig. 4. Park does not quantify the porosity, but based on the description and the SEM micrograph, one of ordinary skill in the art would expect the porosity to overlap the instantly claimed range. See MPEP § 2144.05. Furthermore, the courts have held that the identification and characterization of a prior art material does not make it novel. See MPEP § 2112(I).
Claim 3: The compressive strength of a material is inversely proportional to the porosity (i.e. more material results in greater strength). Since Park teaches a metal foam structure of titanium (i.e. substantially identical material) and having a substantially identical porosity as outlined above regarding claim 2, then the compressive strength is also considered to overlap the instantly claimed range. See MPEP § 2144.05. Furthermore, the courts have held that the identification and characterization of a prior art material does not make it novel. See MPEP § 2112(I).
Claim 4: The specific area of the titanium substrate material is proportional to the porosity. Since Park teaches a metal foam structure of titanium (i.e. substantially identical material) and having a substantially identical porosity as outlined above regarding claim 2, then the specific area is also considered to overlap the instantly claimed range. See MPEP § 2144.05. Furthermore, the courts have held that the identification and characterization of a prior art material does not make it novel. See MPEP § 2112(I).
Claim 5: Park does not specifically teach a thickness of the titanium oxide film. However, since Park teaches that the anatase oxidation layer (i.e. the titanium oxide film) is formed by oxidizing in an air furnace (paragraph 017), it would be within the level of ordinary skill in the art to adjust the thickness of the oxide film through routine experimentation (i.e. varying time, temperature, and source of oxygen, and especially by varying time of oxidation process) while maintaining desired functions necessary for use as the anode of a lithium-ion battery (i.e. Park teaches this use in paragraph 0008), and one would have had a reasonable expectation of success. See MPEP § 2144.05(II).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wada et al. (US 2008/0090719, previously cited) discloses a relationship of porosity and compression strength for spongy sintered articles of titanium alloy.
Takahashi et al. (2020/0276570) teaches that anatase-type crystalline titanium oxide has a nobler energy level of the conduction band than that of rutile-type titanium oxide and therefore has a higher photocatalytic activity and improved open-circuit voltage value.
Sano et al. (US 2020/0407858, previously cited) teaches a titanium base material and a titanium oxide film formed on a surface of the base material body. The film thickness is 0.1-30 µm to secure a balance of corrosion resistance and conductivity. The titanium base material body has a porosity of 30-97% to balance a large specific surface area which promotes reaction and to secure the strength of the base material body. This disclosure provides specific details and rationale for the titanium base material body, but discloses a preference for Magneli phase titanium oxide instead of anatase titanium oxide.
Masahashi et al. (JP 2009-215621, previously cited, machine translation of description attached) teaches anatase-type titanium dioxide coating on a titanium substrate by using an anodic oxidation method in sulfuric acid (paragraphs 0010-0011). Masahashi teaches that anatase phase is superior to the rutile phase in photocatalytic performance (paragraph 0010), and the titanium dioxide so obtained typically contains 90% or more of anatase-type titanium dioxide (paragraph 0028). The titanium substrate may have any shape, such as a porous shape (paragraph 0016). However, Masahashi does not indicate the thickness of the titanium dioxide coating or provide details of the substrate (e.g. porosity, specific area, and compressive strength).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIM S. HORGER/Examiner, Art Unit 1784
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