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 Objections
Claim 9 is objected to because “rolling gap spaces” as used in claim 10 and 11 is inconsistent terminology with “rolling gap sizes” as used in claim 9. 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 3, and 9-11 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 3 recites the limitation "the first rolling mill unit and the at least second rolling unit" in page 1, line 25. The second rolling mill unit was introduced in claim 1 in the alternative. The second rolling mill unit may not be part of the invention; thus, it is unclear if the second rolling unit is being positively claimed. For the purposes of examination, the limitation will be interpreted as though it read “the first rolling mill unit or the first rolling mill unit and the one or more second rolling unit”. All claims dependent of claim 3 are likewise rejected.
Claim 9 recites the limitation " the first rolling mill unit and the second rolling unit" in page 2, line 12. The second rolling mill unit was introduced in claim 1 in the alternative. The second rolling mill unit may not be part of the invention; thus, it is unclear if the second rolling unit is being positively claimed. For the purposes of examination, the limitation will be interpreted as though it read “the first rolling mill unit or the first rolling mill unit and the one or more second rolling unit”. All claims dependent of claim 9 are likewise rejected.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 3-7, 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sachdev et. al. (US 2023/0140811), hereafter referred to as “Sachdev”, in view of Kim et. al. (US 11,495,783), hereafter referred to as “Kim”.
Re Claim 1, Sachdev discloses a method for producing (“methods of making a wide metal sheet” [0002]) a low roughness lithium metal material anode (“a lithium metal electrode” [0023]) via multiple compressions comprising: compressing, by a first rolling mill unit (pair of rollers 1142, see Fig. 10 illustrated below) of a rolling mill system, a lithium metal (“the metal comprises lithium” [0019]) material (sheet precursor 800, 1140) having an initial material thickness (first thickness 308) and initial material surface roughness (the sheet precursor of Sachdev inherently has an initial surface roughness as all materials have a surface roughness) into a compressed lithium metal material having a first compressed material thickness (second thickness 910), wherein the first compressed material thickness is less than the initial material thickness (The second thickness is less than the first thickness" [0004,0023]); and compressing, by the first rolling mill unit or one or more second rolling mill units (pair of rollers 1142, see Fig. 10 illustrated below) of the rolling mill system, the compressed lithium metal material one or more additional times into a further compressed lithium metal material having a final compressed material thickness and a final material surface roughness (“each pair of rollers 1142 may facilitate further reduction in thickness and/or roughness of the sheet precursor 1140" [0083]), wherein the final compressed material thickness having a value at or between 5 micrometers and 200 micrometers ("The second thickness 910 may be less than or equal to about 100 µm" [0074]) and is less than the initial compressed material thickness (“The second thickness is less than the first thickness" [0004,0023]) and wherein the final material surface roughness is smoother than the initial material surface roughness (“the use of multiple sequential pairs of rollers that progressively decrease in roughness." [0076]).
Sachdev does not explicitly disclose that the final material surface roughness is characterized by an average roughness (Ra) value of less than or equal to 1.0 micrometers and a maximum roughness (Rz) value of less than or equal to 5.0 micrometers.
Kim teaches that a roller with a surface roughness of 1 micrometer creates a material surface roughness characterized by an average roughness value of 0.66 micrometers and a maximum roughness value of 0.77 micrometers and that a roller with a surface roughness of 0.4 micrometers creates a material surface roughness characterized by an average roughness value of 0.45 micrometers and a maximum roughness value of 0.47 micrometers (experimental data from Fig. 3).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Sachdev to incorporate the teachings of Kim by having the first rolling mill unit have a surface roughness of 1 micrometer and having the second rolling mill unit have a surface roughness of 0.4 micrometers in order to have a smoother surface.
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Fig. 10 of Sachdev, illustrated
Re Claim 3, Sachdev in view of Kim discloses the method according to claim 1 (see rejection of claim 1 above) and Sachdev further discloses that the lithium metal material is introduced to the first rolling mill unit and the one or more second rolling mill units of the rolling mill system in a single mechanical direction via a single pass (see Fig. 10, illustrated above).
Re Claim 4, Sachdev in view of Kim discloses the method according to claim 3 (see rejection of claim 3 above) and Sachdev further discloses that wherein the lithium metal material is introduced to the rolling mill system without folding the lithium metal material and/or without introducing the lithium material in a bi-directional manner (the method as described in Sachdev does not fold the metal sheet nor introduce it in a bidirectional manner).
