DETAILED ACTION
In the amendment filed on December 23, 2025, claims 1 – 2, 4 – 10 are pending. Claims 1, 2, 4, 5, 7, 8, 9 have been amended and claim 3 has been canceled. Claim 10 has been added.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The rejections of the claims under 35 USC § 112 in the previous Office Action are withdrawn due to Applicant amendment.
Claim Rejections - 35 USC § 103
The rejections of the claims under 35 USC § 103 in the previous Office Action are withdrawn due to Applicant amendment.
Claim 1, 2, 5, 7, 10 is/are newly rejected, as necessitated by amendment, under 35 U.S.C. 103 as being unpatentable over Cherkouk et al. US 2020/0395608 A1 (hereinafter “Cherkouk”) in view of Jiménez et al. “A Step toward High-Energy Silicon-Based Thin Film Lithium Ion Batteries” ACS Nano 2017, 11, 4731−4744 (hereinafter “Jiménez”).
Regarding claims 1, 10:
Cherkouk is directed to methods for producing silicon-based anodes for secondary batteries (Abstract; [0001] – [0002]). Cherkouk discloses that their method comprises:
depositing a layer of silicon onto a metal substrate or onto a buffer layer in the form of carbon-containing layers, metallic layers, or oxidic layers at a silicon-layer interface between the metal substrate and the silicon layer ([0021] – [0022], [0025], [0036]);
heating the metal substrate and performing an energy-intensive treatment [accelerated annealing] – simultaneously in some embodiments – onto the silicon layer surface ([0023], [0056], [0111]);
generating amorphous silicon or crystalline silicon at the silicon layer due to the energy-intensive treatment ([0024]); and
depositing one or more additional buffer layers [thin layer or thin stratum] in the form of carbon-containing layers, metallic layers, or oxidic layers at one silicon-layer interface or at both silicon-layer interfaces ([0025], [0036]).
The energy-intensive treatment may be performed by a flash lamp capable of supplying a flash duration between 0.2 ms and 20 ms at an energy density of 0.6 J/cm2 to 160J/cm2 and emitting at a spectrum between the visible spectrum and infrared spectrum (400 nm – 800 nm) for a power of up to 12 MW ([0029], [0042], [0043]). Cherkouk further discloses that flash lamp annealing favors a metal-induced layer-exchange process/metal crystallization ([0044]). As a buffer layer can be present between such a metal substrate and the silicon layer, Cherkouk suggests that the same metal crystallization occurs with the buffer layer. Cherkouk discloses that the annealing process allows for integrating current leads with anodes in one material, and also reduces the processing requirements and costs to crystallize silicon onto metal layers and buffer layers.
Cherkouk does not expressly teach that a further silicon layer and subsequent accelerated annealing are performed and then optionally repeated at least once1; and that the buffer layer is deposited at a thickness between 5 to 200 nm.
Jiménez is directed to lithium-ion batteries and particularly to silicon anodes (Abstract; page 4731 1st col). Jiménez discloses a method of forming a silicon anode comprising depositing a Si/C/Si multilayer film, wherein the multilayer film comprises a first silicon layer, a second carbon layer, and a subsequent second silicon layer (page 4742 1st col; Fig. 2). The thickness of the carbon layer may be 5, 10 or 50 nm, which corresponds to the amount of carbon present in the overall electrode (page 4733 2nd col). The inclusion of carbon improves the electronic conductivity of the multilayer electrode stack as well as improve mechanical stability of the anode by, as implied in Cherkouk, helping buffer the volume expansion of Si layers within Si anodes that are incorporated in a given lithium-ion battery (page 4731 2nd col – page 4732 1st col, page 4733 2nd col; Abstract’s Figure).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Cherkouk by depositing a carbon buffer layer at 5, 10, 15 nm [meeting required thickness] specifically (and the corresponding compositional amount) and then a subsequent silicon layer afterwards [depositing a further silicon layer] because Jiménez teaches that a film structure of Si/C/Si in a multilayer film improves the electrical conductivity of the overall silicon anode.
