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 . If status of the application as subject to 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 a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-16 are pending in the application. Claims 13-14 are withdrawn. Claims 1-12 & 15-16 are presently examined. Claims 1-12 & 15-16 were rejected in the 11/7/2025 office action.
Response to Amendment / Arguments
The amendment filed 3/6/2026, in response to the 11/7/2025 office action, has been entered. Applicant’s claim amendments overcame the 35 U.S.C. 112(b) rejections.
Applicant's arguments, regarding the 35 U.S.C. 103 rejections, have been fully considered but they are not persuasive. Applicant submitted a declaration to show unexpected results for overcoming the 35 U.S.C. 103 rejection. Applicant’s declaration and arguments are unpersuasive due to lack of clarity and not being commensurate with the scope of the claims.
Claim 1 states the following:
“wherein the carbon nanotubes include first carbon nanotubes having an average outer diameter of 0.5 nm or more and less than 5 nm and second carbon nanotubes having an average outer diameter of 5 nm or more and 20 nm or less, and
“wherein a mass ratio between the first carbon nanotubes and the second carbon nanotubes is 1:10 to 1:100”
Applicant’s declaration and arguments should be directed towards showing that the above limitations result in an unexpected benefit.
Applicant’s declaration Supplement Table 1 lists CNT types A (First CNT, TNSR, 1-2 nm, 610 BET, 27.8 G/D, 1.9x10-3 Ω*cm), E (Second CNT, JEIO, 6-9 nm, 730 BET, 0.8 G/D, 1.4x10-2 Ω*cm), and G (Supplemental CNT, JEIO, 6-9 nm, 730 BET, 0.8 G/D, 4.1x10-2 Ω*cm). Applicant’s declaration Table 2 lists dispersing agent types A & C.
Applicant’s declaration Supplement Table 3 compares five examples (PE1, PE8, PE14, SPE1, & SPE2). None of these examples are commensurate in scope with claim 1. Also, there is no discussion of superiority of certain examples over the others. It is unclear what Applicant is trying to prove with Supplement Table 3.
Applicant’s declaration Supplement Tables 4 & 8 compare three examples (E1, E11, & SCE1). All of these examples have a 1:10 ratio of CNT types A & E, which is within the scope of claim 1, so it is unclear what Applicant is trying to prove by these examples. These examples also have aspects outside of claim 1, and thus are not commensurate in scope with claim 1. Each of these examples have some positive aspects, so it is unclear which example is best.
Applicant’s declaration Supplement Table 9 compares three examples (E24, E35, & SCE2). All of these examples have a 1:30 ratio of CNT types A & E, which is within the scope of claim 1, so it is unclear what Applicant is trying to prove by these examples. There is no discussion of superiority of certain examples over the others. so it is unclear what Applicant is trying to prove. These examples also have aspects outside of claim 1, and thus are not commensurate in scope with claim 1.
Applicant’s declaration Supplement Table 10 compares three examples (E49, E60, & SCE3). Table 10 fails to show how these examples compare to claim 1 limitations. It is unclear what is meant by WAE1, WAE11, & WEG1, and how these codes relate to claim 1 limitations, so it is not possible to determine whether or not the superior examples are commensurate in scope with claim 1. Applicant does state in the remarks (p. 9) that WAE1 & WAE11 fall within claim 1 limitations, & WEG1 is outside of claim 1 limitations, but no details are provided.
Examiner suggests that Applicant present, in a single table in a declaration, all examples with experimental parameters and results of each. Codes may be used in the table for parameters or results that are too long to fit, but such codes must be clearly defined just before or after the table.
Applicant next argues (remarks p. 10) that “a person skilled in the art would not be motivated to combine the teachings of Xu and Araki, in which the combination of CNTs uses different scales”. Examiner doesn’t understand what Applicant means by “different scales” and requests clarification.
Applicant makes a conclusory statement, without reasoning, that “the combination of Xu and Araki is merely a hindsight after referring to the present application”. Applicant should present reasoning why combining “Xu and Araki is merely a hindsight”.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
The claims are in bold font, the prior art is in parentheses.
Claims 1, 8, 10-12, & 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over US20130004657A1 (Xu) in view of JP2018097961A (Araki), together “modified Xu”.
