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 .
Applicant’s election of Group I, claims 1-12, in the reply filed on 4/22/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 13 has been withdrawn from consideration as being directed toward a non-elected invention.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 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.
Regarding claim 1, the term “the metal foil” lacks antecedent basis. The term “the material” lacks antecedent basis and should recite “the electronically conducting inert material”.
Regarding claim 2, the term “the protection layer or layers” lacks antecedent basis. The claim recites “one or more protection layers”.
Regarding claim 4, the term “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). The phrase “inserting said section into the carrier” is unclear and confusing as to the term “into” vs “on to”? Clarification is requested.
Regarding claims 5 and 10, the term “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 8, the phrase “inserting said section into the carrier” is unclear and confusing as to the term “into” vs “on to”? Clarification is requested.
Regarding claims 9,11 and 12, the term “the electrochemically active area” lacks antecedent basis as the claim recites “the electrochemically active zone”. Clarification is requested.
Regarding claim 10, the term “the current collector” lacks antecedent basis. Clarification is requested.
Regarding claim 11, the term “foil” should be recited after the term “sodium” to be consistent with the claim.
Regarding claims 3,6 and 7, these claims are rejected to as being based upon a rejected base claim.
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,166,193.
The instant claims and US Pat No. 12,166,193 recite providing an electronically conducting inert material, placing the inert material on a carrier and partly overlapped with a mask/plate, applying one or more protection layers, removing the electrode/inert material from the carrier and cutting to form electrode on the inert material. The only difference lies in the fact that the instant claims recite cutting after applying the protective layers while US Pat No. 12,166,193 teaches cutting prior to applying the protective layers.
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.
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.
Claims 1,2,4,5,10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025).
Miyahisa et al. (2011/0091754) teaches a negative electrode and method for producing whereby a negative hoop material (11) is applied to a current collector (12) (claimed carrier) and then applying a negative electrode active material (claimed electrochemically active zone coated) to the current collector (claimed electronically conducting inert material). The coated current collector is cut into strips along areas not coated with the negative electrode active material to form individual strips. Miyahisa et al. (2011/0091754) teaches forming the negative active material in a pattern by intermittent coating (Fig. 2 and [0050]-[0059]).
Miyahisa et al. (2011/0091754) fails to teach foreign the negative pattern coating by using a mask (claimed step ii) instead of intermittently coating and using a carrier for the current collector and removing therefrom.
Zagars et al. (2020/0014025) teaches a similar process whereby a mask is utilized to apply the electrode slurry to a current collector (Figs. 12A-12B and [0044],[0118]-[0119]). Zagars et al. (2020/0014025) teaches the current collector can be applied to a belt, conveyor or even a pouch (claimed carrier) for applying the electrode material [0043].
Therefore, it would have been obvious for one skilled in the art before the effective filing date of the claimed invention to have modified Miyahisa et al. (2011/0091754) process to form the electrode layer utilizing a mask as evidenced by Zagars et al. (2020/0014025) with the expectation of selectively applying the electrode layer as both intermittent coating and masking are known coating processes to form patterns.
Regarding claim 1, the step of removing the current collector from the carrier prior to cutting would within the skill of one practicing in the art absent a showing of unexpected results from cutting while still n the carrier.
Regarding claim 2, Miyahisa et al. (2011/0091754) teaches the protection layer is not coated between the areas to be cut into separate electrodes (Fig. 2).
Regarding claim 4, Zagars et al. (2020/0014025) teaches or depicts the current collector already sized by cutting into individual lengths prior to applying the coatings (Figs. 7 and 8).
Regarding claim 5, Miyahisa et al. (2011/0091754) teaches the protective coating to include polymers [0053].
Regarding claims 10 and 11, Miyahisa et al. (2011/0091754) teaches the current collector (claimed electronically conducting inert material) to be copper foil (Example 1 – [0093]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025) further in combination with Fauteux et al. (4,935,317).
Features detailed above concerning the teachings of Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025) are incorporated here.
Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025) fasil to teach forming an insulating layer on the outer region of where the protective layer and electrode layer are formed.
Fauteux et al. (4,935,317) teaches applying polymeric material to the edges separating the anode, so it does not contact the cathode layer when forming a battery cell.
Therefore, it would have bene obvious for one skilled in the art before the effective filing date of he claimed inventio to have modified Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025) process to include the polymeric materials on the outer regio of the anode as evidenced by Fauteux et al. (4,935,317) with the expectation of providing further protection from short circuiting the anode and cathode when producing a battery cell.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025) further in combination with EP 1234348.
Features detailed above concerning the teachings of Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025) are incorporated here.
Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025) fasil to teach the protective layer to include a first layer and a second layer including the materials claimed.
EP 1234348 teaches forming a protective layer over an electrode material whereby the protective layer includes a first layer including a metal material which is claimed [0009] as well as a second layer of polymer layer [0014].
Therefore, it would have bene obvious for one skilled in the art before the effective filing date of he claimed inventio to have modified Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025) process to include the materials and a second protective layer as detailed in EP 1234348 with the expectation of providing further protection utilizing a second layer and the claimed materials.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025) further in combination with Safont-Sempere et al. (9,005,311).
Features detailed above concerning the teachings of Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025) are incorporated here.
Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025) fasil to teach pretreating the electroactive material prior to forming the protective layer or layers.
Safont-Sempere et al. (9,005,311) teaches an electrode active surface pretreatment whereby a pretreatment process is performed by discharging the anode at a high rate to pretreat the active surface and reduce defects including pits, surface defects, etc. to improve cell performance (col. 4, lines 45-65).
Therefore, it would have been obvious for one skilled in the art to have modified Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025) process to perform one or more pretreatment step on the active material as evidenced by Safont-Sempere et al. (9,005,311) with the expectation of improving the cell performance.
Regarding claim 8, the Examiner takes the position that when the pretreatment is performed would be matter of design choice by one skilled in the art absent a showing of criticality thereof.
Regarding claim 9, the claimed pretreatments including solvents, gas and plasma are known int eh art and would have been within the skill of one practicing in the art to have utilized these or other known pretreatment processes n the active material to improve cell performance.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025) further in combination with Zhamu et al. (2019/0067732).
Features detailed above concerning the teachings of Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025) are incorporated here.
Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025) fasil to teach coating the metal foil with an alkali metal.
Zhamu et al. (2019/0067732) teaches a continuous process of forming electrochemical cells whereby a copper foil is coated with an alkali metal or metal alloy of lithium or sodium [0035],[0056].
Therefore, it would have been obvious for one skilled in the art before the effective filing date of the claimed invention to have modified Miyahisa et al. (2011/0091754) in combination with Zagars et al. (2020/0014025) process to include an alkali coated current collector as evidenced by Zhamu et al. (2019/0067732) with the expectation of similar success sin producing battery cells.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN K TALBOT whose telephone number is (571)272-1428. The examiner can normally be reached Monday -Friday 7-4PM.
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/BRIAN K TALBOT/ Primary Examiner, Art Unit 1712
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