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 .
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 1-11 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.
Claim 1 requires “a carboxymethyl cellulose salt which is not cross-linked”. This amendment does not appear to be supported by the originally filed disclosure. The examiner was unable to locate where the originally filed specification contemplated the carboxymethyl cellulose not cross-linked. Therefore, it is not clear whether Applicant was in possession of the method recited in the instant claim. In addition, the sections of the specification cited by applicant (i.e., Examples) do not support the newly added limitation. Clarification or amendment to the limitation that fall within the scope of the originally filed application is required.
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.
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.
Claim(s) 1-3, 8 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ogata et al. (U.S. Patent Application Publication 2017/0077497) and further in view of Suh et al. (U.S. Patent Application Publication 2018/0034058).
Regarding claims 1 and 8, Ogata teaches a negative electrode for secondary batteries (paragraph [0107]), the negative electrode comprising a negative electrode mixture layer (paragraph [0119]) including:
a negative electrode active material containing a Si compound (i.e., silicon-based material such as SiOx where 0≤x≤2) (paragraph [0056], [0124]),
a conductive agent (paragraph [0126]), and
a binder (paragraph [0126]),
the conductive agent containing a single-walled carbon nanotube having an outermost diameter of less than or equal to 5 nm (paragraph [0087], [0089]-[0090]),
Ogata does not teach the binder containing a carboxymethyl cellulose salt which is not cross-linked and having a weight average molecular weight of greater than or equal to 150,000 g/mol and less than or equal to 450,000 g/mol.
Suh, directed to a binder composition for secondary batteries (paragraph [0002]), teaches a binder containing a carboxymethyl cellulose salt having a weight average molecular weight of 250,000 g/mol (paragraph [0008], [0133], [0146]). Further, Suh teaches the binder aid binding the active material and conductive agent and further teaches the improve the binding force of the of the active material and current collector (paragraph [0072]-[0073]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Ogata negative electrode to include a binder such as a carboxymethyl cellulose salt having a weigh average molecular weight of 250,000 g/mol, as taught by Suh, in order to improve the binding of the active material and conductive agent and further improve the binding force of the of the active material and current collector.
As to the limitation “which is not cross-linked”, Suh is silent with regards to the carboxymethyl cellulose being cross-linked. Therefore, in the absence of a teaching where the carboxymethyl cellulose is cross-linked, a person of ordinary skill in the art would have expected the binder to be “not cross-linked”.
It is noted that Ogata differ in the exact same diameter range as recited in the instant claim however, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the diameter range of Oagata overlap the instant claimed range and therefore is considered to establish a prima facie case of obviousness. It has been held in the courts that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 2, Ogata teaches that the single-walled carbon nanotube has an outermost diameter is 1nm to 80nm (paragraph [0090]).
It is noted that Ogata differ in the exact same diameter range as recited in the instant claim however, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the diameter range of Ogata overlap the instant claimed range and therefore is considered to establish a prima facie case of obviousness. It has been held in the courts that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 3, Ogata teaches a content of the single-walled carbon nanotube is 0.1-50 mass% of a mass of the negative electrode active material (i.e., 0.1 parts by weight) (paragraph [0095]).
It is noted that Ogata differ in the exact same mass% as recited in the instant claim however, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the mass% of Ogata overlap the instant claimed range and therefore is considered to establish a prima facie case of obviousness. It has been held in the courts that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 11, Ogata teaches a secondary battery comprising a positive electrode, a negative electrode, and a non-aqueous electrolyte, the negative electrode being the negative electrode for secondary batteries according to claim 1 (paragraph [0107]-[0108]).
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ogata et al. (U.S. Patent Application Publication 2017/0077497) and Suh et al. (U.S. Patent Application Publication 2018/0034058) as applied to claims 1 and 3 above and further, in view of Kim et al. (U.S. Patent Application Publication 2022/0209240).
Regarding claims 4-5, Ogata teaches the negative electrode as described above in claims 1 and 3 including the single-wall carbon nanotube.
