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 .
Response to Amendment
Applicant’s amendment filed 06/02/2026 has been entered. Claims 1-4 and 7-10 are currently pending. Claims 5-6 are cancelled. Claim 1 is currently amended. Support for the amended claim is found in the claims as originally filed.
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.
Claims 1-4 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Jiao et al. (Jiao, H. et al., “Cu-Al Composite as the negative electrode for long-life al-Ion Batteries”. Journal of The Electrochemical Society, 166(15), 18 October 2019) in view of Lin et al. (US 20200212476 A1).
Regarding claim 1, Jiao discloses a negative electrode structure applied to an aluminum battery (Abstract), comprising: a first metal layer, having a first reduction ability; and a second metal layer, having a second reduction ability, wherein the second metal layer is disposed on the first metal layer, the second metal layer comprises aluminum (pages A3539-A3540, Cu layer corresponding to first metal layer with Al plating corresponding to second metal layer), a thickness of the first metal layer is greater than a thickness of the second metal layer (page A3539, Materials and Methods, the copper foil, corresponding to the first metal layer is 10 µm thick, the aluminum plating layer, corresponding to the second metal layer, is 5 µm), and the first reduction ability is higher than the second reduction ability, such that the second metal layer is corroded and dissolved in the aluminum battery (page A3540, Al foil demonstrates lower reduction ability and corrosion resistance, and is the active material that is plated/stripped during charge/discharge). Jiao is silent regarding the first metal layer comprising zinc or titanium.
Lin discloses an aluminum-ion battery, comprising a negative electrode and the negative electrode includes a negative electrode current-collector and a negative electrode active layer (Lin paragraphs 0005, 0026-0030, Examples 1-2). Lin further discloses that the current collector is a conductive material with a low redox activity in comparison with the active material of the negative electrode active material. When the active material is aluminum, the negative electrode current collector can include titanium, equating it to other metals such as copper (Lin paragraph 0011). Lin and Jiao are analogous because they both disclose electrode structures for aluminum-ion batteries.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrode disclosed by Jiao to have the first layer include titanium as disclosed by Lin. Doing so would provide a material with a low redox activity compared to the aluminum active material. Furthermore, The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). Lin discloses copper and titanium as functional equivalents for providing a low redox activity material, and therefore the combination would provide predictable results.
Regarding claim 2, Jiao discloses the limitations of claim 1. Jiao further discloses that a reaction potential of the first metal layer in a chloroaluminate ionic liquid is at least 0.5 volts higher than an oxidation potential of the second metal layer (page A3540, Results and Discussion, figure 2a, foils are observed in AlCl3-[EMIm]Cl system, Al exhibits a potential of approximately 0.8V compared to 0V for Al, falling within the claimed range).
Regarding claim 3, Jiao discloses the limitations of claim 1. Jiao further discloses that an oxidation potential range of the first metal layer in a chloroaluminate ionic liquid is between 0.5 volts and 1 volt (page A3540, Results and Discussion, figure 2a, Cu exhibits an oxidation onset potential of approximately 0.8V in the AlCl3-[EMIm]Cl system, within the claimed range).
Regarding claim 4, Jiao discloses the limitations of claim 1. Jiao further discloses that an oxidation potential range of the first metal layer in a chloroaluminate ionic liquid is between -0.1 volts and 0.1 volts (page A3540, Results and Discussion, figure 2a, Al exhibits an oxidation onset potential of 0V in the AlCl3-[EMIm]Cl system).
Regarding claim 7, Jiao discloses the limitations of claim 1. Jiao further discloses that a thickness range of the first metal layer is between 10 µm and 100 µm (page A3539, Materials and Methods, the copper foil, corresponding to the first metal layer is 10 µm thick, within the claimed range (see present specification paragraph 0023 definition of the term “between”)).
Regarding claim 8, Jiao discloses the limitations of claim 1. Jiao further discloses that a thickness range of the second metal layer is between 0.5 µm and 50 µm (page A3540, Results and Discussion, aluminum plating layer, corresponding to the second metal layer, is 5 µm, within the claimed range).
