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 .
Response to Amendment
This is a final office action in response to Applicant’s remarks and amendments filed on 12/17/2025 and 12/19/2025. Claims 1 and 16 are currently amended. Claims 1-3 and 6-16 are presented for examination.
Applicant’s amendments to claims 1 and 16 have overcome the rejections set forth in the previous Office Action.
The 35 U.S.C. § 103 rejections in the previous office action are maintained.
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive.
Applicant argues Predtechenskiy is not prior art under 35 U.S.C. § 102(a)(2).
The Examiner notes that “In certain circumstances, references cited to show a universal fact need not be available as prior art before the effective filing date of applicant’s claimed invention. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism” (MPEP 2124). The rejection relies on Predtechenskiy to show material properties of single-walled carbon nanotubes and therefore the reference need not be available as prior art.
Applicant argues that a person of ordinary skill in the art would not have been motivated to combine Yachi and Kobashi to arrive at the claimed invention. Yachi is directed to an electrode mixture layer containing long fibrous carbon. Yachi teaches that the long fibrous carbons are carbon nanofibers having a straight and rigid structure and are present in the electrode mixture layer as individual fibrous strands. Kobashi is a study directed to categorizing the structures of carbon nanotubes rather than the carbon nanofibers disclosed in Yachi.
The Examiner respectfully disagrees. Though Yachi uses carbon nanofibers to form the fibrous carbon in example embodiments, Yachi teaches the fibrous carbon may instead be formed by single-walled carbon nanotubes ([0066]).
Applicant argues the rejection of claim 1 relies on improper hindsight to arrive at the selection of small-diameter carbon nanotubes because Kobashi teaches that large-diameter multi-walled carbon nanotubes are advantageous in electrodes due to their commercial availability and cost, while large-diameter single-walled and double-walled carbon nanotubes are advantageous because of their high specific surface area.
The Examiner respectfully disagrees. While Kobashi teaches the advantages of other forms of carbon nanotubes, a skilled artisan would be motivated to select small-diameter single-walled carbon nanotubes to form the fibrous carbon in Yachi because Kobashi teaches that carbon nanotubes with high crystallinity and high specific surface area, i.e., small-diameter single-walled carbon nanotubes, are suitable for use as carbon fibers or reinforcing conductive additives because their high crystallinity and specific surface area gives high conductivity and mechanical strength (p. 4046, c. 1, ll. 5-6 and 10-13; Figure 3).
Applicant argues that the data in the present specification demonstrates that there is no reasonable expectation of success in arriving at the claimed invention because the batteries including the positive electrode of Comparative Examples 1-5 had increased powder resistance of the positive electrode slurry and/or degraded capacity retention when compared to the batteries including the positive electrodes of Examples 1-3 having the claimed graphene and content of the claimed plurality of carbon nanotube structures. Therefore, one of ordinary skill in the art must be motivated to do more than merely vary all parameters or try each of numerous possible choices until one possibly arrives at a successful result.
The Examiner respectfully disagrees. The cited Examples from the instant specification show the benefits of the claimed invention but do not demonstrate why a skilled artisan would not arrive at the claimed invention based on the disclosure of Yachi in view of Kobashi. Yachi lists four types of non-fibrous carbon, including graphene, that may be combined with the fibrous carbon in an electrode ([0099]). Choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person of ordinary skill in the art [MPEP § 2143E]. Yachi further teaches including the fibrous carbon corresponding to the carbon nanotube structure in an amount overlapping with the claimed range. Comparative Example 3, which includes carbon nanotube structures outside the claimed range, is inadequate to demonstrate the criticality of the claimed range because the showing of results is not commensurate in scope with the claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 6-10, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Yachi (US 2017/0098822 A1) in view of Kobashi (Classification of commercialized carbon nanotubes into three general categories as a guide for applications, 2019) and as evidenced by Predtechenskiy (US 2022/0325080 A1).