With regard to claim 1, Xu teaches the following claim limitations:
A carbon nanotube dispersion comprising carbon nanotubes, a dispersing agent, and a solvent (paragraph 63: “electrode composition comprises carbon nanotube agglomerates; a dispersant; and a liquid vehicle”),
Xu also teaches the following claim 1 limitations with ranges similar to the claimed ranges:
wherein the carbon nanotubes include first carbon nanotubes (paragraph 39; figure 1B: small diameter CNT(I) 2) having an average outer diameter of 0.5 nm or more and less than 5 nm (paragraph 29: CNT(I) has 5-20 nm diameter) and second carbon nanotubes (paragraph 39; figure 1B: large diameter CNT(II) 5) having an average outer diameter of 5 nm or more and 20 nm or less (paragraph 29: CNT(II) has 40-100 nm diameter),
Xu discloses 5-20 nm and 40-100 nm ranges, whereas claim 1 requires 0.5-5 nm and 5-20 nm ranges. MPEP 2144.05 (I) provides the law for this issue:
“Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)… ‘The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.’”
Given that there is only a slight difference between Xu’s ranges and the claim 1 ranges, and further given the fact that no criticality is disclosed for the claimed ranges, the claimed ranges are obvious variants of Xu’s ranges.
Araki provides additional guidance. Araki is directed to a secondary battery with higher output due to reduced positive electrode resistance (abstract). The positive electrode includes an active material, a first carbon nanotube 6b, and a second carbon nanotube 6a (abstract; figure 2). The first carbon nanotube diameter is 1.4 nm and the second carbon nanotube diameter is 10-15 nm (page 12, lines 39-41).
It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Xu’s CNT(I) to have 1.4 nm diameter and for Xu’s CNT(II) to have 10-15 nm diameter, as taught by Araki, for higher battery output due to reduced positive electrode resistance.
Xu also teaches the following claim 1 limitation:
wherein a mass ratio between the first carbon nanotubes and the second carbon nanotubes is 1:10 to 1:100
The claim 1 ratio range of 1:10 to 1:100 is the same as 1 to 10 mass% first carbon nanotubes in the combined first and second carbon nanotubes. Xu teaches 5 to 50 mass% CNT(I) (paragraph 74). Therefore, Xu’s 5 to 50 mass% range overlaps the claimed 1 to 10 mass% range. MPEP 2144.05 (II)(A) provides the law for this issue:
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”.
Given that Xu’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the mass ratio range in claim 1 is an obvious variant of Xu’s range.
Xu doesn’t state that the embodiment with the electrode composition that “comprises carbon nanotube agglomerates; a dispersant; and a liquid vehicle” (paragraph 63) includes CNT(I) and CNT(II). Xu does teach that bi-modal diameter carbon nanotubes (e.g. CNT(I) and CNT(II)) results in better electrical contact and enhanced battery performance (abstract). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Xu’s paragraph 63 embodiment to be combined with CNT(I) and CNT(II) for better electrical contact and enhanced battery performance.
With regard to claim 8, modified Xu teaches the limitations of claim 1 as described above. Claim 8 recites:
a phase angle is 50 or more and less than 500
Modified Xu fails to teach a phase angle. Nevertheless, modified Xu teaches an electrode composition, which is equivalent to the carbon nanotube dispersion of claim 1; therefore, the electrode composition of modified Xu would presumably would have the phase angle of claim 8. MPEP 2112(I) provides guidance for this issue:
“‘[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.’ Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).”
The patent office does not have the ability to test, or to obtain data for, every possible property. Measurement of a property does not make an old substance patentable.
With regard to claim 10, modified Xu teaches the limitations of claim 1 as described above. Claim 10 recites:
a cumulative particle size D50 of the carbon nanotube dispersion measured by a dynamic light scattering method is 400 nm to 4,000 nm
Xu teaches that the CNT(II) carbon nanotubes have a 1-10 micrometer (1000-10,000 nm) length (paragraph 73).
Therefore, Xu’s 1000-10,000 nm range overlaps the claimed 400-4000 nm range. MPEP 2144.05 (II)(A) provides the law for this issue:
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Given that Xu’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the range in claim 10 is an obvious variant of Xu’s range.
The claimed method for measuring size does not limit the claim for examination.
