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 .
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 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 7-19 of copending Application No. 19/084178 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a copper foil comprising 5-25 ppm Ag, 0.5-8 ppm Ti, and 5-85 ppm S. This is patentably indistinct of claim 1 of the ‘178 application which recites a copper foil comprising 2-21 ppm Ag, 0.5-5.5 ppm Ti, and 2-80 ppm S and a surface of the foil has a (220) orientation index of 2.05-3.08. The instant claims and those of the ‘178 application recite copper foils with overlapping compositions and the courts have held that where claimed ranges overlap a prima facie case of obviousness exists. See MPEP 2144.05.
Instant claims 2-4 recite Ag, Ti, and S contents overlapping claims 2-4 of the ‘178 application, respectively. Instant claims 5-6 recite tensile strengths overlapping claims 7-8 of the ‘178 application, respectively. Instant claim 7 recites an electrical conductivity overlapping claim 9 of the ‘178 application. Instant claim 8 recites a Rz roughness overlapping claim 10 of the ‘178 application. Instant claim 9 recites an elongation overlapping claim 11 of the ‘178 application. Instant claim 10 recites a thickness overlapping claim 12 of the ‘178 application. Instant claims 11-12 recite a treatment layer overlapping claims 13-14 of the ‘178 application, respectively. Instant claims 13-15 recite materials overlapping claims 15-17 of the ‘178 application, respectively. Instant claims 16-17 recite a collector and secondary battery overlapping claims 18-19 of the ‘178 application, respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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.
Claims 1-4, 7, 10 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kurosaki et al (JP2013-247107 – machine translation) and claims 5-6, 8-9, and 11-15 in view of Kurosaki as applied to claim 1 above further in view of Song et al. (US 2017/0141403).
Considering claim 1, Kurosaki teaches copper foil for a secondary battery (abstract). The foil comprises copper comprises 10-500 ppm Ag (Paragraph 12), at most 20 ppm of one or more of Ti, S, etc. as an unavoidable impurity, etc. (Paragraph 14).
While not expressly teaching a singular example of the claimed copper foil this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Kurosaki as the alloy of the copper foil taught by Kurosaki overlaps that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claim 2, Kurosaki teaches where the copper comprises 10-500 ppm Ag (Paragraph 12).
Considering claims 3-4, Kurosaki teaches where the foil comprises one or more of Ti, S, etc. as an unavoidable impurity, etc. (Paragraph 14).
Considering claims 5-6, Kurosaki does not teach the claimed tensile strength.
In a related field of endeavor, Song teaches a copper foil for a current collector and a lithium battery (Paragraph 1). The foil has a tensile strength of 55 kgf/mm2 or more (Paragraph 24) to prevent crack formation during charging/discharging of the battery (Paragraph 102).
As both Kurosaki and Song teach copper foils for current collectors they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Kurosaki with the tensile strength of Song as this is known to prevent crack formation and one would have had a reasonable expectation of success. Further, the tensile strength of modified Kurosaki overlaps that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claim 7, Kurosaki does not expressly teach the claimed conductivity. However, as outlined above, Kurosaki teaches a substantially identical copper foil as that which is claimed and therefore the conductivity is expected to be present as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Considering claim 8, Song teaches where the Rz surface roughness is 0.5-2.0 µm (Paragraph 26). See MPEP 2144.05.
Considering claim 9, Song teaches where the elongation of the foil is 2.5% or more (Paragraph 25). See MPEP 2144.05.
Considering claim 10, Kurosaki teaches where the thickness of the copper foil is preferably 5-20 µm (Paragraph 21).
Considering claims 11-12, Song teaches where the foil is subjected to a surface treatment to form a layer thereon including metals or organics (Paragraph 40).
Considering claim 13, Song teaches where the treatment layer may be Cr, Ni, Zn, etc. (Paragraph 41).
Considering claims 14-15, Song teaches where the treatment layer may be a silane, epoxy, etc. (Paragraph 43) (i.e. comprising C, O, and Si).
Considering claims 16-17, Kurosaki teaches where the foil is a current collector for a lithium ion secondary battery (Paragraphs 18-19).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Matsunaga et al. (US 2018/0040389), Matsunaga et al. (US 2018/0187292), and Matsunaga et al. (US 2021/0002743) teach copper foils with alloy compositions overlapping that which is claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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