Ogata does not teach the content of the single-walled carbon nanotube is greater than or equal to 0.001 mass% and less than or equal to 0.05 mass% or greater than or equal to 0.001 mass% and less than or equal to 0.01 mass % of the mass of the negative electrode active material.
Kim, also directed to a negative electrode (paragraph [0002]), teaches a negative electrode including an electrode material, a binder and single-wall carbon nanotube (paragraph [0012]). Further Kim teaches the content of the single-wall carbon nanotube is 0.001 to 1 wt % (paragraph [0012]). Kim teaches the single-wall carbon nanotube provides effective improvement in lifetime characteristics of the negative electrode (paragraph [0027]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrode of Ogata to include single-wall carbon nanotube with a content of 0.001 to 1 mass% (i.e., 0.001 to 1 wt %), as taught by Ki, in order to improve lifetime characteristics of the negative electrode.
It is noted that Ogata differ in the exact same mass% as recited in the instant claim however, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the mass% of Ogata overlap the instant claimed range and therefore is considered to establish a prima facie case of obviousness. It has been held in the courts that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 6-7 and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ogata et al. (U.S. Patent Application Publication 2017/0077497) and Suh et al. (U.S. Patent Application Publication 2018/0034058) as applied to claim 1 above, and further in view of Morita et al. (U.S. Patent Application Publication 2022/0376262).
Regarding claims 6-7, Ogata teaches the negative electrode as described above in claims 1 and 3 including the single-wall carbon nanotube.
Ogata does not teach the carboxymethyl cellulose salt has a degree of etherification of greater than or equal to 0.5 and less than or equal to 1.6 or greater than or equal to 0.6 and less than or equal to 1.1.
Morita, also directed to an electrode (i.e., electrode film) (paragraph [0017]), teaches an electrode including carbon nanotube (paragraph [0017]) and binder (i.e., resin) (paragraph [0119]) comprising carboxymethyl cellulose with a degree of etherification of 0.5 to 1.5 (paragraph [0123]). Morita teaches the binder provides excellent adhesion (paragraph [0040]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Ogata electrode to include carboxymethyl cellulose salt with a degree of etherification of 0.5 to 1.5, as taught by Morita, in order to provide excellent adhesion properties.
It is noted that Ogata differ in the exact same etherification as recited in the instant claim however, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the etherification of Ogata overlap the instant claimed range and therefore is considered to establish a prima facie case of obviousness. It has been held in the courts that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 9-10, Ogata teaches the negative electrode as described above in claims 1 and 3 including the single-wall carbon nanotube including the Si compound.
Ogata does not teach the Si compound includes a lithium ion conductive phase and silicon particles dispersed in the lithium ion conductive phase.
However, Morita teaches includes a lithium ion conductive phase and silicon particles dispersed in the lithium ion conductive phase (i.e., silicon nanoparticles dispersed in silicon oxide) (paragraph [0138]). Morita teaches mixture with active material is associated with excellent electrical conductivity (paragraph [0040]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrode of Ogata to include as an active material a lithium ion conductive phase and silicon particles dispersed in the lithium ion conductive phase a lithium ion conductive phase and silicon particles dispersed in the lithium ion conductive phase as taught by Morita, in order to increase and provide excellent electrical conductivity.
Pertinent Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Kim et al. (U.S. Patent Application Publication 2010/0092868). Kim teaches a composite wit carbon nanotube, silicon and carboxymethyl cellulose (paragraph [0048]).
Response to Arguments
Applicant’s argument filed on 05/27/2026 are deemed moot in view of the new grounds of rejection presented in this Office Action, necessitated by Applicant’s amendment to the claims which significantly affected the scope thereof (i.e., by incorporating new limitations into the independent claims, which require further search and consideration). The new limitations have been fully addressed above in view of Suh.
In response to the amendments to the claims and the specification, the previous claims and specification objection and rejection under 112(b) are withdrawn from the record.
Conclusion
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.
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 CHRISTIAN ROLDAN whose telephone number is (571)272-5098. The examiner can normally be reached Monday - Thursday 9:00 am - 7:00 pm.
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/CHRISTIAN ROLDAN/Primary Examiner, Art Unit 1723