Regarding claim 9, Jiao discloses the limitations of claim 1. Jiao further discloses that the first metal layer is in direct contact with the second metal layer (pages A3540-A3541, figure 4b, Al layer is plated on the Cu foil).
Regarding claim 10, Jiao discloses the limitations of claim 1. Jiao does not explicitly disclose that electron migration occurs on a contact surface between the first metal layer and the second metal layer.
However, it is deemed that the electron migration on a contact surface between the first metal layer and the second metal layer is an inherent characteristic and/or property of the specifically disclosed positive active material. In this respect, MPEP 2112 sets forth the following:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In this case, Jiao discloses a substantially identical electrode to the claimed configuration (pages A3539-A3541) including an Al layer plated on a Cu foil, and anticipates the claimed potentials of the claimed invention. Furthermore, as Jiao discloses the structure of a metal with a lower reduction ability in contact with a metal with a higher reduction ability (see claim 1 rejection), the electron migration must necessarily take place at a contact surface of the two layers. Additionally, the present specification recites this characteristic as a consequence of the reduction abilities of the stacked metal layers, leading to corrosion and dissolution of the second metal layer (present specification paragraph 0025). Jiao discloses the claimed metal layers with the claimed difference in reduction abilities and further discloses that the second metal layer is corroded and dissolved in the aluminum battery (page A3540, Al foil demonstrates lower reduction ability and corrosion resistance, and is the active material that is plated/stripped during charge/discharge), therefore anticipating the inherent characteristic of the electrode.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that the claimed invention provides technical effects on the performance of aluminum dissolution and cites Fig. 3 as evidence. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at “elevated temperatures” using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110C and 130C. The court affirmed the rejection of claims 1-7 and 9-10 because the term “elevated temperatures” encompassed temperatures as low as 60C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.). In this case, Fig. 3 of Applicants disclosure compares Examples 1-2 which respectively include aluminum layers plated with nickel and titanium foils with a total thickness of 51.5 µm, against Comparative Example 1 which includes an aluminum foil that is not plated with a thickness of 50 µm, wherein aluminum dissolution performance is improved in the plated electrodes (see instant specification paragraphs 0031-0032). However, the evidence is silent regarding the second metal layer including zinc, and is limited to a comparison over a non-plated aluminum foil with a difference in thickness. Furthermore, the evidence is not attributable to the claimed feature as the nickel plated electrode also shows improved performance compared to the Comparative Example.
Showing unexpected results over one of two equally close prior art references will not rebut prima facie obviousness unless the teachings of the prior art references are sufficiently similar to each other that the testing of one showing unexpected results would provide the same information as to the other. In re Johnson, 747 F.2d 1456, 1461, 223 USPQ 1260, 1264 (Fed. Cir. 1984) (Claimed compounds differed from the prior art either by the presence of a trifluoromethyl group instead of a chloride radical, or by the presence of an unsaturated ester group instead of a saturated ester group. Although applicant compared the claimed invention with the prior art compound containing a chloride radical, the court found this evidence insufficient to rebut the prima facie case of obviousness because the evidence did not show relative effectiveness over all compounds of the closest prior art. An applicant does not have to test all the compounds taught by each reference, "[h]owever, where an applicant tests less than all cited compounds, the test must be sufficient to permit a conclusion respecting the relative effectiveness of applicant’s claimed compounds and the compounds of the closest prior art." Id. (quoting In re Payne, 606 F.2d 303, 316, 203 USPQ 245, 256 (CCPA 1979)) (emphasis in original).). In this case, Applicant fails to demonstrate evidence that the claimed titanium layer provides unexpected results and effectiveness over the copper metal layer, which the cited prior art teaches as a functional equivalent (see claim 1 rejection). See also MPEP 716.02(e).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/B.T.L./ Examiner, Art Unit 1727
/BARBARA L GILLIAM/ Supervisory Patent Examiner, Art Unit 1727
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