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 3 April 2026 has been entered. Claim [#] has been canceled. Claim 5 has been added. Claims 1–5 are pending in the application.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1–5 are rejected under 35 U.S.C. 103 as being unpatentable over Kinoshita et al. (US 2022/0177691 A1).
Regarding Claims 1–3, Kinoshita discloses a positive electrode (see positive electrode, [0014]) for an energy storage device (see power storage device, [0014]) comprising a positive active material layer (see positive electrode mixture layer, [0021], [0096]) containing a positive active material (see positive electrode active material, [0076]) and a carbon nanotube (see carbon nanotubes (CNTs), [0058]),
wherein a content of the carbon nanotube in terms of solid content in the positive active material layer is 1.0% by mass or more and 5% by mass or less ([0081]; note that [0081] discloses this range for all conductive materials in the positive active material, and [0058] discloses that carbon nanotube can be used individually as the conductive material or in combination with other carbon materials such as graphite).
Kinoshita does not explicitly disclose wherein in a Log differential pore volume distribution of the positive active material layer measured by a mercury intrusion method, an average value of a ratio of a Log differential pore volume to a pore diameter in a range of a pore diameter of 20 nm or more and 200 nm or less is 3500 cm2/g or more (Claim 1), wherein in the Log differential pore volume distribution, a peak of the Log differential pore volume exists in the range of the pore diameter of 20 nm or more and 200 nm or less (Claim 2), and wherein in the Log differential pore volume distribution, a maximum value of the Log differential pore volume in the range of the pore diameter of 20 nm or more and 200 nm or less is 0.04 cm3/g or more (Claim 3). However, it is submitted that such limitations are simply measurements and thus descriptions of the instant positive electrode which would be the direct result of the instant positive electrode’s composition.
Applicant discloses that:
the number of pores formed by the carbon nanotube is controlled by adjusting the average diameter and the addition amount of the carbon nanotube ([0011]), specifically:
the average diameter of the carbon nanotube should preferably range from 1 nm to 100 nm ([0027]),
the content of the carbon nanotube in terms of solid content in the positive active material layer is preferably 0.01% by mass to 7% by mass ([0029]), and
when a mass ratio of another conductive agent to the carbon nanotube is in a range of 0 or more and 30 or less, the pore volume distribution of the positive active material layer can be easily set to a specific range ([0030]).
Applicant further discloses the positive electrode of example 1 which satisfies the above limitations of Claims 1–3 and has the following properties:
the average diameter of the carbon nanotube is 30–50 nm (Table 1),
the content of the carbon nanotube by mass in terms of solid content in the positive active material layer is 1% (Table 1), and
the mass ratio of another conductive agent (carbon black) to the carbon nanotube is 3 (Table 1 discloses the content of carbon black by mass in terms of solid content in the positive active material layer is 3%).
Accordingly, it is reasonably interpreted that the carbon nanotube diameter, carbon nanotube content, and mass ratio of another conductive agent to the carbon nanotube all falling within the specified ranges are critical to the recited positive electrode such that it would fulfill the recited measurements and necessarily possess the inherent properties.
It can also be noted that, while not specifically disclosed by Applicant as critical to satisfying the above limitations of Claims 1–3, Applicant also discloses the positive electrode of example 1 as further having the following properties:
the average length of the carbon nanotube is 5–12 µm (Table 1),
the active material is LiMeO2 (Me is Ni/Co/Mn = 60/20/20) ([0083]),
the content of the active material by mass in terms of solid content in the positive active material layer is 93% (note 93% is calculated as the mass balance in light of the other components disclosed in Table 1 and [0081]–[0082] to be present in the positive active material layer),
the binder is polyvinylidene fluoride ([0081]),
the content of the binder by mass in terms of solid content in the positive active material layer is 3% ([0082]),
N-methylpyrrolidone is used as a dispersion medium ([0082]), and
the positive active electrode is produced by mixing a composite paste, applying the composite paste to both sides of an aluminum foil as a positive electrode substrate, drying, and roll-pressing ([0082]).
In comparison, Kinoshita discloses a positive electrode (as set forth above) wherein:
the average diameter of the carbon nanotube is 5–50 nm ([0060]),
as set forth above, the content of the carbon nanotube by mass in terms of solid content in the positive active material layer is 1–5% ([0081]),
an additional conductive material (graphite, furnace black, acetylene black, Ketjen black, and graphene) can be included such that the total content of conductive material by mass in terms of solid content in the positive active material layer is 1–5% ([0058], [0081]),
the average length of the carbon nanotube is 1–100 µm ([0062]),
the active material is LiMeO2 (Me is Ni/Co/Mn) (see ternary system (NMC system) LiNixMnyCozO2, [0078]),
the content of the active material by mass in terms of solid content in the positive active material layer is 85–95% ([0079]),
the binder is polyvinylidene fluoride ([0083]),
the content of the binder by mass in terms of solid content in the positive active material layer is 0.5–5% ([0084]),
N-methylpyrrolidone is used as a dispersion medium ([0070]), and
the positive electrode is produced by mixing a composite paste ([0094]), applying the composite paste to both sides of an aluminum foil as a positive electrode substrate, drying, and roll-pressing ([0096]).
