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 .
DETAILED ACTION
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/23/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Allowable Subject Matter
Claim 15 is 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.
Claim Objections
Claim 2 is objected to because of the following informalities: after “having”, please change “an” to -the-, since claim 1 recites “an average dispersity D”.
Appropriate correction is required.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-2, 4, 6, 10-14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Ishiwatari et al. (“Ishiwatari”, CN 103460459 A, disclosed in IDS, see machine translation).
Regarding claims 1-2, Ishiwatari teaches a carbon material, comprising granulated particles made of a carbonaceous material and overlapping (2L) of claim 1; therefore a prima facie case of obviousness exists (see MPEP § 2144.05, I.) (Ishiwatari, Fig. 1, [0056], [0062]-[0064], e.g., assuming that the surface concave portion of the SEM image of the natural graphite particle (a) is a circle and the approximate circle diameter is set to (D), the ratio of the diameter (D) of the surface concave portion of the natural graphite particle (a) to the d50 of the natural graphite particle (a), that is, (diameter of the concave portion (D)/d50) is usually 0.15 times or more and 7 times or less; it is preferably 0.2 times or more, and more preferably 0.3 times or more; the upper limit is usually 7 times or less, preferably 5 times or less, and more preferably 3 times or less; the diameter (D) (which is being interpreted as circular diameter X1) of the concave portion is usually 0.1 μm or more, preferably 1 μm or more, more preferably 5 μm or more, further preferably 10 μm or more, and is usually 100 μm or less, preferably 70 μm or less, more preferably 50 μm or less, further preferably 30 μm or less; the volume-based median particle size in the measuring device is measured, and the measured value is used as d50; the average particle size (d50) (which is being interpreted as volume-based average particle diameter X) of the natural graphite particles (a) is usually 5 μm or more, preferably 10 μm or more, more preferably 15 μm or more, and is usually 40 μm or less, preferably 35 μm or less, more preferably 30 μm or less; (diameter (D) (equivalent to X1) and average particle size (d50) (equivalent to X) overlapping (2L) of claim 1)).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (See MPEP § 2144.05, I.).
Claims 1-2 are considered product-by-process claim. Ishiwatari teaches all of the positively recited structure of the claimed product - carbon material. The determination of patentability is based upon the product structure itself. The patentability of a carbon material does not depend on its method/ process of determination. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. (See MPEP § 2113). Claims 1-2 as written does not distinguish the carbon material of the instant application from the carbon material of the Ishiwatari.
Expectation E, dispersity D and gross area A are directed to compartment(s) used to determine X1, which are being interpreted as product-by-process limitations and does not distinguish the carbon material of the instant application from the carbon material of the Ishiwatari.
Regarding claims 4 and 17, Ishiwatari teaches a tap density of 0.7 g/cm3 or more (Ishiwatari, [0087], e.g., prefereably 0.7 g/cm3 or more).
Regarding claim 6, Ishiwatari teaches wherein the carbon material is a spheroidal graphite particle (Ishiwatari, [0102], [0109], e.g., spherical graphite; spherical graphite subjected to spheroidization treatment)
Regarding claim 10, Ishiwatari teaches the carbon material of claim 1 above. Ishiwatari teaches a negative electrode comprising the carbon material (Ishiwatari, [0002], [0022], [0029], e.g., a negative electrode for a nonaqueous secondary battery, comprising a current collector and an active material layer formed on the current collector, wherein the active material layer contains the carbon material for a nonaqueous secondary battery).
Regarding claim 11, Ishiwatari teaches the carbon material of claim 1 above. Ishiwatari teaches a secondary battery comprising the carbon material (Ishiwatari, [0002], [0022], [0029], [0030], [0272], [0276], e.g., a negative electrode for a nonaqueous secondary battery, comprising a current collector and an active material layer formed on the current collector, wherein the active material layer contains the carbon material for a nonaqueous secondary battery; a nonaqueous secondary battery comprising the negative electrode).
Regarding claim 12, Ishiwatari teaches the carbon material of claim 1 above. Ishiwatari teaches a method for making a negative electrode, the method comprising: forming the negative electrode employing the carbon material (Ishiwatari, [0002], [0022], [0029], [0192], [0193], [0263], e.g., a negative electrode for a nonaqueous secondary battery, comprising a current collector and an active material layer formed on the current collector, wherein the active material layer contains the carbon material for a nonaqueous secondary battery; a negative electrode was prepared using the obtained carbon material).
Regarding claim 13, Ishiwatari teaches the carbon material of claim 1 above. Ishiwatari teaches a method for making a secondary battery, the method comprising: including the carbon material in a component of the secondary battery (Ishiwatari, [0002], [0022], [0029], [0192], [0202], [0203], [0263], e.g., a negative electrode for a nonaqueous secondary battery, comprising a current collector and an active material layer formed on the current collector, wherein the active material layer contains the carbon material for a nonaqueous secondary battery; a negative electrode was prepared using the obtained carbon material, and a laminated battery was prepared).