Optionally and additionally, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have deposited the carbon film(s) at the claimed range of thickness as a matter of routine experimentation in order to optimize long term charge/discharge (page 4737 1st col), cycling performance (page 4737 2nd col), and first cycle coulombic efficiency (page 4739 1st col), which engage in known trade-offs. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
With regards to the repetition of the accelerated annealing, as discussed above, Cherkouk suggests that the annealing process aids in crystallization of silicon to adjacent buffer layer, including an underlying buffer layer.
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Cherkouk in view of Jiménez by additionally repeating the accelerated annealing to anneal the further silicon layer because Cherkouk suggests that each annealing process helps to crystalize silicon at the interfaces between silicon and buffer layers, thus integrating current leads; especially in view of Jiménez’s teaching that the carbon layers act to improve overall electrical conductivity as discussed above.
Cherkouk discloses that the annealing process allows for integrating current leads with anodes in one material, and also reduces the processing requirements and costs to crystallize silicon onto metal layers and buffer layers.
Regarding claim 2, 10:
While Cherkouk in view of Jiménez does not expressly teach the repetition of depositions of further silicon layers and subsequent annealing, Jiménez discloses that a multilayer stack offers improved conductivity and improved mechanical stability dependent on the amount of silicon and carbon is within the multilayer stack as represented by their relative thicknesses to one another (page 4733 2nd col, page 4739). Thus the deposition of a further silicon layer, buffer layers and annealing amount to a duplication of steps and resultant parts of a multilayer stack. Outside a showing of unexpected results, a prima facie case of obviousness exists where steps and their resultant products are merely duplicates. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). See also Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959).
Regarding claim 5:
Cherkouk discloses that the flash lamp may operate at with a flash duration between 0.2 ms and 20 ms at an energy density of 0.6 J/cm2 to 160J/cm2 and emitting at a spectrum between the visible spectrum and infrared spectrum (400 nm – 800 nm) for a power of up to 12 MW ([0029], [0042], [0043]). Furthermore, Cherkouk discloses that the [pre]heating can heat the substrate to a temperature between 200 to 1000°C ([0022]). Each of the parameters overlap with the claimed conditions for flash lamp annealing.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66(Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 7:
Cherkouk discloses that after deposition of the silicon layer and before annealing by flash lamp, a buffer layer of a metallic, oxidic, carbon-containing or polymer containing layer takes place ([0047] – [0048]).
Claims 4 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cherkouk in view of Jiménez as applied to claims 1, 2, 5, 7, 10 above, and further in view of Thai et al. US 2022/0302439 A1 (hereafter “Thai”).
Regarding claims 4 and 8:
Cherkouk discloses that after deposition of the silicon layer and before annealing by flash lamp, a buffer layer of a metallic, oxidic, carbon-containing or polymer containing layer takes place ([0047] – [0048]).
Cherkouk in view of Jiménez does not expressly teach that the thin stratum/buffer layer is formed from one of the species claimed in instant claim 4.
Thai is directed to method for forming metal coated anode active materials (Abstract; [0002] – [0006], [0044]). As shown in Fig. 3, Thai discloses a step of disposing a metal layer 305 onto an active material 303 ([0043] – [0046]). The active material may be silicon ([0041]) and the metal layer is deposited prior to pyrolysis [heat treatment] of the anode material ([0044]). The metal may comprise or be inter alia tungsten, gold, silver, nickel or any other metal that would not adversely react with components of an active material layer ([0044]). The thickness of the layers may range from several to tens of nanometers or 100 to 200 nm ([0046]). Like Jiménez, the metal layer allows for better electrode conductivity, better thermal conductivity and improved cycle capacity ([0046]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Cherkouk in view of Jiménez by having a buffer layer be a metal such as tungsten, gold, silver, or nickel or alternatively substitute the carbon layer of Cherkouk in view of Jiménez with such a metal layer because, like Jiménez, Thai teaches that such a layer on the silicon anode structure allows for better electrode conductivity, better thermal conductivity and improved cycle capacity after a thermal treatment step, which flash annealing is a form thereof; and there is a reasonable expectation of success that such a metal layer would improve silicon layers of the silicon anode in a similar way to that of Cherkouk.
