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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a composite silicon-based negative electrode material, does not reasonably provide enablement for the formula specified in claim 1. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The courts have held that "the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’". See Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023); McRO, Inc. v. Bandai Namco Games Am. Inc., 959 F.3d 1091, 2020 USPQ2d 10550 (Fed. Cir. 2020). When considering whether claims are enabled, the examiner has evaluated the claims in view of the Wands factors to ascertain whether the amount of experimentation required to enable the full scope of the claimed invention is reasonable. See MPEP §§ 2164.08 and 2164.01(a). The Wands factors to be considered are: [0035]
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
The most egregious lack of enablement is evaluated by the first factor and last factor, i.e. breadth of the claims and the quantity of experimentation. Applicant specifies tensile test of the current collector which depends on the metal and the thickness of the metal chosen for the current collector, (see para [0070], page 20 of 30), for a measurement in MPa. Then this number is compared to another number calculated by the silicon wt% “in the negative electrode material” and the difference between the maximum and minimum wt% of silicon atoms in the silicon particle. This is then given as a limitation for a property of the entire silicon-based active material. The number of possibilities for the current collector material, the possible thicknesses, the possibilities for the silicon-based material (e.g. pristine silicon, SiOx, Si alloys), the possible wt percentages (0-100%) of silicon-based material and percent of silicon atoms in the particle (0-100%) of the possible silicon-based material choices require undue experimentation.
In regards to the nature of the invention, state of the prior art, level of ordinary skill, and predictability in the art, limiting the use of a negative electrode material property based on the current collector chosen is assigning a new, and incongruous property to a negative electrode material and would require more direction than is currently in the claims.
Further, the level of predictability is low as there are numerous final silicon-based negative electrode materials that would meet this property, but would not efficiently work for the negative electrode material in a battery, so the person skilled in the art would have to determine limitations on silicon-based material percentages and materials that would actually work for a negative electrode material in a battery.
As to the amount of direction given by the inventor and existence of working examples, both are limited and do not cover an inordinately large number of possibilities, especially as applied to the claims.
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.
Claims 1-20 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. Applicant has written an equation or formula that has MPa units on one side of the equation and two distinct wt% values added to each other on the other side of the equation. The mis-match of units make this equation indefinite.
Claims 2-16 and 18-20 are rejected as being dependent on either claim 1 or claim 17.
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.
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.
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.
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 non-obviousness.
Claim 1-9, 12-14, and 17-20 are rejected under 35 U.S.C. 103 as obvious over Zhang et al. (CN 109 273 680) in view of Lim (US 2024/0113394).
Regarding claim 1, Zhang discloses an electrolyte solution (see para [0243]); and
a negative electrode material layer (see abstract), the negative electrode material layer comprises
a silicon-based composite material, the silicon-based composite material comprises a silicon-based particle (see [0013]), a difference between a maximum value and a minimum value of a mass percent of silicon atoms in the silicon-based particle is B%, (see para [0015], can be calculated by the provided range), and a mass percent of silicon in the negative electrode material layer is C%, (see para [0018], can be calculated based on the cited material)
Zhang does not disclose a negative electrode plate, wherein the negative electrode plate comprises a negative current collector and strength of the negative current collector is A MPa.
Lim is analogous art as Lim is directed to a negative electrode for a battery (see abstract). Lim discloses wherein the negative electrode comprises a negative electrode plate that comprises a negative electrode material layer, and a negative current collector (see para [0081], [0085]-[0086]).
The court has held it would be obvious to a person having ordinary skill in the art to combine prior art elements (i.e., the negative electrode layer and electrolyte of Zhang with the current collector and negative electrode plate of Lim) according to known methods (as disclosed by Lim), wherein the result is predictable, (i.e., a prepared negative electrode for an electrochemical device).
Zhang in view of Lim does not disclose the expression A > 10B + 250(C1/4 + (1/10)/C). The expression is merely an optimization of the 1) strength of the current collector and 2) the weight percent of the silicon in the silicon particle and 3) the weight percent of the silicon in the negative electrode material layer. All of the variables are result effective variables that can be optimized.
