DETAILED ACTION
Response to Amendment
Claims 1-7 are pending in the application. Amendments submitted 3/31/2026 to the Specification and Drawings have been entered into the record. Previous grounds of rejection have been maintained for claims 1-5 while new grounds of rejection have been added for newly added claims 6 and 7.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Fujimoto et al. (US 7,410,728) in view of Teeters et al. (US 2013/0185930).
Regarding claim 1, Fujimoto et al. discloses in Figs 1-47, a battery (C11/L14-15) comprising: a cathode (ref 1); an electrolyte (C6/L45-50); and an anode (ref 2) comprising at least one monolithic nanostructured germanium substrate (C19/L22-23, Fig 10b) having a structure of columnar germanium (C19/L22-23, Figs 10b-c) resulting from a combination of fast bipolar electrochemical etching and a chemical etching, wherein said structure of columnar germanium (C19/L22-23, Figs 10b-c) is an active material (ref 11) for lithiation (C19/L22-23) of said anode (ref 2) comprising said at least one monolithic nanostructured germanium substrate (C19/L22-23); wherein said structure of columnar germanium structured to allow for expansion (C19/L36-41, Figs 10b-c) of said active material during lithiation (C19/L36-41) and protruding from a side of a germanium substrate (C19/L22-23) of said monolithic nanostructured germanium substrate (C19/L22-23).
Fujimoto et al. does not explicitly disclose said germanium substrate is a current collector.
Teeters et al. discloses in Figs 1-20, a lithium battery ([0011]) including an etched anode collector comprising germanium ([0026]). This configuration enhances adhesion and structural integrity of the anode structure ([0025]-[0026]).
Teeters et al. and Fujimoto et al. are analogous since both deal in the same field of endeavor, namely, batteries.
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the etched germanium collector substrate disclosed by Teeters et al. into the anode structure of Fujimoto et al. to promote adhesion with the active material and overall enhance the structural integrity of the anode and battery.
Regarding claim 2, modified Fujimoto et al. discloses all of the claim limitations as set forth above and also discloses said electrolyte is lithium (C19/L22-23) and wherein said structure of columnar germanium having dimensions less than 100 nanometers in two of said dimensions (C19/L39-41).
Regarding claim 3, modified Fujimoto et al. discloses all of the claim limitations as set forth above and also discloses said columnar germanium having a length of between 0.5 micrometers and 10 micrometers (C19/L39-41).
Regarding claim 6, Fujimoto et al. discloses in Figs 1-47, a battery (C11/L14-15) comprising: a cathode (ref 1); an electrolyte (C6/L45-50); and an anode (ref 2) comprising at least one monolithic nanostructured germanium substrate (C19/L22-23, Fig 10b) having a structure of columnar germanium (C19/L22-23, Figs 10b-c) resulting from a combination of fast bipolar electrochemical etching and a chemical etching, wherein said structure of columnar germanium (C19/L22-23, Figs 10b-c) is an active material (ref 11) for lithiation (C19/L22-23) of said anode (ref 2) comprising said at least one monolithic nanostructured germanium substrate (C19/L22-23); wherein said structure of columnar germanium structured to allow for expansion (C19/L36-41, Figs 10b-c) of said active material during lithiation (C19/L36-41) and protruding from a side of a germanium substrate (C19/L22-23) of said monolithic nanostructured germanium substrate (C19/L22-23).
Further regarding limitations recited in claim 6, which are directed to method of making said battery (e.g. “produced by a process comprising a combination of fast bipolar electrochemical etching and chemical etching”) it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same or obvious as the product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.). See MPEP 2113 and 2114. Therefore, since the battery anode structure as recited in claim 6 is the same as the battery anode structure disclosed by Fujimoto et al., as set forth above, the claim is unpatentable even though the battery anode structure of Fujimoto et al. was made by a different process. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
Fujimoto et al. does not explicitly disclose said germanium substrate is a current collector.
Teeters et al. discloses in Figs 1-20, a lithium battery ([0011]) including an etched anode collector comprising germanium ([0026]). This configuration enhances adhesion and structural integrity of the anode structure ([0025]-[0026]).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the etched germanium collector substrate disclosed by Teeters et al. into the anode structure of Fujimoto et al. to promote adhesion with the active material and overall enhance the structural integrity of the anode and battery.
Regarding claim 7, Fujimoto et al. discloses in Figs 1-47, a battery (C11/L14-15) comprising: a cathode (ref 1); an electrolyte (C6/L45-50); and an anode (ref 2) comprising at least one monolithic nanostructured germanium substrate (C19/L22-23, Fig 10b) having a structure of columnar germanium (C19/L22-23, Figs 10b-c) resulting from a combination of fast bipolar electrochemical etching and a chemical etching, wherein said structure of columnar germanium (C19/L22-23, Figs 10b-c) is an active material (ref 11) for lithiation (C19/L22-23) of said anode (ref 2) comprising said at least one monolithic nanostructured germanium substrate (C19/L22-23); wherein said structure of columnar germanium structured to allow for expansion (C19/L36-41, Figs 10b-c) of said active material during lithiation (C19/L36-41) and protruding from a side of a germanium substrate (C19/L22-23) of said monolithic nanostructured germanium substrate (C19/L22-23).