Claims 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cherkouk in view of Jiménez as applied to claims 1, 2, 5, 7, 10 above, and further in view of Lee et al. US 2012/0115259 A1 (hereafter “Lee”) and Tanaka US 2001/0026835 A1 (hereafter “Tanaka”).
Regarding claim 6:
As discussed above, Cherkouk discloses that the tempering is performed by energy intensive irradiation with a rapid thermal processing such as flash lamp annealing ([0041] – [0043]). Furthermore, Cherkouk discloses that the [pre]heating can heat the substrate to a temperature between 200 to 1000°C ([0022]).
Cherkouk in view of Jiménez does not expressly teach that the accelerated annealing is a laser annealing accrued out within the recited annealing time and energy density/fluence.
In analogous art, Lee is directed to methods of for fabricating flexible electronic devices, such as secondary batteries (Abstract, [0002]). Lee discloses a method comprising a step of crystallizing a cathode material on a current collector to form a final form of the cathode by either laser irradiation or flash lamp irradiation ([0046], [0050] – [0054], [0062]). Both flash lamp irradiation and laser irradiation are recognized to be methods of rapidly heating a surface for improved battery performance without a high temperature treatment ([0062]). Lee suggests that annealing with laser irradiation helps minimize thermal deformation and/or thermally-induced stresses ([0052])
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Cherkouk in view of Jiménez by having the energy intensive irradiation for tempering be a laser annealing as opposed to flash lamp annealing because Lee teaches that the substitution of flash lamp annealing for laser annealing are both suitable techniques for rapidly annealing films that require annealing that would have yielded predictable results to one of ordinary skill in the art; and because Lee teaches that laser radiation annealing allows for annealing with minimal thermal deformation and/or thermally-induced stresses experienced by substrates having surfaces that are being annealed.
With regards to the annealing time by establishment of a rate of scanning and energy density, Lee discloses that laser irradiation applies thermal energy on the order of a few nanoseconds, and in the form of any of a spot, line or plane; and at energy densities between e.g. 10 – 2000 mJ/cm2 [i.e. 0.001 to 2 J/cm2] ([0051] – [0052]).
In analogues art, Tanaka is directed to laser annealing of amorphous semiconductor films such as silicon films (Abstract; [0004]). Tanaka discloses that part their laser annealing method includes a step of scanning a linear laser beam in a direction perpendicular to the longitudinal direction of the linear beam ([0007], [0008]). An example scanning rate may include a rate of 1.0 mm/s to irradiate at an energy density of e.g. 420 mJ/cm2 ([0017]). In an example, Tanaka discloses performing a pulsed laser annealing method onto a 5 inch square substrate having a silicon oxynitride film at the parameters: pulse width: 30 ns, energy per pulse: 500mJ, beam width: 0.4mm, pulse frequency of 30Hz and scanning rate of 10mm/s ([0066]). Such parameters affect the total amount of energy impinged on a film surface for heating and the amount of time required for heating as would be known to one of ordinary skill in the art.
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Cherkouk in view of Jiménez and Lee by setting an energy density and irradiation time by scanning to the recited parameters as a matter of routine experimentation in order to obtain the desired level of treatment energy to cause a desired change, e.g. crystallization or (in Cherkouk’s case) diffusion, as taught by Tanaka. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cherkouk in view of Jiménez as applied to claims 1, 2, 5, 7, 10 above, and further in view of Kim et al. US 2009/0061319 A1 (hereinafter “Kim”).
Regarding claim 9:
Cherkouk discloses that prior to the deposition of the silicon layer and before annealing by flash lamp, a buffer layer 4b is deposited onto the current collector ([0047] – [0048]). The buffer layer may be a metallic, oxidic, carbon-containing or polymer containing layer.
Cherkouk in view of Jiménez does not expressly teach that the buffer layer is nickel and/or copper.
