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 Interpretation
Claim 11 recites “an electrode tab comprising a weld material” and as best understood the electrode tab is in contact with a weld material at a weld interface or weld location or locations, but does not otherwise comprise a weld material.
Claim 11 recites “a silicon electrode composite material comprising the weld material and a silicon active material layer on a current collector material layer” and as best understood the silicon electrode composite material comprises a weld material at a weld interface or weld location or locations.
Drawings
The drawings are objected to because Figures 7-10 include the character “104” without a line pointing to welding material.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “116” has been used to designate both welds (throughout the specification) and an electrode assembly stack (see page 23, line 14, page 27, line 28, page 27, line 31, page 28, line 4, page 28, line 13, page 29, line 1, and page 29, line 24).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: Page 10, line 14 recites “tin, tin” and one instance of “tin” should be removed.
Appropriate correction is required.
Claim Objections
Claims 14-16 are objected to because of the following informalities:
Claim 14 recites “interface weld materials” in lines 1-2 which should be changed to “weld interface materials” for consistency with claim 11.
Claim 15 recites “the assembly” in line 2. This should be changed to “the electrode assembly”.
Claim 16 recites “the assembly” in line 2. This should be changed to “the electrode assembly”.
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.
Claims 1-19 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.
Claim 1 recites the limitation "the composite material" in lines 10-11. There is insufficient antecedent basis for this limitation in the claim. Assuming "the composite material" is the same as “a first composite electrode material” as recited in line 3, it is recommended to change “a first composite electrode material” to ““a
Claim 1 recites “the electrode tab” in line 10. There is insufficient antecedent basis for this limitation in the claim. The claim previously recites “an electrode tab material” and “the electrode tab” and “electrode tab material” are assumed to be the same for the purpose of examination.
Claim 2 recites “preferably the current collector material” in line 3 and the use of the phrase “preferably” renders the claim indefinite because it is unclear whether the limitations following the phrase are required or not. See MPEP §2173.05(d). As best understood, preferable limitations are optional.
Claims 3 and 4 are rejected by virtue of their dependence on claim 1.
Claim 5 recites “the materials” in line 1 which lacks explicit antecedent basis and it is unclear if “the materials” include all of the aforementioned materials, some of them, or other material. This phrase is also recited in line 3.
Claim 5 also recites “the welding process” which lacks explicit antecedent basis. This could be changed to “the application of ultrasonic energy”.
Claim 6 recites “the welding material” in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 6 is dependent on claim 1 and a welding material is introduced in claim 3.
Claim 6 recites “preferably copper” in lines 3-4 and the use of the phrase “preferably” renders the claim indefinite because it is unclear whether the limitations following the phrase are required or not. See MPEP §2173.05(d). As best understood, preferable limitations are optional.
Claim 7 recites “an alloy comprising nickel, copper, tin, silicon, copper and nickel, copper and tin or copper and silicon” and as written it is unclear how many alloys are listed. This could be changed to “an alloy comprising nickel, copper, tin, and silicon, or an alloy comprising copper and nickel, or an alloy comprising copper and tin or an alloy comprising copper and silicon” or similar.
Claim 8 recites “the first and second weld interface materials” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Claim 8 is dependent on claim 1 while weld interface materials are introduced in claim 2.
Claim 9 is rejected by virtue of its dependency on claim 1.
Claim 10 recites “preferably wherein the silicon layer comprises….” In lines 2-3 and the use of the phrase “preferably” renders the claim indefinite because it is unclear whether the limitations following the phrase are required or not. See MPEP §2173.05(d). As best understood, preferable limitations are optional.
Claim 11 recites “the electrode tab material” in line 3. There is insufficient antecedent basis for this limitation in the claim. The claim previously recites “an electrode tab” in line 2 and they are assumed to be the same thing. It is noted that claims 13 and 14 also recite “electrode tab material” while claim 11 also recites “the electrode tab” in line 7 and again in line 8.
Claim 11 recites “the current collector material” in line 6 which lacks antecedent basis. The claim previously recites “current collector material layer” in line 5 which is assumed to be the same as the current collector material. The claims recite “the current collector material” throughout, but do not mention “current collector material layer” again.
