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 . If status of the application as subject to 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 a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1, 3-5, and 8-14 were rejected in the office action mailed 12/31/2025. Claims 1, 3-5, and 8-14 are pending in the application and are presently examined.
Response to Amendment / Arguments
The 3/31/2026 amendment, in response to the 12/31/2025 office action, has been entered. Applicant’s claim amendments overcame the 35 U.S.C. 112(b) rejections.
Applicant's arguments, regarding the 35 U.S.C. 103 rejections, have been fully considered but they are not persuasive.
Motivation to combine isn’t migration phenomenon (Remarks pp 7-8)
Applicant argues that the motivation to modify CN108878771A (Xiao) with US20200161641A1 (Jin), US20020127171A1 (Smalley), and US20070041887A1 (Veedu) is lacking because Jin, Smalley, and Veedu fail to teach migration phenomenon. Applicant refers to In re Omeprazale Patent Litig. v. Apotex Corp., 536 F.3d 1361 (Fed. Cir. 2008) (hereinafter “Omeprazale”) for support.
Examiner is not persuaded.
First, Examiner couldn’t find Omeprazale in the MPEP. Examiner is not bound to follow every case during examination, but rather teachings in the MPEP. Examiner disregards the teachings of Omeprazale for present examination.
Second, MPEP 2144(IV) contradicts Omeprazale:
“The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.”
Examiner will follow MPEP 2144(IV). In the prior office action and in this office action, Examiner presented reasoning for combining Xiao with Jin, Smalley, and Veedu. That reasoning was valid, even though it was not migration phenomenon.
Prior art fails to teach the exact range of 50 nm to 120 nm (Remarks p 9)
Applicant next argues that the prior art failed to teach the exact 50 nm to 120 nm range. Examiner agrees that the prior art previously presented did not teach this exact range; however, Veedu teaches 40 nm carbon nanotube rope (paragraph 40) and US20030133865A1 (US865) teaches 200-400 nm carbon nanotube rope (paragraph 32). Absent a showing of unexpected results in the claimed range, it is considered obvious for Smalley’s carbon nanotube ropes to have a diameter of 50-120 nm, based on the teachings of Veedu and US865.
No reasonable expectation of success (Remarks pp 9-11)
Applicant next argues that there would have been no reasonable expectation of success in modifying Smalley’s carbon nanotube ropes to have a diameter of 50-120 nm, based on the teachings of Veedu and US865. Applicant refers to In re Stepan, 868 F.3d 1342 (Fed. Cir. 2017). Examiner couldn’t find this case in the MPEP associated with the teaching of reasonable expectation of success. MPEP 2143 discusses reasonable expectation of success. MPEP 2143 should be referred to for this topic.
Applicant next argues that it is complex to achieve the of 50-120 nm diameter, and refers to paragraphs 115-120 of the published application (US20220216480A1). These paragraphs teach methods for making the carbon nanotube structures of examples 2-4. There is no guidance for how this procedure relates to carbon nanotube structure diameter. Thus, it is unclear how making carbon nanotube structures / ropes at a specific diameter range is complicated and requiring specific guidance in order to have a reasonable expectation of success.
Applicant also refers to paragraph 141. This paragraph presents present contradictory data:
Examples 1 to 5 and Comparative Example 1 have a 100 nm diameter.
Example 2 has a 10 nm diameter.
It is unclear how Example 2 has a 10 nm diameter and a 100 nm diameter.
It is unclear what Applicant means by the following:
“The data shows that Example 1, Example 2, and Comparative Example 2, which use Preparation Examples 2, 3, and 4, respectively, to form the second positive electrode active material layer have drastically different average diameters of the carbon nanotube structure.”
As noted above, paragraph 141 states that Examples 1 to 5 have a 100 nm diameter, not “drastically different average diameters” as argued by Applicant.
Furthermore, paragraphs 115-120 teach different methods of making the carbon nanotube structures, but they all result in a 100 nm diameter (paragraph 141: “In Examples 1 to 5 and Comparative Example 1, an average diameter of the carbon nanotube structure was 100 nm”). It is unclear how this shows the difficulty of achieving the claimed range of 50-120 nm diameter. It is questionable whether Applicant enabled the claimed range.
Also, the published application teaches that the claimed 50 nm to 120 nm range is not critical:
“The carbon nanotube structure may have an average diameter of 2 nm to 200 nm... When the average diameter satisfies the above range, since it is effective in forming a conductive network structure and is advantageous in connecting the active materials, excellent electrical conductivity may be achieved.” (US20220216480A1 paragraph 56)
Veedu teaches 40 nm carbon nanotube rope (paragraph 40), which is within this effective 2 nm to 200 nm range.
