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 .
Status of Application
In response to the pre-appeal request for review filed on 27 May 2026, prosecution has been reopened.
Entry of the proposed amendment of 27 April 2026 had previously been denied in the Advisory Action of 4 May 2026. Accordingly, the claim set of 14 November 2025 is the most recent set of entered claims and these are examined herein. Claims 1, 2, 7, 12, 16, and 18 are currently pending.
The rejection of claims 1, 2, 7, 12, 16, and 18 under 35 USC 112(b) as being indefinite is maintained.
The rejection of claims 1, 2, 7, 12, 16, and 18 under 35 USC 102(a)(1) as anticipated by Kimura et al (US 2015/0207148 A1) is withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, 7, 12, 16, & 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “performing a thermal reduction treatment…at a temperature higher than or equal to 120°C and lower than or equal to 180°C”. Claim 1 previously recited “performing a heat treatment…at a temperature higher than or equal to 120°C and lower than or equal to 140°C”. Amended Claim 1 later recites “wherein the temperature of the thermal reduction treatment is higher than the temperature of the heat treatment”. When the temperature of the thermal reduction treatment is 120°C, it cannot then be higher than the temperature of the heat treatment, and therefore cannot meet the claim limitation “wherein the temperature of the thermal reduction treatment is higher than the temperature of the heat treatment”. Thus the claim is indefinite. Appropriate correction is required.
Claims 7 & 16, as they depend from Claim 1, are also indefinite.
Claim 2 recites “performing a thermal reduction treatment…higher than or equal to 120°C and lower than or equal to 180°C”. Claim 2 previously recited “performing a heat treatment…at a temperature higher than or equal to 120°C and lower than or equal to 140°C”. Amended Claim 2 later recites “wherein the temperature of the thermal reduction treatment is higher than the temperature of the heat treatment”. When the temperature of the thermal reduction treatment is 120°C, it cannot then be higher than the temperature of the heat treatment, and therefore cannot meet the claim limitation “wherein the temperature of the thermal reduction treatment is higher than the temperature of the heat treatment”. Thus the claim is indefinite. Appropriate correction is required. Claims 12 & 18, as they depend from Claim 2, are also indefinite.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 7, 12, 16, & 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kimura et al. US 2015/0207148 A1. Further evidence provided by Maria et al. “Effect of the TrFE Content on the Crystallization and SSA Thermal Fractionation of P(VDF-co-TrFE) Copolymers”.
Regarding Claim 1, Kimura discloses a method for producing a graphene electrode [0403-0408], comprising,
Applying a mixture (slurry) to a current collector [0404]
Wherein a mixture (slurry) comprises an active material (carbon-coated LiFeO4 [0403]), a conductive additive comprising a graphene compound (graphene oxide [0403]), a binder comprising PVDF [0403], and a dispersion medium (NMP [0403])
a drying treatment on the applied mixture at a temperature of 80°C to obtain an electrode layer [0404], which falls within the claimed range
In regards to the temperature of the drying treatment, the Examiner directs Applicant to MPEP 2131.03 I. In the case where the prior art “discloses a point within the claimed range, the prior art anticipates the claim”. UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). Accordingly, the temperature disclosed in Kimura anticipates the claimed range set forth in Claim 1. See MPEP 2131.03 I.
a heat treatment following the drying treatment on the electrode layer at a temperature of 120°C to obtain a heat-treated electrode layer [0404], which falls within the claimed range
chemically reducing the graphene using a reducing agent to obtain a chemically-reduced electrode layer (reduction reaction using ascorbic acid [0407])
a thermal reduction treatment following the chemical reduction treatment on the chemically-reduced electrode layer [0407] at a temperature of 170°C, which meets the claim limitations
Within the embodiment described in paragraphs [0403-[0408], Kimura does not explicitly teach performing the heat treatment step in vacuum.
However, Kimura earlier disclosed that an electrode can be made by drying a slurry then heating to a higher temperature for a longer period of time under a reduced pressure [0348], thus Kimura discloses that the heat treatment is performed in a vacuum.
Particularly since the drying and heat treatment steps described by Kimura in [0404] are taught as volatilizing the slurries, it would have been obvious to one having ordinary skill in the art at the time the invention was made to perform the higher-temperature portion of this drying/heating process under vacuum, as earlier taught by Kimura, with the full expectation that this would have provided the required drying and heat treatment. Doing so would have required only the use of known methods, and the steps would have merely performed the same function of volatilizing the solvent of the slurry. This would have predictably resulted in the successful preparation of an electrode. See MPEP 2143(I)(A).