Claim 12 is rejected by virtue of its dependence on claim 11.
Claim 13 recites “an alloy comprising nickel, copper, tin, silicon, copper and tin or copper and silicon” in lines 2-3 and as written it is unclear how many alloys are listed. This could be changed to “an alloy comprising nickel, copper, tin, and silicon, or an alloy comprising copper and tin or an alloy comprising copper and silicon”.
Claim 13 recites “the welding material” in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites “the weld interface material” in line 4. There is insufficient antecedent basis for this limitation in the claim. Claim 13 depends on claim 11 and claim 11 recites both first and second weld interface materials and it is unclear which of these weld interface materials claim 13 is referring to.
Claims 14-16 are rejected by virtue of their dependence on claim 1 or claim 11.
Claim 17 recites “of another composite electrode” in line 3, but there is no “composite electrode” previously recited. As best understood, this is assumed to be “of another composite electrode material”.
Claim 18 also recites “of another composite electrode” in line 4 which is likewise assumed to be “of another composite electrode material”.
Claim 19 is rejected by virtue of its dependence on claim 1.
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 (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 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.
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 1-3, 5, 7, 9, 11-12 and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Morin et al. (US 20200373584) in view of Fukui et al. (US 20070072062).
Regarding claim 1, Morin et al. discloses a method for producing an electrode assembly (anode or cathode, para. [0050], with current collector, para. [0039]) the method comprising the steps of:
a) providing at least a first composite electrode material comprising at least one silicon layer on a current collector material (anodes and cathodes comprise a current collector, such as metallized film, para. [0062], or a metallized substrate current collector, para. [0067], with an anode/cathode material coating/layer, para. [0006], where an anode material may be silicon, pars. [0053] and [0061]) or otherwise Fukui et al. discloses a method for producing an electrode assembly using ultrasonic welding (para. [0027]) having a first composite electrode material comprising at least one silicon layer (active material on the current collector surface comprises silicon, para. [0014]) on a current collector material (metal foil, para. [0014]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Morin et al. wherein the first composite electrode material comprises at least one silicon layer on a current collector material.
The person of ordinary skill in the art would have found it obvious to use conventional configurations for an electrode, such as by using a composite electrode material with a silicon layer to achieve an alloying reaction with lithium (Fukui et al., para. [0005]).
Morin et al. further discloses: b) providing an electrode tab material (such as tab 610, Fig. 13) in contact with the current collector material (such as metallized film layer 614, Fig. 13), to form an aligned electrode assembly stack (Fig. 13, the tab is stacked onto the collector 600); c) applying ultrasonic energy (para. [0066]) to a portion of the aligned electrode assembly stack to form: i) a weld material (such as weld 612); ii) a penetration weld (welding forms divots, para. [0066], which penetrate through layers, para. [0043]) through the electrode tab and/or through the composite material; and/or iii) at least an attachment weld (weld 612, Fig. 13, attachment via divots, para. [0066]) between the weld material (weld 612/divots) and the composite material (such as metalized film 614 of collector 600); thereby forming the electrode assembly.
Regarding claim 2, Morin et al. discloses wherein at least part of the weld material (such as weld 612, Fig. 3, divots, para. [0066]) and the electrode tab material (such as tab 610) form a first weld interface material (the interface being the portion of weld 612/divot in contact with the tab, Fig. 13) and at least part of the weld material and the composite material, preferably the current collector material (metallized film 614), form a second weld interface material (such as the portion of weld 612 in contact with the metallized film of collector 600, the portion of a divot, para. [0066], in contact with the metallized film of the current collector).
Regarding claim 3, Morin et al. discloses the additional step, before the step of applying ultrasonic energy, of providing a welding material (additional metal layers, para. [0046]) in between two composite electrode materials (“a single tab may be connected through welding to multiple layers of current collectors”, para. [0046], “Additional metal layers may be inserted between the current collector film layers, as well, to aid in the weld capabilities between such film stacks”, para. [0046]).
