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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/03/2025 has been entered.
Claim Status
This office action is in response to communication filed 12/03/2025. Claims 1-17 are pending in this office action. Claims 10-15 remain withdrawn. Claims 1 is amended, and claim 17 is new. Claims 2-7, 9, and 16 stand as originally or as previously presented.
Specification
The previous objection to the specification included in the prior office action with withdrawn due to the amendments to the claims. However, because of said amendments, a new objection is made. The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claim 1 recites the newly amended limitation that the conductive material encapsulates a “majority” portion of the active material. Examiner has determined that there is improper anteceded basis for this in the specification, as the word “majority” or term “majority portion” does not appear in the specification. However this is not considered new matter, as examiner has determined that a “majority” encapsulated active material is reasonably disclosed by fig. 3 alongside relevant context present within the specification.
Claim Rejections - 35 USC § 112
The 35 USC 112 rejections of the prior office action are withdrawn because of the amendments to the claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 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 considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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:
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.
Claim(s) 1-9, and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yudi (WO 2019222110 A1, US 20210098770 A1 is used as an English equivalent) in view of Nanba (US 20170054140 A1), as evidenced by Konishi (US 20180277829 A1).
Regarding claim 1, Yudi discloses an electrode ([0052] discloses an anode and a cathode) for a secondary battery which comprises:
An electrode current collector ([0053] discloses that each electrode comprises a current collector and an electrode film); and
An active material layer which comprises an electrode composition and is formed on the electrode current collector ([0053] discloses that each electrode comprises a current collector and an electrode film, the electrode film reading on the instantly claimed active material layer. [0057] further discloses that the electrode film is in contact with the electrode current collector, reading on “formed on the electrode current collector”),
wherein the electrode composition comprises an active material whose surface is dry-coated with a conductive material (abstract, [0006] discloses that the electrode film/active material layer is created via dry processes, and further discloses a porous carbon and optionally a conductive carbon, reading on conductive carbon. Further, abstract and examples ([0071] discloses method concerning example 1) discloses that the method comprises dry mixing the carbon and active material to create an active material mixture, which one of ordinary skill in the art would understand would result in the carbon and the rest of the active material becoming thoroughly mixed together such that surfaces of the non-carbon material in the active material layer would be directly contacting and coated with the conductive carbon material, thus reading on the claimed limitation) and a binder which is dry-mixed with the active material (abstract discloses that a single fibrilizable binder is added to the active material mixture and is dry mixed to form the electrode film mixture, [0071] discloses this process used in example 1).
Yudi does not disclose that the conductive material encapsulates a majority portion of the surface of the active material, however graphene is known in the art to create a coating/encapsulation effect when it comes into contact with the surface of an active material. While Yudi does not explicitly disclose an embodiment wherein the carbon material/conductive material comprises a carbon graphene, Yudi does disclose that the carbon material used in the invention may be a graphene-containing material or graphene sheets [0054].
Nanba discloses a lithium-ion secondary battery [0169] which uses a graphene oxide material along with active material for a positive electrode [0012], the positive electrode active material including materials also disclosed by Yudi such as LiFePO4 and LiMn2O4, as well as lithium nickel manganese cobalt oxides (NMC) [0138] such as those used in the examples of Yudi ([0071]-[0079] of Yudi) ([0138] of Nanba specifically cites LiNi1/3Mn1/3Co1/3O2, which is used in example 4 of Yudi, as well as a general formula LiNixMnyCo1-x-yO2 (x>0, y>0, x+7<1), which the NMC materials used in the examples of Yudi all fall within. Nanba further discloses that the reason why the graphene material is desired is that the electrical, mechanical, and chemical properties of graphene are surprisingly excellent [0013], and that when used in an electrode along with an active material and a binder, a graphene network can be formed in the electrode to create a highly conductive active material layer where active materials are electrically connected to each other by graphene [0041]. Based on the disclosure of Nanba, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use graphene as the carbon material of Yudi. One of ordinary skill in the art would have been motivated to do this in order to obtain a material with excellent electrical, mechanical, and chemical properties, as well as to achieve a highly conductive active material layer where active materials are electrically connected to each other by graphene, as taught by Nanba.