Kim is directed to silicon thin film anodes for lithium secondary batteries. Kim discloses in embodiments that the anode may comprise a metallic buffer layer 15 interposed between a current collector and the anode active material layer 20 (Fig. 1; [0041]). The anode active material layer may comprise silicon ([0044]) and the metallic buffer layer may be inter alia nickel, copper and an alloy thereof ([0043]). The metallic buffer layer serves to attenuate stress between the anode active material and the current collector and obtain maintain a stability at an interface therebetween ([0043]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Cherkouk by depositing a nickel or copper buffer layer because A.) Kim teaches that layers made of such materials are useful for attenuating stresses between a current collector and a silicon anode and B.) as taught by Kim, the use of copper and/or nickel is known to be suitable for the purpose of being a stress buffering layer. The courts have held that the selection of a known material/device/product based for its intended use supports a prima facie case of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988).
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.
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The rejections of the claims under the ground of non-statutory double patenting are withdrawn due to Applicant amendments
Claims 1, 2, 4, 5, 6, 7, 8, 10 are newly provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 9, 13 of copending Application No. 18/722388 (reference application) in view of Cherkouk, Jiménez and Thai.
The reference application claims substantially teach the subject matter of instant claims 1, 2, 5, 6, 7, 10 except:
the repetition of the steps of deposition and the step of accelerated annealing; and
a step of depositing a thin stratum or metal layer of the recited materials at the recited thickness.
With regards to the repetition of steps:
The repetition of steps, where each step performs the same or similar function, is tantamount to the splitting of processes steps to smaller process steps. In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function manner and result, was held to be not patentably distinguish the processes. Ex parte Rubin 128 USPQ 159 (PO BdPatApp 1959).
With regards to the step of depositing a thin stratum or metal layer of the recited materials at the recited thickness:
Such a teaching is disclosed in Cherkouk and Jiménez as discussed above in the rejection of the claims under 35 USC 103 over Cherkouk in view of Jiménez as well as Cherkouk in view of Jiménez and Thai.
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to consider the present claims 1, 2, 5, 6, 7, 10 and the reference claims as patentably indistinct because Cherkouk, Jiménez and Thai teach that such layers with such materials allows for better electrode conductivity, better thermal conductivity and improved cycle capacity after a thermal treatment step, which flash annealing is a form thereof.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 9, 13 of copending Application No. Application No. 18/7522388 (reference application) in view of Cherkouk, Jiménez, Kim and optionally Thai.
Regarding claim 9, the reference claims substantially teach the instant claims but do not teach:
the repetition of the steps of deposition and the step of accelerated annealing;
a step of depositing a thin stratum or thin layer of the recited materials at the recited thickness;
a step of depositing a nickel and/or copper layer before deposition of the first silicon layer.
With regards to the repetition of steps and to the step of depositing a thin stratum or thin layer of the recited materials at the recited thickness:
The limitations shared between parent claim 1 and dependent claim 9 are rendered patentably indistinct for the reasons discussed above, mutatis mutandis.
With regards to the step of depositing a nickel and/or copper layer before deposition of the first silicon layer.
Such a teaching is disclosed in Cherkouk and Kim.
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to consider the present claim 9 and the reference claims as patentably distinct because Cherkouk and Kim discloses that the deposition of buffer layers between a current collector and the silicon anode, and Kim teaches that the buffer layer serves to attenuate stress between the anode active material and the current collector and obtain maintain a stability at an interface therebetween.
Claims 1 – 2, 4 – 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 11, 18 – 20 of copending Application No. 18/681998 (reference application) in view of Jiménez.
The reference application claims substantially teach the subject matter of instant claims 1 – 10 except:
the repetition of the steps of deposition and the step of accelerated annealing; and
that the deposited thin stratum or thin layer a step of depositing a thin stratum or metal layer of the recited materials at the recited thickness.
With regards to the repetition of steps:
The repetition of steps, where each step performs the same or similar function, is tantamount to the splitting of processes steps to smaller process steps. In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function manner and result, was held to be not patentably distinguish the processes. Ex parte Rubin 128 USPQ 159 (PO BdPatApp 1959).
With regards to the deposited thin stratum or thin layer of the recited materials at the recited thickness:
Such a teaching is disclosed Jiménez as discussed above in the rejection of the claims under 35 USC 103 over Cherkouk in view of Jiménez.