Regarding claims 1 and 16, Yachi discloses an electrode ([0001]) comprising an electrode active material layer (electrode mixture layer, [0010]), wherein the electrode active material layer comprises an electrode active material and a conductive agent (carbon based conductive agent, [0010]), wherein the conductive agent comprises: a plurality of carbon structures (fibrous carbon, [0010]), the plurality of carbon structures is contained in the electrode active material layer in an amount of 0.01 wt% to 0.5 wt% (overlapping range of 0.5 to 3.0% by mass, [0127], establishes a prima facie case of obviousness [MPEP § 2144.05(I)]), wherein the plurality of carbon structures (fibrous carbon) form a conductive network structure in the electrode active material (mixture) layer (three-dimensional dispersion of fibrous carbon forms a conductive path to reduce a resistance of the electrode mixture layer, [0077]), and wherein the conductive network structure is provided by the plurality of carbon structures (fibrous carbon) connected to each other (conductive path in which fibers of the fibrous carbon are in contact with each other, [0133]) and connecting between the electrode active material (active material is in contact with the conductive paths, [0220], FIG. 29).
Yachi teaches that the conductive agent may further comprise other carbon-based conductive materials, including graphene ([0099]), but does not disclose a specific embodiment in which the conductive agent comprises graphene and carbon structures. However, as Yachi presents a finite number of identified additional carbon-based conductive materials, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have used graphene as an additional conductive agent in the electrode of Yachi with a reasonable expectation of yielding an operable electrode. Choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person of ordinary skill in the art [MPEP § 2143E].
Yachi discloses that the carbon structures (fibrous carbon) may be formed of single-walled (monolayer) carbon nanotubes ([0066]) and that the carbon structures preferably are linear ([0090]), but uses carbon fibers in example embodiments and does not explicitly disclose wherein each carbon structure is a carbon nanotube structure including single-walled carbon nanotube units in parallel with each other.
Kobashi teaches that industrially used small-diameter single-walled carbon nanotubes form carbon nanotube structures including single-walled carbon nanotube units arranged parallel to each other (small-diameter nanotubes have aligned fibrous structure, p. 4044 c. 1 ll. 2-5; small-diameter nanotubes are straight and form closely packed bundles, p. 4045 c. 1 ll. 5-7; see right side of Figure 1 on p. 4044 and left side of Figure 2 on p. 4045). A person having ordinary skill in the art before the effective filing date of the invention would have found it obvious to have used a carbon nanotube structure including single-walled carbon nanotube units arranged in parallel with each other in the electrode of Yachi because Kobashi teaches that such carbon nanotube structures are suitable for use as carbon fibers or reinforcing conductive additives because their high crystallinity and specific surface area gives high conductivity and mechanical strength (p. 4046, c. 1, ll. 5-6 and 10-13; Figure 3).
Yachi in view of Kobashi does not disclose wherein the carbon nanotube structures include 2 to 5,000 single-walled nanotubes units bonded in parallel with each other.
Predtechenskiy evidences single-walled carbon units in bundles are bonded with one another due to Van der Waals forces and that the diameter and length of the bundles corresponds to the number of nanotube units forming the bundle ([0048]). Yachi in view of Kobashi is considered to meet the limitation “wherein the carbon nanotube structures include 2 to 5,000 single-walled nanotubes units bonded in parallel with each other” since Yachi teaches carbon structures having similar lengths and diameters to those of the instant application (length range of “10 µm or more” [0087] overlaps claimed range of “1 µm to 5 µm” in claim 6 of the instant application, diameter range of “less than 1000 nm” [0093] overlaps claimed range of “2 nm to 200 nm” in claim 8 of the instant application) and Kobashi teaches bundled single-walled carbon nanotubes (p. 4045 c. 1 ll. 5-7). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established [MPEP § 2112.01].
Regarding claim 2, Yachi in view of Kobashi teaches the electrode of claim 1, wherein a weight ratio of the graphene to the plurality of carbon nanotube structures is in a range of 100:1 to 100:200 (Yachi: fibrous carbon constitutes 10% to 100% by mass of the conductive agent [0099], graphene therefore is at most 90% of the conductive agent; overlapping range of 10:1 to 0:1 establishes a prima facie case of obviousness [MPEP § 2144.05(I)]).
