DETAILED ACTION
This is the first office action on the merits for 18/037,267, filed 5/16/2023, which is a national stage entry of PCT/KR2021/016929, filed 11/17/2021, which claims priority to Korean application KR10-2020-0153656, filed 11/17/2020.
Claims 1-17 are pending; Claims 10-16 are examined herein.
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 .
Additional Prior Art
The Examiner wishes to apprise the applicant of the following references, which are not currently applied in a rejection.
U.S. Patent Application Publication 2021/0107795 A1: This reference teaches coating graphite anode particles with a graphitizable material having a low softening point (paragraph [0028]).
U.S. Patent Application Publication 2004/0247872 A1: This reference teaches coating graphite anode particles with a graphitizable material having a low softening point (Fig. 2).
Election/Restrictions
Applicant's election with traverse of the invention of Group II, Claims 10-16, in the reply filed on 1/21/2026 is acknowledged. The traversal is on the grounds that the restriction requirement under Kawakami (U.S. Patent Application Publication 2018/0323433 A1) does not properly consider the term “residual carbon” in the claims.
This argument is not persuasive. The Examiner respectfully maintains the position that one of ordinary skill in the art at the time the instant invention was filed would have been motivated to have controlled the amount of the coating material in the composition of Kawakami, in order to arrive at a composition that has particles with uniform properties, as presented in the restriction requirement of 11/21/2025. It is further the Examiner’s position that this routine optimization would have led one of ordinary skill in the art at the time the instant invention was filed to have arrived at the claimed residual carbon amount, without undue experimentation.
Alternatively, it is the Examiner’s position that both modified Kitagawa and Miyabayashi teach the limitations of Claim 10 (and the technical feature in common between Groups I-III), as described fully below.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recites that the coating layer is a “graphitizable carbon,” and further recites that “a coating material of the coating layer is included so that a residual carbon amount is 1 to 5 weight parts…” The Applicant argues in the response filed 1/21/2026 that the specification defines “residual carbon” as an about of carbon present in a negative active material layer in its final form.
Therefore, Claim 10 is indefinite, because it is unclear whether the negative active material is being claimed in an intermediate form (i.e. in which the coating layer has not yet been graphitized, but is capable of being graphitized), or in a final form (i.e. in a form having the required amounts of residual carbon).
Claims 11-16 are indefinite, because of their dependence on Claim 10.
Claim 12 further recites “the coke.” This limitation is indefinite, because it is unclear whether “the coke” refers to the coke in its graphitized form, or the coke precursor from which the graphitized coke of Claim 11 is made.
Claim 13 is indefinite, because of its dependence on Claim 12. Claim 13 is further indefinite, because it further limits the coke recited in Claim 12. It is unclear whether the “green coke” refers to the graphitized coke of Claim 11, or the precursor materials used to make the graphitized coke.
Claim 15 recites “wherein the coating material has a residual carbon content of 10 to 40 weight parts per 100 weight parts of the coating material.” This limitation is indefinite, because it is unclear whether the limitations are directed toward an intermediate or final product. Again, as the Applicant argues in the response filed 1/21/2026, the “residual carbon” limitations are directed toward the final state of the material.
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.
Claims 10-13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kitagawa, et al. (U.S. Patent Application Publication 2002/0061445 A1) in view of Okada, et al. (U.S. Patent Application Publication 2017/0207459 A1).
In reference to Claim 10, it is noted that Claim 10 is indefinite, as described above. The following rejection represents the Examiner’s best understanding of the indefinite claim limitations.
Kitagawa teaches a negative active material for lithium secondary battery, comprising a powdered graphite base material coated with a petroleum tar pitch at an amount such that the coating is 5 wt% of the negative active material after carbonization (paragraph [0083]).
This disclosure teaches the limitations of Claim 10, wherein the negative active material comprises a base material a base material for negative active material (corresponding to the powdered graphite, described in Table 1).
