DETAILED ACTION
This is in response to communication received on 5/22/26.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The text of those sections of AIA 35 U.S.C. code not present in this action can be found in previous office actions dated 1/28/26.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-14) in the reply filed on 5/22/26 is acknowledged. The traversal is on the ground(s) that, an Examiner “must examine it on the merits, even though it includes claims to independent or distinct inventions”
This is not found persuasive because a serious search burden exists. As illustrated in the Restriction Requirement made on 1/28/26, the claims are not just drawn to independent and distinct inventions, but inventions belonging in different classes. This is a serious search burden. Applicant’s argument is not persuasive as they have not addressed this serious search burden.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Herle et al. US PGPub 2022/0328803 hereinafter HERLE.
As for claim 1, HERLE teaches “A method and apparatus for fabricating electrodes used in energy storage devices are provided” (abstract, lines 1-2) and “(c) a post-treatment of the pre-lithiation layer… (d) a post-treatment of the pre-lithiation layer” (abstract, lines 7-8), i.e. A pre-lithiation process.
HERLE further teaches “In some implementations, the lithium metal film 145 or pre-lithiation film is formed on the negative electrode 140” (paragraph 36, lines 1-3) and “For example, the lithium metal film 145 can be deposited by thermal evaporation techniques or electron beam evaporation techniques” (paragraph 36, lines 12-15), i.e. evaporating lithium onto a surface of a negative electrode to form a lithium layer thereon.
HERLE teaches “The conditions of the post-treatment process of operation 240 can be selected such that the electrode structure and/or the pre-lithiation layer formed thereon is heated to a temperature below the melting point of the electrode structure but high enough to accelerate diffusion of lithium from the pre-lithiation layer into the electrode structure” (paragraph 75, lines 1-6), i.e. subjecting the negative electrode to a thermal treatment.
As for claim 11, HERLE further teaches “The negative electrode 140 may be constructed from… silicon” (paragraph 33, lines 5-6), i.e. wherein the active material in the negative electron comprises or consists of… silicon.
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) 2, 6, 8-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Herle et al. US PGPub 2022/0328803 hereinafter HERLE as applied to claim 1 above.
As for claim 2, HERLE teaches “In some implementations, a surface protection film 170 is formed on the lithium metal film 145” (paragraph 38, lines 1-2), i.e. wherein the pre-lithiation process further comprises forming a surface protection layer on the lithium layer after forming the lithium layer.
HERLE also teaches “The surface(s) of the lithium metal film 145 and/or the negative electrode 140, for example, the negative electrode 140 can be treated using and any of the post-treatment processes described herein prior to subsequent deposition of any additional films, for example, the surface protection film 170” (paragraph 37), i.e. wherein the pretreatment takes place before the formation of the surface protection layer.
However, Examiner notes that 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 440 (Bd. Pat. App. 1959). See MPEP 2144 IV. In this case, transposing the step of depositing the surface protection layer and applying the heated diffusion treatment/thermal treatment in HERLE would result in a substantially identical result of a pre-lithiated anode with diffused lithium and a surface protection layer thereon.
As for claim 6, HERLE teaches “The surface treatment of operation 220 can be a plasma treatment performed in an oxidizing gas environment, a reducing gas environment, or a combination of oxidizing and reducing gases” (paragraph 51, lines 1-4) and “The reducing environment can include one or more reducing gases. The reducing gases can be selected from ammonia (NH3), hydrazine (N2H4), hydrogen (H2), NF3, atomic hydrogen, radicals thereof, derivatives thereof, or a combination thereof” (paragraph 51, lines 15-19), i.e. wherein the surface protection layer is formed in an atmosphere containing nitrogen gas or by irradiation with nitrogen ions.
As for claim 8, HERLE teaches “The surface protection film 170 may be a discrete membrane having a thickness in the range of 5 microns to 50 microns ( e.g., in the range of 6 microns to 25 microns)” (paragraph 39, lines 6-9), i.e. a range that overlaps with wherein the lithium layer has a thickness of 0.5 μm to 10 μm. 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.
As for claim 9, HERLE teaches “The surface protection film 170 may be a discrete membrane having a thickness in the range of 5 microns to 50 microns ( e.g., in the range of 6 microns to 25 microns)” (paragraph 39, lines 6-9), i.e. a range that overlaps with wherein the lithium layer has a thickness of 0.5 μm to 6 μm. 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.
As for claim 10, HERLE teaches “The surface protection film 170 may be a coating or a discrete layer, either having a thickness in the range of 1 nanometer to 2,000 nanometers” (paragraph 39, lines 1-3). It is expected that a person of ordinary skill in the art at the time of the invention could have converted the nanometers to microns, which overlap with the instant claimed range of wherein the lithium layer has a thickness of 0.5 μm to 2 μm. 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.