Regarding claim 3, Yachi in view of Kobashi teaches the electrode of claim 1, wherein the graphene is included in an amount of 0.01 wt% to 1.0 wt% in the electrode active material layer (Yachi: carbon-based conductive agent is included in 0.5 wt% to 20 wt% [0151], fibrous carbon constitutes 10% to 100% by mass of the conductive agent [0099], graphene is therefore at most 90% of the conductive agent and included in an amount of at most 18 wt% in the electrode active material layer, overlapping range establishes a prima facie case of obviousness [MPEP § 2144.05(I)]).
Regarding claim 6, Yachi in view of Kobashi teaches the electrode of claim 1, wherein the plurality of carbon nanotube structures (fibrous carbon) has an average length of 1 µm to 500 µm (Yachi: overlapping ranges of “10 µm or more,” preferably “10 to 100 µm,” more preferably “12 to 80 µm” and still more preferably “15 to 70 µm” [0087] establish a prima facie case of obviousness [MPEP § 2144.05(I)])
Regarding claim 7, Yachi in view of Kobashi teaches the electrode of claim 1, wherein the plurality of carbon nanotube structures have an average length of 10 µm to 70 µm (Yachi: 15 to 70 µm” [0087]).
Regarding claim 8, Yachi in view of Kobashi teaches the electrode of claim 1, wherein the plurality of carbon nanotube structures have an average diameter of 2 nm to 200 nm (Yachi: overlapping ranges of less than 1000 nm, preferably 50 to 900 nm, more preferably 100 to 600 nm, still more preferably 150 to 500 nm, and particularly preferably 200 to 400 nm [0093] establish a prima facie case of obviousness [MPEP § 2144.05(I)]).
Regarding claim 9, Yachi in view of Kobashi teaches the electrode of claim 1, wherein the plurality of carbon nanotube structures have an average diameter of 50 nm to 120 nm (Yachi: overlapping ranges of less than 1000 nm, preferably 50 to 900 nm, and more preferably 100 to 600 nm [0093] establish a prima facie case of obviousness [MPEP § 2144.05(I)]).
Regarding claim 10, Yachi in view of Kobashi teaches the electrode of claim 1, wherein, in each carbon nanotube structure, the single-walled carbon nanotube units have an average diameter of 0.5 nm to 5 nm (Kobashi: 2.1 ± 0.3 nm or 2.2 ± 0.4 nm, p. 4045 c. 1 ll. 5-7).
Regarding claim 13, Yachi in view of Kobashi teaches the electrode of claim 1, wherein each carbon nanotube structure includes 50 to 4,000 single-walled carbon nanotube units bonded to each other (Kobashi teaches single-walled carbon nanotube bundles, p. 4045 c. 1 ll. 5-7; Predtechenskiy evidences the diameter and length of the bundles corresponds to the number of nanotube units forming the bundle [0048]; Yachi teaches lengths [0087] and diameters [0093] overlapping those of the instant claims). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established [MPEP § 2112.01].
Regarding claim 14, Yachi in view of Kobashi teaches the electrode of claim 1, wherein the electrode is a positive electrode (Yachi: [0102]).
Regarding claim 15, Yachi in view of Kobashi teaches a secondary battery comprising the electrode of claim 1 (Yachi: [0002]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yachi (US 2017/0098822 A1) in view of Kobashi (Classification of commercialized carbon nanotubes into three general categories as a guide for applications, 2019) and as evidenced by Predtechenskiy (US 2022/0325080 A1), as applied to claim 1 above, and further in view of Shi (Choice for graphene as conductive additive for cathode of lithium-ion batteries, 2019, cited 05/24/2024).
Regarding claim 11, Yachi in view of Kobashi teaches the electrode of claim 1 but does not disclose wherein the graphene has an average length of 0.1 µm to 100 µm.
Shi teaches an electrode comprising an electrode active material layer, the active material layer comprising an electrode active material (LiCoO2, sec. 2.3 on p. 20) and graphene (sec. 2.1 on p. 20) having average lengths between 3 and 30 µm (¶1 of sec. 3, p. 20 bridging p. 21). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have optimized the average length of the graphene in the electrode of Yachi in view of Kobashi, including to a range corresponding to “0.1 µm to 100 µm,” because Shi teaches that the graphene should be large enough to cover active materials and form a conductive bridge, but not so large as to restrict ion conductivity in the electrode (Fig. 3, ¶4 of sec. 3 on p. 22, ¶7 of sec. 3 on p. 23). It has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art [MPEP § 2144.05(II)A].
