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 .
DETAILED ACTION
This Office Action is in response to the communication filed on 6/10/26. Applicant’s arguments have been considered but are not found entirely persuasive. Claims 1-20 are pending. Claims 3-10 and 19-20 are withdrawn.
This Action is FINAL, as necessitated by amendment.
Claims Analysis
At least claim 1 recites “for a redox flow battery”, which is an intended use limitation that has not been given patentable weight. At least claim 2 recites “for a redox flow battery”, which is an intended use limitation that has not been given patentable weight. Furthermore, the preamble of the claims is not considered a limitation and is of no significance to the claimed electrode structure. See also each of claims 15-18 that recite “for a redox flow battery”.
Election/Restrictions
Newly submitted claims 19 and 20, as well as currently amended claims 6 and 7, are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the original claims were directed toward an electrode. The electrode may be used in a redox flow battery or a power storage device such as an electric double layer capacitor or a lithium-ion capacitor. A redox flow battery has liquids that are pumped through the system. A fundamental difference between power storage is that energy is stored in the electrode material in conventional devices, while in flow batteries it is stored in the electrolyte. The electrode of claim 1 and/or claim 2 may be used in a flow battery or a power storage device such as a capacitor.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 6-7 and 19-20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Thus, claims 3-10 and 19-20 are withdrawn.
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.
Claim(s) 1, 2 and 13-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsukada et al., US 2015/0049415 A1 in view of Igai et al., JP 2006-004997A, as evidenced by the AI generated “Copilot Search” for “activated carbon crystal structure”.
Tsukada teaches an activated carbon for an electrode of a power storage device having uniform consecutive macropores, and a pore size distribution centered within a range of 1.5 to 25 mm, a specific surface area within a range of 1,500 to 2,300 m2/g, a micropore volume within a range of 0.4 to 1.0 mL/g, and an average micropore width within a range of 0.7 to 1.2 nm (abstract). Figure 9 shows an activated carbon electrode having a disk/plate shape. The uniform consecutive macropores have an average pore size within a range of 3 to 35 mm to form a three-dimensional network [0023]. See also [0051]. Examples 1-4 each teach the disk-shaped activated carbon electrode has a thickness of about 0.8 mm.
Tsukada does not explicitly teach the activated carbon material comprises a graphite crystallite wherein an interplanar distance of (002) planes of the graphite crystallite is in a range of from 0.33 nm to 0.40 nm and a crystallite size in the c-axis direction in a range of from 0.9 nm to 8.5 nm, as recited by the pending claims. Tsukada is silent regarding the crystallite properties of the disclosed activated carbon material.
However, Igai teaches activated carbon for an electrode of a power storage device. The activated carbon contains microcrystal carbon having laminar crystalline structure like graphite. In this case, the interlayer distance d002 of the microcrystal carbon is 0.340-0.380 nm and the size Lc002 of the crystallite in the c-axis direction is bigger than 0.7 nm while a specific surface area obtained by nitrogen gas adsorption is large than 30 m2/g (abstract). See [0039] regarding the specific surface area of the activated carbon material. Igai teaches d002 is 0.340-0.380 nm, preferably 0.350-0.370nm. The size Lc 002 along the c-axis crystallite is more than 0.7 nm, more preferably is greater than or equal to 1.0 nm and 4 nm or less. These preferred ranges are common to both electrodes for carbon and pretreatment of activated carbon was obtained [0032]. See also [0038]-[0041].
Therefore, the invention as a whole would have been obvious to one having ordinary skill in the art at the time the invention was filed because Igai teaches activated carbon material for an electrode of a power storage device is known to have the disclosed crystalline properties. One of skill would have known the activated carbon material for a power storage device of Tsukada would have had the known crystalline properties as disclosed by Igai. Both Igai and Tsukada teach activated carbon electrode material for power storage devices. Furthermore, the “Copilot Search” teaches activated carbon is largely amorphous but it contains graphite-like microcrystals (crystallites) formed during carbonization and activation processes. The crystallites have an interlayer distance of approximately 3.6 angstroms (0.36 nm), which is slightly larger than in perfect graphite.
Regarding claims 13 and 14, Tsukada teaches an activated carbon for an electrode of a power storage device having uniform consecutive macropores, and a pore size distribution centered within a range of 1.5 to 25 mm, a specific surface area within a range of 1,500 to 2,300 m2/g, a micropore volume within a range of 0.4 to 1.0 mL/g, and an average micropore width within a range of 0.7 to 1.2 nm (abstract). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of Americav.Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. “The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.”). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Becket, 88 F.2d 684 (CCPA 1937) (“Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys.”); In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934)(the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical); In re Lilienfeld, 67 F.2d 920, 924, 20 USPQ 53, 57 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., “not substantially less than 13%,” “not substantially below 17%,” and “between about 13[%] and 20%”); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. App'x 906 (Fed. Cir. 2014)(reversing the Board's decision, in an appeal of an inter partes reexamination proceeding, that certain claims were not prima facie obvious due to non-overlapping ranges); In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of “less than 6 pounds per cubic feet” and the prior art range of “between 6 lbs./ft3 and 25 lbs./ft3” were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.). See MPEP 2144.05. One of skill in the art would have found the claimed pore volume of 0.05 ml/g to 0.37 ml/g obvious in view of the prior art teaching of a pore volume of 0.4 ml/g because one of skill would have reasonably expected the electrodes to have the same or similar properties.
