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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 5, 2026 has been entered.
Summary
Applicant’s arguments and claim amendments submitted March 5, 2026 have been entered into the file. Currently, claim 3 is cancelled and claim 1 is amended, resulting in claims 1-2 and 4-20 pending for examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5, 16, and 18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 5, claim 5 recites “the carbon material contains two or more different carbon materials”. The instant specification states “the carbon material contains two or more different carbon materials” (instant specification [0013]), “the conductive composition may contain two or more different carbon materials in combination” (instant specification [0046]), and “the conductive composition of the present invention may contain two or more different carbon materials selected from among the carbon materials of the present invention” (instant specification [0077]). However, the instant disclosure does not provide any examples or embodiments wherein the carbon material contains two or more different carbon materials (instant specification [0114-0116], [0125-0129], [0137-0140], [0147-0153]), rather the instant disclosure provides examples wherein the conductive composition contains two or more different carbon materials (instant specification [0171-0173], Table 9-3).
Additionally, it is noted that all of the XPS and ICP data presented in the instant disclosure are for individual carbon materials and not for a “carbon material that contains two or more different carbon materials” (instant specification Tables 2, 4, 6, and 8).
Therefore, the instant disclosure does not reasonably convey to one skilled in the art that the inventor or joint inventor had possession of the claimed invention, where the carbon material itself contains two or more different carbon materials and satisfies 0.01 < X/Y < 0.4.
Claims 16 and 18 are dependent on claim 5 and therefore, for the reasons outlined with respect to claim 1, these claims also contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C 112, the inventor(s) at the time the application was filed, had possession of the claimed invention.
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 5, 16, and 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.
Regarding claim 5, it is unclear if the carbon material of claim 1 is required to contain two or more different carbon materials or if the conductive composition is required to contain two or more different carbon materials. For the purpose of examination, claim 5 is interpretated as requiring the conductive composition contain two or more different carbon materials in accordance with the instant specification, as described above for the rejections under 35 U.S.C. 112(a), pending further clarification from applicant.
It is suggested that claim 5 be amended to recite “wherein the conductive composition contains two or more different carbon materials”.
Claims 16 and 18 are indefinite as they depend from an indefinite base and fail to cure the deficiencies of said claim.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 4, 8, 10, 13, and 14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Rodriguez (Rodriguez, E. et al. Graphitized boron doped carbon foams: Performance as anodes in lithium ion batteries. Electrochimica Acta. 56, 5090-5094 (2011)).
Regarding claim 1, Rodriguez teaches a carbon material having a carbon hexagonal network plane as a basic skeleton and doped with boron to replace carbon (graphitized boron-doped carbon foam, Rodriguez title), wherein a content of boron in the carbon material is 9.9 mol% (9 wt%, Rodriguez Material 9.0PB24 Table 2) and the ratio X/Y is 0.36 (Rodriguez Material 9.0PB24 Tables 2-3, calculations shown below). Approximate calculations for converting the mass % of boron to mol % assume a basis of 100 g and use the Avogadro constant and the atomic masses of carbon and boron.
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Regarding claim 2, Rodriguez teaches all features of claim 1, as described above, and further teaches the carbon material containing graphite (graphitized, Rodriguez Table 2).
Regarding claim 4, Rodriguez teaches all features of claim 1, as described above. Rodriguez further teaches a conductive composition comprising the carbon material according to claim 1, a binder, and a solvent (Rodriguez Section 2.4).
Regarding claim 8, Rodriguez teaches all features of claims 1 and 4, as described above. Rodriguez further teaches a conductive film formed form the conductive composition according to claim 4 (slurry deposited on copper foil, Rodriguez Section 2.4).
Regarding claim 10, Rodriguez teaches all features of claim 1, as described above. Rodriguez is silent regarding the G and D bands of the carbon material and the peak intensity ratio (G/D ratio).
It is reasonable to presume that the G/D ratio is inherent to Rodriguez. Support for said presumption is found in that the carbon material of Rodriguez and the claimed invention have a carbon hexagonal network plane as a basic skeleton, are doped with boron to replace carbon, have a content of boron of 0.005 to 15 mol%, and 0.01 < X/Y < 0.4.
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. See MPEP 2112.01
Regarding claim 13, Rodriguez teaches all features of claims 1 and 2, as described above. Rodriguez further teaches a conductive composition comprising the carbon material according to claim 2, a binder, and a solvent (Rodriguez Section 2.4).
Regarding claim 14, Rodriguez teaches all features of claims 1 and 10, as described above. Rodriguez further teaches a conductive composition comprising the carbon material according to claim 10, a binder, and a solvent (Rodriguez Section 2.4).
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.
Claims 11, 12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez.
Regarding claim 11, Rodriguez teaches all features of claim 1, as described above. Rodriguez further teaches that the carbon material is ground “to 20 µm top size” (Rodriguez Section 2.4).
The particle size range of Rodriguez substantially overlaps the claimed range of 0.5 to 100 µm in instant claim 11. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have selected from the overlapping portion of the range taught by Rodriguez, because overlapping ranges have been held to establish prima facie obviousness.