Regarding Claim 2, similarly to Claim 1, Kimura discloses a method for producing a graphene electrode [0403-0408], comprising,
Applying a mixture (slurry) to a current collector [0404]
Wherein a mixture (slurry) comprises an active material (carbon-coated LiFeO4 [0403]), a conductive additive comprising a graphene compound (graphene oxide [0403]), a binder comprising PVDF [0403], and a dispersion medium (NMP [0403])
a drying treatment on the applied mixture at a temperature of 80°C to obtain an electrode layer [0404], which falls within the claimed range
In regards to the temperature of the drying treatment, the Examiner directs Applicant to MPEP 2131.03 I. In the case where the prior art “discloses a point within the claimed range, the prior art anticipates the claim”. UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). Accordingly, the temperature disclosed in Kimura anticipates the claimed range set forth in Claim 1. See MPEP 2131.03 I.
a heat treatment following the drying treatment on the electrode layer at a temperature of 120°C to obtain a heat-treated electrode layer [0404], which falls within the claimed range
Kimura further discloses that the drying treatment is 2 minutes, and the following heat treatment is 4 minutes [0404], thus Kimura discloses that the heat treatment is performed for a longer time than the drying treatment.
chemically reducing the graphene using a reducing agent to obtain a chemically-reduced electrode layer [0407]
a thermal reduction treatment following the chemical reduction treatment on the chemically-reduced electrode layer [0407] at a temperature of 170°C, which meets the claim limitations
Within the embodiment described in paragraphs [0403-[0408], Kimura does not explicitly teach performing the heat treatment step in vacuum.
However, Kimura earlier disclosed that an electrode can be made by drying a slurry then heating to a higher temperature for a longer period of time under a reduced pressure [0348], thus Kimura discloses that the heat treatment is performed in a vacuum.
Particularly since the drying and heat treatment steps described by Kimura in [0404] are taught as volatilizing the slurries, it would have been obvious to one having ordinary skill in the art at the time the invention was made to perform the higher-temperature portion of this drying/heating process under vacuum, as earlier taught by Kimura, with the full expectation that this would have provided the required drying and heat treatment. Doing so would have required only the use of known methods, and the steps would have merely performed the same function of volatilizing the solvent of the slurry. This would have predictably resulted in the successful preparation of an electrode. See MPEP 2143(I)(A).
Regarding Claims 7 & 12, Kimura discloses that the graphene compound is reduced graphene oxide [0100, 0177]. In the instant specification, Applicant states that “graphene oxide that is reduced is also referred as reduced graphene oxide (RGO)…RGO refers to a compound obtained by reducing graphene oxide” [0141]. Kimura discloses that graphene oxide is reduced to form reduced graphene oxide [0100, 0177], thus Kimura discloses that the graphene compound is reduced graphene oxide.
Regarding Claims 16 & 18, Kimura discloses that the heat treatment is performed at 120°C [0404], and previously discloses that the binder used is PVDF [0403]. As evidenced by Maria et al., PVDF crystallizes at 120°C [Page 3 “Results and Discussion” & shown in Figure 1a], thus Kimura’s disclosed temperature of 120°C meets the limitation as being at or above the temperature of binder crystallization. Further, the instant specification states that the temperature of the heat treatment is selected such that the binder is partially crystallized but not dissolved [0059], and accordingly the preferable temperature range for the heat treatment is 120-140°C [0061]. Additionally, the instant specification uses PVDF as the binder [0183] and 130°C as the temperature for the heat treatment in the example [0185]. As evidenced and supported by the specification, when PVDF is used as the binder, 130°C is a suitable temperature for the heat treatment wherein the PVDF is crystallized and not dissolved (i.e. 130°C is thus lower than the temperature at which PVDF is dissolved). Kimura discloses a temperature lower than that of the instant specification (120°C), and thus Kimura discloses that the heat treatment is performed at a temperature that is higher than or equal to the crystallization temperature of the binder (as evidenced by Maria) and lower than or equal to the dissolution temperature of the binder (as evidenced by the instant specification).
Response to Arguments
Applicant's arguments filed 27 May 2026 have been fully considered.
Regarding the rejections under 35 USC 112(b) it is appreciated that the main intent of the proposed amendment filed on 27 May 2026 was to address these rejections. If resubmitted, the amendments would overcome the rejections. Alternatively, amending the language at lines 14-15 of claim 1 and line 16 of claim 2 to recite “ . . . higher than 120 °C . . .” would also overcome the rejections.
Applicant’s arguments concerning lack of anticipation of the claims by Kimura are persuasive. However, the cited teachings provide a prima facie case of obviousness, as set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Barton, whose telephone number is (571) 272-1307. The examiner can normally be reached on M-F 9:30 AM – 6:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 17 July 2026
Prosecution Insights