Response to Arguments
Applicant's arguments have been fully considered but they are only partially persuasive. Specifically, in regard to the 102 rejection - Applicant’s combined arguments and amendments to the claims are persuasive to overcome the 102 rejection and the grounds of rejection based on anticipation has been withdrawn.
However, in regard to the 103 rejection – while the Examiner appreciates applicant’s calculations and that the BET SSA of the Examples of the prior art do not fall within the claimed range, the general disclosure of what is an acceptable range for BET SSA (paragraph [0026] of the prior art translation) is taken to overlap the claimed ranges in a manner which provides a prima facie case of obviousness.
Further, the prior art teaches Example 1 and Comparative Example 6 with mixing ratios of the components as shown in Table 1 (see paragraph 96 of machine translation) which overlap (see 60/40 SG/cNG in Comparative Example 6 below) or are close enough to the claimed ranges (50/50 mix artificial/natural graphite and in regard to surface area) in a manner which provides a prima facie case of obviousness (see MPEP 2144.05 Obviousness of Ranges - Table 1 below reproduced below from a human generated translation).
Mixing Ratio (mass%) -Surface Area- Electrochemical Properties
Sample
Artificial Graphite
Natural Graphite
Coated Natural Graphite
BET
(m²/g)
Volumetric Energy Density (Wh/L)
Single-Cell Capacity (Wh)
Capacity Retention After 1000 Cycles (%)
Example 1
50
0
50
2.8
366
148
87%
Comparative 6
60
0
40
2.9
366
149
79%
Partial Reproduction of Table 1 of WO 2014/133070
The 103 rejection is sustained as the claims lack a criticality for the claimed ranges - the Examiner maintains that this application is attempting to claim a very well-studied material (carbon anode materials) and the volumes of prior art, such as those references cited below, speak to the obviousness of the necessity to optimize the variables claimed (composition, particle size D50, surface area etc.). Furthermore, the instant claims fail to establish criticality of the claimed ranges (by failing to be reasonable commensurate in scope with the results shown in the specification – see MPEP 716.02(d)) because the Examples of the instant specification appear to only use compositions which have exactly 10 weight percent cNG (see Table 5) whereas the claims allow for much greater contents of the cNG which are not actually tested in the instant specification (there is no indication in the instant specification that 40wt% cNG would be a suitable cNG booster amount) and the results cannot be taken to provide unexpected results for any electrode active material.
Therefore, the rejection based on the prior art of record is maintained. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Relevant MPEP Sections
MPEP 2112.01 relating to Composition, Product, and Apparatus 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
MPEP 2113 relating to Product by Process limitations - “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Claim Rejections - 35 USC § 103
Claims 1-7, 9, 10, 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Nissan Motor Co. (WO 2014/133070 cited in IDS, a machine translation of which is of record).
In regard to claim 1, Nissan Motor Co. teaches a composition comprising: at least one carbonaceous particulate material comprised of synthetic graphite particles (“SG particles”) having a BET SSA of equal to or less than 4 m2/g (artificial graphite produced as described in paragraph 18, with a BET surface are such as ~3 m2/g as seen in the Examples of Tables 1 and 2 and described in paragraph 26 of the attached translation);
and at least one carbonaceous particulate material comprised of natural graphite particles (“cNG particles”) coated with non-graphitic carbon and having a BET SSA of equal to or less than 8 m2/g (such as ~3 m2/g); wherein the composition comprises 20-60% cNG particles by weight of the total weight of the composition (see Examples paragraph 91 and Table 1, paragraph 27 - a ratio of 1 between the different surface areas, i.e., the two carbon particles may have similar BET SSA).
The prior art specifically teaches varying the D50 of the negative electrode materials such as in the range of 10 to 30 microns as such materially effects the properties of the battery electrode, where a D50 of 10 micron gives excellent Capacity Retention (paragraphs 25, 103 and Table 3 translation of record).
In regard to the amendment, while the Examiner appreciates the BET SSA of the Examples of the prior art do not fall within the claimed range, the general disclosure of what is an acceptable range for BET SSA (paragraph [0026] of the prior art translation) is taken to overlap the claimed ranges in a manner which provides a prima facie case of obviousness. Further, Example 1 and Comparative Example 6 of the prior art teach varying the mixing ratio of the components as shown in Table 1 (see paragraph 96 of machine translation) which are overlap or are close enough to the claimed ranges in a manner which provides a prima facie case of obviousness (see MPEP 2144.05 Obviousness of Ranges - Table 1 below reproduced below from a human generated translation).
