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 filed on 12/17/2025 and 12/19/2025. Claims 1-4 and 7-15 are presented for examination.
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).
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 1-4, 7-9, and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Yachi (US 2017/0098822 A1; previously cited) in view of Kobashi (Classification of commercialized carbon nanotubes into three general categories as a guide for applications, 2019), as evidenced by Predtechenskiy (US 2022/0325080 A1).
Regarding claims 1 and 15, Yachi discloses an electrode ([0001]) comprising an electrode active material layer (electrode mixture layer, [0010]), the electrode active material layer comprising an electrode active material and a conductive agent (carbon based conductive agent, [0010]); the conductive agent comprising a point-type conductive agent (carbon black or acetylene black, [0099]), and a plurality of carbon structures (fibrous carbon, [0010]), wherein the plurality of carbon structures (fibrous carbon) has an average length of 1 µm to 500 µm (overlapping range of “10 µm or more” [0087] establishes a prima facie case of obviousness [MPEP § 2144.05(I)]), the plurality of carbon nanotube structures is contained in the electrode active material layer in an amount of 0.01 wt% to 5.0 wt% (overlapping range of 0.5 to 3.0% by mass, [0127]), 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 particles (active material is in contact with the conductive paths, [0220], FIG. 29).
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 (diameter range of “less than 1000 nm” [0093] overlaps claimed range of “2 nm to 200 nm” in claim 6 of the instant application, see citations above for overlapping lengths) 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 point-type conductive agent (carbon black or acetylene black) to the plurality of carbon nanotube structures (fibrous carbon) is 9:1 to 1:9 (Yachi: fibrous carbon constitutes 10% to 100% by mass of the conductive agent, corresponding to an overlapping range of 10:1 to 0:1 [0099]).
Regarding claim 3, Yachi in view of Kobashi teaches the electrode of claim 1, wherein a weight ratio of the point-type conductive agent (carbon black or acetylene black) to the plurality of carbon nanotube structures (fibrous carbon) is 8:2 to 2:8 (Yachi: carbon structures constitute 10% to 100% by mass of the conductive agent, corresponding to an overlapping range of 10:1 to 0:1 [0099]).
Regarding claim 4, Yachi in view of Kobashi teaches the electrode of claim 1, wherein the point-type conductive agent (carbon black or acetylene black) is contained in the electrode active material layer in an amount of 0.01 wt% to 5 wt% (Yachi: 1% by mass in Example 7, [0192]).
Regarding claim 7, 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]).
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 125 nm to 170 nm (Yachi: overlapping ranges of less than 1000 nm, preferably 50 to 900 nm, more preferably 100 to 600 nm, and still more preferably 150 to 500 nm, [0093]).
Regarding claim 9, Yachi in view of Kobashi teaches the electrode of claim 9, 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 11, Yachi in view of Kobashi teaches the electrode of claim 1, wherein the point-type conductive agent is carbon black (Yachi: carbon black or acetylene black [0099]).
Regarding claim 12, 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 13, Yachi in view of Kobashi teaches the electrode of claim 1, wherein the plurality of carbon nanotubes structures cover an area of 50% or less of a surface of the electrode active material (Yachi: effective amount of active material in contact with the carbon structure is less than 24%, [0221] and Table 5).
Regarding claim 14, Yachi in view of Kobashi teaches a secondary battery comprising the electrode of claim 1 (Yachi: [0002]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Yachi (US 2017/0098822 A1, previously cited) in view of Kobashi (Classification of commercialized carbon nanotubes into three general categories as a guide for applications, 2019) as evidenced by Predtechenskiy (US 2022/0325080 A1), as applied to claim 1 above, and as evidenced by Denka (Denka Black Product Information, 2019, cited 05/07/2024).
Regarding claim 10, Yachi in view of Kobashi teaches the electrode of claim 1, wherein the point-type conductive agent has an average particle diameter (D50) of 1 nm to 500 nm (Yachi: point-type conductive agent is Denka Black manufactured by Denka Company Limited [0192]; Denka evidences that the average particle diameter of Denka black is 35 nm to 48 nm, List of Physical Properties, p. 7).
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
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