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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 8th, 2026 has been entered.
Status of Claims
Claims 1 and 6-12 are pending.
Claim 1 has been amended.
Claims 2 – 5 have been cancelled.
Claims 8 – 12 have been withdrawn.
Status of Amendment
The amendment filed on February 10th, 2026 has been fully considered but does not place the application in condition for allowance.
Status of Objections and Rejections Pending Since the Office Action of February 10th, 2026
The 103 rejections of claims 1, 6, and 7 are maintained.
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, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Jo (KR 102262044 B1, but citations will be drawn to US 2021/0167391 A1). Regarding the method of determining the shear strength of the negative active material layer, it is a product-by-process limitation. Product-by-process limitations do not carry patentable weight and therefore will not be considered with respect to patentability. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
In Example 1 of Jo’s disclosure ([0047] – [0055]), they teach a negative electrode for a secondary battery comprised of a copper current collector (as required by claim 7) with an active material layer comprising artificial graphite, carbon black, and a mixture of carboxymethyl cellulose and styrene-butadiene rubber. The final thickness of the layer is 80 µm (as required by claim 6). The negative active material layer is comprised of two negative active material slurries. The first slurry is applied to the copper current collector, dried, and the second slurry is applied atop the first. The composition by mass of the first slurry is 2.4% binder, 96% active material, and 1% carbon black. The composition by mass of the second slurry is 2% binder, 96.6% active material, and 1% carbon black. The first and second slurries, as a percentage of their total weight, 50% and 52% solid by mass, respectively. Each slurry is applied onto the current collector with equal thicknesses.
Therefore, since both slurries have near identical mass compositions and are applied with the same thickness, it is reasonable to assume that the final composition of the active material layer is an average of the compositions of the slurries used for said active material layer. Seeing as both compositions satisfied the claimed compositional limitations, the total negative active material also satisfies said limitations.
Example 1 of Jo’s disclosure teaches all of the compositional and physical characteristics recited in claims 1, 6, and 7 except for the claimed shear strength. However, since Jo’s example possesses the remainder of these, absent an objective showing to the contrary, it would be expected that Jo’s example has a shear strength that is close to 1.65 MPa. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Furthermore, "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01.
Response to Arguments
Applicant’s arguments, see pages 5-7, filed May 8th, 2026 with respect to the rejection(s) of claim(s) 1, 6, and 7 under 35 USC 102 have been fully considered and are not persuasive. The Applicant continued to argue that since Jo did not teach nor disclose the rolling ratios discussed in the Applicant’s specification (see paragraphs [0048] and [0049]), Jo’s active material layer may have an average shear strength outside of the claimed range. The Applicant supported this argument by pointing out that the average values of the shear strengths of their Comparative Examples 1-5 were all lower than the claimed range of 1.6 MPa or greater because they were not processed in the way that the examples of the claimed invention were processed.
However, Comparative Example 1’s average value of shear strength is 1.59 MPa, which is close to 1.65 MPa. The difference between 1.65 MPa and 1.59 MPa is 0.06 MPa. The lower limit 1.65 MPa represents only a 3.77% increase from 1.59 MPa. Therefore, it is the Examiner’s position that this difference is not significant and 1.59 MPa is sufficiently close to 1.65 MPa. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 (I). Therefore, while Jo’s disclosure fails to anticipate the claims in view of the examples cited in the Applicant’s specification, the claimed limitations are prima facie obvious over Jo. Therefore, a rejection based on 35 USC 103 is appropriate.
Furthermore, the rolling ratios are not claimed. Even though they would be product-by-process limitations, there currently is no claim language that requires the prior art to have a rolling ratio in the range recited in the specification. Arguments that cite the rolling ratios as evidence do not have a basis in the current claim language. While the claims are interpreted in view of the specification, it is improper to read limitations of the specification into the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Lee (US 2021/0043924 A1) teaches a multi-step rolling process to create an anode, where the active material layer may comprise graphite as an active material [0010] and carbon black as an additional conductive material [0014]. Lee continues to teach a press ratio, a concept similar to the rolling ratio of the present application. Lee teaches that “a ratio of a thickness of the anode mixture layer reduced by the first rolling to a thickness of the anode mixture layer reduced by the second rolling is 70:30 to 35:65” [0032]. When the ratio is outside of this range, the permeability of the electrode increases and rapid charging performance may be deteriorated [0036].
Suzuki (US 2017/0256781 A1) describes a multi-step rolling process to create a negative electrode (abstract).
Kim (US 2018/0323423 A1) describes a multi-step rolling process to create an electrode where the variable of interest is to achieve a certain elongation of a current collector (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 RYAN K BLACKWELL-RUDASILL whose telephone number is (571)270-0563. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niki Bakhtiari can be reached at 571-272-3433. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
/R.B.R./Examiner, Art Unit 1722 /NIKI BAKHTIARI/Supervisory Patent Examiner, Art Unit 1722
Prosecution Insights