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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/22/2026 has been entered.
Response to Amendment
Applicant’s amendments with respect to claims filed on 04/22/2026 have been entered. Claims 1-10 remain pending in this application and are currently under consideration for patentability under 37 CFR 1.104.
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.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harada et al. (Pub. No. WO 2020110942 A1).
Regarding claim 1, Harada teaches a negative electrode material (negative electrode active material, see [24]), comprising: natural graphite particles (natural graphite, see [24]) having a BET specific surface area ranging from 1.0 m.sup.2/g to 2.4 m.sup.2/g (1.5 m2/g or more and 3.0 m2/g or less, see [37] which overlaps the claimed range, and see Annotated Table 1, Example 1 teaches a specific example of Natural Graphite with a BET Specific Surface area of 2.4 m2/g which falls within the range); and artificial graphite particles (artificial graphite, see [24]), and wherein the artificial graphite particles (artificial graphite, see [24]) have an average particle diameter (D.sub.50) of 6 μm to 13 μm (11 μm or more, 15 μm or less, see [34] which overlaps the claimed range, and Harada teaches a specific example where the average particle diameter (D.sub.50) is 12 μm in Example 1 (see [80]) and Annotated Table 1, which falls within the claimed range), but fails to explicitly teach the artificial graphite particles having a BET specific surface area ranging from 0.5 m.sup.2/g to 2.0 m.sup.2/g, wherein an average particle diameter (D.sub.50) of the natural graphite particles is larger than an average particle diameter (D.sub.50) of the artificial graphite particles, wherein the natural graphite particles have an average particle diameter (D.sub.50) of 14 μm to 21 μm.
However, Harada does teach the artificial graphite particles (artificial graphite, see [24]) having a BET specific surface area ranging from 0.5 m.sup.2/g to 3.0 m.sup.2/g (0.5 m2/g or more and 3.0 m2/g or less, see [36]) which encompasses the claimed range, wherein the natural graphite particles (natural graphite, see [24]) have an average particle diameter (D.sub.50) of 14 μm to 21 μm (see [34], preferred range is 12 μm or more, and 20 μm or less), and wherein the artificial graphite particles (artificial graphite, see [24]) have an average particle diameter (D.sub.50) of 6 μm to 13 μm (11 μm to 15 μm, see [33] where the preferred range is 11 to 15 μm) and wherein an average particle diameter (D.sub.50) of the natural graphite particles (natural graphite, see [24]) has a larger preferred range of diameter (see [34], 12 μm or more, and 20 μm or less) than an average particle diameter (D.sub.50) of the artificial graphite particles (artificial graphite, see [24], see [33], 11 μm or more, 15 μm or less).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Harada such that the range of artificial graphite particles BET specific surface area stays within the claimed range of 0.5 m2/g to 2.0 m2/g as a prima facie case of obviousness exists “in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art” (MPEP 2144.05.I) and the BET specific surface area is a result effective variable for contact with the electrolytic solution, and suppression of surface activity of the particles (see [36]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Harada such that the average particle diameter (D.sub.50) of the natural graphite particles stays within 14 to 20 μm as Harada teaches an overlapping range and a prima facie case of obviousness exists “in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art” (MPEP 2144.05.I) and the average particle diameter (D.sub.50) of the natural graphite particles is a result effective variable for number of active sites on particle surface and electric resistance of the electrode (see [34]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Harada such that the average particle diameter (D.sub.50) of the artificial graphite particles stays within the claimed range of 11 to 13 μm as Harada teaches an overlapping range and a prima facie case of obviousness exists “in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art” (MPEP 2144.05.I) and the average particle diameter (D.sub.50) of the artificial graphite particles is a result effective variable for number of active sites on particle surface and electric resistance of the electrode (see [33]).
Therefore Harada teaches wherein an average particle diameter (D.sub.50) of the natural graphite particles (natural graphite, see [24], see modification of particle size above) is larger than an average particle diameter (D.sub.50) of the artificial graphite particles (artificial graphite, see [24], see modification of particle size above).
(The examiner would like to note regarding Annotated Table 1 below, the column labels were translated with a combination of context clues and information given in written examples (see [80-92]), and translation software.)
PNG
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742
1113
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Greyscale
Regarding claim 2, Harada fails to teach wherein the natural graphite particles have an average particle diameter (D.sub.50) of 16 μm to 19 μm.
