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 .
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) 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 3627516 (Mifuji).
Regarding claims 1 and 5, Mifuji discloses a lithium-ion secondary battery using a positive electrode, a negative electrode, and a non-aqueous electrolyte having an active material capable of storing and releasing lithium reversibly [abstract, 0018]. The negative electrode comprises silicon or silicon-based alloy as an active material in the form of a powder [0018, 0060], graphite powder as a conductive agent, and Teflon as a binder [0041, 0063, Example 3] and formed into a paste. The mixture was applied to a copper foil to obtain a negative electrode (12) [0063]. Regarding claims 2-4, the graphite powder is a conductive agent. Regarding claim 6, the active material powder may be Si powder which is considered to be 100% silicon as no other materials are disclosed to be present with the silicon powder [0060]. Regarding claim 7, the silicon may be polycrystal or amorphous [0012]. The limitation of “for use” recited in the preamble is considered intended use and does not provide a structural distinction to the claimed subject matter. The electrode of Mifuji is expected to be capable of functioning as an anode of a proton conductive secondary battery as it contains the same materials claimed.
Claim(s) 1-5, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 10-2007-0069306 (Hong).
Regarding claims 1-5, Hong discloses fabricating a negative electrode comprising mixing nano-sized active materials (powder), a conductive material (carbon black or graphite) and a binder (PVDF) to form a paste (abstract, pages 3 and 5, Examples 1 and 7). The powder may be selected from a group including tin and silicon (abstract). The limitation of “for use” recited in the preamble is considered intended use and does not provide a structural distinction to the claimed subject matter. The electrode of Hong is expected to be capable of functioning as an anode of a proton conductive secondary battery as it contains the same materials claimed.
Regarding the term “predominant”, the term is not specifically defined, thus the broadest reasonable interpretation must be taken. Here, the term “predominant” is understood to mean the element (group 14) is present in an amount higher than other active materials. Hong discloses that copper may be present as part of the active material in an amount of 5-35wt% of the negative active material. The remaining 65-95wt% is considered “predominant”.
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) 1-8 are rejected under 35 U.S.C. 103 as obvious over EP3292578A4 (Young) in view of KR 10-2007-0069306 (Hong) OR JP 3627516 (Mifuji).
Young discloses a rechargeable cell (battery) comprising negative hydrogen storage electrodes based on one or more group IV elements, for instance based on Si [0008]. The hydrogen storage materials include alloys of silicon, for example alloys of silicon with one or more of carbon, germanium and tin. For instance, amorphous alloys of silicon and carbon (amorphous silicon carbide) or alloys of silicon and germanium or alloys of silicon and tin [0025]. The anode (negative electrode) may further comprise binders and/or conductive materials [0032]. The negative electrode may include greater than 90wt% of the group IV element, and in considered predominant [0036].
Regarding the limitation of “paste” in the preamble, this limitation is considered a product by process limitation and it is not clear how the final product of Young which comprises a binder, conductive material and active material of a Group IV (i.e. Group 14) element differs from the claimed electrode. Regarding the active material being present as a powder, it is known to form an anode made of a Group IV element (Si or Sn in the form of a powder), a conductive material (carbon black), and a binder by forming a paste as demonstrated by Hong OR Mifuji. Young does not limit the manner in which the anode having a mixture of binder and conductive materials are formed but does state that the anode assemblies may include these mixtures in adherence to a current collector such as a metal foil substrate [0032]. Likewise, both Hong and Mifuji disclose applying the paste to a copper foil to form the electrode, thus demonstrating that it is known in the art how to form an electrode on a metal foil using a mixture of materials similar to that of Young. Thus, one of ordinary skill in the art would have found it obvious to form the electrode of Young of a mixture of a powder form of the Group IV element and a binder and/or conductive material in the manner disclosed by Hong OR Mifuji where the materials form a paste for application to a metal foil with a reasonable expectation of forming an anode that is useful in an electrochemical cell as demonstrated by Hong OR Mifuji.
Regarding claims 2 -4, the conductive material of Young may be carbon black or graphite [0034].
Regarding claims 5 and 6, as stated above, Young discloses silicon and that the hydrogen storage material may be silicon which is considered 100% silicon [0021].
Regarding claim 7, Young discloses that the silicon may be polycrystalline, nanocrystalline or amorphous [0021].
Regarding claim 8, Young discloses the anode, a cathode comprising a nickel hydroxide [0038] which is the same material used by applicant (Examples) and is expected to possess the same property of being capable of absorbing and desorbing hydrogen. Young discloses a non-aqueous electrolyte between the cathode and anode [0113].
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2007-0069306 (Hong).
Hong discloses fabricating a negative electrode comprising mixing nano-sized active materials (powder), a conductive material (carbon black or graphite) and a binder (PVDF) to form a paste (abstract, pages 3 and 5, Examples 1 and 7) as discussed above. The negative electrode material may be silicon or tin and copper may be added in amounts of 5-35wt% of the negative electrode material. This amount of copper overlaps the claimed range of active material powder of silicon is 80wt% or more by weight. It would have been obvious to use silicon as suggested by Hong and with amounts that fall within the range claimed as the wt% of Hong overlaps the claimed range and provides a prima facie case for overlap.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1723
/Jennifer McNeil/Primary Examiner, Art Unit 1723
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