Regarding claim 12, Rodriguez teaches all features of claim 1, as described above. Rodriguez further teaches that the carbon material is ground “to 20 µm top size” (Rodriguez Section 2.4).
The thickness range of Rodriguez substantially overlaps the claimed range of 150 nm to 50 µm in instant claim 12. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have selected from the overlapping portion of the range taught by Rodriguez, because overlapping ranges have been held to establish prima facie obviousness.
It is noted that, as claimed, the thickness of the carbon material is not limited to a particular dimension or thickness parameter of the carbon material.
Regarding claim 15, Rodriguez teaches all features of claims 1 and 12, as described above. Rodriguez further teaches a conductive composition comprising the carbon material according to claim 12, a binder, and a solvent (Rodriguez Section 2.4).
Claims 5, 16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez, as applied to claims 1 and 4 above, in view of Nakatsutsumi (US 2018/0337424 A1).
Regarding claim 5, Rodriguez teaches all features of claims 1 and 4, as described above. Rodriguez does not teach the conductive composition containing two or more different carbon materials.
Nakatsutsumi teaches a graphite material doped with boron for use in lithium-ion batteries and that it is desirable to add a carbon covering layer on the graphite material in order to inhibit boron from trapping lithium ions and provide a high discharge capacity density (Nakatsutsumi [21-22]). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add a carbon coating to the carbon material of Rodriguez, thus resulting in the conductive composition containing two different carbon materials, in order to inhibit boron from trapping lithium ions and improve discharge capacity density.
Regarding claim 16, Rodriguez in view of Nakatsutsumi teaches all features of claims 1, 4, and 5, as described above. Rodriguez does not teach the conductive composition further comprising a conductivity aid.
Nakatsutsumi teaches a conductive composition (negative electrode mixture layer) that is used in a lithium-ion battery, as taught by Rodriguez, that comprises a conductivity aid (“may contain a conductive aid”, Nakatsutsumi [56-58]), wherein the conductive aid “may contain any known material” (Nakatsutsumi [56]).
Since Nakatsutsumi teaches that it is suitable to add a conductive aid to a conductive composition, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add a conductive aid to the conductive composition of Rodriguez in order to obtain a conductive composition with suitable conductivity for a desired application.
Regarding claim 18, Rodriguez in view of Nakatsutsumi teaches all features of claims 1, 4, and 5, as described above. Modified Rodriguez further teaches a conductive film formed form the conductive composition according to claim 5 (Rodriguez Section 2.4).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez, as applied to claims 1 and 4 above, in view of Nakatsutsumi (US 2018/0337424 A1).
Regarding claim 6, Rodriguez teaches all features of claims 1 and 4, as described above. Rodriguez further teaches that the carbon material is used in lithium-ion batteries (Rodriguez title). Rodriguez does not teach the conductive composition further comprising a conductivity aid.
Nakatsutsumi teaches a conductive composition (negative electrode mixture layer) that is used in a lithium-ion battery, as taught by Rodriguez, that comprises a conductivity aid (“may contain a conductive aid”, Nakatsutsumi [56-58]), wherein the conductive aid “may contain any known material” (Nakatsutsumi [56]).
Since Nakatsutsumi teaches that it is suitable to add a conductive aid to a conductive composition, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add a conductive aid to the conductive composition of Rodriguez in order to obtain a conductive composition with suitable conductivity for a desired application.
Claims 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez in view of Nakatsutsumi, as applied to claims 1, 4, and 6 above, and in further view of Peng (Peng. C. et al. Synergistically reinforced lithium storage performance of in situ chemically grown silicon@silicon oxide core-shell nanowires on three-dimensional conductive graphitic scaffolds. Journal of Materials Chemistry A. 2, 13859 (2014)).
Regarding claim 17, Rodriguez in view of Nakatsutsumi teaches all features of claims 1, 4, and 6, as described above. Rodriguez does not teach the conductive composition further comprising an active material.
Peng teaches that silicon has a higher theoretical capacity relative to graphite but suffers from “low intrinsic electric conductivity and large volume change during Li ion insertion/extraction” (Peng Introduction). Peng further teaches a material for use in lithium-ion batteries that is formed by growing silicon nanowires on a graphitic foam in order to obtain “high reversible lithium storage capacity”, “excellent cycling performance”, and “superior rate capability” (Peng abstract).
Since Rodriguez and Peng both teach materials used in lithium-ion batteries comprising a graphitic foam and Peng teaches that growing silicon nanowires on graphitic foam results in high reversible lithium storage capacity and desirable cycling performance, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to grow silicon nanowires, as taught by Peng, on the graphitic foam of Rodriguez, thus resulting in the conductive comprising further comprising an active material (silicon nanowires), in order to achieve higher reversible lithium storage capacity and cycling performance.
Modified Rodriguez teaches using the conductive composition as a mixture ink for forming a negative electrode for an electric storage device (Rodriguez Section 2.4).
Regarding claim 19, Rodriguez in view of Nakatsutsumi teaches all features of claims 1, 4, and 6, as described above. Modified Rodriguez further teaches a conductive film formed from the conductive composition according to claim 6 (Rodriguez Section 2.4, slurry deposited on copper foil).