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to consider the present claims and the reference claims as patentably indistinct because Jiménez suggests that such a difference between the present claims and the reference claims is a matter of routine experimentation in order to optimize long term charge/discharge (page 4737 1st col), cycling performance (page 4737 2nd col), and first cycle coulombic efficiency (page 4739 1st col), which engage in known trade-offs. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claims and the co-pending application claims is a repetition of the step of deposition and the step of accelerated annealing. However, the repetition of steps, where each step performs the same or similar function, is tantamount to the splitting of processes steps to smaller process steps. In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function manner and result, was held to be not patentably distinguish the processes. Ex parte Rubin 128 USPQ 159 (PO BdPatApp 1959).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, filed December 23, 2025, with respect to the rejection(s) of the claim(s) under USC §103 over Cherkouk in view of Edgerton US 20160013477 A1 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Jiménez and Kim.
Applicant's remaining arguments filed December 23, 2025 have been fully considered but they are not fully persuasive.
Applicant’s remaining principal arguments are:
a.) Regarding claims 4 and 8, the presence of carbon in minimum concentrations, as taught in Thai, would prevent Si from reacting with metals. Furthermore, in addition to the disclosure of Thai being limited to the formation of carbides and oxides, nickel is shown to have a deleterious effect on conductivity after pyrolysis.
b.) Regarding claims 4 and 8, the present application, the Cu or Ni layer is not used to increase conductivity. The layers are already sufficiently conductive due to their high conductivity, which, for example, enables DC sputtering in the first place. Gold, silver, nickel and many other metals react with the 'active material Si' and form silicides. The reason for the metal layers in the present application is therefore completely different from that assumed in Thai.
c.) With regard to claim 6, the tempering is necessary in the present application in order to achieve a reaction between Si and the metal (and the substrate), such as to obtain high adhesion of the active layer. Applicant submits that the combination of a large number of publications is actually a reason for the novelty of the present application.
In response to the applicant's arguments, please consider the following comments.
a.) A prior art reference that "teaches away" from the claimed invention is a significant factor to be considered in determining obviousness. However, "the nature of the teaching is highly relevant and must be weighed in substance. A known or obvious composition [or resultant product from a process] does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
As a first matter, the Examiner notes that claims 4 and 8 include far more metals coatings onto silicon anodes than the nickel coating onto silicon as disclosed in Thai. The scope of the Applicant’s argument concerning Thai is therefore not commensurate with the scope of the subject matter claimed in present claims 4 and 8.
As a second matter, the Examiner notes that while Thai does disclose an embodiment of their method that includes the pyrolysis of a silicon-containing and carbon-containing slurry. Cherkouk however discloses the deposition of a silicon layer, and Jiménez teaches that the silicon layer may be deposited by magnetron sputtering. "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). The proposed prior art modification of Cherkouk does not therefore require the pyrolysis of the anode pre-material of Thai. The context of the argument concerning the mixing of carbon and metal which is not necessarily required in the proposed prior art modification of Cherkouk, especially in view of Thai’s teaching that copper metal confers its advantage regardless of the presence of carbon and regardless of the formation of carbides or oxides ([0046] “copper acts as a connective conductive web that can act as an electrical contact to several silicon particle or phases …”).
Finally, the Examiner notes that Thai in itself provide evidence to the advantages of copper coated anode in the context of their process, which is within the scope of the claim (Fig. 4B; [0050]). Even if, arguendo, the discussion of a nickel coated article is indication of a disadvantage, the discussion of copper coated anodes demonstrate advantage. For this reason, the Examiner additionally maintains their position that a prima facie case of obviousness exists over the claimed subject matter.
b.) The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
c.) In response to applicant's argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
1 The Examiner notes that under the broadest reasonable interpretation, the step of depositing a further silicon layer and subsequent accelerated annealing thereof is not required to be deposited on the earlier-referenced thin stratum or thin layer, as no antecedent basis or express timing requirements are present for such an interpretation.
Prosecution Insights