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 and Claim Status
The amendment filed 25 March 2026 has been entered. Claim 6 has been canceled. Claims 14–16 have been added. Claims 1–3 and 7–16 are pending in the application.
Specification
The disclosure is objected to because of the following informalities:
[0169], [0180], [0182], and Tables 1–3 disclose the titanium-containing oxide “Ti2NbO7”; however, such a compound is not listed elsewhere in the specification such as [0034]–[0036] which describe examples of titanium-containing oxides usable in the present invention. Further, considering that the highest possible oxidation states for titanium and niobium are +4 and +5, respectively, it appears to the Examiner that Ti2NbO7 would not be expected to be a neutral, stable compound. It is respectfully submitted that “Ti2NbO7” may have been written in error, the correct formula actually being “Nb2TiO7”.
[0169]: “average fiber diameter of 10 µm” should instead read “average fiber diameter of 10 nm”; 10 µm is not a reasonable fiber diameter for carbon nanotubes, while 10 nm would be reasonable and appears to find support in [0038] and newly added Claim 15.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because “Ti2NbO7” should be deleted for the same reasons outlined above.
Claim 15 is objected to because “wherein each of the single-walled carbon nanotubes and the multi-walled carbon nanotubes” should instead read “wherein the single-walled carbon nanotubes or the multi-walled carbon nanotubes”.
Appropriate correction is required.
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 1–3 and 7–16 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 in part “the electrode satisfying the following expression (1):
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wherein L* is a lightness of the electrode according to JISZ8722:2009, and ri is a particle size for the mixture layer at a volume cumulative frequency dx, where i is a natural number from 1 to 9, the volume cumulative frequency dx being a volume-based cumulative frequency for which accumulation starts with a smaller particle size, and the volume cumulative frequency dx taking a value from 10%, denoted as d10, up to 90%, denoted as d90, in increments of 10%”. However, it is unclear from the above limitation how (1) the volume cumulative frequency dx specifically relates to ri and i, and (2) what “value” the volume cumulative frequency dx is “taking”. Due to this lack of clarity, a person of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Further, Claim 1 recites in part “a content ratio of the at least one of the single-walled carbon nanotubes or multi-walled carbon nanotubes in the mixture layer is equal to or greater than a content ratio of the acetylene black in the mixture layer” however it is unclear what each iteration of “content ratio” is in reference to, i.e. what quantities are being compared in each content ratio. Noting that the instant specification refers to amounts of the mixture layer components in terms of their “wt%” (see e.g. [0068] of the instant specification), for the purposes of examination, the above limitation has been interpreted as: “a ratio of the wt% of the at least one of the single-walled carbon nanotubes or multi-walled carbon nanotubes in the mixture layer to the wt% of the acetylene black in the mixture layer is equal to or greater than 1”.
Claims 2, 3, and 7–16 are rejected as they depend upon Claim 1 and do not resolve the indefiniteness described above.
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.
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 1–3 and 7–16 are rejected under 35 U.S.C. 103 as being unpatentable over Kusama et al. (US 2021/0083268 A1) as evidenced by Griffith et al. (“Ionic and Electronic Conduction in TiNb2O7”; art already of record), in view of Chen et al. (US 2017/0309912 A1).
Regarding Claims 1 and 2, Kusama discloses an electrode (see electrode, [0024]) comprising:
a mixture layer (see active material-containing layer, [0024]), the mixture layer being a single layer (Kusama [0024] discloses the active material-containing layer in the singular) and comprising a titanium-containing oxide (see titanium-containing composite oxide, [0024]) and a conductive agent (see combination of carbon fiber, [0025], and granular carbon, [0028], [0041]),
the titanium-containing oxide comprises at least one monoclinic niobium-titanium composite oxide that is Nb2TiO7 (see AxTiMyNb2–yO7±z wherein x = y = z = 0, [0042], and LixNb2TiO7 wherein x = 0, [0045]; note [0045] describes said compound as monoclinic), and
the conductive agent comprises an acetylene black (see granular carbon, [0028], [0041], which can be acetylene black, [0062]) and at least one of single-walled carbon nanotubes or multi-walled carbon nanotubes (see carbon fiber, [0025], which can be carbon nanotubes, [0060]; note that while Kusama does not explicitly disclose whether said carbon nanotubes are single- or multi-walled, as carbon nanotubes can only be single- or multi-walled, Kusama satisfies this limitation).
