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 Claims
Claims 1-11, as filed 9 October 2025, are examined herein. No new matter is included.
Response to Arguments
Regarding the rejection under 35 USC 103, claim 1 includes the limitation (emphasis added) A graphene compound comprising a vacancy, wherein the graphene compound comprises a plurality of carbon atoms and one or more fluorine atoms terminating the carbon atoms, and wherein the vacancy is formed with the plurality of carbon atoms and the one or more fluorine atoms. The rejection under 35 USC 103 uses Hirohashi to teach “nitrogen terminated graphene” and then uses Yaokawa and Zhamu to teach halogen functionalization, and a motivation to substitute fluorine for nitrogen.
Applicant argues that the cited reference does not disclose “nitrogen atoms terminating the carbon atoms.” Examiner notes that the instant specification does not provide a special definition for “terminating”. Absent a special definition, Examiner determines that the broadest reasonable interpretation of “a graphene compound comprising a vacancy, wherein the graphene compound comprises a plurality of carbon atoms and one or more fluorine atoms terminating the carbon atoms” includes a graphene sheet having a vacancy, where an atom is covalently bonded to one or more carbon atoms adjacent to the vacancy. This broadest reasonable interpretation does not require one carbon atom covalently bonded to one fluorine atom.
Examiner notes that Wu (Wu, Tiantian, et al. "Fluorine-modified porous graphene as membrane for CO2/N2 separation: molecular dynamic and first-principles simulations." The Journal of Physical Chemistry C 118.14 (2014): 7369-7376, cited by Applicant in IDS dated 9 October 2025) discloses (abstract) a “pore-22” nanopore graphene with fluorine modification. At page 7369 col. 1 Wu mentions “numerous potential applications” and at page 7369 column 2, Wu refers to “chemical functionalization of the pore rim”, and at FIG.1 “dangling bonds”, which are equivalent to the “fluorine terminated graphene” of the instant FIG. 5C. Wu’s functionalized graphene provides support for the claim interpretation above. While Wu is in the field of graphene membranes for gas separation, a person of ordinary skill in the field of graphene-modified electrode materials would be aware of Wu, because of Hirohashi’s and Yaokawa’s teachings of the relevance of porous, functionalized graphene, and would expect that the fluorine functionalization of Hirohashi in view of Yaokawa to create dangling bonds with fluorine as disclosed in Wu FIG. 1.
With respect to fluorine implantation of Yaokawa and the claimed “fluorine terminated holes”, Examiner notes that Hirohashi at [0007] discloses a “hole” which is a ring-like structure which may be formed by carbon and a halogen. At [0017] Yaokawa discloses fluorographene having a high F content. The halogen-terminated holes of Hirohashi, modified by the high fluorine content of the fluorographene of Yaokawa, creates a reasonable expectation of having at least one fluorine atom covalently bonded to the edge of at least one hole. Therefore, a fluorine terminated hole is anticipated.
Applicant argues that the motivation to modify Hirohashi by Yaokawa, “fully increasing the capacity of the battery” is insufficient for a prima facie case of obviousness. Specifically Applicant argues that because Yaokawa at [0004] describes a primary battery, there is no reason to expect the fluorographene material of Yaokawa to provide the benefit of improved capacity to a secondary battery. This is not persuasive. Yaokawa at [0017] discloses graphene fluoride having high surface area and superhydrophobicity as a positive electrode material for lithium secondary batteries. Applicant appears to argue that because Yaokawa at [0031] discloses that “graphene fluoride has a larger specific surface area than graphite fluoride, so using it as a positive electrode material can increase the capacity of the battery”, that there is no motivation to expect that the modifying the graphene having halogen-terminated holes of Hirohashi by selecting fluorine would provide an improved battery. Examiner notes that a) the graphene of Hirohashi is not disclosed to be exclusively single layer graphene. If the selection of fluorine for the functionalization process of Yaokawa causes few-layer graphene of Yaokawa to exfoliate into fewer-layer graphene (e.g. single layer graphene), then this is motivation to select fluorine. B) Yaokawa further states at [0017], [0031] that fluorine functionalized graphene can be used as a positive active material for a lithium secondary battery. Therefore, the person of ordinary skill has a motivation to modify Hirohashi by Yaokawa.