Claims 7, 9, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez, as applied to claims 1 and 4 above, in view of Peng.
Regarding claim 7, Rodriguez teaches all features of claims 1 and 4, as described above. Rodriguez further teaches that the carbon material is used in lithium-ion batteries (Rodriguez title). Rodriguez does not teach the conductive composition further comprising an active material.
Peng teaches that silicon has a high theoretical capacity relative to graphite but suffers from “low intrinsic electric conductivity and large volume change during Li ion insertion/extraction” (Peng Introduction). Peng further teaches a material for use in lithium-ion batteries that is formed by growing silicon nanowires on a graphitic foam in order to obtain “high reversible lithium storage capacity”, “excellent cycling performance”, and “superior rate capability” (Peng abstract).
Since Rodriguez and Peng both teach materials used in lithium-ion batteries comprising a graphitic foam and Peng teaches that growing silicon nanowires on graphitic foam results in high reversible lithium storage capacity and desirable cycling performance, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to grow silicon nanowires, as taught by Peng, on the graphitic foam of Rodriguez, thus resulting in the conductive comprising further comprising an active material (silicon nanowires), in order to achieve higher reversible lithium storage capacity and cycling performance.
Modified Rodriguez further teaches the conductive composition being used as a mixture ink for forming a negative electrode for an electric storage device (Rodriguez Section 2.4).
Regarding claim 9, Rodriguez in view of Peng teaches all features of claims 1, 4, and 7, as described above. Modified Rodriguez further teaches an electric storage devices comprising an electrode having a mixture layer formed from the conductive composition according to claim 7 (Rodriguez Section 2.4).
Regarding claim 20, Rodriguez in view of Peng teaches all features of claims 1, 4, and 7, as described above. Modified Rodriguez further teaches a conductive film formed form the conductive composition according to claim 7 (Rodriguez Section 2.4).
Claims 10 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez in view of Handa (US 20060216516 A1) and Pimenta (Pimenta, M. A. Studying disorder in graphite-based systems by Raman spectroscopy. Physical Chemistry Chemical Physics. 9, 1276-1291 (2007)).
Regarding claim 10, Rodriguez teaches all features of claims 1, as described above. Rodriguez is silent regarding the G and D bands of the carbon material and the peak intensity ratio (G/D ratio). An alternative rejection of 10 and 14 is presented in the case that the G/D ratio is not found to be inherent to Rodriguez.
Pimenta teaches that “the integrated intensity ratio ID/IG for the D band and G band is widely used for characterizing the defect quantity in graphitic materials” and that D bands are a result of defects (pg. 1279 left column).
Handa teaches that electrical conductivity is enhanced when graphene sheets making up carbon fibers have minimum defects (Handa [53]).
Since Handa teaches that electrical conductivity is enhanced when there are less defects and Pimenta teaches that the ratio of the D and G band is indicative of the disorder and quantity of defects in graphitic materials, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to tune the G/D ratio, including values 1.7 or more, to obtain a carbon material with suitable electrical conductivity for a desired application.
Regarding claim 14, Rodriguez in view of Handa and Pimenta teaches all features of claims 1 and 10, as described above. Modified Rodriguez further teaches a conductive composition comprising the carbon material according to claim 10, a binder, and a solvent (Rodriguez Section 2.4).
Response to Arguments
Response – Claim Rejections 35 USC § 103
The following rejections presented in the Final Office Action dated December 11, 2025 are withdrawn due to the amendment to claim 1 in the response received March 5, 2026:
Claims 1-2, 4, 8, 11-13, and 15 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Fukuyo (US 2016/0096964 A1).
Claims 5-6, 16, and 18-19 under 35 U.S.C. 103 as being unpatentable over Fukuyo.
Claims 7, 9, 17, and 20 under 35 U.S.C. 103 as being unpatentable over Fukuyo, as applied to claim 1 above, in view of Nakatsutsumi (US 2018/0337424 A1).
Claims 10 and 14 under 35 U.S.C. 103 as being unpatentable over Fukuyo in view of Handa (US 20060216516 A1) and Pimenta (Pimenta, M. A. Studying disorder in graphite-based systems by Raman spectroscopy. Physical Chemistry Chemical Physics. 9, 1276-1291 (2007)).
Claims 1-2, 4-9, 11-13, and 15-20 under 35 U.S.C. 103 as being unpatentable over Nakatsutsumi (US 2018/0337424 A1).
Claims 10 and 14 under 35 U.S.C. 103 as being unpatentable over Nakatsutsumi in view of Handa (US 20060216516 A1) and Pimenta (Pimenta, M. A. Studying disorder in graphite-based systems by Raman spectroscopy. Physical Chemistry Chemical Physics. 9, 1276-1291 (2007)).
Applicant’s arguments with respect to claim 1 have been considered but are moot because 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zhamu (US 9742001 B2): appears to disclose a lithium ion battery comprising an anode active material located in the pores of a graphene foam (abstract).
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/J.S.C./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
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