As for claim 12, HERLE teaches “The post-treatment process of operation 240 can include a thermal treatment process or annealing process designed to accelerate the absorption of lithium from the pre-lithiation layer into the electrode structure” (paragraph 74, lines 1-4), and “For the vacuum annealing, the electrode structure (and hence the pre-lithiation layer deposited thereover) can be heated to an annealing temperature for a predetermined period of time... The annealing temperature can be within in a range from about room temperature (e.g., 22-24 degrees Celsius) to about 200 degrees Celsius… The vacuum annealing can occur in numerous environments. The vacuum annealing can occur in a vacuum environment. The vacuum annealing can occur in an inert gas environment, for example, argon, helium, neon, or a combination thereof” (paragraph 76, lines 1-15), i.e. a range that overlaps with wherein the thermal treatment is carried out at a temperature of from 80°C to 130°C in an atmosphere of rare gas or in an ambient atmosphere. 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.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Herle et al. US PGPub 2022/0328803 hereinafter HERLE as applied to claim 1 and 2 above, and further in view of Tiruvannamalai et al. US Patent Number 11,271,212 hereinafter TIRUVANNAMALAI.
As for claim 3, HERLE teaches “The surface protection film 170 may be a coating or a discrete layer, either having a thickness in the range of 1 nanometer to 2,000 nanometers” (paragraph 39, lines 1-3), i.e. a range that overlaps with wherein the surface protection layer has a thickness of from 20 nm to 2000 nm. 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.
HERLE is silent on the thickness depending on roughness of surface on which it is formed.
TIRUVANNAMALAI teaches “A method of forming anodes for electrochemical devices” (abstract, line 1).
TIRUVANNAMALAI further teaches “The thickness of each conductive-coating patch 328 may be, for example, in a range of about 0.1 um to about 5 um, in a range of about 0.5 μm to about 2 and about 1 among other ranges and values. In some embodiments, if the 20 surface roughness (Ra, arithmetic mean roughness) of the anode-active material is X μm, then the thickness of the coating may be in a range of about 0.2X μm to about 2X μm… In addition, it may be that there is a minimum thickness that accommodates variation in average surface roughness of the anode-active material ( e.g., lithium)” (column 8, lines 16-34), i.e. wherein the thickness of a coating being applied to the surface of lithium anode needs to account for surface roughness so that coverage can be assured.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include depending on roughness of surface on which it is formed in the process of HERLE because TIRUVANNAMALAI teaches that designing the thickness based on the surface roughness can account for variations to ensure complete coating.
Claim(s) 4-5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Herle et al. US PGPub 2022/0328803 hereinafter HERLE as applied to claim 1 and 2 above, and further in view of Ishikawa et al. US PGPub 2020/0189874 hereinafter ISHIKAWA.
As for claim 4, HERLE is silent on wherein the surface protection layer comprises Li3N.
However, HERLE does teach “Examples of surface protection films that can be formed using the implementations described herein include but are not limited to at least one or more of a lithium carbonate film; a lithium fluoride (LiF) film” (paragraph 40, lines 1-4) and goes on further in paragraph 40 to list many different kinds of surface protection layers.
ISHIKAWA teaches “A method and apparatus for continuous web processing systems for pre-lithiating Li-ion battery substrates is provided” (abstract, lines 1-3).
ISHIKAWA further teaches “The passivation film 160 provides surface protection of the negative electrode structure 140, which allows for handling of the negative electrode structure 140 in a dry room and can contribute to stable SEI formation. Examples of materials that may be used to form the passivation film 160 include, but are not limited to, a lithium fluoride (LiF) film… a lithium nitride (Li3N) film” (paragraph 49, lines 17-25), i.e. wherein Li3N is a known equivalent to LiF.
It is a prima facie case of obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success. In this case, replacing lithium fluoride with lithium nitride to provide surface protection of the underlying pre-lithiated layer on an anode.
As for claim 5, HERLE is silent on wherein the surface protection layer is formed in a section that maintains a span longer than a main roller when viewed horizontally or vertically, and a conveying speed is from 1 m/min to 20 m/min.
ISHIKAWA teaches “A method and apparatus for continuous web processing systems for pre-lithiating Li-ion battery substrates is provided” (abstract, lines 1-3).
ISHIKAWA further teaches “The optimal production worthy manufacturing method involves web processing anode substrates over one meter wide and thousands of meters long at web speeds around forty meters per minute or faster” (paragraph 31, lines 13-16), i.e. a range that overlaps with a conveying speed is from 1 m/min to 20 m/min. 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.
ISHIKAWA teaches “In some implementations, the passivation film 160 can be formed on the negative electrode structure 140 by vapor deposition methods, for example, chemical vapor deposition (CVD), atomic layer deposition (ALD), physical vapor deposition (PVD), such as thermal evaporation or sputtering” (paragraph 49, lines 30-35).