Claim Interpretation
Claim 9 includes the limitation “wherein the graphene compound is in contact with a first one of the plurality of the active materials and a second one of the plurality of the active materials” The specification at ([0017]) states: “By providing a graphene compound as a bridge between a plurality of active materials and an electrolyte, it is possible to not only form an excellent conductive path in the electrode but also bind or fix the materials. In addition, for example, a three-dimensional net-like structure is formed by using a graphene compound, and materials such as the electrolyte, the plurality of active materials, and like are placed in meshes, whereby the graphene compound forms a three- dimensional conductive path and detachment of an active material from the electrode can be suppressed. Thus, the graphene compound can function both as a conductive agent and a binder in the electrode.” The broadest reasonable interpretation of the instant claim limitation is determined to include the graphene acting as a conductive path, the graphene acting as a structural binder, or both.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirohashi (US 20160104885 A1) in view of Yaokawa (JP 2019077595 A), with paragraph references to the provided English translation. (Yaokawa was cited by Applicant in IDS dated 10 March 2023.)
Regarding claim 1, Hirohashi teaches a graphene compound ([0006] graphene [0007] “formed from carbon and one or more elements … such as … a halogen”) comprising a vacancy ([0007] “hole”). At FIG. 1B a graphene sheet is shown with nitrogen functionalization at the edges of the hole (nitrogen atoms terminating the carbon atoms), wherein the graphene compound comprises a plurality of carbon atoms). At ([0029]) Hirohashi teaches substituting out a nitrogen for a halogen such as chlorine as a non-limiting example, with a reasonable expectation that such modification would successfully provide high conductivity and permeability to lithium ions as well as high reliability ([0006]) based on the disclosed mechanism of [0035]. Hirohashi at ([0015]) teaches the use of graphene with holes for at least one of the positive electrode active material layer and the negative electrode active material layer. However, Hirohashi does not explicitly teach one or more fluorine atoms terminating the carbon atoms, and wherein the vacancy is formed with the plurality of carbon atoms and the one or more fluorine atoms.
Yaokawa, in a related field of endeavor, discloses ([0001]) graphene fluoride which may be used in a lithium secondary battery. At ([0031]) Yaokawa discloses that using graphene fluoride as a positive electrode material can increase the capacity of the battery, due to its larger specific surface area.
A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to select fluorine as taught by Yaokawa for the halogen functionalization of Hirohashi, with a reasonable expectation of success fully increasing the capacity of the battery.
Regarding claim 2, Hirohashi in view of Yaokawa teaches all of the limitations as set forth above, and Hirohashi further teaches the vacancy comprises a ring-shaped region composed of the plurality of carbon atoms, [and the one or more fluorine atoms]; [0035] (emphasis added) “A hole in the graphene preferably has such a size that the aforementioned ion can pass through the hole. Note that the hole in the graphene may form a many membered ring which is a nine- or more-membered ring.”; and FIG. 1B (a non-limiting example) showing a ring-shaped region with a greater than 18-membered ring. The motivation to select fluorine for the halogen functionalization of Hirohashi, as set forth in claim 1, above, is incorporated herein by reference, thus rendering obvious a ring-shaped region with an 18 or more membered ring.
Regarding claim 3, Hirohashi in view of Yaokawa teaches all of the limitations as set forth above, and Hirohashi further teaches wherein a lithium ion is capable of passing through the ring-shaped region. ([0035] “A hole in the graphene preferably has such a size that the aforementioned [lithium] ion can pass through the hole”; [0007] “A hole is formed in the graphene, whereby a path through which an ion passes can be formed.”)
Regarding claims 4 and 5, Hirohashi in view of Yaokawa teaches all of the limitations as set forth above. Hirohashi does not explicitly teach wherein a change in a stabilization energy when the lithium ion passes through the vacancy is 1 eV or less. However, a graphene compound comprising a vacancy, fluorine termination of the carbon atoms, and having an 18-or more membered ring is rendered obvious by Hirohashi in view of Yaokawa as set forth in claims 1-3, above. Hirohashi in view of Yaokawa discloses the same structure and chemistry as the claimed fluorine functionalized graphene with an 18-or more membered ring. The instant specification teaches ([0067]) “reducing a graphene oxide can form a vacancy in a graphene compound in some cases.” At ([0153]) the instant specification teaches adding fluorine to the conductive agent (graphene) using gas or plasma treatment. Hirohashi discloses a comparable process at ([0024-0029]), starting with a graphene oxide and carrying out heat treatment then nitrogen or halogen functionalization. Hirohashi at [0032-0033] and Fig. 1B and Fig. 2 (curve B) also provides supportive evidence since -3 eV is less than 1eV.