Regarding claim 14, Ishiwatari teaches the carbon material of claim 1 above. Ishiwatari teaches a method for producing a secondary battery comprising a positive electrode, a negative electrode, and an electrolyte, the method comprising: producing the negative electrode by forming a negative electrode active material layer comprising the carbon material of claim on a current collector (Ishiwatari, [0002], [0022], [0029], [0192]-[0193], [0202], [0203], [0251], [0263], e.g., a negative electrode for a nonaqueous secondary battery, comprising a current collector and an active material layer formed on the current collector, wherein the active material layer contains the carbon material for a nonaqueous secondary battery; to prepare a negative electrode using the negative electrode material, a material obtained by mixing a negative electrode material with a binder resin in an aqueous medium or an organic medium is prepared into a slurry, a thickening material is added thereto as required, and then the slurry is applied onto a current collector and dried; a laminated battery was prepared by placing a separator between the negative electrode and the positive electrode; the separator was impregnated with an electrolyte; a negative electrode was prepared using the obtained carbon material, and a laminated battery was prepared).
Claims 3, 16 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ishiwatari et al. (“Ishiwatari”, CN 103460459 A, disclosed in IDS, see machine translation) in view of Matsumoto et al. (“Matsumoto”, US 20100086856 A1, disclosed in IDS) and Suenaga et al. (“Suenaga”, WO 2014133070 A1, see machine translation).
Regarding claims 3 and 16, Ishiwatari teaches the carbon material of claims 1-2 above. Ishiwatari does not teach wherein the granulated particles satisfy the equation of claims 3 and 16, wherein R is a roundness determined with a flow-based particle image analyzer, and R1 is a roundness determined from a cross-sectional SEM image.
However, in the same field of endeavor, Matsumoto teaches a carbon material having a roundness (R), determined by flow-based particle image analysis, of 0.90 (Matsumoto, Title, Table 1, [0057]-[0061], e.g., the average degree of circularity is determined with flow type particle image analyzer; the average degree of circularity is 0.90 (see Ex. 2 and 3 of Table 1)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the carbon material having a roundness (R), determined by flow-based particle image analysis, of 0.90, for the purpose of optimizing interparticle interstices and/or load characteristics (Matsumoto, [0061]).
Ishiwatari in view of Matsumoto does not teach wherein the granulated particles satisfy the equation of claims 3 and 16, wherein R is a roundness determined with a flow-based particle image analyzer, and R1 is a roundness determined from a cross-sectional SEM image.
However, in the same field of endeavor, Suenaga teaches a carbon material having a roundness R1, determined from a cross-sectional SEM image, of 0.90 or more and 1.00 in a perfect circle (Suenaga, Title, [0019], e.g., "spherical" means that when the particle image of the graphite particles is observed in an SEM image, it has a rounded shape; preferably, the circularity is 0.9 or more (which is being interpreted as roundness R1 determined from a cross-sectional SEM image); by making such a configuration, the negative electrode active material layer formed can be densified; the "circularity" is a circle equivalent diameter that is the diameter of a circle having the same area as the projected area of the graphite particles, or the perimeter as a circle calculated by dividing it by the perimeter measured from the projected image of the graphite particles, and is 1.00 in a perfect circle).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the carbon material having a roundness (R1), determined from a cross-sectional SEM image, of 0.90 or more, with 1.00 being a perfect circle, for the purpose of densify (Suenaga, [0019]).
Ishiwatari in view of Matsumoto and Suenaga teaches wherein the granulated particles satisfies the equation of claims 3 and 16, wherein R is a roundness determined with a flow-based particle image analyzer (R is 0.90 (Matsumoto, (see Ex. 2 and 3 of Table 1))), and R1 is a roundness determined from a cross-sectional SEM image (R1 is 0.90-1.00 (Suenaga, [0019])).
Regarding claims 18-19, Ishiwatari teaches a tap density of 0.7 g/cm3 or more (Ishiwatari, [0087], e.g., prefereably 0.7 g/cm3 or more).
Claims 5 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ishiwatari et al. (“Ishiwatari”, CN 103460459 A, disclosed in IDS, see machine translation) in view of Matsumoto et al. (“Matsumoto”, US 20100086856 A1, disclosed in IDS).
Regarding claim 5, Ishiwatari teaches the carbon material of claims 1-2 above. Ishiwatari does not teach the carbon material having a roundness, determined by flow-based particle image analysis, of 0.88 or greater.
However, in the same field of endeavor, Matsumoto teaches a carbon material having a roundness, determined by flow-based particle image analysis, of 0.90 or greater (Matsumoto, Title, Table 1, [0057]-[0061], e.g., the average degree of circularity is determined with flow type particle image analyzer; the average degree of circularity is preferably 0.90 or higher).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the carbon material having a roundness, determined by flow-based particle image analysis, of 0.88 or greater, for the purpose of optimizing interparticle interstices and/or load characteristics (Matsumoto, [0061]).
