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 .
Priority
2. 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. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f), which papers have been placed of record in the file.
Information Disclosure Statement
3. Information disclosure statement (IDS), submitted January 24, 2024, has been received and considered by the examiner.
Claim Interpretation
4. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Objections
5. Claims 6, 8, and 10 are objected to because of the following informalities: the ranges include values that do not have units. 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.
6. Claims 1-13 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, 3, and 13 recite “Fe1Ni1 is contained as an alloy phase in the iron-nickel alloy layer on at least one surface side of the first surface side and the second surface side” and then recites “the (220) plane of Fe1Ni1 in the surface having the iron-nickel alloy layer containing Fe1Ni1” (emphasis added) but “the surface” lacks antecedent basis since no specific surface has been recited and multiple surface sides have been cited and so if “the surface” is a surface side, it is unclear which surface side or surface is further limited. Accordingly, the metes and bounds of the claim are unclear. Claim 4 also recites “the surface” and should be corrected. Claims 2 and 5-12 are rejected as being dependent upon a rejected base claim.
7. Claims 11 and 12 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 11 and 12 further limit the foil of Claim 1, but does not appear to recite any structure that has not already been recited in Claim 1, and aside from repeating the same foil structure that has already been recited in the Claim 1, it appears that only intended uses are described as new limitations. However, it is unclear if this is the interpretation intended by Applicant, and so the metes and bounds of the claim are unclear.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
8. Claim 11 and 12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As described in the rejection under 35 USC 112(b) above, it appears that the only limitations of Claims 11 and 12 that are added to the structure recited in Claim 1 (and repeated in Claims 11 and 12, for some reason) are intended uses (e.g. used as a current collector in a battery and in a bipolar battery), and so it appears that this claim does not further limit Claim 1 in any real sense. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
9. Claims 1-2, 5-6, 9, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ibaragi US PG Publication 2017/0162836.
Regarding Claims 1-2, 9, and 13, Ibaragi discloses a surface treated steel foil 12 (“for a current collector” is an intended use for which the structure of Ibaragi is capable; see MPEP § 2114), the surface treated steel foil having a first surface and a second surface located on a side opposite to the first surface, the surface treated steel foil comprising a base material formed of a steel (rolled steel foil, para 0045-0046 and 120), the steel being ultra low carbon steel (C content is preferably 0.001% to 0.01%, paras 0046-00057) and an iron-nickel alloy layer (diffusion alloy layer which is inherently a hydrogen-occluding alloy, addressing Claim 13) 13 laminated on the base material on the first surface side and/or the second surface side (Ni and Fe containing diffusion alloy layer on the first side), the layer formed by Ni-plating via Watt bath such that Fe and Ni mutually diffuse, paras 0121-0123 to form an iron-nickel alloy layer (see entire disclosure and especially Figs 5 and 7 and paras 0016, 0045-0057, 0117-0139). Ibaragi does not specifically disclose that Fe1Ni1 is contained as an alloy phase in the iron-nickel alloy layer, and with respect to the surface that includes the iron-nickel alloy layer, an orientation index in X-ray diffraction of a (220) plane of Fe1Ni1 in the surface having the iron-nickel alloy layer is not less than 1.0, and a ratio between a maximum value and diffraction intensity of a Fe1Ni1(220) plane and a maximum value of diffraction intensity of a Fe(200) plane in X-ray diffraction satisfies a following formula (1): I(Fe1Ni1(220))/I(Fe(200)) ≥ 0.5, or that a ratio of the maximum value of diffraction intensity of a Fe(211) plane, among crystal planes of Fe in the iron-nickel alloy layer, and the maximum value of diffraction intensity of the Fe(200) plane satisfies a following formula 2: I(Fe (211))/(I(Fe(200) ≥ 1.7 (Claim 2), or wherein a hydrogen permeation current density that is electrochemically measured is not more than 55 µA/cm2, where the hydrogen permeation current density is an increment of an oxidation current measured on a hydrogen detection side when a potential of -1.5 V is applied on a hydrogen generation side under a condition in which a potential on the hydrogen detection side is +0.4 V, in a liquid electrolyte at 65°C while a reference electrode for potentials on the hydrogen detection side and the hydrogen generation side is set to be Ag/AgCl (Claim 9).