Finally, other prior art teaches ranges that substantially overlap the claimed 50 nm to 120 nm range:
US20120244334A1 (paragraph 51: carbon nanotube roped forms have 0.5 to 200 nm diameter)
EP1945840B1 (paragraph 40: “A carbon nanorope has a diameter in the range 20- 200 nm”)
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, 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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
The claims are in bold font, the prior art is in parentheses.
Claims 1, 3, and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over CN108878771A machine translation (Xiao) in view of US20200161641A1 (Jin), US20020127171A1 (Smalley), US20030133865A1 (US865), and US20070041887A1 (Veedu).
Xiao teaches the following limitations of claims 1 & 14:
A positive electrode comprising (title: positive pole piece)
a positive electrode collector (page 7, line 7 & figure 1: positive current collector 3),
a first positive electrode active material layer which is disposed on the positive electrode collector (page 7, lines 8-9 & figure 1: first positive electrode active material layer 6-1), wherein the first positive electrode active material layer (6-1) includes a first positive electrode active material (page 7, lines 19-23), and
a second positive electrode active material layer (page 7, lines 9-10 & figure 1: second positive electrode active material layer 6-2) disposed on (see Xiao Figure 1 below – layer 6-2 is disposed on layer 6-1) the first positive electrode active material layer (6-1)…
wherein the second positive electrode active material layer (6-2) comprises:
a second positive electrode active material (page 7, lines 19-23); and
a plurality of carbon nanotube structures (page 7, lines 10-12; figure 1)…
Xiao Figure 1
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Xiao, however, fails to teach the following limitation of claims 1 & 14, which is taught by Jin:
the first positive electrode material layer is positioned between the second positive active material layer and the positive electrode collector (paragraphs 7, 14, and 86)
Jin is directed to a battery with “good safety and improved electrical properties” (abstract). Jin’s battery includes “an upper positive active material layer [claimed second positive active material layer] in contact with the underlying positive active material layer [claimed first positive electrode material layer] and away from the positive electrode current collector [claimed positive electrode collector]” (paragraph 7). Like the claimed second positive active material layer, Jin’s upper positive active material layer includes carbon nanotubes (paragraph 86).
It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Xiao’s second positive electrode active material layer 6-2 to be between the first positive electrode active material layer 6-1 and the positive current collector 3, as taught by Jin, as part of a battery with “good safety and improved electrical properties”.
Xiao also fails to teach the following limitation of claims 1 & 14, which is taught by Smalley:
a plurality of carbon nanotube structures, wherein each carbon nanotube structure includes 2 to 5,000 single-walled carbon nanotube units bonded side by side… the plurality of carbon nanotube structures form a conductive network structure
Smalley is directed to ropes and networks of single-wall carbon nanotubes for a chemically-active environment, such as electrodes in batteries (paragraphs 18, 23, 29). These ropes and networks of carbon nanotubes enhance electrical and thermal properties (paragraph 23).
It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Xiao’s carbon nanotube structure to be ropes and networks of carbon nanotubes, as taught by Smalley, for enhancing electrical and thermal properties.
Smalley doesn’t teach the quantity of carbon nanotubes in each rope of the invention. Smalley does, however, refer to “aggregation of the single-wall carbon nanotubes into ropes” (paragraph 23). Thus, each rope must include at least two carbon nanotubes. It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, to adjust the quantity of carbon nanotubes in each rope for desired rope size and strength, and thus fall within the claimed range of 2 to 5,000.
Claims 1 & 14 also recite:
wherein the plurality of carbon nanotube structures form a conductive network structure in the second positive electrode active material layer,
wherein the conductive network structure is provided by the plurality of carbon nanotube structures connected to each other and connecting between the second positive electrode active material
Xiao’s carbon nanotube structure, modified to be ropes and networks of carbon nanotubes, as taught by Smalley, would be a conductive network structure of carbon nanotube structures connected to each other and to the second positive electrode active material.
Xiao & Smalley fail to teach the following limitation of claims 1 & 14:
the plurality of carbon nanotube structures have an average diameter of 50 nm to 120 nm
Veedu teaches a high tensile modulus, high strength, high conductive film (paragraph 3) with 40 nm diameter single-wall carbon nanotube rope (paragraph 40). US865 teaches 200-400 nm diameter single-wall carbon nanotube rope (paragraph 32) with enhanced tensile strength and/or electrical and thermal conductivity (paragraph 14).
Thus, although the claimed range is not explicitly taught in the prior art, the prior art does teach values on both sides of the claimed range. Absent a showing of unexpected results in the claimed range, it is considered obvious for Smalley’s carbon nanotube ropes to have a diameter of 50-120 nm, based on the teachings of Veedu and US865, for a high tensile modulus, high strength, high conductive film, with enhanced tensile strength and electrical and thermal conductivity.