Re Claim 5, Sachdev in view of Kim discloses the method according to claim 1 (see rejection of claim 1 above) and Sachdev further discloses that the average roughness value and maximum roughness value exhibited by the further compressed lithium metal material are both reduced by each compression performed by the first rolling mill unit and/or the one or more second rolling mill units. (“the use of multiple sequential pairs of rollers that progressively decrease in roughness." [0076])
Re Claim 6, Sachdev in view of Kim discloses the method according to claim 1 (see rejection of claim 1 above) and Sachdev further discloses that the first rolling mill unit and/or the one or more second rolling mill units is a tandem rolling mill device (pair of rollers 1142).
Re Claim 7, Sachdev in view of Kim discloses the method according to claim 1 (see rejection of claim 1 above) and Sachdev further discloses that the lithium metal material is a lithium metal workpiece and/or at least a portion of lithium metal foil ("the metal sheet 900 may be a metal foil" [0077]).
Re Claim 12, Sachdev in view of Kim discloses the method according to claim 1 (see rejection of claim 1 above) and Sachdev further discloses further comprising manufacturing a lithium metal anode from the further compressed lithium metal material ("The individual sheets may be used as electrodes (e.g., a lithium metal electrode)." [0077] and "In one example, a negative electrode includes metallic lithium” [0051]).
Re Claim 13, Sachdev in view of Kim discloses the method according to claim 12 (see rejection of claim 12 above) and Sachdev further discloses that the lithium metal anode is configured for use in a lithium-ion battery, a lithium sulfur battery, a lithium air battery, or a solid-state battery ("The lithium-ion battery may be a lithium-metal battery or cell." [0051]).
Re Claim 14, Sachdev discloses a method for controlling a compression rate of lithium metal material comprising: introducing a lithium metal material (“the metal comprises lithium” [0019]) having an initial material thickness (materials inherently have a thickness) and initial material surface roughness (the sheet precursor of Sachdev inherently has an initial surface roughness as all materials have a surface roughness) into a first rolling mill unit (pair of rollers 1142) of a rolling mill system (see Fig. 10 illustrated above); compressing, by the first rolling mill unit (pair of rollers 1142), the lithium metal material (“the metal comprises lithium” [0019]) into a compressed lithium metal material having a first compressed material thickness (first thickness 308) and first compressed material surface roughness (materials inherently have a roughness), introducing the compressed lithium metal material into either i) the first rolling mill again or ii) one or more second rolling mill unit of the rolling mill system that is positioned in series with the first rolling mill unit (pair of rollers 1142, see Fig. 10 illustrated above); and compressing, by the first rolling mill unit or the one or more second rolling mill units (pair of rollers 1142, see Fig. 10 illustrated below), the compressed lithium metal material one or more additional times into a further compressed lithium metal material having a final compressed material thickness (second thickness 910), and a final material surface roughness (“each pair of rollers 1142 may facilitate further reduction in thickness and/or roughness of the sheet precursor 1140" [0083]), wherein the final compressed material thickness having a value at or between 5 micrometers and 200 micrometers ("The second thickness 910 may be less than or equal to about 100 µm" [0074]) and is less than the initial compressed material thickness (“The second thickness is less than the first thickness" [0004,0023], and ) and wherein the final material surface roughness is smoother than the initial material surface roughness (“the use of multiple sequential pairs of rollers that progressively decrease in roughness." [0076]).
Sachdev does not explicitly disclose that the final material surface roughness is characterized by an average roughness (Ra) value of less than or equal to 1.0 micrometers and a maximum roughness (Rz) value of less than or equal to 5.0 micrometers.
Kim teaches that a roller with a surface roughness of 1 micrometer creates a material surface roughness characterized by an average roughness value of 0.66 micrometers and a maximum roughness value of 0.77 micrometers and that a roller with a surface roughness of 0.4 micrometers creates a material surface roughness characterized by an average roughness value of 0.45 micrometers and a maximum roughness value of 0.47 micrometers (experimental data from Fig. 3).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Sachdev to incorporate the teachings of Kim by having the first rolling mill unit have a surface roughness of 1 micrometer and having the second rolling mill unit have a surface roughness of 0.4 micrometers in order to have a smoother surface.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sachdev (US 2023/0140811) in view of Kim (US 11,495,783) as applied to claim 1 above, and further in view of Hagerman et. al (US 4,474,845), hereafter referred to as “Hagerman”.
Re Claim 2, Sachdev, in view of Kim, disclose the method of claim 1 (see rejection of claim 1 above), but fail to disclose that the lithium metal material is repeatedly introduced to the first rolling mill unit in a one-way mechanical direction via multiple passes.