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, 4-6, 10-14 and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-7 and 12-16 of copending Application No. 17/565,988 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of claims 1, 4-6, 10-14 and 17-20 of the present application are fully anticipated by claims 1-3, 5-7 and 12-16 of copending Application No. 17/565,988.
Claim 1 is considered product-by-process claim. Claims 1-3, 5-7 and 12-16 of copending Application No. 17/565,988 teaches all of the positively recited structure of the claimed product - carbon material. The determination of patentability is based upon the product structure itself. The patentability of a carbon material does not depend on its method/ process of determination. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. (See MPEP § 2113). Claim 1 as written does not distinguish the carbon material of the instant application from the carbon material of the claims 1-3, 5-7 and 12-16 of copending Application No. 17/565,988.
Expectation E, dispersity D and gross area A are directed to compartment(s) used to determine X1, which are being interpreted as product-by-process limitations and does not distinguish the carbon material of the instant application from the carbon material of the claims 1-3, 5-7 and 12-16 of copending Application No. 17/565,988.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-6, 10-14 and 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6 and 10-14 of U.S. Patent No. 12334558. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of claims 1, 3-6, 10-14 and 16-20 of the present application are fully anticipated by claims 1, 3-6 and 10-14 of U.S. Patent No. 12334558.
Claim 1 is considered product-by-process claim. Claims 1, 3-6 and 10-14 of U.S. Patent No. 12334558 teaches all of the positively recited structure of the claimed product - carbon material. The determination of patentability is based upon the product structure itself. The patentability of a carbon material does not depend on its method/ process of determination. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. (See MPEP § 2113). Claim 1 as written does not distinguish the carbon material of the instant application from the carbon material of the claims 1, 3-6 and 10-14 of U.S. Patent No. 12334558.
Expectation E, dispersity D and gross area A are directed to compartment(s) used to determine X1, which are being interpreted as product-by-process limitations and does not distinguish the carbon material of the instant application from the carbon material of the claims 1, 3-6 and 10-14 of U.S. Patent No. 12334558.
Response to Arguments
Applicant's arguments filed 01/23/2026 have been fully considered but they are not persuasive.
Applicant argues that “Ishiwatari describes an invention corresponding to the comparative example described of the present application, as it does not disclose any granulation process Ishiwatari merely describes an intrinsic pore volume and not a parameter indicating the degree of dispersion, as in the parameter recited in current claim 1 of the present application. Additionally, Ishiwatari fails to describe or otherwise indicate methods for controlling pore dispersion, nor a particular reason to select the pore dispersion feature among all the other possibilities for modification. … Regarding the ODP rejections, claim 1 of Yamada 998 … Yamada998 recite nothing about average dispersity D or expectation E of void area … As in the case of the first ODP rejection, … Yamada 558 recite nothing about average dispersity D or expectation E of void area” (Remarks, Pages 7-8).
Applicant’s argument is not persuasive.
Claim 1 is considered product-by-process claim. Ishiwatari teaches all of the positively recited structure of the claimed product - carbon material. The determination of patentability is based upon the product structure itself. The patentability of a carbon material does not depend on its method/ process of determination. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. (See MPEP § 2113). Claim 1 as written does not distinguish the carbon material of the instant application from the carbon material of the Ishiwatari.
Expectation E, dispersity D and gross area A are directed to compartment(s) used to determine X1, which are being interpreted as product-by-process limitations and does not distinguish the carbon material of the instant application from the carbon material of the Ishiwatari.
Claim 1 is considered product-by-process claim. Claims 1-3, 5-7 and 12-16 of copending Application No. 17/565,988 teaches all of the positively recited structure of the claimed product - carbon material. The determination of patentability is based upon the product structure itself. The patentability of a carbon material does not depend on its method/ process of determination. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. (See MPEP § 2113). Claim 1 as written does not distinguish the carbon material of the instant application from the carbon material of the claims 1-3, 5-7 and 12-16 of copending Application No. 17/565,988.
Expectation E, dispersity D and gross area A are directed to compartment(s) used to determine X1, which are being interpreted as product-by-process limitations and does not distinguish the carbon material of the instant application from the carbon material of the claims 1-3, 5-7 and 12-16 of copending Application No. 17/565,988.
Claim 1 is considered product-by-process claim. Claims 1, 3-6 and 10-14 of U.S. Patent No. 12334558 teaches all of the positively recited structure of the claimed product - carbon material. The determination of patentability is based upon the product structure itself. The patentability of a carbon material does not depend on its method/ process of determination. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. (See MPEP § 2113). Claim 1 as written does not distinguish the carbon material of the instant application from the carbon material of the claims 1, 3-6 and 10-14 of U.S. Patent No. 12334558.
Expectation E, dispersity D and gross area A are directed to compartment(s) used to determine X1, which are being interpreted as product-by-process limitations and does not distinguish the carbon material of the instant application from the carbon material of the claims 1, 3-6 and 10-14 of U.S. Patent No. 12334558.
Conclusion
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/HAIXIA ZHANG/Primary Examiner, Art Unit 1723