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 .
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 5-7 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.
Regarding claims 5-7, the units used are confusing. Surface roughness is generally measured in µm, not Rz/µm.
Claim Rejections - 35 USC § 103
4. 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.
5. Claims 1-4 and 8-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (U.S. Patent Publication 2009/0061319) in view of Jung (U.S. Patent Publication 2016/0064731).
Regarding claims 1, 3, 16 and 22, Kim discloses a silicon thin film anode comprising a collector, an anode active material layer formed on the collector, and one or more interface stabilizing layers formed between a metallic component layer (collector, a metallic buffer layer on the collector, or the anode active material layer) and a silicon component layer (silicon thin film inside the anode active material layer) by an annealing process (Paragraphs 0041, 0044). As to claims 2-4, 19, 20, Kim teaches that the stabilizing layer can be a metal silicide, wherein the metal is that of the collector or buffer layer, and can be copper, nickel, iron, etc. (Paragraphs 0042-0044, 0047). It would have been obvious to one of ordinary skill in the art that the annealing process would bind the particles and materials in the areas surrounding the portions that are annealed, as recited in claims 1, 15 and 19 of the present invention. Regarding claims 9 and 10, Kim states that the annealing process is performed at a temperature of 200-900 °C (Paragraph 0059). As to claims 11-14, 16, 17, Kim discloses that the anode can comprise alternating layers of silicon and a second metal, such as titanium, nickel, copper, etc., and that an annealing process forms a metal silicide stabilizing layer between the different layers of the anode (Paragraphs 0044, 0047 and 0058). Regarding claims 21-23, Kim teaches that the anode active material can comprise a single silicon layer or alternating layers of silicon and other metals (Paragraph 0045). It would have been obvious to one of ordinary skill in the art that the amount of silicon in the active material can be between 70 and 99% by weight because Kim teaches that the silicon can consist of half of the active material when mixed with another metal or close to 100% when used alone.
Kim fails to disclose that the anode active material layer comprises a composite material that comprises 0 to 95% by weight of a carbon phase and 0 to 99 wt% of the electrochemically active material particles that are distributed within the matrix phase, that the precursor is dried prior to annealing, and that the median particle size of the silicon particles is 0.5 to 20 µm.
Jung discloses an anode active material for a secondary battery comprising: a carbon silicon composite comprising a silicon carbon polymer carbonized matrix dispersed in a first carbon body, wherein the carbon of the matrix and the first carbon body can both be made from hard carbon (Paragraphs 0027, 0039, 0056), as recited in claims 1 and 18 of the present invention. Regarding claim 8, Jung teaches that after depositing the carbon-silicon composite on a current collector, it is dried (Paragraph 0095). As to claims 24-25, Jung teaches that the silicon particles can have a D50 of 2 to 180 nm (Paragraph 0038).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention to have formed a hard carbon matrix around the silicon particles of Kim because Jung teaches that the carbon matrix prevents the volume change of the silicon particles, which then improves the cycle properties of the battery. It also would have been obvious to one of ordinary skill in the art that the active material layer precursor of Kim could be dried prior to annealing because Jung teaches that this is a common step in forming an electrode layer so that this sets appropriately. Finally, it would have been obvious to one of ordinary skill in the art that the median particle size of the silicon particles could be less than 50 µm because Jung teaches that a smaller particle size improves dispersibility. It would have been obvious to one of ordinary skill in the art that the size could be adjusted in a close range depending on a size of the carbon phases and desired density of the material, and could fall in the range of 0.5 and 20 µm.
6. Claims 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (U.S. Patent Publication 2009/0061319) in view of Iwama (U.S. Patent Publication 2010/0233534).
The teachings of Kim have been discussed in paragraph 5 above.
Kim fails to disclose that the current collector has a surface roughness from 3 microns to 25 microns.
Iwama discloses an anode for a secondary battery comprising a current collector having a surface roughness Rz of 2.5 to 8.5 microns, and a silicon active material on the current collector (Paragraphs 0037, 0039, 0061), as recited in claims 5-7 of the present invention.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention to have used a current collector having a surface roughness between 3 and 25 microns in the anode of Kim because Iwama teaches that a higher surface roughness allows for the expanding and contracting of the silicon material and improves cycle characteristics of the battery.
Double Patenting
7. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
8. Claims 1-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11355748. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 11355748 teaches a method of forming an electrode, the method comprising: providing a current collector comprising one or more layers of metal; providing a precursor comprising from greater than 0% to about 99% by weight of electrochemically active material; and heating the precursor and the current collector to form a composite material and at least one phase between the composite material and the current collector; wherein the at least one phase is configured to adhere the composite material to the current collector, and wherein the at least one phase comprises a compound of the metal and the electrochemically active material, wherein the active material comprises silicon particles, and wherein the heating comprises forming a metal silicide phase that binds the silicon particles together and/or the silicon particles to one of more types of carbon phases (claims 1, 20, 21).
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRITTANY L RAYMOND whose telephone number is (571)272-6545. The examiner can normally be reached Monday-Friday 9 am-6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niki Bakhtiari can be reached at 571-272-3433. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BRITTANY L. RAYMOND
Primary Examiner
Art Unit 1722
/BRITTANY L RAYMOND/Primary Examiner, Art Unit 1722
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