Kusama does not explicitly disclose the electrode satisfying following expression (1)
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51
430
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wherein
L* is a lightness of the electrode according to JISZ8722:2009, and
ri is a particle size for the mixture layer at a volume cumulative frequency dx, where i is a natural number from 1 to 9,
the volume cumulative frequency dx being a volume-based cumulative frequency for which accumulation starts with a smaller particle size, and
the volume cumulative frequency dx taking a value from 10%, denoted as d10, up to 90%, denoted as d90, in increments of 10% (Claim 1),
nor wherein the lightness L* satisfies 35.0 ≤ L* ≤ 50.0 (Claim 2).
However, it is submitted that such limitations are simply a measurement of, and thus a description of, inherent properties of the recited electrode, as evidenced by the instant specification.
Applicant discloses ([0026]) that the lightness L* is usable as an index of dispersion of conductive agent when the electrode constitutes a black or black-like conductive agent added to white or white-like active material particles, and that the above expression (1) falls within the claimed range of 7.0 to 11.0 when the surfaces of the insulating active materials are covered by a sufficient amount of the conductive agent and the particle sizes of the active materials fall within a proper range.
Furthermore, Applicant discloses ([0168]–[0170], [0173], Table 1) e.g. Example 4 which satisfies expression (1) of Claim 1 with a value of 8.65, satisfies Claim 2 with a lightness L* value of 39.8, and has the following properties:
the active material is a monoclinic niobium-titanium composite oxide Ti2NbO7 which are white-color insulating particles
the active material has an average particle size of 3 µm
the conductive agents are acetylene black (AB) and multi-walled carbon nanotubes (MWCNT)
the multi-walled carbon nanotubes have an average fiber diameter of 10 nm and an average fiber length of 25 µm
the electrode composition has a content ratio of active material : acetylene black : multi-walled carbon nanotubes: caboxymethyl cellulose binder: styrene-butadiene rubber =binder of 87:4:4:2.5:2.5
Note that the Examiner has calculated this content ratio to be equivalent to the acetylene black, multi-walled carbon nanotubes, and binders being included in amounts of 4.6 parts by mass, 4.6 parts by mass, and 5.7 parts by mass, respectively, with respect to 100 parts by mass of active material
example calculation:
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87
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100
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the dispersion steps/conditions entail planetary centrifugal mixer / 2000 rpm / dispersion time: 10 min / addition of 1 mm-diameter glass beads
Accordingly, it is reasonably interpreted given the above that the titanium-composite oxide active material’s particle size and appearance as a white or white-like particle, the conductive agents’ appearance as black or black-like particles, the content ratio of the electrode composition, and the dispersion method are critical to an electrode (such as the electrode of Example 4) satisfying expression (1) of Claim 1 and having an L* value in the specified range of Claim 2.
