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 1-4 and 7-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 19/084131 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1-7 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. This is patentably indistinct of claim 1 of the ‘131 application which recites a copper foil comprising 5-25 ppm Ag, 0.5-8 ppm Ti, and 5-85 ppm S. The instant claims and those of the ‘131 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 ‘131 application, respectively. Instant claims 7-8 recite tensile strengths overlapping claims 5-6 of the ‘131 application, respectively. Instant claim 9 recites an electrical conductivity overlapping claim 7 of the ‘131 application. Instant claim 10 recites a Rz roughness overlapping claim 8 of the ‘131 application. Instant claim 11 recites an elongation overlapping claim 9 of the ‘131 application. Instant claim 12 recites a thickness overlapping claim 10 of the ‘131 application. Instant claims 13-14 recite a treatment layer overlapping claims 11-12 of the ‘131 application, respectively. Instant claims 15-17 recite materials overlapping claims 11-15 of the ‘131 application, respectively. Instant claims 18-19 recite a collector and secondary battery overlapping claims 16-17 of the ‘131 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.
Claims 1-4, 7-9, 11-12, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kurosaki et al (JP2013-247107 – machine translation) in view of Kim et al. (US 2022/0098746) and claims 10 and 13-17 are rejected in view of Kurosaki and Kim 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). However, Kurosaki does not teach the claimed orientation index.
In a related field of endeavor, Kim teaches a copper foil for an electrode of a secondary battery (Paragraph 2). The foil has an orientation index M(220) of one or more (Paragraph 70) and teaches where this reduces wrinkles and tears in the foil (Paragraph 71).
As both Kurosaki and Kim teach copper foils for electrodes of batteries 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 orientation index M(220) taught by Kim as this is known to reduce wrinkles and tears in the foil and one would have had a reasonable expectation of success. Further, the orientation index taught by 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 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 7-8, Kim teaches where the foil has a tensile strength of 41.0-75.0 kgf/mm2 (Paragraph 19).
Considering claim 9, 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 10, neither Kurosaki nor Kim teach the claimed roughness.
In a related field of endeavor, Song teaches a copper foil for a current collector and a lithium battery (Paragraph 1). Song teaches where the Rz surface roughness is 0.5-2.0 µm (Paragraph 26) and where this allows for improved binding strength with the active material on the electrode and allow for uniform charging/discharging of the battery (Paragraphs 27-28).
As Kurosaki, Kim, 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 and Kim with the Rz surface roughness of Song as this is known to have improved binding strength with the active material on the electrode and allow for uniform charging/discharging of the battery and one would have had a reasonable expectation of success. Further, the Rz roughness 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 11, Kim teaches where the stretch ratio (i.e. elongation ratio) is 2-15% (Paragraph 18). See MPEP 2144.05.
Considering claim 12, Kurosaki teaches where the thickness of the copper foil is preferably 5-20 µm (Paragraph 21).
Considering claims 13-14, Song teaches where the foil is subjected to a surface treatment to form a layer thereon including metals or organics (Paragraph 40).
Considering claim 15, Song teaches where the treatment layer may be Cr, Ni, Zn, etc. (Paragraph 41).
Considering claims 16-17, Song teaches where the treatment layer may be a silane, epoxy, etc. (Paragraph 43) (i.e. comprising C, O, and Si).
Considering claims 18-19, Kurosaki teaches where the foil is a current collector for a lithium ion secondary battery (Paragraphs 18-19).
Allowable Subject Matter
Claims 5-6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art to the instant claims is that of Kim as outlined above. Kim teaches an orientation index of the (220) surface overlapping that which is claimed, but does not each the clamed (111) orientation index or ratio thereof with the (220) orientation index.
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.
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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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