The court has held that absent criticality or unexpected results, it would be obvious for a person having ordinary skill in the art to optimize a result effective variable for the intended use of the device. Differences in said result effective variable will not support the patentability of subject matter encompassed by the prior art. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05.
Regarding claim 2, modified Zhang discloses the electrochemical device according to claim 1, wherein the difference in silicon within the particle is disclosed in Zhang para [0018] and [0026]). The relative difference in the percentage of silicon in SiOx is relatively constant and therefore the expression 10 < B < 16 is merely an optimization of the carbon to the SiOx in each particle. As SiOx is the active material, said percentage would be a result effective variable.
The court has held that absent criticality or unexpected results, it would be obvious for a person having ordinary skill in the art to optimize a result effective variable for the intended use of the device. Differences in said result effective variable will not support the patentability of subject matter encompassed by the prior art. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05.
Regarding claim 3, modified Zhang discloses an electrochemical device according to claim 1, wherein the mass percent of SiOx in the negative electrode material is 20 to 50wt%. (see para [0018]), wherein SiOx, X is approximately 1 (see para [0047]), the mass percent of Si is between 12 and 31, which overlaps the recited range of 1 < C < 20.
The court has held 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). See MPEP § 2144.05.
Regarding claim 4, modified Zhang discloses an electrochemical device according to claim 1, wherein the current collector of Lim can be chosen from copper, stainless steel, aluminum, nickel, titanium, plastic carbon, and copper or stainless steel coated with carbon, nickel, titanium, silver, and the like on the surface, aluminum-cadmium alloys at a thickness of 3 µm to 500 µm. The selection has a range of strengths (that can be ascertained from a handbook) that overlap the recited range of 370 < A < 800 MPa. Specifically, copper at 3µm has a strength of 300 MPa to 450 MPa depending on the grain size and microstructure.
The court has held 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). See MPEP § 2144.05.
Regarding claim 5, modified Zhang discloses the electrochemical device according to claim 1, wherein a a maximum value of a particle diameter of the silicon-based particle is D50 is 3 to 7µm (see para [0015]). Lim discloses wherein the rolled thickness of the negative electrode material is 20µm. At the higher end of D50, Zhang as modified by Lin discloses wherein thickness of the negative electrode material layer on one side is H (20 µm), and a maximum value of a particle diameter of the silicon-based particle is 7µm and H > 3 x 7+ =21 and higher, which overlaps the recited range.
The court has held 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). See MPEP § 2144.05.
Regarding claim 6 modified Zhang discloses an electrochemical device according to claim 5, but does not disclose wherein 10 µm < Dmax < 25 µm. Zhang does disclose wherein D50 is between 3 µm and 7 µm, disclosing the D to be an optimizable variable.
The court has held where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 7, modified Zhang discloses an electrochemical device according to claim 5, wherein H is 20 µm, which lies outside the range 30 µm > H > 90 µm, but discloses the range to be an optimizable variable.
The court has held where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 8, modified Zhang discloses an electrochemical device according to claim 1, but does not disclose wherein a porosity of the negative electrode plate is P%, P > 15 x C1/4. Zhang discloses wherein, a porosity of SiOx is 40% ([0094], wherein carbon-coatings are surface level and do not eliminate internal porosity, evidenced by Yoshikawa, Fig. 1, [0091-0093], where forming a composite with carbon only reduces 40% porosity SiOx to as low as 21 percent, which discloses porosity as a result effective variable.
The court has held where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 9, modified Zhang discloses an electrochemical device according to claim 8, wherein 18 < P < 40, specifically Zhang discloses wherein, a porosity of SiOx is 40% ([0094], wherein carbon-coatings are surface level and do not eliminate internal porosity, evidenced by Yoshikawa, Fig. 1, [0091-0093], where forming a composite with carbon only reduces 40% porosity SiOx to as low as 21 percent, which lies inside the range. Alternatively, modified Zhang discloses porosity as a result effective variable.