Regarding claim 5, Morin et al. discloses wherein the materials are essentially flat, sheet-like materials, and wherein the materials are aligned and fixed prior to, and during the welding process (as indicated in Fig. 13, fixed such as by pressing the anvil, para. [0048]). Likewise, Fukui et al. discloses the materials are essentially flat, sheet-like materials (tab 4, current collector 12 and electrode mixture 11 are flat as indicated in Fig. 16).
Regarding claim 7, Morin et al. does not appear to expressly disclose a nickel or copper tab.
However, Fukui et al. discloses wherein the electrode tab material comprises nickel (pars. [0028] and [0077]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Morin et al. wherein the electrode tab material comprises nickel or copper or an alloy comprising nickel, copper, tin, silicon, copper and nickel, copper and tin or copper and silicon.
The person of ordinary skill in the art would have found it obvious to select materials for the electrode tab which allow for electrical connection with the current collector as the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) or In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding claim 9, Morin et al. discloses wherein the current collector material comprises copper, tin, chromium, nickel, titanium, stainless steel or silver, or an alloy comprising copper, tin, chromium, nickel, titanium, stainless steel or silver (coated layer of conductive copper, para. [0021]). Likewise, Fukui et al. teaches copper (as well as nickel and titanium, para. [0122]).
Regarding claim 11, Morin et al. discloses an electrode assembly comprising: i) an electrode tab (such as tab 610) comprising a weld material (such as weld 612, Fig. 3, divots, para. [0066]), wherein at least part of the weld material and the electrode tab material form a first weld interface material (the interface being the portion of weld 612/divot, para. [0066], in contact with the tab, Fig. 13); ii) a silicon electrode composite material comprising the weld material (weld 612 is in contact with current collector 600/metallized layer 614, para. [0154]) and a silicon active material layer on a current collector material layer (anodes and cathodes comprise a current collector, such as metallized film, para. [0062], or a metallized substrate current collector, para. [0067], with an anode/cathode material coating/layer, para. [0006], where an anode material may be silicon, pars. [0053] and [0061]) or otherwise Fukui et al. discloses a method for producing an electrode assembly using ultrasonic welding (para. [0027]) having a composite electrode material comprising at least one silicon active material layer (active material on the current collector surface comprises silicon, para. [0014]) on a current collector material layer (metal foil, para. [0014]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Morin et al. wherein the silicon electrode composite material comprises a silicon active material layer on a current collector material layer.
The person of ordinary skill in the art would have found it obvious to use conventional configurations for an electrode, such as by using a composite electrode material with a silicon layer to achieve an alloying reaction with lithium (Fukui et al., para. [0005]).
Morin et al. further discloses wherein at least part of the weld material (such as weld 612, Fig. 13, divots, para. [0066]) and the current collector material (such as collector 600 with metallized film 614, Fig. 13), form a second weld interface material (the weld connects the electrode tab 610 with the metallized layer of the current collector and is in contact with the metallized layer 614, para. [0154], thus forming a second weld interface material); and iii) the weld material adjoining the electrode tab and the current collector material, such that electrode tab (such as tab 610, Fig. 13), composite (collector 600 with metallized layer 614) and weld material (of weld 612) are joined in electrical communication with each other (connected thereto with welds, para. [0154], “a connection between the current collector and a tab structure”, para. [0043]).
Regarding claim 12, Morin et al. discloses wherein the weld material is an ultrasonic weld material (para. [0066]).
Regarding claims 15-16, Morin et al. discloses a battery comprising an electrolyte, a cathode, a separator (Morin et al., para. [0015]) and the assembly obtainable according to the method of claim 1 (see claim 1 comments above) or the assembly according to claim 11 (see comments for claim 11 above).
Regarding claim 17, Morin et al. or the combined teaching of the above-cited references for claim 1 disclose the method further comprises, after step b) and before step c), providing a composite electrode material comprising at least one silicon layer on a current collector material (anodes and cathodes comprise a current collector, such as metallized film, para. [0062], or a metallized substrate current collector, para. [0067], with an anode/cathode material coating/layer, para. [0006], where an anode material may be silicon, pars. [0053] and [0061], Fukui et al., active material on the current collector surface comprises silicon, para. [0014]) in contact with the current collector material of another composite electrode (“A single tab may be connected through welding to multiple layers of current collectors, as well, allowing for the connections of such top and bottom metallized layers within such multi-layer structures (at least two, and any number up to, for instance, 25)”, para. [0046]), to form an aligned electrode assembly stack.
