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 1 is objected to because of the following informalities:
Claim 1, line 7, “the metal layer” should read “the first metal layer”.
Appropriate correction is required.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of co-pending Application No. 18/897558. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding Claims 1 and 10-12, co-pending ‘558 claims a current collector (i.e. clad) comprising a polymer film, a first metal layer adhered to the polymer film, and a second metal layer adhered to the polymer film on a side opposite the first metal layer, wherein: the polymer film comprises an electrically conductive filler and has a surface resistivity of 1 Megaohm/square or less; and the first and second metal layers each have a thickness of 3 µm or less (Claim 1).
Co-pending ‘558 does not require the use of palladium (i.e. encompasses product having 0 ppm palladium).
Although co-pending ‘558 does not disclose the metal layer is formed on the polymer film by directly electrochemically depositing the first metal layer on the polymer film, it is noted that “[E]ven 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) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that co-pending ‘558 meets the requirements of the claimed clad, co-pending ‘558 clearly meet the requirements of present claims.
Regarding Claim 2, co-pending ‘558 further claims the polymer film comprises a polymer comprising an imide group (Claim 2).
Regarding Claim 3, co-pending ‘558 further claims the polymer is selected from the group consisting of polyimides, poly(amide-imides), poly(ester-imides) and poly(amide-ester-imides) (Claim 3).
Regarding Claim 4, co-pending ‘558 further claims the polymer film comprises a multilayer film comprising: a first outer layer comprising a first polymer; a second outer layer comprising a second polymer; and a core layer comprising a third polymer, wherein the core layer is between the first and second outer layers and the electrically conductive filler is present in one or more of the layers (Claim 4).
Regarding Claim 5, co-pending ‘558 further claims one or more of the first, second and third polymers comprises a polymer comprising an imide group (Claim 5).
Regarding Claim 6, co-pending ‘558 further claims the first and second polymers are the same (Claim 6).
Regarding Claim 7, co-pending ‘558 further claims the electrically conductive filler is an inorganic filler, an organic filler or a mixture thereof (Claim 7).
Regarding Claim 8, co-pending ‘558 further claims the electrically conductive filler is carbon black (Claim 8).
Regarding Claim 9, co-pending ‘558 further claims the electrically conductive filler is present in the polymer film at a concentration in a range of from 5 to 65 weight percent based on the total weight of the polymer film (Claim 9).
Regarding Claim 13, co-pending ‘558 further claims an energy storage device comprising the current collector (Claim 10).
Regarding Claim 14, co-pending ‘558 further claims the energy storage device is selected from the group consisting of lithium-ion batteries, capacitors, super capacitors, fuel cells and redox flow batteries (Claim 11).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Lochtman et al. (US 2010/0170626 A1).
Regarding Claims 1-3 and 10, Lochtman discloses polymer-coated metal foils (i.e. clad) where a metal layer is electrolytically coated on a base layer, the base layer comprising electrolytically coatable particles dispersed in a matrix material (Abstract). The electrolytically coatable particles may be electrically conductive particles (para 0019) and the matrix material is preferably a polymer such as polyimide (paras 0030, 0032-0033).
Lochtman discloses the thickness of the metal layer is less than 20 microns (para 0014).
Lochtman does not disclose the use of palladium; therefore it would be obvious to produce the polymer-coated metal foil of Lochtman that is free of palladium (i.e. has less than 15 ppm).
Lochtman does not disclose the surface resistivity of the base layer. However, since Lochtman discloses base layer corresponding to the polymer film claimed, including polyimide matrix and electrically conductive particles as claimed, the base layer of Lochtman would be expected to have the same surface resistivity as claimed.
In light of the overlap between the claimed article and that disclosed by Lochtman, it would have been obvious to a person having ordinary skill in the art to produce an article that is both disclosed by Lochtman and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding Claims 4-6, Lochtman discloses all the limitations of the present invention according to Claim 1 above, including that the base layer comprises electrically conductive particles and a polymer such as polyimide. Lochtman further discloses that the base layer may comprise a plurality of layers (i.e. including three layers) (para 0064). Each of the plurality of layers would comprise the same electrically conductive particles and polyimide polymer.
Regarding Claim 7, Lochtman discloses all the limitations of the present invention according to Claim 1 above. Lochtman further discloses the electrolytically coatable particles may comprise conductive organic compounds, metals (i.e. inorganic conductive compounds), or a mixture (para 0019).
Regarding Claim 8, Lochtman discloses all the limitations of the present invention according to Claim 1 above. Lochtman further discloses the electrolytically coatable particles may comprise carbon black (para 0019).
Regarding Claim 9, Lochtman discloses all the limitations of the present invention according to Claim 1 above. Lochtman further discloses the electrolytically coatable particles may comprise 20-98 wt% of the dried base layer (para 0029).
Regarding Claim 11, Lochtman discloses all the limitations of the present invention according to Claim 1 above. Lochtman further discloses a further metal layer disclosed on the base layer, on the side opposite to the first metal layer (para 0099).
Regarding Claim 12, Lochtman discloses all the limitations of the present invention according to Claim 11 above. Lochtman further discloses the thicknesses of the metal layers are less than 20 microns (para 0014).
Regarding Claim 13, Lochtman discloses all the limitations of the present invention according to Claim 1 above. Lochtman further discloses the polymer-coated metal foil may be used to produce electrical components and devices (para 0135).
Regarding Claim 14, Lochtman discloses all the limitations of the present invention according to Claim 1 above. Lochtman further discloses the polymer-coated metal foil may be used to produce capacitors and fuel cells (para 0136).
Regarding Claim 15, Lochtman discloses all the limitations of the present invention according to Claim 1 above. Lochtman further discloses the polymer-coated metal foil may be used in circuits and to produce a product for shielding against electromagnetic radiation (paras 0135-0137).
Regarding Claim 16, Lochtman discloses all the limitations of the present invention according to Claim 1 above. Lochtman further discloses the polymer-coated metal foil may be used in resistors and heaters (paras 0136-0137).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787