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 .
Claims Status
Claims 1, 2, 6, 7, 9, 11, 13, 14, 16, 17, 19, 20, 22, 23 and 26-31 are pending. Claims 16, 27, 28 and 30 have been amended. Claims 1, 2, 6, 7, 9, 11-14 and 23 are withdrawn.
Applicant’s arguments, filed 04/30/2026, with respect to the rejection(s) of claim(s) 16, 17, 27-29 and 31 under 35 USC 102 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 Therefore, the rejection has been withdrawn.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 Feng et al. ("Preparation and electrochemical properties of tin-nickel-graphite composite anode materials for lithium batteries," Applied Mechanics and Materials 151, 2012; 2011 International Conference on Mechatronics and Materials Engineering ‘ICMME 2011’, December 10-12, Qiqihar, China, pp. 260-265).
Applicant’s arguments, filed 04/30/2026, with respect to the rejection(s) of claim(s) 19, 20 and 30 under 35 USC 103 have been fully considered but are not persuasive. See response to arguments below.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 102
Claim(s) 16, 17, 26, 28, 29, 30 and 31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Feng et al. ("Preparation and electrochemical properties of tin-nickel-graphite composite anode materials for lithium batteries," Applied Mechanics and Materials 151, 2012; 2011 International Conference on Mechatronics and Materials Engineering ‘ICMME 2011’, December 10-12, Qiqihar, China, pp. 260-265).
Considering claims 16 and 17, Feng discloses a coated metal substrate, wherein the metal substrate is coated with a graphite-containing tin-nickel layer, wherein the graphite-containing layer contains 2.34 wt% (page 262, Table 1), which is within the claimed range of from 0.1 to 8 wt% graphite relative to the total weight of the graphite-containing layer and tin content of 80 wt% (abstract), which means there is at least 12 wt% of nickel, which is within the claimed range of 10-40 wt%.
Considering claim 26, Feng discloses the graphite particles have a average diameter of 6.22 µm (page 261, Experimental section).
Considering claim 28, Feng discloses the graphite-containing tin-nickel layer is a final layer (page 261, Experimental section).
Considering claim 29, Feng discloses the substrate is a metal component (copper foil) (page 261, Experimental section).
Considering claim 30, Feng discloses tin and nickel atoms are at least 95 wt% of the metals of the graphite-containing tin-nickel layer, because graphite is 2.34 wt% (page 262, Table 1).
Considering claim 31, Feng discloses a battery (button cell CR2016) comprising the coated metal substrate (page 261, Experimental section).
Claim Rejections - 35 USC § 103
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feng et al., as applied to claim 16 above, and further in view of Kim et a. (US 20210005893 A1).
Considering claim 27, Feng is silent about the thickens of the graphite-containing layer.
However, Kim teaches anode active material thickness is in the range of 2-50 µm [0035].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the thickness of the graphite-containing layer of Feng to be within the claimed range of 4-30 µm, because Feng is silent about this thickness and Kim discloses a thickness of anode active material to be in the range of 2-50 µm, which substantially overlaps the claimed range. Therefore, one would have gone to Kim to find an appropriate range for the film.
Claim(s) 16, 17, 20, 22 and 26-30 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takei et al. (US 20060068220 A1) in view of Funk et al. (WO 2016131916 A1, machine translation).
Considering claims 16, 17, 20 and 30, Takei discloses a coated metal substrate, wherein the metal substrate is coated with a graphite-containing tin-nickel layer, wherein the graphite-containing layer contains 0.1 to 1.0 wt%, which is within the claimed range of from 0.1 to 8 wt% graphite relative to the total weight of the graphite-containing layer [0013].
Takei discloses tin layer with graphite at 0.1 to 1.0 wt%.
Takei does not disclose a graphite-containing tin-nickel layer and has a nickel content of 10 to 40 wt% relative to the metals tin and nickel.
However, Funk discloses tin-nickel layers with a composition 65 wt% Sn and about 35 wt% Ni show a high corrosion resistance and good hardness of at least HV 750 while having significantly improved tribological properties, which manifest themselves in particular in lower friction numbers and lower wear of the layer (page 3, last 3 lines and page 4, 3rd paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a tin nickel alloy with nickel at 35 wt% in the graphite-containing layer of Takei, because Funk teaches that such alloy shows a high corrosion resistance and significantly improved tribological properties, which manifest themselves in particular in lower friction numbers. Funk further teaches that tin-nickel layers have a low hardness of about HV 450 to 500 (page 4, 1st paragraph), which can be further improve by annealing.
Considering claim 22, Takei discloses contact resistance of 1 mΩ or less [0008].
Takei does not disclose the contact resistance is measured in relation to a gold contact at 25°C.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use gold contact at 25°C, because gold is conventionally used for contact resistance measurement at room temperature.
Considering claim 26, Takei discloses the graphite particles have a median diameter of 3.4 µm [0017].
Considering claim 27, Takei discloses the graphite-containing layer has a layer thickness of 0.5 to 10 µm [0013].
Considering claim 28, Takei discloses the graphite-containing layer is a final layer [0013].
Considering claim 29, Takei discloses the substrate is a metal component [0016].
Response to Arguments
Applicant's arguments filed 04/30/2026 have been fully considered but they are not persuasive. Applicant argues that combining Takei and Funk would lead to the invention of Funk not perform in the intended manner. Applicant further states that the modification would change the invention of Takei in such a way that the invention of Funk is inoperable for its intended purpose. This argument is not persuasive, because it is not a proper standard of obviousness objection. The obviousness rejection is made to modify the primary prior art (Takei) with the secondary prior art (Funk). The rational of obviousness comes from teaching from the secondary prior art, to modify the primary prior art, not the other wise. The effect of operation of the secondary prior art cannot be judged based on the primary reference, because there was no argument made in the rejection how to modify the secondary. The only modification made was to the primary reference of Takei. The reference of Takei is to a coating for an electrical contact, which requires good wear resistance and low friction coefficient. Funk as well teaches the importance of wear resistance and friction coefficient (Fung page 4, 5th paragraph). Funk teaches that Tin-nickel layers with 65 wt% Sn, improves corrosion resistance while offering similar properties to hard chromium layers, characterized by high hardness and good tribological properties such as low wear and low friction (Funk, page 1, last 4 lines).
Applicant also argues that Takei and Funk cannot be combined with any reasonable expectation of success, because Funk obtains tin-nickel layers with high hardness by annealing, and Takei is silent about annealing. This argument is not persuasive, because Funk also teaches that tin-nickel layers have only a low hardness of about HV 450 to 500, which is within the claimed range of at least HV 200. Funk teaches that the hardens can be further improved by annealing.
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Wojciech Haske whose telephone number is (571)272-5666. The examiner can normally be reached M-F: 9:30 am - 6:00 pm.
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/WOJCIECH HASKE/ Examiner, Art Unit 1794
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