Because the structure and chemistry of the claimed material is rendered obvious, and the manufacturing method is similar, therefore the material of Hirohashi in view of Yaokawa has the same properties, and a change in a stabilization energy when a lithium ion passes through as claimed is also rendered obvious, meeting the limitation of claim 4. For similar reasons, Hirohashi in view of Yaokawa also renders obvious wherein the stabilization energy is obtained by a Nudged Elastic Band method (claim 5).
Regarding claim 6, Hirohashi in view of Yaokawa teaches all of the limitations as set forth above. Hirohashi further teaches a secondary battery ([0007]) comprising an electrode comprising the graphene compound according to claim 1 ([0015] “Such graphene is used for at least one of the positive electrode active material layer and the negative electrode active material layer.”)
Regarding claim 7, Hirohashi in view of Yaokawa teaches all of the limitations as set forth above, and Hirohashi further teaches a moving vehicle comprising the secondary battery according to claim 6. ([0074] an electric vehicle)
Regarding claim 8, Hirohashi in view of Yaokawa teaches all of the limitations as set forth above, and Hirohashi further teaches an electronic device comprising the secondary battery according to claim 6. ([0074] a desktop personal computer)
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirohashi (US 20160104885 A1) in view of in view of Zhamu (US 20120064409 A1) and Yaokawa (JP 2019077595 A), with paragraph references to the provided English translation. (Yaokawa was cited by Applicant in IDS dated 10 March 2023.)
Regarding claim 9, Hirohashi teaches a secondary battery ([0073] power storage device) comprising: an electrode ([0040-0041] a negative electrode, a positive electrode). Hirohashi teaches ([0040] multiple different negative electrode active materials “there is no particular limitation” and at ([0043-0045]) teaches multiple types of positive active materials. However, Hirohashi does not explicitly teach a specific embodiment wherein the electrode comprises a plurality of active materials.
Zhamu, in a similar field of endeavor, discloses ([0142]) an anode material comprising 23% Si-nanowires, 12% graphene, and 65% fine graphite particles. At ([0004]) Zhamu discloses that natural graphite and synthetic graphite can reversibly intercalate lithium. Therefore, a person of ordinary skill would consider graphite to be an active material. Zhamu at (FIG. 3(A) and FIG. 3(B)) discloses graphene sheets embracing active material particles, and at ([0143]) Zhamu discloses that a cell using these particulates exhibits improved stability of cycling behavior.
A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to select Zhamu’s Si-nanowire and graphite active material for Hirohashi’s secondary battery, with a reasonable expectation of successfully achieving improved stability of cycling behavior, thus rendering obvious wherein the electrode comprises a plurality of active materials.
Returning to Hirohashi, at ([0015]) Hirohashi teaches graphene-containing electrodes “Such graphene is used for at least one of the positive electrode active material layer and the negative electrode active material layer” and further teaches ([0006-0007]) graphene “formed from carbon and one or more elements … such as … a halogen” comprising a hole. (a graphene compound comprising a vacancy) At FIG. 1B a graphene sheet is shown with nitrogen functionalization at the edges of a ring-shaped region with a greater than 18-membered ring.
However, Hirohashi does not explicitly teach one or more fluorine atoms terminating the carbon atoms, and wherein the vacancy is formed with the plurality of carbon atoms and the one or more fluorine atoms.
Yaokawa, in a related field of endeavor, discloses that using graphene fluoride as a positive electrode material can increase the capacity of the battery, due to its larger specific surface area.
A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to select Yaokawa’s fluorine functionalization for the halogen functionalization of Hirohashi, with a reasonable expectation of successfully increasing the capacity of the battery, thus rendering obvious wherein the graphene compound comprises a vacancy, wherein the vacancy has a 18- or more-membered ring in which at least one of a plurality of carbon atoms is terminated by fluorine,
Hirohashi does not explicitly teach wherein the graphene compound is in contact with a first one of the plurality of the active materials and a second one of the plurality of the active materials. However, at ([0087]) Hirohashi discloses that “graphene which has high conductivity and is permeable to ions of lithium or the like is used.” At [0065] Hirohashi discloses graphene on the surface of a silicon active material layer. In combination with the electrode comprising a plurality of active materials of Zhamu, as set forth above, this which creates the graphene compound in contact with a first and second active material.