It is known in the art that graphene tends to naturally form a coating layer upon coming into contact with active material. For example, Konishi discloses unlike other conductive additives, the unique shape of graphene causes graphene which comes into surface contact with positive electrode active material tends to form a coating, following the uneven shape of the positive electrode active material [0028]. As a result, a person of ordinary skill in the art would expect that during the dry mixing process of Yudi, when the graphene conductive material comes into contact with the surface of the positive electrode active material, the graphene conductive material would coat and encapsulate the surface of the positive electrode active material, as evidenced by Konishi, thus satisfying the limitation that the conducive material encapsulates a portion of the surface of the active material.
Modified Yudi does not explicitly state that the conductive material encapsulates the surface of the active material without the conductive material being stacked inside an unevenness defined on the surface of the active material, however based on the preponderance of evidence, a prima facie case of obviousness exists that this limitation would be met. First, applicant describes that encapsulation happens when the active material and the conductive material are mixed (see figures, instant claims, and applicant’s arguments filed 12/03/2025). However, applicant teaches that it is desirable for encapsulation to occur in such a way that avoids the conductive material being stacked inside an unevenness of the active material (see pg. 7-8 of instant specification), as this can lead to less desirable properties, such as an increase in resistance. However, applicant indicates that to avoid this from happening, the size of the active material is not selected to be less than the size of the conductive material, and specifically the size of the active material to the conductive material may have a ratio of 1:1 to 1:25 (pg. 8 of instant specification). The instant specification indicates that within this range, the scenario where part of the conductive material may be stacked inside the unevenness formed on the surface of the active material may be avoided, and difficulty in uniformly forming the thickness of the conductive material may be avoided.
While Yudi does not teach the size of the carbon material compared to the main active material, Nanba discloses that when the flake size of the graphene is smaller than the average diameter of the active material parties, surface contact with the active material particles and connection between graphene flakes is difficult, which causes a difficulty in increasing the electric conductivity of the active material layer [0053]. As a result, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to set the size of the carbon graphene material to be equal to or larger than the size of the active material. One of ordinary skill would have been motivated to do this in order to avoid difficulty in increasing the electric conductivity of the active material layer, as taught by Nanba. Modified Yudi does not explicitly disclose that the size of the active material and the size of the conductive carbon graphene material have a ratio of 1:1 to 1:1.25. However, as discussed in the claim 2 rejection above, Nanba discloses that when the flake size of the graphene is smaller than the average diameter of the active material parties, surface contact with the active material particles and connection between graphene flakes is difficult, which causes a difficulty in increasing the electric conductivity of the active material layer [0053]. Based on this teaching, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to set the size of the graphene to equal to or greater than the size of the active material. Nanba teaches that the flake size of the graphene may range from 50nm to 100 µm [0053], while Yudi teaches that the average particle size of the active material may range from about 10 to about 20 µm [0020].
Based on the disclosures of Nanba and Yudi, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the active material could be set within the range of 10-20 µm, while the size of the graphene could be set up to a maximum of 100 µm, with a minimum size equal to the active material in order to avoid the downsides associated with using a graphene of a smaller size than the active material taught by Nanba. The result of this is that the size of the active material and the size of the conductive material will have a ratio falling within the desired range of from 1:1 to 1: 25.
Even though modified Yudi teaches a different reason for controlling the size of the active material compared to the conductive material than applicant, factually speaking modified Yudi does still teach controlling the sizes of the two materials to fit within the range applicant teaches prevents the conductive material from being stacked inside an unevenness defined on the surface of the active material. It does not matter the reason modified Yudi offers for doing this, only that it would be reasonably obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention based on the evidence available that doing so would result in an electrode meeting the claimed limitation. 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." See MPEP § 2112- 2112.02.