Mixing Ratio (mass%) -Surface Area- Electrochemical Properties
Sample
Artificial Graphite
Natural Graphite
Coated Natural Graphite
BET
(m²/g)
Volumetric Energy Density (Wh/L)
Single-Cell Capacity (Wh)
Capacity Retention After 1000 Cycles (%)
Example 1
50
0
50
2.8
366
148
87%
Comparative 6
60
0
40
2.9
366
149
79%
Partial Reproduction of Table 1 of WO 2014/133070
In regard to claim 2, the SG particles are further characterized by a particle size distribution (PSD) with a D50 of 10-30 micron, BET SSA of 3.5 m2/g (paragraph 91, 103) and a c/2 distance of 0.3354 nm (paragraph 17).
In regard to claim 3, the cNG particles are further characterized by a particle size distribution (PSD) with a D50 of about 10-30 μm (paragraph 103).
In regard to claim 4, the cNG particles are further characterized by a BET SSA of 2.0 m2/g (paragraph 91).
In regard to claim 5, the non-graphitic carbon coating (low crystallinity layer) of said cNG particles comprises about 2% to about 10% by weight of the total weight of said cNG particles (paragraph 20).
In regard to claim 6, the non-graphitic carbon coating of said cNG particles is obtainable by CVD coating (paragraph 20, in any event, the Examiner notes the method of production does not distinguish the claimed product from the prior art see MPEP 2113).
In regard to claim 7, the non-graphitic carbon coating of said cNG particles is obtainable by chemical vapor deposition treatment of a carbonaceous particulate starting material at temperatures of 1200° C with hydrocarbon gas (paragraph 20, also note treatment times and temperatures relate to product by process limitations which do not distinguish the claimed product from the prior art, see MPEP 2113 above).
In regard to claim 9, the composition comprises one or more additives selected such as styrene butadiene rubber (SBR) in the Examples of paragraph 91.
In regard to claim 10, the composition is used as a negative electrode active material and an electrode capacity of at least about 800 mAh/L is obtained (paragraph 16). In any event, the claimed composition and that of the 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 (see MPEP 2112.01 above).
In regard to claim 20, the SG particles are further characterized by a particle size distribution (PSD) with a D50 of 20.2 micron and the cNG particles are further characterized by a particle size distribution (PSD) with a D50 of about 20 μm (paragraph 91) in one Example or 10 to 30 microns generally (paragraph 103). See also additional D50s in Tables 3, paragraph 103-104. While no D90 is disclosed, the D50 values of the prior art anticipate the claimed D90 values, alternatively, the ranges of the prior art obviate the claimed ranges as uniformity among the carbon particles is desirable (paragraph 20).
In regard to claim 21, the SG particles are further characterized by a particle size distribution (PSD) with a D50 of 20.2 micron, BET SSA of 3.5 m2/g (paragraph 91) and a c/2 distance of 0.3354 nm (paragraph 17), where the active material has an overall tap density of at least 0.9 g/cm3 (paragraph 28), the non-graphitic carbon coating (low crystallinity layer) of said cNG particles comprises about 2% by weight of the total weight of said cNG particles (paragraph 20).
While the prior art does not disclose “a xylene density”, “a ratio of the crystallographic [004] and [110] reflection intensities (OI)”, a sphericity Q3, an ID/IG ratio or “a crystallographic Lc value” for the various particles, these are material properties of the carbon material which are a result of the structure, composition and processing thereof, as the claimed and prior art products are identical or substantially identical in structure (see other material properties described above) or composition, or are produced by identical or substantially identical processes (CVD processes etc.), a prima facie case of either anticipation or obviousness has been established (MPEP 2112.01 above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub 2009/0090640 newly cited, teaches various carbon anode compositions.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas P D'Aniello whose telephone number is (571)270-3635. The examiner can normally be reached Monday to Friday 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tong Guo can be reached on 571-272-3066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS P D'ANIELLO/Primary Examiner, Art Unit 1723
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