However, since Ibaragi teaches the formation of the Fe-Ni alloy layer on the steel using substantially the same method as in the instant disclosure (using the same Ni deposition amount, see rejection of Claim 7 below; using a Watts bath comprising nickel sulfur, nickel chloride, and boric acid followed by box annealing for mutual diffusion of Ni with Fe, para 0120 and 0125 of Ibaragi, vs. using a Watts bath comprising nickel sulfur hexahydrate, nickel chloride hexahydrate, and boric acid followed by box annealing for mutual diffusion of Ni with Fe, paras 0137 and 0164 of the published instant application), the skilled artisan would find it inherent that the same Fe-Ni alloy would form on the steel foil as what is formed in the instant application such that that Fe1Ni1 is contained as an alloy phase in the iron-nickel alloy layer, and with respect to the surface that includes the iron-nickel alloy layer, an orientation index in X-ray diffraction of a (220) plane of Fe1Ni1 in the surface having the iron-nickel alloy layer is not less than 1.0, a ratio between a maximum value and diffraction intensity of a Fe1Ni1(220) plane and a maximum value of diffraction intensity of a Fe(200) plane in X-ray diffraction satisfies the above-written formulas 1-3, and the material structure has the same hydrogen permeation density. A reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson 49 USPQ2d 1949 (1999).
Regarding Claim 5, Ibaragi discloses that the surface-treated foil is equal to or less than 200 µm (para 0127) which is not more than 200 µm.
Regarding Claim 6, Ibaragi discloses that a deposition amount of nickel in a single surface side iron-nickel alloy layer is most preferably 2.7 g/m2 or more and most preferably less than 5 g/m2 (paras 0096-0099) which falls within, and therefore anticipates, the claimed range.
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.
10. Claims 3-4 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ibaragi US PG Publication 2017/0162836, as applied to Claim 1, and further in view of Unno US PG Publication 2023/0146305.
Regarding Claims 3-4, Ibaragi discloses the claimed surface treated steel foil as described in the rejection of Claim 1, which is incorporated herein in its entirety. Ibaragi fails to specifically disclose wherein the iron-nickel alloy layer is formed on both the first surface side and the second surface side. However, in the same field of endeavor of surface treated steel foil having iron-nickel alloy layers. Unno discloses wherein the iron-nickel alloy layer can be formed on first and second surface sides in order to allow the steel foil to be used as a current collector in e.g. a Ni-hydrogen secondary battery that is less susceptible to reduced capacity, i.e. it has longer battery life (see e.g. para 0078). 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 form the iron-nickel alloy layer on both sides of the steel foil of Ibaragi because Unno teaches that this will provide a current collector usable in a Ni-hydrogen secondary battery to provide the battery with a longer battery life.
Ibaragi modified by Unno does not specifically disclose the orientation index in X-ray diffraction of a (220) plane of Fe1Ni1 in the surface having the iron-nickel alloy layer is not less than 1.0, and a ratio between a maximum value and diffraction intensity of a Fe1Ni1(220) plane and a maximum value of diffraction intensity of a Fe(200) plane in X-ray diffraction satisfies a following formula (1): I(Fe1Ni1(220))/I(Fe(200)) ≥ 0.5 or formula (3): I(Fe1Ni1(220))/I(Fe(200)) ≥ 0.6 (addressing Claim 4). However, as explained above in the rejection of Claim 1, since Ibaragi teaches the formation of the Fe-Ni alloy layer on the steel using substantially the same method as in the instant disclosure, the skilled artisan would find it inherent that the same Fe-Ni alloy would form on the steel foil as what is formed in the instant application such that that Fe1Ni1 is contained as an alloy phase in the iron-nickel alloy layer, and with respect to the surface that includes the iron-nickel alloy layer, an orientation index in X-ray diffraction of a (220) plane of Fe1Ni1 in the surface having the iron-nickel alloy layer is not less than 1.0, a ratio between a maximum value and diffraction intensity of a Fe1Ni1(220) plane and a maximum value of diffraction intensity of a Fe(200) plane in X-ray diffraction satisfies the above-written formulas 1-3, and the material structure has the same hydrogen permeation density. A reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson 49 USPQ2d 1949 (1999).
Regarding Claim 7, Ibaragi does not specifically disclose wherein the foil further comprises a metallic layer formed on the iron-nickel alloy layer, the metallic layer being a nickel layer. However, Unno teaches in para 0065 that forming a metallic nickel layer on the iron-nickel alloy layer is beneficial because this can repair Ni plating layer defects introduced during foil rolling. 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 form an additional metallic layer, i.e. a nickel layer, on the iron-nickel alloy layer of Ibaragi and Unno because Unno teaches that this additional Ni layer can repair Ni plating layer defects introduced during foil rolling.