The court has held where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 12, modified Zhang discloses an electrochemical device according to claim 1, wherein the silicon-based particle comprises silicon and carbon, and an atomic ratio between silicon and carbon in the silicon-based particle is 1: (1 to 2.5) (see para [0018]). Specifically, the atomic ratio may be calculated from the mass ratio and the result overlaps the recited range.
The court has held 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). See MPEP § 2144.05.
Regarding claim 13, modified Zhang discloses an electrochemical device according to claim 1, wherein the mass percent of SiOx in the negative electrode material is 20 to 50wt%. (see para [0018]), wherein SiOx, X is approximately 1 (see para [0047]), the mass percent of Si is between 12 and 31, which lies outside the recited range of 1 < C < 20, but is shown to be an optimizable variable.
The court has held where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 14, modified Zhang discloses an electrochemical device according to claim 7, wherein H is 20 µm, which lies outside the range 30 µm > H > 75 µm, but discloses the range to be an optimizable variable.
The court has held where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 17, Zhang as modified by Lim (see obviousness discussion of claim 1) discloses an electronic device, comprising an electrochemical device (see abstract); the electrochemical device comprising a positive electrode plate, a negative electrode plate, and an electrolyte solution (see Lim para [0088]-[0105]).
Wherein the limitations of the negative electrode plate comprises the limitations of claim 1. Modified Zhang discloses the limitations of claim 1. See rejection of claim 1 above.
Regarding claims 18, 19 and 20, all the limitations of claims 18, 19 and 20 are recited in claims 2, 3, and 4, respectively. See rejection of claim 2, 3, and 4, respectively.
Claim(s) 10-11 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. and Lim as applied to claim 1 above, and further in view of Dalavi et al. (US 2019/0348715).
Regarding claim 10, modified Zhang discloses an electrochemical device according to claim 1, with an electrolyte (see Zhang para [0061]), but does not disclose wherein the electrolyte solution comprises fluoroethylene carbonate; based on a mass of the electrolyte solution, a mass percent of the fluoroethylene carbonate is Q%, and 0.3 < C/Q < 3.
Dalavi is analogous art to Zhang modified by Lim, as Dalavi is directed toward an electrochemical device (see para [0002]). Dalavi discloses wherein the electrolyte solution comprises fluoroethylene carbonate; based on a mass of the electrolyte solution, a volume percent of the fluoroethylene carbonate can be calculated and is Q% (see para [0079]).
The Courts have held that it would be obvious to a person having ordinary skill in the art to select a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Zhang as modified by Lim and Dalavi does not disclose wherein 0.3 < C/Q < 3, but do disclose the wt% of silicon and the volume% of fluoroethylene carbonate (which can be converted to mass percent) in the electrolyte solution to be result effective variables.
The court has held where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 11, modified Zhang discloses an electrochemical device according to claim 10, but does not disclose wherein 1 < Q < 15. Dalavi discloses wherein the volume of fluoroethylene carbonate can be adjusted and is therefore an optimizable variable (see para [0007] and [0079], and discussion of claim 10).
The court has held where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 15, modified Zhang discloses an electrochemical device according to claim 10, but does not disclose wherein 0.3 < C/Q < 2.5. Modified Zhang does disclose the ratio of C/Q to be an optimizable variable. See discussion of claim 10.
The court has held where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 16, modified Zhang discloses an electrochemical device according to claim 11, but does not disclose wherein 2 < Q < 10. Dalavi discloses wherein the volume of fluoroethylene carbonate can be adjusted and is therefore an optimizable variable (see para [0007] and [0079], and discussion of claim 10).
The court has held where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shin et al. (US 2020/0168891). Reads on at least claim 1-5.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAYNE L MERSHON whose telephone number is (571)270-7869. The examiner can normally be reached 10:00 to 6:00 M-F.
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JAYNE L. MERSHON
Primary Examiner
Art Unit 1721
/JAYNE L MERSHON/ Primary Examiner, Art Unit 1721
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