Claim 14 (not claim 1) also requires the following limitation, which is taught by Xiao:
the plurality of carbon nanotube structures is included in an amount of 0.01 wt% to 1.0 wt% in the second positive electrode active material layer (page 7, lines 10-13 & 21-24: 0.01% SWCNT + 0.1% MWCNT = 0.02%)
With regard to claim 3, modified Xiao teaches the limitations of claim 1 as described above. Xiao fails to teach the following claim 3 limitation:
in each carbon nanotube structure, the single-walled carbon nanotube units are arranged side by side and bonded
Smalley teaches ropes of multiple carbon nanotubes, as discussed under claim 1. Adjacent carbon nanotubes in the ropes must bond, with London dispersion forces at a minimum, or the rope would fall apart.
With regard to claim 10, modified Xiao teaches the limitations of claim 1 as described above. Xiao also teaches the following claim 10 limitation:
the first positive electrode active material layer comprises the first positive electrode active material and a first conductive agent, and the first conductive agent comprises at least one selected from the group consisting of the carbon nanotube structure, a multi-walled carbon nanotube unit, and carbon black (page 7, lines 10-24)
With regard to claim 11, modified Xiao teaches the limitations of claim 1 as described above. Xiao also teaches the following claim 11 limitation:
the first positive electrode active material layer has a thickness of 1 µm to 100 µm (page 4, lines 12-13; i.e., 40-80 µm)
With regard to claim 12, modified Xiao teaches the limitations of claim 1 as described above. Claim 12 recites:
the second positive electrode active material layer has a thickness of 1 µm to 100 µm
Xiao fails to explicitly provide a thickness for the second positive electrode active material layer. Nevertheless, the first positive electrode active material layer 6-1 and the second positive electrode active material layer 6-2 are illustrated in figure 1 with the same thickness (see page 7, lines 6-13 and figure 1). Xiao teaches that the first positive electrode active material layer has a thickness of 40-80 µm (page 4, lines 12-13).
Thus, it would have been obvious to someone skilled in the art, before the effective filing date of the invention, to have made the thickness of the second positive electrode active material layer within the same range as the thickness of the first positive electrode active material layer (40-80 µm) ,based on the teachings of Xiao.
With regard to claim 13, modified Xiao teaches the limitations of claim 1 as described above. Xiao also teaches the following claim 13 limitation:
A secondary battery comprising the positive electrode of claim 1.
Xiao teaches a positive pole piece [equivalent to the claimed positive electrode] for a lithium ion battery (title). A lithium ion battery can be a secondary battery. Thus, Xiao does teach a secondary battery.
Claims 4-5 & 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over CN108878771A machine translation (Xiao) in view of US20200161641A1 (Jin), US20020127171A1 (Smalley), US20030133865A1 (US865), and US20070041887A1 (Veedu), as applied to claim 1, and further in view of US6183714B1 (US714).
With regard to claims 4-5, modified Xiao teaches the limitations of claim 1 as described above. Claim 4-5 recite:
Claim 4
the plurality of carbon nanotube structures have an average length of 1 μm to 500 µm
Claim 5
the plurality of carbon nanotube structures have an average length of 10 μm to 70 µm
US714 teaches 0.1 to 1000 micron (µm) length ropes. Therefore, US714’s 0.1 µm to 1000 µm range overlaps the claimed 1 µm to 500 µm range and the claimed 10 μm to 70 µm range. MPEP 2144.05 (II)(A) provides the law for this issue:
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”.
Given that US714’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed ranges, the ranges in claims 4-5 are an obvious variants of US714’s range.
With regard to claim 8, modified Xiao teaches the limitations of claim 1 as described above. Xiao fails to teach the following claim 8 limitation:
in each carbon nanotube structure, the single-walled carbon nanotube unit has an average diameter of 0.5 nm to 5 nm
US714 teaches single-walled carbon nanotubes with 13.8 Å diameter (column 4, lines 31-33), which is equal to 1.38 nm. US714’s single-wall carbon nanotubes can conduct electrical charge due to its low resistance (column 4, lines 11-16).
It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Xiao’s carbon nanotube structure to have a 1.38 nm diameter, as taught by US714, to conduct electrical charge.
With regard to claim 9, modified Xiao teaches the limitations of claim 1 as described above. Xiao fails to teach the following claim 9 limitation:
each carbon nanotube structure is a carbon nanotube structure in which 50 to 4,000 single-walled carbon nanotube units are bonded to each other
US714 teaches ropes, each comprising 100-500 parallel single-wall carbon nanotubes (column 1, lines 31-34) which conduct electrical charge due to their low resistance (column 4, lines 11-16).
It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Xiao’s carbon nanotube structure to be in groups of 100-500 single-wall carbon nanotubes, as taught by US714, to conduct electrical charge.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at 303-297-4684.
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/R.G.W./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
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