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 .
Status of Claims
Claim(s) 1-9 are currently pending.
Claim(s) 3 and 5-9 have been amended.
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.
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20080145757 A1, Mah et al. (hereinafter “Mah”) in view of JP2008186732A, Kawai et al. (hereinafter “Kawai”).
Regarding claim 1
Mah teaches a negative electrode (corresponding to an anode) for a secondary (lithium) battery comprising a negative electrode current collector and a negative electrode mixture layer (corresponding to a porous anode active material layer) that is arranged on the negative electrode collector [para. 0063],
wherein the negative electrode mixture layer comprises a negative electrode active material that contains a carbon material (corresponding to crystalline carboneous substance) and an Si-based material (corresponding to fine particles of a metallic substance, the metallic substance comprising Si) [paras. 0034 and 0051-0052],
the negative electrode mixture layer internally has a plurality of voids (pores) [paras. 0045-0046], the negative electrode mixture layer has two peak values R1 and R2 in the pore diameter distribution (the pores may have a first peak in a range of the pore size from 1 nm to less than 10 nm and a second peak in a range of the pore size from greater than 10 nm to 100 nm) [para. 0046].
Mah does not teach the plurality of voids having anisotropic voids having an aspect ratio of greater than or equal to 2, which is obtained by dividing the length in the major axis direction by the length in the minor axis direction.
Kawai teaches a negative electrode mixture layer containing a carbon material and an Si-based material [para. 0024], the negative electrode material internally having a plurality of voids (5), wherein the plurality of voids have anisotropic voids having an aspect ratio of greater than or equal to 2 (aspect ratio is 1.0-2.0) [Figs. 1, 3, 5, 7, 9 and 11, paras. 0024, 0025-0026 and 0026].
The anisotropic voids of Kawai serve as a means of absorbing the expansion and contraction of silicon-based fine powders associated with charging and discharging, thereby preventing electrode damage and exhibiting excellent effects in improving cycle characteristics [paras. 0020 and 0024-0026].
Mah and Kawai are analogous inventions in the field of negative electrode active materials comprising carbon and silicon-based materials. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the negative electrode mixture layer of Mah to comprise anisotropic voids having an aspect ratio greater than or equal to 2, as disclosed in Mah, for the purpose of absorbing the expansion and contraction of silicon-based fine powders associated with the storage and release of lithium ions, thereby preventing electrode damage and exhibiting excellent effects in improving cycle characteristics.
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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05].
The limitations “measured by mercury porosimetry” and “which is obtained by dividing the length in the major axis direction by the length in the minor axis direction” are considered product-by-process limitations.
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [MPEP 2113].
Regarding claim 2
Modified Mah teaches the negative electrode for a secondary battery as set forth above, wherein the plurality of voids has anisotropic voids having an aspect ratio of greater than or equal to 2 and less than or equal to 5 (1.0-2.0) [Kawai, para. 0026].
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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05].
The limitation “which is obtained by dividing the length in the major axis direction by the length in the minor axis direction” is considered a product-by-process limitation.
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [MPEP 2113]
Regarding claim 3
Modified Mah teaches the negative electrode for a secondary battery as set forth above, wherein the Si-based material has a content of greater than or equal to 30 mass % of the total mass of the negative electrode active material (10-60% by weight based on the total weight of the porous anode active material) [Mah, para. 0057].
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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05].
Regarding claim 4
Modified Mah teaches the negative electrode for a secondary battery as set forth above, wherein the Si-based material has a content of greater than or equal to 30 mass % and less than or equal to 60 mass % of the total mass of the negative electrode active material (10-60% by weight based on the total weight of the porous anode active material) [Mah, para. 0057].
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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05].
Regarding claim 5
Modified Mah teaches the negative electrode for a secondary battery as set forth above, wherein the anisotropic void has a corner portion in a cross-sectional view of the negative electrode mixture layer [Kawai, Figs. 3-10].
Regarding claim 6
Modified Mah teaches the negative electrode for a secondary battery as set forth above, wherein the anisotropic void has a flat portion in a cross-sectional view of the negative electrode mixture layer [Kawai, Figs. 3-10].
Regarding claim 7
Modified Mah teaches the negative electrode for a secondary battery as set forth above.
Figures 3-10 of Kawai appear to show the anisotropic void having a rectangular shape in a cross-sectional view of the negative electrode mixture layer.
Furthermore, since applicant has not disclosed that the claimed shape of the void solves any stated problem or is for any particular purpose, absent persuasive evidence that the particular rectangular shape is essential and/or significant, the shape of the void would be an obvious matter of design choice to one ordinarily skilled in the art (see MPEP § 2144.04).
Additionally, absent a showing of criticality or unexpected results with respect to the shape of the void (a result-effective variable), it would have been obvious to a person of ordinary skill in the art at the time of the invention to optimize said parameter through routine experimentation in order to achieve the desired volume expansion absorption associated with lithium doping and undoping [Kawai, paras. 0024-0028]. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art [MPEP 2144.05].
Regarding claim 8
Modified Mah teaches the negative electrode for a secondary battery as set forth above.
Modified Mah teaches a peak value R1 and a peak value R2 [Mah, para. 0046].
Modified Mah does not teach a peak value R1 greater than or equal to 0.5 μm and less than or equal to 1.5 μm, and a peak value R2 greater than or equal to 2 μm and less than or equal to 10 μm.
However, because the modified negative electrode active material of the prior art is identical to the one claimed, the properties or functions are presumed to be inherent.
It has been held that when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (see MPEP § 2112.01). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Furthermore, modified Mah shows that the first and second peak values can be optimized in order to avoid irreversible reactions such as decomposition of an electrolyte to increase, and to avoid a decrease in the density of the electrode [Mah, paras. 0046-0050].
Absent a showing of criticality or unexpected results with respect to the peak values R1 and R2 (result-effective variables), it would have been obvious to a person of ordinary skill in the art at the time of the invention to optimize said parameters through routine experimentation in order to avoid an increase of irreversible reactions and a decrease in the density of the electrode. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art [MPEP 2144.05].
Regarding claim 9
Modified Mah teaches a secondary battery (corresponding to a lithium battery) comprising the negative electrode for a secondary battery according to claim 1 [Mah, para. 0061; Kawai, paras. 0020 and 0024-0028]].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYLA GONZALEZ RAMOS whose telephone number is (571)272-5054. The examiner can normally be reached Monday - Thursday, 9:00-5:00 - EST.
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/MAYLA GONZALEZ RAMOS/Primary Examiner, Art Unit 1721
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