Regarding claim 10, Hirohashi in view of Zhamu and Yaokawa teaches all of the limitations as set forth above, and Hirohashi further teaches wherein a lithium ion is capable of passing through the vacancy. ([0007] “A hole is formed in the graphene, whereby a path through which an ion passes can be formed.” [0035] (emphasis added) “A hole in the graphene preferably has such a size that the aforementioned ion can pass through the hole. Note that the hole in the graphene may form a many membered ring which is a nine- or more-membered ring.”; and FIG. 1B (a non-limiting example) showing a ring-shaped region with a greater than 18-membered ring.)
Regarding claim 11, Hirohashi in view of Zhamu and Yaokawa teaches all of the limitations as set forth above. Hirohashi shows (FIG. 1A, FIG. 1B) a single graphene layer, but does not explicitly teach the number of layers in Hirohashi’s graphene. Therefore, Hirohashi does not explicitly teach wherein the graphene compound comprises a first graphene layer and a second graphene layer.
Zhamu (FIG. 3(A) FIG. 3(B)) shows active material embraced by graphene sheets to create a secondary particle, and at ([0039]) discloses the particulate is formed of a single or a plurality of graphene sheets. The motivation to combine Zhamu’s secondary particle with Hirohashi’s graphene comprising a vacancy, as set forth in claim 9 above, is incorporated herein by reference. A person of ordinary skill would expect there to be some overlap of graphene sheets in Zhamu’s secondary particle, thus rendering obvious wherein the graphene compound comprises a first graphene layer and a second graphene layer.
Hirohashi FIG. 1A shows the first graphene layer comprising the vacancy. However, Hirohashi does not explicitly teach wherein an energy barrier when a lithium ion diffuses in a region between the first graphene layer and the second graphene layer is lower than an energy barrier when the lithium ion passes through the vacancy.
A graphene compound comprising a vacancy, fluorine termination of the carbon atoms, and having an 18-or more membered ring is rendered obvious by Hirohashi in view of Zhamu and Yaokawa as set forth in claims 9-10, above. Hirohashi in view of Zhamu and Yaokawa discloses the same structure and chemistry as the claimed fluorine functionalized graphene with an 18-or more membered ring. The instant specification teaches ([0067]) “reducing a graphene oxide can form a vacancy in a graphene compound in some cases.” At ([0153]) the instant specification teaches adding fluorine to the conductive agent (graphene) using gas or plasma treatment. Hirohashi discloses a comparable process at ([0024-0029]), starting with a graphene oxide and carrying out heat treatment then nitrogen or halogen functionalization.
Because the structure and chemistry of the claimed material is rendered obvious, and the manufacturing method is similar, therefore the material of Hirohashi in view of Zhamu and Yaokawa has the same properties, and therefore the claimed energy barrier property is rendered obvious.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over one or more claims of U.S. Patent Numbers US 10707524 B2, and US 12308421 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 1 requires a fluorinated graphene having at least one vacancy. The substitution of fluorine into graphene is considered to necessarily and inherently create a vacancy. The cited patents relate to fluorine-substituted graphene or halogen-substituted graphene.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over one or more claims of U.S. Patent Numbers US 9218916 B2 in view of Yaokawa (JP 2019077595 A). At ([0031]) Yaokawa discloses that using graphene fluoride as a positive electrode material can increase the capacity of the battery, due to its larger specific surface area. A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to select fluorine as taught by Yaokawa for the halogen functionalization of US 9218916 B2, with a reasonable expectation of successfully increasing the capacity of the battery. The cited patent relates to a halogen-substituted graphene, and Yaokawa provides motivation to select fluorine as the halogen. The substitution of any halogen into graphene is considered to necessarily and inherently create a vacancy. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 1 requires a fluorinated graphene having at least one vacancy.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of co-pending Application Number 18/252959 [US 20230420674 A1] (claim 2: “The graphene …, wherein one or more of the carbon atoms included in the many-membered ring are terminated with fluorine.”) Although the claim at issue are not identical, they are not patentably distinct from each other because the instant claim 1 requires a fluorinated graphene having at least one vacancy. The substitution of fluorine into graphene is considered to necessarily and inherently create a vacancy. The cited application at claim 2 relates to fluorine-substituted graphene.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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CLAIRE A. RUTISER
Examiner
Art Unit 1751
/C.A.R./Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 1/28/2026