Regarding claims 15-18, product-by-process claims are not limited to the specific process steps recited, they are defined by the structure, composition, and/or properties of the product claimed. The product-by-process limitations of each of claims 15-18 have not been given patentable weight as the limitations do not appear to impart any specific additional structure to the claimed electrode. See MPEP 2113. Tsukada discloses a carbonization treatment of 1000°C.
Allowable Subject Matter
Claims 11 and 12 are objected to as being dependent upon rejected base claims, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: the claims are directed toward an electrode consisting of one plate-shaped carbon electrode material or two or more stacked plate-shaped carbon electrode materials, in which uniform consecutive macropores having an average macropore diameter in a range of from 6 µm to 35 µm are formed in a three-dimensional network form, wherein:
the carbon electrode material comprises a graphite crystallite;
an interplanar distance of (002) planes of the graphite crystallite in the carbon electrode material is in a range of from 0.33 nm to 0.40 nm;
a crystallite size of the graphite crystallite in a c-axis direction in the carbon electrode material is in a range of from 0.9 nm to 8.5 nm; and a thickness of the electrode is in a range of from 0.4 mm to 0.8 mm;
a BET specific surface area of the carbon electrode material according to a nitrogen adsorption method at 77 K is in a range of from 100 m²/g to 855 m²/g.
The prior art does not teach or suggest the electrode of claim 11 and/or claim 12. Tsukada discloses a broad BET range of 1500-2300 m²/g. Tsukada further explains that "when the specific surface area is less than the lower limit, a sufficient capacitance cannot be secured" [0060]. Thus, there is no disclosure, teaching, or suggestion of the recited BET surface area range of the claimed invention.
Response to Arguments
Applicant's arguments filed 6/10/26 have been fully considered but they are not persuasive.
Regarding Tsukada, Applicant points to the Examples and Comparative Examples of the present specification and concludes Tsukada’s process is analogous to Comparative Example 1 (without high-temperature treatment). However, this argument is not properly supported. Furthermore, Comparative Example 1 is clearly not representative of the teachings/methods of Tsukada. Comparative Example 1 results in a BET specific surface area of 620 m2/g, clearly outside the BET specific surface area range of 1500-2300 m²/g disclosed by Tsukada. The process of Tsukada is clearly not analogous to Comparative Example 1. In addition, a “high” temperature is not clearly defined and/or recited by claim1 and/or claim 2.
Applicant asserts “Igai’s electrode material is formed by a completely different process…as compared to Tsukada’s process”. However, the assertion is not properly supported. In addition, any showing that the method of Igai is different than the method of Tsukada would not be found persuasive as the claimed invention is directed toward an electrode. Applicant has not provided evidence that the electrode structure of the cited prior art is necessarily different from the claimed electrode structure.
Applicant’s argument against the Copilot Search evidence is not found persuasive as it relies on the improper conclusion that Tsukada’s process is analogous to Comparative Example 1 of the present specification. The Examiner has provided explanation above rebutting this argument. Applicant appears to be arguing the process of the present specification is the only process wherein the claimed interlayer distance may be achieved. This argument is clearly not supported by evidence and is not found persuasive by the Examiner. See also at least [0073]-[0074] of the present specification.
Tsukada is silent regarding the crystallite properties of the disclosed activated carbon material. However, Igai teaches activated carbon for an electrode of a power storage device. The activated carbon contains microcrystal carbon having laminar crystalline structure like graphite. In this case, the interlayer distance d002 of the microcrystal carbon is 0.340-0.380 nm and the size Lc002 of the crystallite in the c-axis direction is bigger than 0.7 nm while a specific surface area obtained by nitrogen gas adsorption is large than 30 m2/g (abstract). Igai teaches d002 is 0.340-0.380 nm, preferably 0.350-0.370nm. The size Lc 002 along the c-axis crystallite is more than 0.7 nm, more preferably is greater than or equal to 1.0 nm and 4 nm or less. These preferred ranges are common to both electrodes for carbon and pretreatment of activated carbon was obtained [0032]. See also [0038]-[0041]. Therefore, the invention would have been obvious to one having ordinary skill in the art at the time the invention was filed because Igai teaches activated carbon material for an electrode of a power storage device is known to have the disclosed crystalline properties. One of skill would have known the activated carbon material for a power storage device of Tsukada would have had the known crystalline properties as disclosed by Igai. Both Igai and Tsukada teach activated carbon electrode material for power storage devices. Furthermore, the “Copilot Search” teaches activated carbon is largely amorphous but it contains graphite-like microcrystals (crystallites) formed during carbonization and activation processes. The crystallites have an interlayer distance of approximately 3.6 angstroms (0.36 nm), which is slightly larger than in perfect graphite.
Claims 11 and 12 are directed toward allowable subject matter, see above reasons for indicating allowable subject matter. Claim 13 and 14 are rejected in view of the prior art. See above rejection and MPEP 2144.05. Claims 15-18 recite product-by-process limitations that have not been given patentable weight. Applicant has not shown the claimed electrode structure is necessarily different from the electrode structure of the prior art. Claims 19 and 20 are withdrawn from consideration.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CN107785587A teaches an electrode used for a vanadium redox flow battery capable of improving functionality and the vanadium redox flow battery adopting the electrode. The electrode is characterized by comprising a non-woven porous carbon base material; the porous carbon base material contains carbon fiber and one or more than one conducting carbon (abstract).
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 TRACY DOVE whose telephone number is (571)272-1285. The examiner can normally be reached M-F 9:00-3:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Buie-Hatcher can be reached at 571-270-3879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRACY M DOVE/Primary Examiner, Art Unit 1725
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