Regarding Claim 8, Ibaragi modified by Unno does not specifically describe a total of deposition amounts of nickel in the iron-nickel alloy layer and nickel layer is 2.22 g/m2to 53.4 g/m2. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to determine the optimal amount of nickel deposition amounts in the two layers of Ibaragi modified by Unno such that it would be from 2.22 g/m2to 53.4 g/m2 since Ibaragi teaches in paras 0096-0099 that this amount is a result-effective variable. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
11. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ibaragi US PG Publication 2017/0162836, as applied to Claim 1, and further in view of Unno US PG Publication 2023/0146305, Saijo US PG Publication 2006/0163329, and Sasaki WO2020/079905.
Regarding Claim 10, Ibaragi discloses the claimed surface treated steel foil as described in the rejection of Claim 1, which is incorporated herein in its entirety. Ibaragi fails to specifically disclose the surface treated steel foil for a current collector wherein a roughed nickel layer is formed at an outermost surface on the first surface side or the second surface side, and a three-dimensional surface property parameter Sa of the roughened nickel layer is 0.2 µm to 1.3 µm. However, in the same field of endeavor of surface treated steel foil having iron-nickel alloy layers, Unno teaches in para 0065 that forming an outer nickel layer on an iron-nickel alloy layer is beneficial, particularly for use as a current collector in a battery, because this can repair Ni plating layer defects introduced during foil rolling of the iron-nickel alloy layer that has been formed on a steel foil such that the steel foil is used as a current collector in e.g. a Ni-hydrogen secondary battery that is less susceptible to reduced capacity (para 0078). 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 form an additional metallic layer, i.e. a nickel layer, on the iron-nickel alloy layer of Ibaragi and Unno because Unno teaches that this additional Ni layer can repair Ni plating layer defects introduced during foil rolling such that this structure can be used as an improved current collector in a NiH battery, for example.
Ibaragi modified by Unno fails to specifically disclose wherein the nickel layer formed at the outermost surface on the first surface side or second surface side is roughened. However, in the same field of endeavor of metal laminate formed with a metal foil, Saijo teaches that roughening a metal surface will improve adhesion strength with another layer of the laminate (para 0050) and so it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the surface treated steel foil of Ibaragi and Unno such that a roughed nickel layer is formed at an outermost surface on the first surface side or the second surface side because Saijo teaches that roughening a metal surface will improve adhesion strength with another layer of the laminate. The skilled artisan would understand that improving adhesion between the roughened outer layer of Ibaragi in view of Unno would improve the connection between the current collector and e.g. active material layers of the battery.
Ibaragi modified by Unno and Saijo does not specifically disclose a three-dimensional surface property parameter Sa of the roughened nickel layer is 0.2 µm to 1.3 µm. However, in a similar field of endeavor of laminates including roughened metal members, Sasaki discloses wherein excellent adhesion can be gained when a roughened electroconductive alloy material layer has a surface roughness Sa of e.g. 0.25 µm to 0.4 µm which can help control adhesion between the metal and e.g. a neighboring layer (paras 0022-0023). 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 design the surface treated steel foil of Ibaragi modified by Unno and Saijo such that a three-dimensional surface property parameter Sa of the roughened nickel layer is 0.25 µm to 0.4 µm (which falls within and therefore anticipates the claimed range of 0.2 µm to 1.3 µm) because Sasaki teaches that these values allow for good adhesion with other layers, such as resin, which is applicable to a battery electrode since active material layers deposited on a current collector often contain a binding resin, for example.
Double Patenting
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
12. Claims 1-13 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-13 of copending Application No. 18/557,608.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the combination of copending claims 1-13 read on currently pending claims 1-13.
Instant Claims
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654
805
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193
808
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256
811
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406
811
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356
793
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343
786
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545
839
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156
838
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660
832
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300
803
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Co-pending Claims:
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597
824
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259
853
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213
861
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648
812
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252
841
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760
818
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302
827
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709
858
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The copending claims recite different XRD data from what is claimed, and e.g. do not recite in Claim 1 the same Fe planes and Fe1Ni1 planes, and do not recite “an orientation index in X-ray diffraction of a (220) plane of Fe1Ni1 in the surface having the iron-nickel alloy layer is not less than 1.0” but these limitation is seen as an inherent property to the material of the copending and instant claims. Since the two inventions are made in substantially the same way (see at least e.g. para 0089 of copending claims and 0098 of the instant claims claims), the skilled artisan would expect the XRD data materials to be substantially the same, even if not identical.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Okamatsu US PG Publication 2018/0062121 discloses a surface-treated ultra low carbon steel sheet having thickness of 250 microns (barely thicker than a foil), and being subjected to the same conditions as the instant invention to form a nickel layer on top of an Fe-Ni diffusion layer (e.g. alloy) (see entire disclosure and Example 13 in particular, paras 0110-0123).
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
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