However, Harada teaches wherein the natural graphite particles (natural graphite, see [24]) have an average particle diameter (D.sub.50) of 16 μm to 19 μm (14 μm or more, 20 μm or less, see [34], see modifications above).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Harada such that the average particle diameter (D.sub.50) stays between 16 μm and 19 μm as a prima facie case of obviousness exists “in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art” (MPEP 2144.05.I) and the average particle diameter (D.sub.50) of the natural graphite particles is a result effective variable for number of active sites on particle surface and electric resistance of the electrode (see [34]).
Regarding claim 3, Harada fails to teach wherein the natural graphite particles comprise a natural graphite core and a carbon coating layer on the natural graphite core.
However, Harada further teaches wherein the natural graphite particles (natural graphite, see [24]) comprise a natural graphite core (see [26], no explicit mention of core, however the carbon coating is on the surface of the natural graphite particle surface, which implies the natural graphite particle is the core) and a carbon coating layer (carbon coating layer, see [26]) on the natural graphite core (see [26], carbon coating is on the surface of the natural graphite particle surface, which implies the natural graphite particle is the core). (The examiner would like to note although Harada makes no specific mention as to the BET specific surface area and average particle diameter (D.sub.50) changing with a carbon coating layer, as seen in Example 1-3, see [80], and Annotated Table 1, the natural graphite particles are particles with a carbon coating layer and have (D.sub.50) and BET specific surface area in line with the ranges taught by Harada, therefore it is the examiners position the ranges of BET specific surface area and average particle diameter (D.sub.50) as applied in claim 1 would be maintained even in a natural graphite particle comprising a carbon coating layer.)
Regarding claim 4, Harada teaches wherein the natural graphite particles (natural graphite, see [24]) comprise 1 wt % to 7 wt % (1.96%, see [80] where the natural graphite particles are made by mixing 100 parts natural graphite with 2 parts by mass of petroleum pitch, (2/102)*100 = 1.96%) of the carbon coating layer (carbon coating layer, see [26]).
Regarding claim 5, Harada teaches wherein the artificial graphite particles (artificial graphite, see [24]) have an average particle diameter (D.sub.50) of 7 μm to 12 μm (11 μm or more, 13 μm or less, see [34], see modification above, and Harada teaches a specific example where the average particle diameter (D.sub.50) is 12 μm in Example 1 (see [80]) and Annotated Table 1, which falls within the claimed range).
Regarding claim 6, Harada teaches wherein the artificial graphite (artificial graphite, see [24]) is in a form of a primary particle (non-aggregated structure, see [45] where non-aggregated type are primary particles).
Regarding claim 7, Harada teaches wherein a ratio of the average particle diameter (D.sub.50) (14 to 20 μm, see [34], see modification above) of the natural graphite particles (natural graphite, see [24]) to the average particle diameter (D.sub.50) (11 to 13 μm, see [33], see modification above) of the artificial graphite particles (artificial graphite, see [24]) is greater than 1 to 3 or less (1.07 to 1.81, 20/11 = 1.818, 14/13 = 1.07).
Regarding claim 8, Harada teaches wherein the natural graphite particles (natural graphite, [24]) and the artificial graphite particles (artificial graphite, [24]) are present in a weight ratio of 35:65 to 95:5 (30:70 to 80:20, see [25] where proportion of artificial graphite to total artificial graphite and natural graphite is 20% by mass or more and 70% by mass or less, this overlaps the claimed range, Harada further gives a specific example within the claimed range of 50:50, see Example 2 in Annotated Table 1).
Regarding claim 9, Harada teaches a negative electrode (negative electrode, see [49]), comprising: a negative electrode current collector (current collector, see [49]); and a negative electrode active material layer (mixture layer, see [49]) on the negative electrode current collector (current collector, see [49] where the mixture layer is formed on the current collector), wherein the negative electrode active material layer (mixture layer, see [49]) comprises a negative electrode material (negative electrode active material, see [50] where the mixture layer is the negative electrode paste pressure molded on the current collector, and the negative electrode paste comprises the negative electrode active material) but fails to disclose in this embodiment where the negative electrode material is the negative electrode material according to claim 1.
However, Harada in a different embodiment teaches the negative electrode material according to claim 1 (negative electrode active material, see [24], see modification to claim 1 above).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify the embodiment of the negative electrode such that the negative electrode material is the negative electrode material according to claim 1 as taught by the embodiment of the negative electrode material of Harada. Further, it has been held that combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness and involves only routine skill in the art.
