COPPER FOIL HAVING IMPROVED FLEXIBILITY, ELECTRODE COMPRISING THE SAME, SECONDARY BATTERY COMPRISING THE SAME, AND METHOD FOR MANUFACTURING THE SAME
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
In response to communication filed on 9/2/2026:
No claims have been amended; no new matter has been entered.
Previous rejections under 35 USC 102/103 have been maintained.
Previous rejections under 35 USC 112(b) have been withdrawn.
Response to Arguments
Applicant’s arguments, see Exhibit containing Grokipedia, filed 9/2/2026, with respect to the rejection under 35 USC 112(b) have been fully considered and are persuasive only because the Grokipedia summary contains a list of references that can be evaluated to determine whether a person of ordinary skill in the art would understand what MIT in MIT number stands for. The rejection under 35 USC 112(b) of claims 1-6 has been withdrawn.
Applicant's arguments filed 9/2/2026 have been fully considered but they are not persuasive.
The Applicant discloses: “The mere fact that different copper foils each include a copper layer does not establish that the copper foils necessarily have the same properties. In particular, even where copper foils may appear structurally similar, their mechanical properties may vary depending on, for example. the composition of the electrolyte, the types of additives used in the electrolyte, and the respective amounts of such additives. Accordingly, the mere structural similarity that both the claimed copper foil and the prior-art copper foil include a copper layer is insufficient to establish that they necessarily possess the same properties.
For example, as shown in the table of Examples and Comparative Examples of the present application, all of the Examples and Comparative Examples include a copper layer and a protective layer, yet each exhibits different property values. Accordingly, the mere fact that both the claimed product and the prior-art product structurally include a copper layer and a protective layer is insufficient to conclude that they have the same properties.
Furthermore, in order to conclude that the copper foil of the prior art is produced by a process identical or substantially identical to that of the present application, it should be established that the types and amounts of the additives in the electrolyte, as well as the specific manufacturing conditions, are identical or substantially identical.”
The Examiner respectfully traverses. The addition or inclusion of an electrolyte is not commensurate within the scope of the claim. In other words, an electrolyte is not claimed. Further, the claims do not even imply the foil is used in an electrochemical environment. Finally, the present application discloses a similar process to making the copper foil with protective layer in paragraphs 0105-0108 of the present specification. Paragraph 0105 of the present specification discloses cleaning the copper film in an acidic solution. Paragraph 0145 of Chae also discloses an acid cleaning process of the copper layer. Paragraphs 0107-0108 disclose immersing the copper film in an anticorrosion solution. Paragraphs 0146-0150 disclose immersing the copper layer in an anti-corrosion liquid thus forming the copper foil as claimed.
The Applicant discloses: “Applicant respectfully submits there is insufficient basis for concluding that the copper foil of Chae necessarily possesses the properties recited in the claims. 2) Regarding the Examiner's position that products having the same chemical composition cannot possess mutually exclusive properties.
As shown in the comparison table [see Response], the additives included in the electrolyte of the present application are not disclosed in Chae. Conversely. Chae employs additional additives. including MPS, PPG, and 2MP, which are not used in the Examples of the present application.
Thus, the respective copper foils cannot be regarded as products having the same composition or as products manufactured under substantially identical conditions.
In particular, in the field of electrodeposited copper foils, even relatively small differences in the types and amounts of additives contained in an electrolyte may affect the resulting properties of the copper foil. Therefore, a copper foil produced according to the materially different manufacturing method of Chae cannot be presumed to possess the same properties as the copper foil of the present application.”
The Examiner respectfully traverses. The table provided by Applicant is appreciated by the Examiner however it is not persuasive. First, the amounts of additives in comparative examples 1-6 overlap those of examples 1-6. Second, the difference between the additives in the comparative examples and examples are inconsistent in results being that the amounts of two different additives are changing between each comparative example.
For example, when comparing Example 1 with Comparative Example 1, the specification in paragraph 0137 discloses breakage occurred using an electrolyte including hydrogen peroxide in an excessive amount (15 mL/L vs 2 mL/L) and cerium ions in a small amount (0.1 ppm vs. 3.2 ppm). Is the hydrogen peroxide amount or cerium ion amount contributing to deleterious effects?
Comparative Example 2 compared with Example 2 shows chlorine in an excessive amount (5 ppm vs 1 ppm) and silver ions in a small amount (0.01 ppm vs 0.2 ppm). Is the chlorine amount or silver ion amount contributing to the deleterious effects?
Therefore, it is impossible to draw a conclusion that amounts of additives have a positive or negative outcome. The Examiner cannot verify whether the unexpected improvement is due to the claimed invention or merely an unpatentable optimization of one of the other secondary variables.
Claim Rejections - 35 USC § 102/103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Chae et al. (KR 2019-0043275 A).
Regarding claim 1, Chae et al. teach a copper foil (Fig. 1, element 100) comprising a copper film including 99.9 wt% or more of copper (Fig. 1, element 110 discloses a copper layer made only of copper and so it is at 100%.). Further, comprising a protective layer formed on the copper film (Fig. 1, element 211 discloses an anticorrosive film on the copper layer, element 110.) which includes at least one of a chromium compound, a silane compound, and a nitrogen compound (Paragraph 0020). However, Chae et al. do not teach wherein the copper foil has a room temperature MIT 1 of 280 or more, a high-temperature MIT 1 of 130 or more, a room temperature MIT 2 of 14 or more, and a high-temperature MIT 2 of 25 or more, wherein the room temperature MIT 1 refers to an MIT number when a bending radius (R) is 0.38 mm at room temperature, the high-temperature MIT 1 refers to an MIT number when a bending radius (R) is 0.38 mm after heat treatment at 190 °C for one hour, the room temperature MIT 2 refers to an MIT number when a bending radius (R) is 0.1 mm at room temperature, and the high-temperature MIT 2 refers to an MIT number when a bending radius (R) is 0.1 mm after heat treatment at 190 °C for one hour.
MPEP 2112.01 Composition, Product, and Apparatus Claims
I. PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT
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). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
II. COMPOSITION CLAIMS — IF THE COMPOSITION IS PHYSICALLY THE SAME, IT MUST HAVE THE SAME PROPERTIES
"Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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.
Regarding claim 2, Chae et al. teach the copper foil of claim 1, wherein the copper foil has a room temperature tensile strength of 50 kgf/mm2 or more (Paragraph 0065 discloses the copper foil has a room temperature tensile strength of 40-65 kgf/mm2.).
Regarding claim 3, Chae et al. teach the copper foil of claim 1, wherein the copper foil has a high temperature tensile strength of 40 kgf/mm2 or more (Paragraph 0066 discloses the copper foil has a high temperature tensile strength of 36-58 kgf/mm2.).
Regarding claim 4, Chae et al. teach the copper foil of claim 1, wherein the copper foil has a high-temperature grain size in a range of 1.4 µm to 3.1 µm (Paragraph 0074 discloses 0.8-1.7 µm after heat treatment at 190°C for 1 hour.).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL S GATEWOOD whose telephone number is (571)270-7958. The examiner can normally be reached M-F 8:00-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Tavares-Crockett can be reached at 571-272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Daniel S. Gatewood, Ph.D.
Primary Examiner
Art Unit 1729
/DANIEL S GATEWOOD, Ph. D/Primary Examiner, Art Unit 1729 October 2nd, 2026
