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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 and 12-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 2 both require fibrous carbon to be oriented "randomly". It is unclear what this requires structurally, since a random orientation, by definition, can be any orientation, including all fibers in perfect parallel alignment. If this is meant to be a product-by-process limitation then the process must be clearly defined.
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.
Claim(s) 1-10 and 12-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Japanese Publication No. JP 2015/043309 to Arai, citing to the enclosed machine translation ("Arai") in view of U.S. Patent Application Publication No. 2019/0058185 to Lee ("Lee"). Regarding claims 1, 3, 5, 8-10, 13, and 15, Arai discloses a negative electrode for a lithium ion secondary battery comprising a current collector of copper foil in some embodiments, onto which is plated a composite carbon/metal layer where the carbon is multi-walled carbon nanotubes having diameter ranging from 100-150nm and the metal of the carbon/metal composite includes copper and/or tin. Arai at paragraphs [0011], [0024] and [0045]. The copper current collector is considered to correspond to the recited negative electrode that doesn't include active material. Regarding its thickness, Arai discloses that the desire in the art has been to provide the thinnest current collector/inactive electrode structure possible in order to improve specific capacity. Arai at paragraph [0008]. Thus, the person of ordinary skill in the art at the time of invention would have had reason to provide the carbon/metal composite of Arai in a thickness that is as reduced as possible while maintaining structure integrity/conductivity.
The carbon/metal composite is configured to face the positive electrode and separator separating the negative/positive electrodes providing an anchor point for the deposition of lithium metal onto the negative electrode. The carbon fibers are deposited without any attempt to align them in an ordered manner, and thus are considered to be randomly deposited.
Arai focuses on an electrode for use in lithium ion batteries, noting that such lithium ion batteries typically include a positive electrode active material in the positive electrode. Id. at paragraph [0002]. Although a positive electrode and a separator separating the positive and negative electrode from one another are required elements of a lithium ion battery, Arai does not disclose a conductive thin film formed on a surface of the separator facing the negative electrode.
Lee is similarly directed to negative electrodes for use in lithium batteries. Lee at Abstract. Lee discloses that one concern in such battery systems is lithium depositing on the negative electrode in an uneven/uncontrolled manner such that dendrites form which may pierce the separator placed between the positive/negative electrodes thereby causing a short in the battery. Id. at paragraph [0009]. To prevent this, Lee discloses providing on an outermost surface of the negative electrode that is in contact with the separator an electrically conductive layer having a thickness ranging from 0.01 to 10 microns. Id. at paragraphs [0015] and [0018]. This is used in examples where, like in Arai, the active material is lithium being deposited in a carbon and/or tin metal containing active material layer. Thus, the person or ordinary skill in the art at the time of invention would have been motivated to provide the outermost thin conductive protective layer of Lee to the electrode structure of Arai in order to prevent dendrite growth/short circuiting thereby creating a thin conductive layer on the surface of the separator facing the negative electrode of its battery.
Further regarding claim 4, Arai discloses that the length of its carbon nanotube fibers is 10-15 microns, giving an aspect ratio ranging from 67-150. Arai at paragraph [0024].
Further regarding claim 6, although Arai doesn't specifically disclose a volume ratio of carbon in ts composite layer, it does disclose that the carbon nanotubes are present to provide structural integrity to maintain attachment of the outer active material layer to the current collector. Thus, the person of ordinary skill in the art at the time of inventio would have had reason to choose an amount that balances the need for this structural integrity with the need for high capacity/conductivity of the negative electrode structure as a whole for a given application.
Further regarding claim 12, given the voltage of a lithium battery is 3 volts or more, the recited energy density would be, at a maximum, equivalent to 17 Ah/kg (equivalent to 17 mAh/g). Arai discloses that its electrodes have a specific capacity of 590 mAh/g. Id. at paragraph [0043].
Further regarding claims 2 and 16-20, although the system of Lee focuses on a polymer separator for use with liquid electrolyte compositions, solid electrolytes were a commonly known alternative for use in lithium ion battery systems and thus their use as the separator is considered to be nothing more than the obvious substitution of one commonly known alternative for another to achieve a predictable result.
Response to Arguments
Applicant's arguments filed May 20, 2026, have been fully considered but they are not persuasive. Applicant alleges that random orientation is a known structure without providing evidence regarding the understood scope of the structure, instead identifying the method of orienting as the hallmark of random orientation. As noted in the rejection, if Applicant wishes to define the structure in terms of the method the structure is made, the claim should be written as a product-by-process claim. Applicant alleges that all parallel orientation would not be random because it is an ordered structure, but while having an extremely low probability, it is still part of the scope of a random orientation despite its ordered nature.
Applicant next alleges that the amended claims require a a “true anode-free configuration”. This is not in the claim anywhere. The claim requires a negative electrode that doesn’t include a negative electrode active material, and precludes the presence of a negative electrode active material on a carbon-metal composite that itself is disposed on the negative electrode. The claim does not preclude the carbon-metal composite itself from serving as a negative electrode active material.
Applicant then alleges that Arai discloses depositing a negative electrode active material onto a carbon nanotube layer. However, Arai discloses that the metal/carbon composite can also be formed by co-depositing the metal and carbon as a single composite material. Arai at paragraph [0022]. Moreover, even in examples where a metal is deposited on CNT or deposited on a CNT/metal composite, the structure formed is still just a layered carbon/metal composite. Thus, in Example 1 of Arai where tin is deposited onto a copper/CNT composite, the result is simply a tin/copper/CNT composite material corresponding to the recited carbon-metal composite layer. No further negative electrode active material is deposited on this composite layer. Thus, the structure of Example 1 of Arai is still considered to read on the claims since any active material described there is included in the carbon-metal composite layer, not ON the carbon-metal composite layer.
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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/WYATT P MCCONNELL/Examiner, Art Unit 1727
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