DETAILED CORRESPONDENCE
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f), which papers have been placed of record in the file.
Information Disclosure Statement
3. Information disclosure statement (IDS) submitted 12/26/2023 has been received and considered by the examiner.
Claim Interpretation
4. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
5. The claims are directed to “a negative electrode structure of an aluminum battery” but there is nothing in the claims that requires anything specific to a negative electrode (as opposed to a positive electrode) and there is nothing in the claims that requires an aluminum battery. The claims are reasonably interpreted as being directed to a metal substrate having bumps and holes (although prior art directed to battery electrodes is relied upon below).
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
6. Claim 1-7 and 9-10 are rejected under 35 U.S.C. 103 as being obvious over Brewer US PG Publication 2021/0057757 as evidenced by https://www.engineering.com/how-to-make-any-battery-a-3d-battery/.
Regarding Claims 1-4 and 6, Brewer discloses a negative electrode comprising a metal substrate (current collector) 603a-603h (exemplified by nickel mesh or copper mesh, meeting Claim 2) having a thickness of from at least 1 µm, and e.g up to 100 µm (para 0038) which overlaps the claimed range of 10 µm to 500 µm (meeting Claim 6) and having a first surface and a second surface opposite to each other (Fig. 6A-H, paras 0127-0130, 0137-0142); and a plurality of bumps (electrically conductive structures) 604a-h/704a which can be circular columns (tubes, circular cross-section, Figs 6A-H/7, especially 604-f, 704-a, 704-c, paras 0043-0044, meeting Claim 4) disposed on the first surface (exemplified by nickel and copper, meeting Claim 3), wherein a size range (height) of the bumps is at least 1 µm, and e.g up to 100 µm (para 0042) which overlaps the claimed range of 5 µm to 500 µm (see entire disclosure and especially Figs 1-7 and paras 0035-0046, 0127-0130, 0137-0142).
With respect to the obviousness of the claimed thickness of the substrate and size of the bumps of Brewer, In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range."). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Regarding Claim 5, Brewer discloses that the electrically conductive material structures may be pattern deposited via shadow mask or via patterned resist or may be randomly grown (para 0046) and so the skilled artisan would understand that the bumps would be arranged in an irregular arrangement (randomly grown) or in a patterned arrangement such as e.g. an array as in Fig. 5A.
Regarding Claims 7 and 10, Brewer discloses wherein the current collector is a Ni or Cu mesh structure (as explained above), and the skilled artisan would understand that a mesh material necessarily has e.g. polygonal holes that would extend from (run through) one surface to the opposing surface. See image below from https://www.engineering.com/how-to-make-any-battery-a-3d-battery/.
PNG
media_image1.png
221
703
media_image1.png
Greyscale
Regarding Claim 9, the skilled artisan would understand that the holes of the mesh metal substrate/current collector of Brewer would be distributed around the bumps since the bumps could not be INSIDE the holes.
7. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Brewer US PG Publication 2021/0057757, as applied to Claim 1, and further in view of Kim US PG Publication 2015/0125756.
Regarding Claim 8, Brewer discloses the negative electrode of Claim 1, the rejection of which is incorporated herein in its entirety. Brewer fails to specifically disclose a size range of the holes of the mesh metal substrate such that the range is between 10 µm and 500 µm. However, in a similar field of endeavor of electrode design using mesh current collectors, Kim teaches that a metal mesh current collector is beneficially designed to have thickness between 1 µm to 500 µm and hole size between metal mesh patterns is e.g. 1 µm to 3 mm (see entire disclosure and especially e.g. Fig 1 and paras 0152-0154). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the electrode of Brewer such that the holes running through the first to the second surface of the metal substrate are sized in a range of between 10 µm and 500 µm because Kim teaches that such a current collector metal substrate in a battery is designed to have any appropriate size of holes falling in the range of 1 µm to 3 mm, and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range."). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ishikawa US PG Publication 2013/0295453 discloses a negative electrode having different shaped protrusions on a surface of a tin substrate current collector (see entire disclosure and especially Figs 1-2E; paras 0014-0033).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA S PARK whose telephone number is (571)270-3597. The examiner can normally be reached M-Th 5:30a to 3p Eastern Time.
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, Ula Tavares-Crockett can be reached on 5712721481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LISA S PARK/Primary Examiner, Art Unit 1729