Regarding claim 18, Morin et al. or the combined teaching of the above-cited references for claim 17 discloses the method further comprises repeating the additional step of: providing a composite electrode material comprising at least one silicon layer on a current collector material in contact with the current collector material of another composite electrode at least one time (“at least two, and any number up to, for instance, 25”, para. [0046]).
Regarding claim 19, Morin et al. discloses the method further comprises repeating the step of providing a welding material (additional metal layers, para. [0046]) in between two composite electrode materials (multiple metal layers may be used between multiple composite electrode materials/current collector film layers, para. [0046]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Morin et al. (US 20200373584) in view of Fukui et al. (US 20070072062) as applied to claim 1 above and in further view of Kogetsu et al. (attached translation of WO 2013080459A1).
Regarding claim 4, insomuch as Morin et al. does not disclose wherein the composite material comprises at least one layer of silicon on each of two sides of the current collector material; Kogetsu et al. discloses an electrode (Abstract) where a lead (lead 113) is attached to a current collector (collector 110) and Kogetsu et al. teaches wherein the composite material comprises at least one layer of silicon (silicon based active material layer 111, para. [0010]) on each of two sides of the current collector material (material 110, Fig. 7).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Morin et al. wherein the composite material comprises at least one layer of silicon on each of two sides of the current collector material.
The person of ordinary skill would have found it obvious to include a silicon layer on both sides to allow for reversible lithium alloying on each side (Kogetsu et al., para. [0026]).
Claim 6 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Morin et al. (US 20200373584) in view of Fukui et al. (US 20070072062) as applied to claim 1 or claim 11 above and in further view of Kim et al. (US 20230402616).
Regarding claim 6, Morin et al. discloses welding material (inserted additional metal layers, para. [0046]), but does not expressly disclose what the welding material is other than disclosing it is a metal (para. [0046]).
However, Kim et al. teaches joining a tab material (tab 190) to a current collector material (base film 101 of the current collector, Abstract) using welding material (metal piece 120, Fig. 3, Fig. 4, Abstract) and Kim et al. teaches the welding material may be aluminum (para. [0081]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Morin et al. wherein the welding material comprises aluminum, gold, copper, iron, lithium, manganese, palladium, platinum, thulium, titanium, tungsten, silver, beryllium, magnesium, nickel, silicon and/or zirconium, preferably copper (Kim et al., aluminum, para. [0081]).
The person of ordinary skill in the art would have found it obvious to select materials which allow for electrical connection between various components and layers as the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See Sinclair & Carroll Co. v. Interchemical Corp., supra or In re Leshin, supra.
Regarding claim 13, Morin et al. does not appear to explicitly disclose a nickel or copper electrode tab.
However, the use of copper tabs is known (Morin et al., para. [0145]) and Kim et al. teaches joining a tab material (tab 190) to the current collector material (base film 101) and teaches the tab comprises copper (para. [0125]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Morin et al. wherein the electrode tab material comprises nickel or copper or an alloy comprising nickel, copper, tin, silicon, copper and tin or copper and silicon (copper, Morin et al., para. [0145], Kim et al., para. [0125]).
The person of ordinary skill in the art would have found it obvious to select materials for the electrode tab which allow for electrical connection between other components and layers as the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See Sinclair & Carroll Co. v. Interchemical Corp., supra and In re Leshin, supra.
Morin et al. discloses a welding material (inserted additional metal layers, para. [0046]) or otherwise Kim et al. teaches joining a tab material (tab 190) to the current collector material (base film 101) using welding material (metal piece 120, Fig. 3, Fig. 4, Abstract) where the tab material (tab 190) is welded to the welding material (metal piece 120) and the current collector material (base film 101) by ultrasonic welding (pars. [0073] and [0083]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Morin et al. wherein the electrode assembly comprises a welding material.
The person of ordinary skill in the art would have been motivated to provide a welding material in contact with the composite material in order to improve tensile strength of the weld (Kim et al., pars. [0008] and [0026]) or to facilitate forming welds with the composite material.