Further regarding limitations recited in claim 7, which are directed to method of making said battery (e.g. “produced by a combination of: …nucleation etching…fast bipolar electrochemical etching…and chemical etching”) it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same or obvious as the product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.). See MPEP 2113 and 2114. Therefore, since the battery anode structure as recited in claim 7 is the same as the battery anode structure disclosed by Fujimoto et al., as set forth above, the claim is unpatentable even though the battery anode structure of Fujimoto et al. was made by a different process. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
Fujimoto et al. does not explicitly disclose said germanium substrate is a current collector.
Teeters et al. discloses in Figs 1-20, a lithium battery ([0011]) including an etched anode collector comprising germanium ([0026]). This configuration enhances adhesion and structural integrity of the anode structure ([0025]-[0026]).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the etched germanium collector substrate disclosed by Teeters et al. into the anode structure of Fujimoto et al. to promote adhesion with the active material and overall enhance the structural integrity of the anode and battery.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Fujimoto et al. (US 7,410,728) in view of Teeters et al. (US 2013/0185930) as applied to claim 1 above, and further in view of Kottenstette et al. (US 2011/0171502).
Regarding claims 4 and 5, modified Fujimoto et al. discloses all of the claim limitations as set forth above but does not explicitly disclose wherein said structure of columnar germanium is coated with a carbon-based material, nor at least one monolithic nanostructured germanium substrate is coated with a carbon-based material.
Kottenstette et al. discloses in Figs 1-10, a lithium battery (Abstract) including a negative electrode comprising carbon-coated germanium ([0065]). This configuration reduces exfoliation thereby enhancing overall electrode structural integrity and overall battery performance ([0065]).
Kottenstette et al. and Fujimoto et al. are analogous since both deal in the same field of endeavor, namely, batteries.
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the carbon coating on germanium disclosed by Kottenstette et al. into the anode structure of Fujimoto et al. to reduce exfoliation thereby enhancing overall electrode structural integrity and overall battery performance.
Response to Arguments
Applicant's arguments filed 3/31/2026 have been fully considered but they are not persuasive.
Applicants argue neither Fujimoto and/or Teeters discloses or renders obvious all of the limitations of the instant independent claims. In particular, Applicants argue “Fujimoto teaches away from the claimed process at least because Fujimoto…teaches using additive manufacturing processes while the claimed germanium anode structure is produced by…using subtractive manufacturing processes” (see 3/31/2026 amendment at P8). Applicants further argue Teeters “is silent about any electrochemical etching, any FBEE and any electrochemical etching or FBEE using in combination with chemical etching to provide the claimed anode structure”. Further, applicants state Teeters discloses an “additive process” and therefore “teaches away from the claimed process” (see 3/31/2026 amendment at P8-9). As such, it is noted that Applicant’s arguments with respect to Fujimoto and Teeters are centered on the “claimed process” of the instant independent claims. It is noted that claim 1 (and claims 6-7) are each drawn to “a battery”, which is a structure / product. As such, Applicants appear to be interpreting the language of claim 1 “resulting from” (at line 5) as process limitations. It is noted that said process limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same or obvious as the product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.). See MPEP 2113 and 2114. Therefore, since the battery anode structure as recited in claim 1 is the same as the battery anode structure disclosed by modified Fujimoto, as set forth above, the claim is unpatentable even though the battery anode structure of modified Fujimoto was made by a different process. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). As such, these arguments are not found persuasive.
Applicants further argue, “…the claimed ‘structure of columnar germanium’ resulting from subtractive manufacturing processes (i.e., the claimed ‘combination of fast bipolar electrochemical etching and a chemical etching’) comprises identifiable structural features (e.g., see Figures 12C and 12D) that differentiate it from a columnar germanium structure that would result from an additive manufacturing processes, such that the person skilled in the art would be able to distinguish the latter from the claimed anode germanium structure resulting from fast bipolar electrochemical etching (FBEE) and chemical etching.” (see 3/31/2026 amendment at P9). It is noted that such “identifiable structural features” are not explicitly claimed in the instant independent claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). That is to say, the structure depicted in Figures 12C and 12D is not explicitly claimed in the instant independent claims and the above arguments result in an unclear suggestion of structure being present that somehow differentiates the structure of the instant claims from that of the applied prior art references. It is suggested to further explicitly claim the “indentifiable structural features” eluded to above, at which point such structure would / could, potentially, differentiate the instant claims from the applied prior art references of record.. As such, this argument is not found persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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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/KENNETH J DOUYETTE/Primary Examiner, Art Unit 1725
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