In comparison, Kusama discloses an electrode with the following properties:
as set forth above, the active material is a monoclinic niobium-titanium composite oxide Nb2TiO7 (see AxTiMyNb2–yO7±z wherein x = y = z = 0, [0042], and LixNb2TiO7 wherein x = 0, [0045]; note [0045] describes said compound as monoclinic), known in the field of titanium-based materials for electrodes to be a white-color insulating particle, as evidenced by Griffith (p. 16719 ¶ “Implications of Electronic…”)
Note that while Kusama discloses a different active material than that of Example 4, as both compounds are monoclinic, white-color insulating particles of a niobium-titanium composite oxide, one of ordinary skill in the art would reasonably expect these two compounds to be so similar in their properties as they relate to the limitations of Claims 1 and 2 as to be considered interchangeable
the active material has an average particle size of 1 µm to 5 µm ([0070])
as set forth above, the conductive agents are acetylene black (see granular carbon, [0028], [0041], which can be acetylene black, [0062]) and carbon nanotubes (see carbon fiber, [0025], which can be carbon nanotubes, [0060])
Note that while Kusama does not explicitly disclose that the carbon nanotubes are multi-walled, one of ordinary skill in the art will understand that carbon nanotubes can only be single- or multi-walled, and when referring to carbon nanotubes broadly, both would be considered suitable choices
the average fiber diameter of the carbon nanotubes is 1 nm to 200 nm (see thickness of the carbon fiber, [0060]) and the average fiber length of the carbon nanotubes is 5 µm to 50 µm (see length of carbon fiber, [0060])
the electrode composition can have a content ratio of parts by mass of granular carbon (acetylene black) : carbon fiber (carbon nanotubes) : binder : inorganic solid particles with respect to 100 parts by mass of active material of 0 to 5 parts by mass ([0063]) : 0.1 to 5 parts by mass ([0061]) : 1 to 10 parts by mass ([0065]) : 0.1 to 5 parts by mass ([0059]), and the binder can be a mixture of styrene-butadiene rubber and carboxymethyl cellulose ([0064])
Note that while Kusama discloses inorganic solid particles in the form of a solid electrolyte as an additional component to enhance lithium ion conductivity ([0052], [0059]), Kusama also discloses that these inorganic solid particles can be included in a content ratio as low as 0.1 parts by mass to 100 parts by mass of active material ([0059]), and therefore it would have been obvious to include them in such an amount with a reasonable expectation that doing so would still achieve their intended effects; it is submitted that including the inorganic solid particles in such a small amount (less than 0.1 wt% of the entire electrode) would not affect the lightness of the electrode to an appreciable extent
the dispersion steps/conditions entail dispersion of carbon fiber in a solvent to prepare a carbon fiber-dispersed solution, combination of the carbon fiber-dispersed solution, binder, and active material with a solvent, followed by mixing in a planetary mixer and bead mill to form a first slurry ([0070]); the first slurry and inorganic solid particles are mixed with granular carbon, binder, and solvent in a planetary mixer at a stirring speed of 10 rpm to 6000 rpm for 5 minutes to 2 hour, followed by stirring in a bead mill with a flow rate of 10 mL/min to 50 mL/min, to form a second slurry ([0071])
Note that while the dispersion steps/conditions of Kusama are not identical to that of instant Example 4, they include the steps of mixing in planetary mixer and bead milling which would be expected by a person of ordinary skill in the art to result in a level of mixing and dispersion comparable to that of instant Example 4; this is supported by the disclosure of Kusama ([0071]) that the dispersion steps/conditions result in a composite of active material and carbon fiber that is sufficiently mixed and has an increased number of contacts
MPEP § 2112.01.I states that 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.
It is submitted that the electrode of Kusama is substantially identical to the electrode of Example 4 of the instant application, as set forth above, such that the electrode of Kusama would inherently possess the same properties, exhibit the same results, and thus satisfy the claimed limitations, i.e. satisfy expression (1) (Claim 1) and exhibit a lightness L* value satisfying 35.0 ≤ L* ≤ 50.0 (Claim 2).
Assuming, arguendo, that the properties recited in the claimed limitation are not inherent, as there is no evidence on the record that any differences between the instantly claimed electrode and that of Kusama are critical, and as the conditions of the prior art significantly overlap the relevant conditions disclosed in the instant specification, it is submitted that prior to the effective filing date, one having ordinary skill in the art would have found the electrode of Kusama and that of the instant application to be obvious variants of one another.
Kusama does not explicitly disclose wherein a ratio of the wt% of the at least one of the single-walled carbon nanotubes or multi-walled carbon nanotubes in the mixture layer to the wt% of the acetylene black in the mixture layer is equal to or greater than 1, however, as set forth above, Kusama discloses ([0061], [0063]) that the content ratio for carbon nanotubes and acetylene black can range from 0.1 to 5 parts by weight and 0 to 5 parts by weight, respectively, based on 100 parts by weight of the active material, and therefore these two components could be included in the mixture layer of Kusama as claimed above.