Further, modified Yudi does not explicitly state that the conductive material encapsulates a “majority portion” of the surface of the active material, however, given that all other conditions and properties are the same, including the materials used, the mixing method, and the sizes of materials used (see rejection above), a person of ordinary skill in the art before the effective filing date of the claimed invention would reasonably conclude that the portion of the conductive material that encapsulates the surface of the active material would be expected to be or overlap with the claimed majority portion. 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." See MPEP § 2112- 2112.02.
Regarding claim 2, modified Yudi discloses the electrode for a secondary battery of claim 1, wherein the conductive material comprises a carbon graphene material (see claim 1 rejection above). While Yudi does not teach the size of the carbon material compared to the main active material, Nanba discloses that when the flake size of the graphene is smaller than the average diameter of the active material parties, surface contact with the active material particles and connection between graphene flakes is difficult, which causes a difficulty in increasing the electric conductivity of the active material layer [0053]. As a result, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to set the size of the carbon graphene material to be equal to or larger than the size of the active material, meeting the limitations of claim 2. One of ordinary skill would have been motivated to do this in order to avoid difficulty in increasing the electric conductivity of the active material layer, as taught by Nanba.
Regarding claim 3, modified Yudi discloses the electrode for a secondary battery of claim 2, but does not explicitly disclose that the size of the active material and the size of the conductive carbon graphene material have a ratio of 1:1 to 1:1.25. However, as discussed in the claim 2 rejection above, Nanba discloses that when the flake size of the graphene is smaller than the average diameter of the active material parties, surface contact with the active material particles and connection between graphene flakes is difficult, which causes a difficulty in increasing the electric conductivity of the active material layer [0053]. Based on this teaching, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to set the size of the graphene to equal to or greater than the size of the active material. Nanba teaches that the flake size of the graphene may range from 50nm to 100 µm [0053], while Yudi teaches that the average particle size of the active material may range from about 10 to about 20 µm [0020].
Based on the disclosures of Nanba and Yudi, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the active material could be set within the range of 10-20 µm, while the size of the graphene could be set up to a maximum of 100 µm, with a minimum size equal to the active material in order to avoid the downsides associated with using a graphene of a smaller size than the active material taught by Nanba. The result of this is that the size of the active material and the size of the conductive material will have a ratio ranging from 1:1 to 1: greater than 1.25, overlapping the ratio required by the instant claim 3. As a result, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to routinely select an active material to graphene size ratio from amongst the overlapping portions of the disclosed range because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05 (1)).
Regarding claim 4, modified Yudi discloses the electrode for a secondary battery of claim 3, wherein the size of the active material is 5µm to 30µm (Yudi teaches that the average particle size of the active material may range from about 10 to about 20 µm [0020]).
Regarding claim 5, modified Yudi discloses the electrode for a secondary battery of claim 1, wherein a size of the conductive material is 25µm to 120µm (Nanba teaches that the flake size of the graphene may range from 50 nm to 100 µm, overlapping the claimed range of 25 to 120 µm. As a result, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a size for the conductive graphene material from amongst the overlapping portions of the disclosed range because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05 (1)).
Regarding claim 6, modified Yudi discloses the electrode for a secondary battery of claim 1 but does not disclose any specific embodiments wherein the active material is lithium manganese oxide (LMO). However, Yudi does disclose that the active material may be LMO or spinel LMO [0053], [0037]. As a result, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use LMO as the active material for the invention of Yudi. Doing so would be nothing more than the simple substitution of one active material disclosed by Yudi for another).
Regarding claim 7, modified Yudi discloses the electrode for a secondary battery of claim 6, wherein: the binder is polytetrafluoroethylene (PTFE) (Yudi, [0063]-[0064], [0071]-[0074] discloses examples 1-3 which used a PTFE binder).