Hagerman teaches that the lithium metal material is repeatedly introduced to the first rolling mill unit in a one-way mechanical direction via multiple passes (“a method in which the workpiece is fed between compacting rollers or other compacting means a plurality of times with the same lateral orientation (i.e., in the same direction) on each pass” Col. 6, Lines 43-47).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Sachdev in view of Kim to incorporate the teachings of Hagerman to repeatedly introduce the material to the first rolling mill unit for the purpose of saving cost by only using one rolling unit.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sachdev (US 2023/0140811) in view of Kim (US 11,495,783) as applied to claim 1 above, and further in view of Honma et. al. (US2014/0079625), hereafter referred to as “Honma”.
Re Claim 8, Sachdev, in view of Kim, disclose the method of claim 1 (see rejection of claim 1 above), but fail to explicitly disclose that the further compressed lithium metal material exhibits a reduction in the number of grains, as compared to the lithium metal material and compressed lithium metal material, after being compressed by one or more of the first rolling mill unit and the one or more second rolling mill units.
Honma teaches that the further compressed lithium metal material exhibits a reduction in the number of grains (“grain refinement” [0041]), as compared to the lithium metal material and compressed lithium metal material, after being compressed by one or more of the first rolling mill unit and the one or more second rolling mill unit. (“A known method may be used in the grain refinement. In particular, the volume average particle diameter of the lithium compound may be reduced by crushing” [0041] and crushing is later disclosed to be done by a roller mill [0042] such as in the claimed invention).
Sachdev, in view of Kim, discloses compressing the lithium metal material via rolling mill units. Honma teaches that compression via rolling units causes a reduction in the number of grains. It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the use of the method disclosed by Sachdev, in view of Kim, would cause the further compressed lithium material to exhibit a reduction in the number of grains as compared to the lithium metal material and the compressed lithium metal material.
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sachdev (US 2023/0140811) in view of Kim (US 11,495,783) as applied to claim 1 above, and further in view of Olsen et al. (US 5,616,366), hereafter referred to as “Olsen”.
Re Claim 9, Sachdev in view of Kim discloses the method according to claim 1 (see rejection of claim 1 above) and Sachdev further discloses that the first rolling mill unit and the one or more second rolling mill units are positioned in series (see Fig. 10, illustrated above), but fails to explicitly disclose that the rolling mill units are configured with incrementally decreasing rolling gap sizes such that the lithium metal material is incrementally compressed by the rolling mill system; however, Sachdev discloses each pair of rollers facilitating further reduction in thickness and/or roughness (“each pair of rollers 1142 may facilitate further reduction in thickness and/or roughness of the sheet precursor 1140" [0083]),.
Olsen teaches that rolling mill units are configured (“The roller 126 is mounted on a support 134 which permits adjustment of the roller 126 with respect to the substrate 114, spools 112, 120 and roller 125” Col. 11, Lines 9-11) with rolling gap sizes such that the lithium metal material is compressed by the rolling mill system (“by positioning between rollers with a known gap to define a constant thickness” Col. 4, Lines 9-11).
Sachdev in view of Kim discloses a device that contains every element of the claimed invention except for explicitly disclosing that the incremental compression of the rolling mill system is accomplished by incrementally decreasing rolling gap sizes. Olsen discloses a configuration that adjusts the gap between the rollers to compress the lithium metal sheet and thereby define the sheet’s thickness. Adjusting the gap between the rollers to define the thickness of the metal sheet was known in the art. It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added the support of Olsen to the rolling mill units of Sachdev in view of Kim to adjust the gap between the rollers to apply compression and incrementally decrease the thickness of the lithium metal.
Re Claim 10, Sachdev in view of Kim in further view of Olsen discloses the method according to claim 9 (see rejection of claim 9 above) and Sachdev in view of Kim in further view of Olsen further discloses that the compression rate applied to the lithium metal material is controlled by incrementally decreasing the rolling gap spaces associated with working roller components of the first rolling mill unit and/or the one or more second rolling mill units (Changing the size of the roller gap inherently changes the amount of compressive force/compression rate).
Re Claim 11, Sachdev in view of Kim in further view of Olsen discloses the method according to claim 10 (see rejection of claim 10 above) and Sachdev in view of Kim in further view of Olsen further discloses that that a rolling gap space formed by the positioning of an upper roller component and a lower working roller component of the first rolling mill unit and/or the one or more second rolling mill unit is adjusted to incrementally control the compression rate applied to the lithium metal material. (Changing the size of the roller gap inherently changes the amount of compressive force/compression rate)
Response to Arguments
Applicant's arguments filed March 16th, 2026 have been fully considered but they are not persuasive. Applicant argued:
Regarding the rejection of independent claims 1 and 14 under 35 U.S.C. § 103, it is respectfully submitted that the combination of Sachdev and Kim fails to teach or suggest the average roughness (Ra) limitation as recited. While the Office Action relies on Kim for this teaching, a review of Kim's disclosure reveals that the reference is silent regarding Ra (arithmetic average roughness) values. Instead, Kim's measurements and experimental data, such as those in Figure 3, are explicitly identified as "Rz" values, which are calculated as the mean of maximum peak-to-valley heights within a moving distance. Because Kim focuses exclusively on Rz and does not mention or provide an Ra parameter, Applicant respectfully submits that the cited references do not support a finding that this element is taught or suggested.