ISHIKAWA further teaches “In some implementations, the free-span coating system is used in spatial or temporal converting modes so that films of uniform thickness are produced by modulating the processing time or the processing length depending on the specific application” (paragraph 35, lines 1-5), i.e. wherein the span of an apparatus is a result effective variable in the process. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
It would have been obvious to one of ordinary skill in the art before the effective filing date to use the continuous apparatus of ISHIKAWA to perform the process of HERLE because ISHIKAWA teaches that such a process is an optical production worthy device capable of processing anode substrates thousands of meters long.
As for claim 7, Examiner notes that there is no limitation on what constitutes a ‘preheating mechanism’ and thereby any heater that increases the heat of the substrate could be considered a preheating mechanism.
With that in mind, HERLE teaches “conditions of the post-treatment process of operation 240 can be selected such that the electrode structure and/or the pre-lithiation layer formed thereon is heated to a temperature below the melting point of the electrode structure but high enough to accelerate diffusion of lithium from the pre-lithiation layer into the electrode structure” (paragraph 75, lines 1-6), i.e. wherein the thermal treatment is carried out in an annealing room configured with a preheating mechanism.
HERLE is silent on a winding roller with thermal control.
ISHIKAWA teaches “A method and apparatus for continuous web processing systems for pre-lithiating Li-ion battery substrates is provided” (abstract, lines 1-3) and “The optimal production worthy manufacturing method involves web processing anode substrates over one meter wide and thousands of meters long at web speeds around forty meters per minute or faster” (paragraph 31, lines 13-16), i.e.
ISHIKAWA teaches “In some implementations, the intermediate turnaround roller 248 is heated. Heating of the intermediate turnaround roller 248 is believed to reduce wrinkles that may form in the continuous flexible substrate 230” (paragraph 65, lines 14-19) and “In some implementations, the downstream winding module 204, the intermediate turnaround roller 248, and the unwinding reel 262 are individually heated either using an internal heat source positioned within each reel or an external heat source” (paragraph 66, lines 16-20), i.e. wherein heating the rollers in a continuous process reduces wrinkles in a continuous anode substrate.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include a winding roller with thermal control in the process of HERLE because ISHIKAWA teaches that such heated rollers can reduce the wrinkles in the anode substrate.
Claim(s) 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Herle et al. US PGPub 2022/0328803 hereinafter HERLE as applied to claim 1 and 2 above, and further in view of Liu et al. US PGPub 2021/0184210 hereinafter LIU.
As for claim 13, HERLE teaches “Any suitable annealing temperature can be used. The annealing temperature can be within in a range from about room temperature (e.g., 22-24 degrees Celsius) to about 200 degrees Celsius or any of the other ranges described with respect to operation 240… The vacuum annealing can occur for 5 minutes or more at ambient pressure” (paragraph 76, lines 4-11), i.e. ranges that overlap with wherein the thermal treatment is maintained at 80°C for at least 6 minutes. 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.
HERLE is entirely silent on the press density of the negative electrode.
LIU teaches “Materials, designs, methods of manufacture, and devices are provided for an anode material for a rechargeable lithium-ion battery” (abstract, lines 1-3).
LIU teaches “In some embodiments, the electrode press density may range from about 0.5 g/cm3 to about 10 g/cm3” (paragraph 80, lines 1-2), i.e. in a range that overlaps with when the negative electrode has a press density of 1.3 g/cm3 to 1.6 g/cm3. 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.
It is a prima facie case of obviousness to combine prior art elements according to known methods to yield predictable results. In this case, it would have been obvious to combine the press density of a lithium ion anode in LIU and the lithium ion anode of HERLE to obtain the predictable result of a lithium ion anode with a known press density.
As for claim 14, HERLE teaches “Any suitable annealing temperature can be used. The annealing temperature can be within in a range from about room temperature (e.g., 22-24 degrees Celsius) to about 200 degrees Celsius or any of the other ranges described with respect to operation 240… The vacuum annealing can occur for 5 minutes or more at ambient pressure” (paragraph 76, lines 4-11), i.e. ranges that overlap with wherein the thermal treatment is maintained at 130°C for at least 90 minutes. 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.
HERLE is entirely silent on the press density of the negative electrode.
LIU teaches “Materials, designs, methods of manufacture, and devices are provided for an anode material for a rechargeable lithium-ion battery” (abstract, lines 1-3).
LIU teaches “In some embodiments, the electrode press density may range from about 0.5 g/cm3 to about 10 g/cm3” (paragraph 80, lines 1-2), i.e. in a range that overlaps with when the negative electrode has a press density of 1.0 to 1.3 g/cm3. 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.
It is a prima facie case of obviousness to combine prior art elements according to known methods to yield predictable results. In this case, it would have been obvious to combine the press density of a lithium ion anode in LIU and the lithium ion anode of HERLE to obtain the predictable result of a lithium ion anode with a known press density.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTEN A DAGENAIS whose telephone number is (571)270-1114. The examiner can normally be reached 8-12 and 1-5.
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/KRISTEN A DAGENAIS/ Examiner, Art Unit 1717
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