Regarding claim 8, modified Yudi discloses the electrode for a secondary battery of claim 1, wherein: the electrode composition is a free-standing film (Yudi discloses the electrode composition is prepared as a free-standing electrode film (abstract)) and the free-standing film is disposed on the electrode current collector ([0057], claim 22).
Regarding claim 9, modified Yudi discloses the electrode for a secondary battery of claim 8, but does not disclose or measure the tensile strength of the free standing film. However, modified Yudi discloses all other limitations claimed by the instant claim 9 and dependent claims 8 and 1, including the active material layer comprising an electrode composition and is formed on the electrode current collector, wherein the electrode composition comprises an active material whose surface is dry coated with a conductive material, and a binder which is dry mixed with the active material. [0053] of Yudi further discloses that the active material is many of the same active materials as disclosed by the instant application (on pg. 6/33, paragraph 1), including LMO, LCO, and lithium nickel manganese oxides (LNMO). Yudi additionally discloses the same binder as the instant application, polytetrafluoroethylene (PTFE) ([0063]-[0064], [0071]-[0074] discloses examples 1-3 which used a PTFE binder), and discloses that the binder is used in the same concentration as that of the instant application (pg. 10/33 of the instant application discloses that the binder may be 1 to 5 parts by weight of the electrode composition, encountering problems when outside this range, including possessing a tensile strength outside the desired range when too little binder is used. Abstract of Yudi discloses that the binder is used in an amount equal to 3 weight % or less, with [0071] and [0072] disclosing embodiments where the binder loading was 3 and 2%, respectively). Since the electrode film of Yudi is very similar to that of the instant application, including the same or similar materials, the same binder, and the same binder concentration, one of ordinary skill in the art would recognize that the tensile strength of the free-standing-film of Yudi would be expected to be the same or overlap with the range of the instant claim 9.
Regarding claim 16, modified Yudi discloses a secondary battery comprising the electrode for a secondary battery of claim 1 and a separator ([0051] of Yudi).
Regarding claim 17, modified Yudi discloses the electrode for a secondary battery of claim 1, wherein: a thickness of the conductive material is uniform (Nanba discloses that the graphene used as the conductive material is single-layer graphene or multi-layer graphene, each single layer comprising a sheet of carbon molecules one-atom-thick [0014]. When a multilayer sheet is used, two or more and a one hundred or less layers are used. Given that graphene sheets as described by Nanba take the form of highly ordered and uniform specific number of individual sheets, it is reasonably interpreted that the claimed limitation that the thickness of the conductive material is unform is met.
Response to Arguments
Applicant’s arguments, see remarks, filed 12/03/2025, with respect to the objection and 35 USC 1112 rejection of the claims have been fully considered and are persuasive. The objection to the specification and the 35 USC 112 rejection of the claims has been withdrawn. However, due to issues created in the newest amendments to the claims, a new objection to the specification is issued.
Applicant's arguments filed 12/03/2025 have been fully considered but they are not persuasive. Regarding applicant’s arguments beginning on pg. 7 concerning the combination of Nanba and Yudi before the instant amendments, applicant argues that a person of ordinary skill in the art before the effective filing date of the claimed invention would have no motivation to combine Nanba’s teaching of graphene flake size in a wet process with the dry process of Yudi. This argument has been addressed in prior communication with applicant, but examiner will again take the position that Nanba reasonable discloses graphene contributes to excellent properties when used as a conductive material alongside certain positive electrode active materials (see claim 1 rejection above), and that whether a dry or wet method is used to obtain this ultimately does not matter. Examiner reminds applicant that Yudi itself discloses graphene/graphene sheets as a potential additive to the active material [0054], albeit not in an explicit example, but nonetheless clearly acknowledges the possibility of graphene being used despite only teaching a dry process.
Applicant further argues that when graphene flakes are added to a polar solvent (as in Nanba) and mixed with an active material, this results in a colloidal dispersion because the solvent interacts with the oxygen-rich surface of the graphene oxide, and argues that as a result, examiner fails to establish a coating effect would be exhibited. Examiner disagrees in view of Konishi, which evidences that the claimed coating effect would occur, however applicant also argues against examiner’s citation of Konishi.