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Yachi (US 2017/0098822 A1) in view of Kobashi (Classification of commercialized carbon nanotubes into three general categories as a guide for applications, 2019) and as evidenced by Predtechenskiy (US 2022/0325080 A1), as applied to claim 1 above, and further in view of Wang (Liquid-exfoliated graphene as highly efficient conductive additives for cathodes in lithium ion batteries, 2019, cited 05/24/2024).
Regarding claim 12, Yachi in view of Kobashi teaches the electrode of claim 1 but does not disclose wherein the graphene has an average thickness of 0.3 nm to 300 nm.
Wang teaches an electrode comprising an active material layer, the active material layer comprising an electrode active material (LFP, LFP, LCO, and NCM, sec. 2.2 on p. 157) and graphene (sec. 2.2 on p. 157). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have used graphene with an average thickness of 1.3 nm, which reads on the claim range of “0.3 nm to 300 nm,” because Wang teaches graphene prepared by jet cavitation having a thickness of 1.3 nm (¶1 of sec. 3 on p. 157) has high conductivity and is scalable, low-cost, and environmentally friendly (sec. 4 on p. 161).
Double Patenting
Claims 1-3, 6-9, 11-12, 13, 15, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 14, 6-11, and 14-18 of copending Application No. 17,630,265.
Regarding claim 1 and 16, claims 1, 17 and 18 of the ‘265 application teach an electrode comprising: an electrode active material layer, wherein the electrode active material layer comprises an electrode active material and a conductive agent, wherein the conductive agent comprises: graphene; and a plurality of carbon nanotube structures, wherein each carbon nanotube structure includes 2 to 5,000 single- walled carbon nanotube units bonded in parallel with each other, the plurality of carbon nanotube structures is included in the electrode active material layer in an amount of 0.01 wt% to 0.5 wt%, wherein the plurality of carbon nanotubes structures form a conductive network structure in the electrode active material layer, and wherein the conductive network structure is provided by the plurality of carbon nanotube structures connected to each other and connecting between the electrode active material.
Regarding claim 2, claim 14 of the ‘265 application teaches the invention as discussed in claim 1, wherein a weight ratio of the graphene to the plurality of carbon nanotube structures is in a range of 100:5000 to 100:0.33, which overlaps the claimed range of 100:1 to 100:200.
Regarding claim 3, claim 5 of the ‘265 application teaches the invention as discussed in claim 1, wherein the graphene is included in an amount of 0.01 wt% to 1.0 wt% in the electrode active material layer.
Regarding claim 6, claim 8 of the ‘265 application teaches the invention as discussed in claim 1, wherein the plurality of carbon nanotube structures has an average length of 1 µm to 500 µm.
Regarding claim 7, claim 9 of the ‘265 application teaches the invention as discussed in claim 1, wherein the plurality of carbon nanotube structures has an average length of 10 µm to 70 µm.
Regarding claim 8, claim 10 of the ‘265 application teaches the invention as discussed in claim 1, wherein the plurality of carbon nanotube structure has an average diameter of 2 nm to 200 nm.
Regarding claim 9, claim 11 of the ‘265 application teaches the invention as discussed in claim 1, wherein the plurality of carbon nanotube structures has an average diameter of 50 nm to 120 nm.
Regarding claim 11, claim 2 of the ‘265 application teaches the invention as discussed in claim 1, wherein the graphene has an average length of 0.1 µm to 100 µm.
Regarding claim 12, claim 3 of the ‘265 application teaches the invention as discussed in claim 1, wherein the graphene has an average thickness of 0.3 nm to 300 nm.
Regarding claim 13, claim 15 of the ‘265 application teaches the invention as discussed in claim 1, wherein each carbon nanotube structure includes 50 to 4,000 single-walled carbon nanotube units are bonded to each other.
Regarding claim 15, claim 16 of the ‘265 application teaches a secondary battery comprising the electrode of claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 mailing date of this final action.
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/C.C.D./Examiner, Art Unit 1723 /TIFFANY LEGETTE/Supervisory Patent Examiner, Art Unit 1723