Furthermore, Chen teaches an electrode (see cathode, [0088]) comprising: a mixture layer (see cathode material, [0088]), the mixture layer being a single layer (Chen [0088] teaches the cathode material in the singular) and comprising an active material (see cathode active material, [0088]) and a conductive agent (see conductive agent, [0113]), and the conductive agent comprises an acetylene black and carbon nanotubes ([0124]), wherein a ratio of the wt% of the carbon nanotubes in the mixture layer to the wt% of the acetylene black in the mixture layer ranges from 0.25 to 1.25 ([0127]). Chen teaches ([0126]–[0128]) that when the ratio is controlled within this range, the composite of acetylene black and carbon nanotubes can form an effective, continuous network structure, the resistance of the electrode can be decreased, the conductive path and performance of the electrode can be enhanced, the stability and oxidation resistance of the composite itself can be enhanced, and thereby the overall performance of a battery comprising the electrode can be improved.
Chen and Kusama are analogous to the claimed invention as they are in the same field of electrodes for secondary batteries capable of cycling lithium. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the electrode of Kusama such that the ratio of the wt% of the carbon nanotubes in the mixture layer to the wt% of the acetylene black in the mixture layer ranges from 0.25 to 1.25, as taught by Kusama, for the purpose forming an effective, continuous network structure with the composite of acetylene black and carbon nanotubes, decreasing the resistance of the electrode, enhancing the conductive path and performance of the electrode, enhancing the stability and oxidation resistance of the composite, and improving the overall performance of a battery comprising the electrode.
When the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP § 2144.05.I). It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to select the overlapping portion of the ranges for the ratio of the wt% of the carbon nanotubes in the mixture layer to the wt% of the acetylene black in the mixture layer with a reasonable expectation that such selection would successfully result in formation of an effective, continuous network structure with the composite of acetylene black and carbon nanotubes, a decrease in the resistance of the electrode, enhancement of the conductive path and performance of the electrode, enhancement of the stability and oxidation resistance of the composite, and improvement of the overall performance of a battery comprising the electrode.
Regarding Claim 3, modified Kusama discloses the electrode as set forth above. As set forth in the rejection of Claims 1 and 2 above, modified Kusama discloses (Griffith p. 16719 ¶ “Implications of Electronic…”) wherein the titanium-containing oxide comprises white-color insulating particles.
Regarding Claim 7, modified Kusama discloses the electrode as set forth above. Kusama further discloses ([0073], [0080]) wherein the electrode is a negative electrode.
Regarding Claim 8, modified Kusama discloses the electrode as set forth above. Kusama further discloses a secondary battery (see secondary battery, [0073]), comprising a positive electrode (see positive electrode, [0073]), a negative electrode (see negative electrode, [0073]), and an electrolyte (see electrolyte, [0073]),
wherein the positive electrode or the negative electrode is the electrode according to Claim 1 ([0073], [0080]).
Regarding Claim 9, modified Kusama discloses the secondary battery as set forth above. Kusama further discloses a battery pack (see battery pack, [0143]) comprising the secondary battery according to Claim 8 ([0143]).
Regarding Claim 10, modified Kusama discloses the battery pack as set forth above. Kusama further discloses the battery pack further comprising an external power distribution terminal (see external power distribution terminal, [0145]) and a protective circuit (see protective circuit, [0144]).
Regarding Claim 11, modified Kusama discloses the battery pack as set forth above. Kusama further discloses wherein
the secondary battery is more than one (see plural single batteries, [0150]), and
said more than one secondary battery is connected in series or in parallel, or in a combination of in-series and in-parallel ([0151]).
Regarding Claim 12, modified Kusama discloses the battery pack as set forth above. Kusama further discloses a vehicle (see vehicle, [0167]) comprising the battery pack according to Claim 9.
Regarding Claim 13, modified Kusama discloses the vehicle as set forth above. Kusama further discloses ([0168]) the vehicle comprising a mechanism configured to convert kinetic energy of the vehicle into regenerative energy.