Regarding Konishi, applicant argues that relying on Konishi for evidence that coating/encapsulation occurs is improper because Konishi uses a silane coupling agent to more strongly bind the active material and the graphene, and teaches otherwise the graphene and the active material is known to adhere “merely physically”, and can be easily separated from each other. However, examiner maintains that this does not negate Konishi’s teaching that graphene, unlike other conductive additives, has a unique shape of which causes graphene which comes into surface contact with positive electrode active material to tend to form a coating, following the uneven shape of the positive electrode active material [0028]. Whether this coating is “merely physical”, or how easily it is separated, is irrelevant, and not properties that the instant application attempts to claim. Further, examiner notes that in addition to the claimed electrode active material and conductive material, Yudi does also disclose a binder (see [0063] and claim 7 rejection above) to help bind the electrode materials together.
Applicant further argues (pg. 8 and onwards of remarks) as to why a rejection using the references of record is not appropriate due to the new amendments. First, applicant argues that the newly amended limitation of the instant claim 1 that recites “without the conductive material being stacked inside an unevenness defined on the surface of the active material” differentiates over the prior art involved in the rejection of record. Examiner will note that, applicant indicates that to avoid this from happening (the stacking inside the unevenness defined on the surface of the active material), the size of the active material is not selected to be less than the size of the conductive material, and specifically the size of the active material to the conductive material may have a ratio of 1:1 to 1:25 (pg. 8 of instant specification). The instant specification indicates that within this range, the scenario where part of the conductive material may be stacked inside the unevenness formed on the surface of the active material may be avoided, and difficulty in uniformly forming the thickness of the conductive material may be avoided.
Examiner notes that Nanba discloses that when the flake size of the graphene is smaller than the average diameter of the active material parties, surface contact with the active material particles and connection between graphene flakes is difficult, which causes a difficulty in increasing the electric conductivity of the active material layer [0053]. As a result, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to set the size of the carbon graphene material to be equal to or larger than the size of the active material, and it would have further been obvious to select a size ratio within the claimed range (see claim 1 rejection above). Applicant acknowledges that Nanba teaches selecting graphene flake size to be larger than the active material (pg. 9 of remarks) in order to poor contact among particles and connection between graphene flakes, but appears to argue that Nanba does not teach the same specific reasoning applicant has for selecting particle size (avoiding material being stacked inside the unevenness), and therefore does not reasonably disclose this limitation or provide motivation to a POSA (pg. 9). Examiner disagrees with this position.
Examiner holds that the specific reason Nanba has for suggesting controlling the particle size, and the fact that it is different from applicant’s reason, ultimately does not matter in this case. Nanba does provide a reason to control particle size within the range disclosed by the instant application, and specific benefits of doing so, such that a POSA would have sufficient motivation to control particle size within the same range that applicant controls particle size (see claim 1 rejection above). After this occurs, a POSA would expect, in light of the available evidence, that the newly amended limitation that the graphene coats the active particle without stacking inside the unevenness would be met, considering that modified Yudi meets all other limitations of the instant claim, and possesses the same particle size relationship that applicant teaches prevents the undesirable stacking inside the unevenness from occurring, thus establishing a prima facie case of obviousness (see claim 1 rejection above).
Applicant argues the cited art fails to teach or suggest the limitation “wherein a thickness of the conductive material is uniform”. Examiner disagrees, for reasons outlined in the claim 17 rejection above.
For these reasons, applicant’s arguments are not found to be persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACKARY R COCHENOUR whose telephone number is (703)756-1480. The examiner can normally be reached 1-9:00PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Smith can be reached at (571) 272-8760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACKARY RICHARD COCHENOUR/Examiner, Art Unit 1752
/NICHOLAS A SMITH/Supervisory Primary Examiner, Art Unit 1752