With regard to claims 11-12 & 15-16, modified Xu teaches the limitations of claim 1 as described above. Xu also teaches the limitations of claim 11-12 & 15-16:
Claim 11
A carbon nanotube resin composition comprising the carbon nanotube dispersion according to claim 1 and a binder (paragraphs 6, 20, & 22)
Claim 12
A mixture slurry comprising the carbon nanotube resin composition according to claim 11 and an active material (paragraphs 35 & 38; figure 1A)
Claim 15
An electrode film obtained by forming the mixture slurry according to claim 12 into a film (paragraph 39; figure 1B)
Claim 16
A nonaqueous electrolyte secondary battery comprising a positive electrode, a negative electrode, and an electrolyte, wherein at least one of the positive electrode and the negative electrode includes the electrode film according to claim 15 (paragraphs 20-22)
Claims 2-3 & 7 are rejected under 35 U.S.C. 103 as being unpatentable over US20130004657A1 (Xu) and JP2018097961A (Araki), as applied to claim 1, and further in view of US20190044150A1 (Kim).
With regard to claim 2, modified Xu teaches the limitations of claim 1 as described above. Xu, however, fails to teach the following claim 2 limitation, which is taught by Kim:
a total BET specific surface area of the first carbon nanotubes and the second carbon nanotubes is 240 m2/g to 750 m2/g (paragraph 47: 230 to 300 m2/g)
Kim’s 230 to 300 m2/g overlaps the claimed 240 m2/g to 750 m2/g. MPEP 2144.05 (II)(A), provides the law for this issue:
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”.
Given that Kim’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the BET range in claim 2 is an obvious variant of Kim’s range.
Kim teaches the 230 to 300 m2/g range for excellent dispersibility (paragraph 47). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Xu’s CNT to have 230 to 300 m2/g BET, as taught by Kim, for excellent dispersibility.
With regard to claim 3, modified Xu teaches the limitations of claim 1 as described above. Xu, however, fails to teach the following claim 3 limitations, which are taught by Araki:
an aspect ratio of the first carbon nanotubes is 2,000 to 10,000 (page 12, lines 39-41: first carbon nanotube diameter = 1.4 nm and length = 5 μm, aspect ratio = 5000 nm / 1.4 nm = 3571)
Claim 3 also recites:
an aspect ratio of the second carbon nanotubes is 50 to 200 (paragraph 47: 230 to 300 m2/g)
Araki teaches second carbon nanotube diameter is 10-15 nm and length is 7-11 μm. Araki’s aspect ratio range is 7000nm/15nm=467 to 11,000nm/10nm=1000. Araki thus discloses 467-1000 whereas claim 3 requires 50-200. MPEP 2144.05 (I) provides the law for this issue:
“Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)… ‘The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.’”
Given that there is only a slight difference between Araki’s 467-1000 and 50-200 in claim 5, and further given the fact that no criticality is disclosed for the claimed range, the claimed range is an obvious variant of Araki’s range.
Kim provides added guidance. Kim teaches 10 to 20,000 carbon nanotube aspect ratio (paragraph 41). Kim teaches that longer carbon nanotubes provide higher electrical conductivity, strength, and electrolyte retention ability, and that shorter carbon nanotubes improve dispersibility (paragraph 41). Thus, Kim provides guidance for selecting an optimal carbon nanotube aspect ratio range. It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Xu’s CNT(II) to have 10 to 20,000 aspect ratio in order to optimize electrical conductivity, strength, and electrolyte retention ability with dispersibility.
Therefore, Kim’s 10 to 20,000 range overlaps the claimed 50 to 200 range. MPEP 2144.05 (II)(A) provides the law for this issue:
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”.
Given that Kim’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the range in claim 3 is an obvious variant of Kim’s range.
