Saturday, June 17, 2006

US Patent 7060390- Vertical Nanotube Array Anode for Lithium Battery

Nanotubes have the potential to provide increased storage efficiency for batteries. This patent uses a configurations of vertically oriented multiwall nanotubes to achieve an anode for Lithium batteries. Claim 1 reads:

1. An anode assembly for a lithium ion battery, the anode assembly comprising: a conductive substrate; and a plurality of multi-walled carbon nanotubes formed on the substrate, the multi-walled carbon nanotubes being substantially parallel to each other and substantially perpendicular to the substrate.

For patent attorneys:

During prosecution the applicant presented some claims including limitations drawn to the chemical formula Li(x)Co(y)Ni(z)O(2). However, no indication was given in the specification for the values of x, y, and z and the Patent Examiner made a 35 USC 112 1st para. rejection for lack of enablement. The attorney attempted to argue that chemists knowledgeable in the chemistry of batteries would be able to figure out appropriate ranges of x, y, and z but the Examiner was unconvinced and the attorney eventually cancelled the claims dealing with Li(x)Co(y)Ni(z)O(2).
This illustrates an important point that is highly relevant in an experimental field like nanotechnology - always give multiple examples even if you think certain aspects of the invention are obvious or within experimental reach of those of ordinary skill, and especially when you are claiming these aspects. From my experience as an Examiner from 2000-2005 I definitely saw a trend of attorneys avoiding examples or details of their client's invention (although this was less true from foreign-based patent applications). This is very bad practice and is actually encouraged by the fact that many SPEs and reviewing officials at the PTO strongly emphasize the avoidance of 35 USC 112 rejections due to the difficulty of upholding these decisions at the BPAI.