Morin et al. does not expressly disclose what welding material (additional metal layers inserted between current collectors, para. [0046]) is used, but Kim et al. further teaches welding material (metal piece 120) may be aluminum (para. [0081]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Morin et al. wherein the current collector material, weld material, the welding material or the weld interface material (at least the welding material) comprises aluminium, gold, copper, iron, lithium, manganese, palladium, platinum, thulium, titanium, tungsten, silver, beryllium, magnesium, nickel, silicon or zirconium (aluminum, Kim et al., para. [0081]).
The person of ordinary skill in the art would have found it obvious to select materials which allow for electrical connection between various components and layers as the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See Sinclair & Carroll Co. v. Interchemical Corp., supra and In re Leshin, supra.
Claims 8 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Morin et al. (US 20200373584) in view of Fukui et al. (US 20070072062) as applied to claim 1 or claim 11 above and in further view of Fujii et al. (attached non-patent literature titled “Interfacial microstructure evolution and weld formation during ultrasonic welding of Al alloy to Cu”).
Regarding claim 8 and claim 14, Morin et al. discloses wherein the first and second weld interface materials (or interface weld materials per claim 14) comprise the electrode tab material (such as tab 610) and the composite material (such as metallized film 614, Fig. 13) or an alloy thereof (the weld 612 will be formed of the base material of the electrode tab 610 and metallized film 614 of the composite material/current collector 600 and the weld material comprises a divot which may span through multiple metal layers, para. [0043]) or otherwise Fujii et al. teaches a method which is analogous art at least because it is reasonably pertinent to ultrasonic welding of materials used in electrodes (Aluminum and copper, Abstract) and Fujii et al. teaches the materials undergo mechanical mixing in regions spanning the interfaces of two materials being welded (Figure 8, step 3, page 239) where the mixing region expands with welding time (page 235, right column).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Morin et al. wherein the first and second weld interface materials comprise the electrode tab material and the composite material or an alloy thereof as a product of mechanical mixing during ultrasonic welding.
The person of ordinary skill in the art would have been motivated to induce greater extents of mixing to generate micro-bonds (Fujii et al., page 236, right column).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Morin et al. (US 20200373584) in view of Fukui et al. (US 20070072062) as applied to claim 1 above and in further view of Bauer (US 20180076464).
Regarding claim 10, Morin et al. does not expressly disclose wherein the silicon layer has an amorphous structure in which nano-crystalline regions exist.
However, Bauer discloses a method of producing an electrode (Abstract) having a copper current collector material (para. [0047]) with a silicon layer (paste containing silicon, para. [0047]) and Bauer further teaches wherein the silicon layer has an amorphous structure in which nano-crystalline regions exist (nanocrystalline amorphous silicon, para. [0047]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the teachings of Morin et al. wherein the silicon layer has an amorphous structure in which nano-crystalline regions exist.
The person of ordinary skill in the art would have found it obvious to select materials which are known to be used as an electrode material as the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See Sinclair & Carroll Co. v. Interchemical Corp., supra or In re Leshin, supra.
The above-cited references do not disclose the optional limitation of preferably wherein the silicon layer comprises up to 30% of nano-crystalline silicon. However, the examiner has found that the specification contains no disclosure of any unexpected results arising therefrom, and that as such the parameters are arbitrary and therefore obvious. Such unsupported limitations cannot be a basis for patentability, because where patentability is said to be based upon particular chosen parameters or upon another variable recited in a claim, the applicant must show that the chosen parameters/variables are critical. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) and MPEP 2144.05(III).
With respect to the limitation of up to 30% of nano-crystalline silicon, it would have been obvious to one of ordinary skill in the art at the time of invention to have provided the electrode of Morin et al. with the range recited in the instant claims, which are now considered at most an optimum choice, lacking any disclosed criticality.
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 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.
Claims 1-9, 15 and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 4-6, 10, 12-13 and 23 of copending Application No. 18/559151 hereinafter “ ‘151” in view of Morin et al. (US 20200373584).