With regard to claim 7, modified Xu teaches the limitations of claim 1 as described above. Xu, however, fails to teach the following claim 7 limitation, which is taught by Kim:
a complex elastic modulus is 5 Pa or more and less than 650 Pa (paragraphs 12-13: 20 to 500 Pa complex modulus)
Kim is directed to a conductive material dispersed liquid with a complex modulus controlled for excellent dispersibility and improved battery output characteristics. It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Xu’s electrode composition to have 20 to 500 Pa complex modulus, as taught by Kim, for excellent dispersibility and improved battery output characteristics.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US20130004657A1 (Xu) and JP2018097961A (Araki), as applied to claim 1, and further in view of US20190177166A1 (Oh). Modified Xu fails to teach the following claim 4 limitation, which is taught by Oh:
in a Raman spectrum of the first carbon nanotubes, when a maximum peak intensity in a range of 1,560 cm-1 to 1,600 cm-1 is G, and a maximum peak intensity in a range of 1,310 cm-1 to 1,350 cm-1 is D, the G/D ratio is 10 to 100 (paragraph 70, table 2, Example 1: IG/ID=10.41; paragraphs 13-14 define IG/ID)
Oh is directed to an efficient method for producing carbon nanotubes (paragraph 12). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Xu’s CNT(I) to have IG/ID=10.41, as taught by Oh, resulting from an efficient method for producing carbon nanotubes.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over US20130004657A1 (Xu) and JP2018097961A (Araki), as applied to claim 1, and further in view of US20210226222A1 (Morita).
With regard to claim 5, modified Xu teaches the limitations of claim 1 as described above. Modified Xu, however, fails to teach the following claim 5 limitation, which is taught by Morita:
a BET specific surface area of the first carbon nanotubes is 600 m2/g to 1,200 m2/g (paragraph 69: BET = 400 – 800 m2/g)
Morita is directed to a carbon nanotube dispersion with high dispersibility (paragraphs 5 & 15). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Xu’s CNT(I) to have 400 – 800 m2/g BET, as taught by Morita, for high dispersibility.
Morita’s 400 – 800 m2/g range overlaps the claimed 600 – 1200 m2/g range. MPEP 2144.05 (II)(A) provides the law for this issue:
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”.
Given that Morita’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the range in claim 5 is an obvious variant of Morita’s range.
With regard to claim 6, modified Xu teaches the limitations of claim 1 as described above. Modified Xu, however, fails to teach the following claim 6 limitation, which is taught by Morita:
a volume resistivity of the first carbon nanotubes is 1.0x10-3 Ω⋅cm to 3.0x10-2 Ω⋅cm (paragraph 42: volume resistivity = 1.0x10-3 Ω⋅cm to 2.5x10-2 Ω⋅cm)
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over US20130004657A1 (Xu) and JP2018097961A (Araki), as applied to claim 1, and further in view of US20190051887A1 (Yoo). Modified Xu fails to teach the following claim 9 limitations, which are taught by Yoo:
the carbon nanotube dispersion includes 0.3 parts by mass or more and 5.0 parts by mass or less of the carbon nanotubes in 100 parts by mass of the carbon nanotube dispersion (paragraph 30: 1% to 5% by weight); and
the carbon nanotube dispersion has a viscosity of 10 mPa·s or more and less than 2,000 mPa·s with the viscosity (paragraph 29: 1 Pa⋅s to 120 Pa⋅s = 1000 Pa⋅s to 120,000 mPa⋅s)
Yoo is directed to a carbon nanotube dispersion with carbon nanotubes uniformly dispersed (paragraphs 7-8). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Xu’s electrode composition to have 1% to 5% carbon nanotubes by weight and 1000 – 120,000 mPa*s viscosity, as taught by Yoo, for uniform dispersion.
Yoo teaches 1% to 5% carbon nanotubes by weight (paragraph 30) and 1000 – 120,000 mPa*s viscosity (paragraph 29) in separate embodiments. Yoo, however, combines these concepts in the examples (paragraphs 80-98). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, to combine Xu’s 1% to 5% carbon nanotubes by weight with 1000 – 120,000 mPa*s viscosity, based on Yoo’s examples.
Yoo’s 1000 Pa⋅s to 120,000 mPa⋅s range overlaps the claimed 10 Pa⋅s to 2000 mPa⋅s range. MPEP 2144.05 (II)(A) provides the law for this issue:
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”.
Given that Yoo’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the range in claim 9 is an obvious variant of Yoo’s range.
Claim 9 also recites:
a viscosity… measured at 25°C using a B type viscometer rotor at a rotation speed of 60 rpm
Yoo doesn’t teach this method of measuring viscosity. MPEP § 2113 provides guidance for this claim limitation:
“‘[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)”
This recitation of how the viscosity is measured does not limit the scope of the claim for patent examination purposes.
Conclusion
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/R.G.W./Examiner, Art Unit 1721
/DUSTIN Q DAM/Primary Examiner, Art Unit 1721
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