Regarding Claim 14, modified Kusama discloses the electrode as set forth above. As set forth in the rejection of Claims 1 and 2 above, Kusama further discloses wherein the mixture layer further comprises a binder (see binder, [0041]), but does not specifically disclose wherein the mixture layer comprises the titanium-containing oxide, the conductive agent, and the binder in the respective ranges of proportions of: 70 wt% or more and 96 wt% or less; 2 wt% or more and 28 wt% or less; and 2 wt% or more and 28 wt% or less.
Instead, as set forth in the rejection of Claims 1 and 2 above, modified Kusama discloses wherein the electrode composition can have a content ratio of parts by mass of acetylene black : carbon nanotubes : binder : inorganic solid particles, with respect to 100 parts by mass of active material, of 0.08 to 5 parts by mass ([0063]; note that the minimum value of 0.08 parts by mass acetylene black would be necessary to ensure that a ratio of wt% carbon nanotubes to wt% acetylene black falls within the range of 0.25 to 1.25, as set forth in the rejection of Claims 1 and 2) : 0.1 to 5 parts by mass ([0061]) : 1 to 10 parts by mass ([0065]) : 0.1 parts by mass ([0059]; note that as set forth in the rejection of Claims 1 and 2 above, it would have been obvious to select the minimum parts by mass of inorganic solid particles disclosed by Kusama). As calculated by the Examiner, it can be understood that modified Kusama discloses the following regarding the wt% of each component of the mixture layer:
component
parts by mass w.r.t. 100 parts by mass of active material
minimum wt%
maximum wt%
titanium-containing oxide (active material) (AM)
100
83
99
conductive agent (acetylene black + nanotubes) (CA)
0.18–10
0.16
9.0
binder (B)
1–10
0.90
9.1
inorganic solid particles (ISP)
0.1
0.083
0.099
as a sample calculation: to calculate the minimum wt% of binder possible in the mixture layer, the minimum possible amount of binder (B) (1 part by weight) is divided by the total maximum amount of all the components in the mixture layer (i.e. the maximum parts by weight of active material (AM), conductive agent (CA), and inorganic solid particles (ISP) + the amount of binder (B)):
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When the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP §2144.05.I). It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to select the overlapping portion of the ranges for the wt% of titanium-containing oxide, conductive agent, and binder with a reasonable expectation that such selection would successfully result in formation of a functional electrode.
Regarding Claim 15, modified Kusama discloses the electrode as set forth above. Kusama further discloses ([0060]) wherein the single-walled carbon nanotubes or the multi-walled carbon nanotubes have an average fiber length in the range of 5 µm or longer and 50 µm or shorter.
Kusama does not specifically disclose wherein the single-walled carbon nanotubes or the multi-walled carbon nanotubes have an average fiber diameter in the range of 1 nm or larger and 30 nm or smaller, and instead discloses ([0060]) wherein the carbon nanotubes have an average fiber diameter in the range of 1 nm or larger and 200 nm or smaller. Kusama discloses ([0028]) that the carbon nanotubes maintain an electro-conduction path in the mixture layer; one of ordinary skill in the art will therefore understand that carbon nanotubes having the average fiber diameter within Kusama’s disclosed range are capable of serving this purpose.
When the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP § 2144.05.I). It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to select the overlapping portion of the ranges for the average fiber diameter of the carbon nanotubes with a reasonable expectation that such selection would successfully result in carbon nanotubes that maintain an electro-conduction path in the mixture layer.
Regarding Claim 16, modified Kusama discloses the electrode as set forth above. Kusama further discloses ([0064]) wherein the binder comprises at least one of styrene-butadiene rubber or carboxymethyl cellulose.
Response to Arguments
Applicant’s arguments in the Remarks filed 25 March 2026 with respect to the rejections under 35 U.S.C. § 103 in the prior rejection of record mailed 25 November 2025 have been considered but are moot because the new ground(s) of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA MARIE FEHR, Ph.D. whose telephone number is (571)270-0860. The examiner can normally be reached Monday - Friday 9:00 AM - 5:00 PM EST.
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/J.M.F./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725
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