Regarding claims 1-2, 4-9 and 15, ‘151 claims all the limitations of claims 1-2, 4-9 and 15 except that ‘151 does not claim providing an electrode tab material in contact with the current collector material. However, Morin et al. discloses providing an electrode tab material (such as tab 610, Fig. 13) in contact with the current collector material (such as metallized film layer 614, Fig. 13). Therefore, it would have been obvious to modify the claimed invention of ‘151 by providing the electrode tab material in contact with the current collector material.
Regarding claims 3 and 19, ‘151 does not claim the additional step of providing welding material between two composite electrode materials. However, Morin et al. discloses the additional step, before the step of applying ultrasonic energy, of providing a welding material (additional metal layers, para. [0046]) in between two composite electrode materials (“a single tab may be connected through welding to multiple layers of current collectors”, para. [0046], “Additional metal layers may be inserted between the current collector film layers, as well, to aid in the weld capabilities between such film stacks”, para. [0046]) and repeating the step of providing a welding material (additional metal layers, para. [0046]) in between two composite electrode materials (multiple metal layers may be used between multiple composite electrode materials/current collector film layers, para. [0046]). Therefore, it would have been obvious to modify the claimed invention of ‘151 by providing welding material between two composite electrode materials and repeating the step of providing a welding material between two composite electrode materials.
Regarding claims 17 and 18, ‘151 does not claim providing a composite electrode material comprising at least one silicon layer on a current collector material in contact with the current collector material of another composite electrode, to form an aligned electrode assembly stack. However, Morin et al. discloses providing a composite electrode material comprising at least one silicon layer on a current collector material (anodes and cathodes comprise a current collector, such as metallized film, para. [0062], or a metallized substrate current collector, para. [0067], with an anode/cathode material coating/layer, para. [0006], where an anode material may be silicon, pars. [0053] and [0061]) in contact with the current collector material of another composite electrode (“A single tab may be connected through welding to multiple layers of current collectors, as well, allowing for the connections of such top and bottom metallized layers within such multi-layer structures (at least two, and any number up to, for instance, 25)”, para. [0046]), to form an aligned electrode assembly stack and repeating the additional step of: providing a composite electrode material comprising at least one silicon layer on a current collector material in contact with the current collector material of another composite electrode at least one time (“at least two, and any number up to, for instance, 25”, para. [0046]). Therefore, it would have been obvious to modify the claimed invention of ‘151 by providing a composite electrode material comprising at least one silicon layer on a current collector material in contact with the current collector material of another composite electrode, to form an aligned electrode assembly stack and repeating the additional step of: providing a composite electrode material comprising at least one silicon layer on a current collector material in contact with the current collector material of another composite electrode at least one time.
This is a provisional nonstatutory double patenting rejection.
Claim 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/559151 hereinafter “ ‘151” in view of Morin et al. (US 20200373584) as applied to claim 1 above and in further view of Bauer (US 20180076464).
Regarding claim 10, ‘151 does not claim wherein the silicon layer has an amorphous structure in which nano-crystalline regions exist. However, Bauer teaches wherein the silicon layer has an amorphous structure in which nano-crystalline regions exist (nanocrystalline amorphous silicon, para. [0047]). Therefore, it would have been obvious to modify the claimed invention of ‘151 wherein the silicon layer has an amorphous structure in which nano-crystalline regions exist.
Claims 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-17 and 20-21 of copending Application No. 18/559151 hereinafter “ ‘151”.
Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of claim 11 are met by the claims of ‘151.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 16 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/559151 hereinafter “ ‘151” in view of Morin et al. (US 20200373584).
Regarding claim 16, insomuch as ‘151 does not explicitly claim the electrode assembly is used in a battery; Morin et al. further discloses a battery comprising an electrolyte, a cathode, and a separator (Morin et al., para. [0015]). Therefore, it would have been obvious to modify the claimed invention of ‘151 wherein the electrode assembly is used in a battery.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Tokhonov et al. (US 8221915) discloses ultrasonically welding aluminum or nickel tabs to a current collector and where an anode current collector may comprise silicon as an active material (claim 1).
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/P.M.M./Examiner, Art Unit 1774
/CLAIRE X WANG/Supervisory Patent Examiner, Art Unit 1774
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