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 positive electrode of Kinoshita is substantially identical to the positive electrode of example 1 of the instant application, as set forth above, such that it would inherently possess the same properties, exhibit the same results, and thus satisfy the above limitations of Claims 1–3.
Assuming, arguendo, that the property recited in the claimed limitation is not anticipated, as there is no evidence on the record that any differences between the instantly claimed positive electrode and that of Kinoshita are critical, and as the conditions of the prior art significantly overlap the relevant conditions disclosed in the instant application, it is submitted that prior to the effective filing date, one having ordinary skill in the art would have found the positive electrode of Kinoshita and that of the instant application to be obvious variants of one another.
Kinoshita does not disclose wherein an average diameter of the carbon nanotube is 30 nm or more and 50 nm or less, and instead discloses wherein an average diameter of the carbon nanotube is 8 nm or more and 50 nm or less ([0060]). Kinoshita teaches that when the average diameter is within the range of 8 nm or more and 50 nm or less, the dispersibility and conductive properties can be enhanced ([0060]).
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 portions of the ranges for the average diameter of the carbon nanotube with a reasonable expectation that such selection would successfully result in enhanced dispersibility and conductive properties.
Regarding Claim 4, modified Kinoshita discloses the positive electrode for an energy storage device as set forth above. Kinoshita further discloses an energy storage device (see power storage device, [0014]) comprising the positive electrode according to Claim 1.
Regarding Claim 5, modified Kinoshita discloses the positive electrode for an energy storage device as set forth above. Kinoshita further discloses wherein the positive active material layer does not contain carbon black ([0058]; note that [0058] discloses types of carbon black (furnace black, acetylene black, Ketjen black) as options for the conductive material amongst non-carbon black alternatives such as graphite, carbon nanotubes, and graphene, but does not require carbon black as the conductive material; it can therefore be understood that Kinoshita discloses positive electrodes which do not contain carbon black).
Response to Arguments
Applicant’s arguments in the Remarks (p. 4) filed 3 April 2026 regarding the previous 35 U.S.C. § 103 rejection over references Akikusa, Mukai, and Nagai in the office action filed 6 November 2025 have been considered but are moot as the new ground 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.
Applicant’s arguments in the Remarks (p. 5–6) filed 3 April 2026 regarding the claimed positive electrode being able to provide unexpected results sufficient to establish unobviousness within the meaning of 35 U.S.C. § 103 have been fully considered but are not persuasive for the following reasons:
Applicant argues specifically that example 1 shown in Table 1 of the instant specification, which has values for its carbon nanotube content and average of a Log differential pore volume to a pore diameter in the specified pore diameter range within the claimed ranges, demonstrates superior results in terms of the rate performance discharge capacity ratio 5C/0.2C in comparison to example 2, which has values for the above properties outside of the claimed ranges, and that superiority of a property is evidence of nonobviousness as set forth in MPEP § 716.02(a).
This argument is not persuasive. Firstly, as set forth in MPEP § 716.01(c).II, arguments presented by the Applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor at least one joint inventor. In the instant case, Applicant is arguing unexpected results but is not supporting this assertion with an appropriate affidavit or declaration. Secondly, as set forth in MPEP § 716.02(b).I, evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). In the instant case, Applicant does not appear to have provided any statistical analysis that would establish these results as unexpected and unobvious. Thirdly, as set forth in MPEP § 716.02(d).II, to establish advantageous results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). In the instant case, Applicant is for example claiming a range for the content of the carbon nanotube in terms of solid content in the positive active material layer of 1.0% by mass or more and 7% by mass or less, but has only referenced one example (example 1) within the claimed range at its lower limit of 1.0%, and one example below the claimed range (example 2). Thus Applicant has not sufficiently demonstrated criticality for this claimed range. Further, considering Table 1 as a whole, it does not appear that the claimed positive electrode demonstrates unexpectedly superior results in comparison to positive electrodes with properties that fall outside the claimed ranges. Table 1 shows, for example, example 3 which contains carbon nanotubes with average diameters of 10–20 nm which are outside of the claimed range of 30–50 nm, but nonetheless demonstrates a superior rate performance discharge capacity ratio 5 C/0.2 C in comparison to example 1. Similarly, example 4 demonstrates almost the same rate performance discharge capacity ratio 5 C/0.2 C of 89.3% (compared to 89.4% for example 1), but has values for carbon nanotube average diameter, carbon nanotube content, and average value of log differential pore volume to a pore diameter in the specified pore diameter range which are outside the claimed ranges.
Conclusion
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/J.M.F./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725
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