Regarding claim 10, Harada teaches a secondary battery (lithium-ion secondary battery, see [55]), comprising: the negative electrode according to claim 9 (negative electrode, see [49], see modifications above, see [55] where the lithium-ion secondary battery uses the above mentioned negative electrode); a positive electrode (positive electrode, see [55]) facing the negative electrode (negative electrode, see [49], see modifications above, although Harada does not specifically detail the positive electrode facing the negative electrode, Harada discloses a separator placed between the electrodes, see [62], therefore it is the examiners position that at least one face of the positive electrode faces the negative electrode); a separator (separator, see [62]) interposed between the negative electrode (negative electrode, see [49], see modifications above) and the positive electrode (positive electrode, see [55], see [62] is provided between the positive electrode and negative electrode); and an electrolyte (electrolytic solution, see [55]).
Response to Arguments
Applicant's arguments filed 04/22/2026 have been fully considered but they are not persuasive.
Regarding the applicant’s argument that the specific combination of limitations of claim 1 is patentably distinct from claim 1 as Harada discloses both artificial graphite and natural graphite have an average particle diameter of 10 μm or more and thus encompasses the range where the natural graphite has a larger average particle diameter than the artificial graphite. The examiner respectfully disagrees as Harada does broadly discloses ranges of 10 μm to 30 μm for both artificial and natural graphite particles, the range pointed to by the examiner is the preferred range of 12 to 20 μm for natural graphite and 11 μm to 15 μm for artificial graphite, which do overlap, however as described above, the range for natural graphite is larger than the range for artificial and it would be obvious to modify these ranges to stay within the ranges specified in claim 1 as Harada teaches each one is a result effective variable of number of active sites on particle surface and electric resistance of the electrode. Therefore my obvious modification of the ranges it would be obvious for one ordinary skill in the art to determine artificial graphite particle diameters that are larger than natural graphite particle diameters as obviated by the ranges disclosed in Harada.
In response to applicant's argument that when the average particle diameter and specific surface area of the natural graphite particles is controlled pores between particles are reduced, swelling is suppressed, excessive volume expansion is prevented, and lithium diffusion distance is increased, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument that when the average particle diameter of the artificial graphite particles is controlled within the claimed range they can be appropriately disposed in the spaces between the natural graphite particle and desirable particle packing is achieved improving energy density, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Further, as evidenced by [0071] of Ho et al. (Pub. No. US 20190260011 A1), modifying particles to have larger and smaller sizes to fill voids between particles and therefore increase packing density is known in the art.
In response to applicant's argument that the average particle diameters of the natural and artificial graphite particles are interrelatedly designed to synergistically achieve reduced swelling, reduced resistance, and improved energy density, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding applicant’s argument that Examples 1-3 and Comparative Example 2 display the technical significance of instances where the particle diameter and respective surface areas of the artificial and natural graphite particles are within the claimed ranges and the disadvantages accompanied with ranges outside those designated by the applicant. The Examiner respectfully disagrees as the examples provided may show specific selections for comparison of combinations which result in the claimed technical significance, however there are more variables than just particle size and specific surface area, there are also other variables such as wt% of each particle, and further the only particle size presented for natural graphite is 17 μm, whereas the claimed range is 14-21 μm. Further, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding applicant’s argument that Harada presents identical ranges for artificial and natural graphite and describes the same effects from both and does not recognize a need to differentiate the average particle diameters or achieve synergistic effects based on their combination, and therefore a skilled artisan could not easily derive the claimed ranges from the ranges disclosed by Harada. The Examiner respectfully disagrees as first Harada may disclose a large broad range which is the same for both artificial and natural graphite but discloses different preferred ranges for each which already indicates a need to differentiate the average particle diameters. Further, Harada teaches the particle diameters for both artificial and natural graphite as result effective variables of number of active sites on particle surface and electric resistance of the electrode as seen in [33-34] of Harada, which given the overlapping ranges provided by Harada makes it obvious for one of ordinary skill in the art to modify the ranges to stay within the claimed ranges.
Regarding Harada failing to disclose different effects for the different particle size ranges or achieve synergistic effects based on their combination, it is noted that these features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS CALEB MARROQUIN whose telephone number is (571)272-0166. The examiner can normally be reached Monday - Friday 7:30-5:00 EST.
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/DOUGLAS C MARROQUIN/Examiner, Art Unit 1723 /TIFFANY LEGETTE/Supervisory Patent Examiner, Art Unit 1723
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