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 .
Election/Restrictions
2. Applicant's election with traverse of Group 2 (Claims 89-103) in the reply filed on 9/22/2026 is acknowledged. The traversal is on the ground(s) that the inventions do not have mutually exclusive characteristics and so there is no search burden to cover both alleged groups of inventions.
The Office has considered this argument and respectfully disagrees. The Office has provided reasons for patentable distinctness between the restricted claims of Groups I and II as required in MPEP §803 and has further provided additional reasons that there is an undue burden involved in conducting a full and proper search for both inventions. Please refer to the Requirement for Restriction mailed on 7/24/2026 to review the reasons provided.
The requirement is still deemed /proper and is therefore made FINAL.
Therefore, the claims under consideration are 89-103.
Claims 74-88 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species and Groups xx, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/22/2026.
Priority
3. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
4. No IDS documents have been provided.
Claim Interpretation
5. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Objections
6. Claim 89 is objected to because of the following informalities: there is a grammar issue. “…the exposure protection material reduce exposure” is grammatically incorrect. Appropriate correction is required.
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.
7. Claims 89-103 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 89 and 94-102 recite “the electrochemically active material film” but this term lacks antecedent basis since there has been no previous recitation of an electrochemically active material film. Claims 90-93 and 103 are rejected as being dependent on a rejected base claim.
Claims 90-91 recite wherein the exposure protection material is “substantially electrically nonconductive” and “in a substantially solid state”, but the term “substantially” in the claims is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
8. Claims 89-94 and 102-103 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wei CN101609877.
Regarding Claims 89 and 102-103, Wei discloses an electrode (anode) comprising a current collector 12, and an electrochemically active material (anode film) 14 (which is printed on the collector and so is understood as a monolithic, self-supporting film, para 0026, meeting Claim 102) over the current collector 12 and in direct contact with the current collector at least at one area not incorporating the exposure protection material (Fig 1, meeting Claim 103), wherein the current collector comprises exposure protection material (electron blocking layer and surface filling layer) 16/18 at least at one or more areas (two long strip-shaped exposed portions) 120 not covered by the electrochemically active material film (para 0027), the exposure protection material reducing exposure of the current collector to an opposing electrode (see entire disclosure and especially Figs and paras 0026-0032).
Regarding Claims 90-94, Wei discloses that this exposure protection material is a solid (meeting Claim 91), e.g. aluminum oxide and the polymer PVDF (meeting Claims 92-93) an electron blocking layer and so it is substantially electrically nonconductive (para 0029), and given the structure of anode, the skilled artisan would find it inherent that this layer of exposure protection material would reduce the exposure of the current collector to lithium deposition in the disclosed lithium ion battery (meeting Claim 94). The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114).
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.
9. Claim 95-96 and 98-101 are rejected under 35 U.S.C. 103 as being unpatentable over Wei CN101609877, as applied to Claim 89, and further in view of Datta et al. “Silicon, graphite and resin based hard carbon nanocomposite anodes for lithium ion batteries” J. Power Sources 165 (2007) 368-378 (hereinafter “Datta NPL”).
Regarding Claims 95-96, 98, and 101, Wei discloses the claimed electrode as described in the rejection of Claim 89, which is incorporated herein in its entirety. Wei does not specifically recite wherein the electrochemically active material film comprises a carbon phase that holds the film together and comprises silicon particles distributed within the carbon phase, and wherein the carbon phase comprises hard carbon. However, in the same field of endeavor of anode design, Datta NPL discloses an anode design wherein Si nanoparticles (meeting Claim 98) at a weight% of about 25 wt%, which is less than 90 % by weight of the film (see abstract, meeting Claim 101) are embedded and dispersed in a graphite matrix film further coated in hard carbon (meeting Claim 96) with the benefit that this configuration is promising as an anode material in batteries providing enhanced moderately high charge/discharge rates (see entire disclosure and especially highlighted portions of pp 368-369 and 374-375). 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 use a Si/C/HC composite of Datta NPL as the electrochemically active material film of Wei such that it comprises a carbon phase that holds the film together and has silicon particles distributed within, where the carbon phase comprises hard carbon, because Datta NPL teaches that this configuration is promising as an anode material in batteries providing enhanced moderately high charge/discharge rates.
Regarding Claims 99 and 100, Wei modified by Datta NPL does not specifically recite wherein the electrochemically active film comprises silicon at more than 30% or more than 50% by weight of the film, but because Datta NPL teaches the use of 40 wt% silicon (abstract) starting material, and teaches that the amount of silicon retained should be maximized (Table 1 shows how Si content decreases undesirably over time and at high temperatures), it would have been obvious to a person having ordinary skill in the art before the effective filing date to ensure that there is as much silicon as possible in the film of Wei modified by Datta NPL, such as greater than 30% by weight and greater than 50% by weight, since Datta NPL teaches that this Si content retention is a concern and the invention seeks to maximize this content.
10. Claim 97 is rejected under 35 U.S.C. 103 as being unpatentable over Wei CN101609877, as applied to Claim 89, and further in view of Mah US PG Publication 2008/0145757.
Regarding Claim 97, Wei discloses the claimed electrode as described in the rejection of Claim 89, which is incorporated herein in its entirety. Wei does not specifically recite wherein the electrochemically active material film comprises porosity that is substantially free of the exposure protection material. However, in the same field of endeavor of Si/C anode design, Mah teaches that in a Si/C composite anode material, the material should be porous so that the carbon material surrounding the Si and graphite material can absorb stress applied to the active material according to the shrink/expansion of Si particles (see e.g. paras 0042-0045). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to design the electrochemically active material film of Wei such that it comprises porosity because Mah teaches that in a Si/C composite anode material, the material should be porous so that the carbon material surrounding the Si and graphite material can absorb stress applied to the active material according to the shrink/expansion of Si particles. Further, the skilled artisan would find it obvious that the porosity should be retained even after the anode of Mei is formed in order to retain the benefit of the porosity. Accordingly, the skilled artisan would find it obvious that the porosity of electrochemically active material film of Wei and Mah should be substantially free of the exposure protection material in order to maximize the ability of the pores to absorb stress applied to the active material according to the shrink/expansion of Si particles.
Conclusion
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.
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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.
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/LISA S PARK/Primary Examiner, Art Unit 1729