Applicant argued that Kim does not teach that the final material surface roughness is characterized by an average roughness value of less than or equal to 1.0 micrometers as claimed by claims 1 and 14 because the data presented by Kim are not average roughness values. However, Kim teaches “a mean value of a maximum mountain height and a minimum mountain height within the moving distance and thereby to calculate the surface roughness value” ([0084]). A mean value of a maximum mountain height and a minimum mountain height falls within the broadest reasonable interpretation of “an average surface roughness” as claimed by the applicant.
Furthermore, it is respectfully submitted that the proposed combination of Sachdev and Kim involves fundamentally different material classes, which further undermines the suggested mapping of these limitations. Notably, independent claims 1 and 14 are directed to the processing of a "lithium metal material," which is a highly ductile alkali metal. In contrast, the rolling process described in Kim is applied to an "electrode active material 12" coated onto a "collector 11," which typically comprises particulate active materials bound by polymeric binders deposited on a metallic substrate. Given the vastly different mechanical properties of these materials (e.g., yield strength, ductility, plastic flow, and surface restructuring durin deformation), it is respectfully submitted that a person of ordinary skill in the art would not expect the surface roughness results of a composite coating in Kim to accurately predict or guide the compression of bare lithium metal material as claimed. Moreover, the Examiner's stated motivation to combine the cited references-"in order to have a smoother surface"-does not provide rationale for why Kim's specific roughness values for electrode coatings would be applicable to lithium metal, particularly as these references are directed to solving unrelated technical problems (e.g., Sachdev's focus on sheet width versus Kim's focus on coating reproducibility).
Applicant argued that it would be improper to combine Kim and Sachdev because Sachdev and Kim involve “fundamentally different material classes”.
To the extent that applicant’s argument is the Sachdev and Kim are not analogous art, it has been held that a prior art reference must either be in the field of the inventor' s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the inventor’s field of endeavor is producing an electrode (Claim 1 and Claim 14). Sachdev (“The individual sheets may be used as electrodes (e.g., a lithium metal electrode)” [0078]) and Kim are (“an object of the present invention is to provide a system and method for manufacturing an electrode” [0007]) also in this field of endeavor, so it is proper to combine them.
To the extent that applicant’s argument is that there is no motivation to combine, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Kim shows a correlation between the roughness of the roller and the resulting surface roughness of the further compressed metal material. Fig. 3 of Kim shows that using a roll that has less surface roughness results in a smoother further compressed lithium material. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a smoother roll, such as the roll with a 0.4 micrometer roughness, to obtain a smoother final product.
Finally, Sachdev does not teach or suggest the recited parameters within the specific context of the Applicant's claimed methods. Sachdev's process involves extruding and unfurling a 3D component to create a "sheet precursor," which is functionally distinct from the methods of Applicant's claims 1 and 14 that begin with a lithium metal material-such as an existing foil or workpiece-having a specific "initial material thickness and initial material surface roughness." Sachdev provides no teaching regarding the surface roughness achievable through multiple incremental compressions of lithium metal material, nor does Sachdev disclose or suggest the specific Ra and Rz parameters recited in the claims. Kim, as discussed above, does not cure this deficiency, as Kim's roughness data pertains to electrode active material coatings rather than lithium metal and does not report Ra values. Because the cited references fail to teach the specific roughness parameters for the lithium metal material as it is introduced and processed in the recited steps, it is respectfully submitted that a prima facie case of obviousness has not been established.
As disclosed in the rejections of claims 1 and 14 above, Sachdev discloses lithium metal material having an initial material thickness and an initial material surface roughness. Applicant does not claim a foil or workpiece in claims 1 or 14. However, see the rejection of claim 7 above. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wittenauer et al. (US 5,121,535) teaches multiple passes through a rolling mill unit.
Dairen et al. (US 2012/0246917) explicitly teaches using a roller to adjust the thickness of an electrode band
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/W.D.D./Patent Examiner, Art Unit 3725
/Christopher L Templeton/ Supervisory Patent Examiner, Art Unit 3725
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