This disclosure teaches the limitations of Claim 10, wherein the negative active material comprises a coating layer coating the base material, wherein, the coating layer is a graphitizable carbon (i.e. petroleum pitch).
This disclosure teaches the limitations of Claim 10, wherein a coating material of the coating layer is included so that a residual carbon amount is 1 to 5 weight parts with respect to 100 weight parts of the base material for the negative active material (i.e. 5 wt%, paragraph [0083]).
It appears that the disclosure of paragraph [0083] teaches that the reported weight percentage of the coating material is reported, relative to the entire mass of the coated particles. However, if this is not found to be the case, then the following alternate teaching of Kitigawa is applied.
Kitagawa teaches that the amount of coating material in the active material in his invention is included in the coated particles at 2-10 wt% of the total mass of the coated particles (paragraph [0032]).
This disclosure teaches the limitations of Claim 10, wherein a coating material of the coating layer is included so that a residual carbon amount is 1 to 5 weight parts with respect to 100 weight parts of the base material for the negative active material (i.e. 2-10 wt%, paragraph [0032]).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I.
In the instant case, the claimed range of “1-5 weight parts with respect to 100 weight parts of the base material for the active material” overlaps with the taught range of 2-10 wt%, or 2-10 weight parts with respect to 100 weight parts of the base material for the active material.
Kitagawa is silent regarding the softening point of the petroleum tar pitch, and therefore does not explicitly teach that the coating material has a softening point of 50 °C or less.
To solve the same problem of providing a petroleum pitch coating for a graphite core material (paragraph [0275]), Okada teaches that using petroleum with a softening point of 30-85 °C is preferred in such a system (paragraph [0257]). Specifically, Okada teaches that using petroleum pitch with a softening point of 30-85 °C as a coating material for a composite anode active material provides the benefit of allowing precise charging with good handleability, while allowing good penetration into any pores within the graphite core material (paragraph [0275]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have selected the petroleum pitch of the negative electrode active material of Kitagawa to have a softening point of 30-85 °C, based on the teachings of Okada.
Selecting the petroleum pitch of the negative electrode active material of Kitagawa to have a softening point of 30-85 °C teaches the limitations of Claim 10, wherein the coating layer has a softening point of 50 °C or less.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I.
In the instant case, the claimed range of “50 °C or less” overlaps with the taught range of “30-85 °C.”
In reference to Claim 11, Kitagawa teaches that the base material for the negative active material is graphitized coke (Table 1, Sample 17, paragraph [0071]).
It is noted that Claim 11 is considered a product-by-process claim. The structural features imparted by the limitation “graphitized coke” are considered to include “graphite.”
The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
In reference to Claims 12-13, these claims are indefinite, as described above.
It is the Examiner’s position that, because Kitagawa teaches that the graphitized coke is made from petroleum pitch coke (paragraph [0071]), this disclosure teaches the limitations of Claim 12, wherein the coke contains 70 parts by weight or more of green coke (i.e. 100% petroleum pitch coke), and calcined coke is the balance (i.e. 0%).
It is the Examiner’s position that, because Kitagawa teaches that the graphitized coke is made from petroleum pitch coke (paragraph [0071]), this disclosure teaches the limitations of Claim 13, wherein the green coke is petroleum-based green coke.
Alternatively, if the limitations of Claims 12-13 are found to modify merely the precursors of the graphitized coke, then it is the Examiner’s position that Claims 12-13 are product-by-process claims. Because modified Kitagawa teaches that the base material of the active material of his invention is graphitized coke, it is the Examiner’s position that he teaches the structural limitations required by Claims 12-13, which merely modify the type of coke used in the graphitization process.
The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
In reference to Claim 16, Table 1 of Kitagawa teaches that the base material shows Raman peaks near 1360 cm-1 and 1580 cm-1 (paragraph [0062], Table 1).
Table 1 of Kitagawa shows that the ratio of the Raman peak at has Raman peak ratio of a peak intensity at 1360 cm-1 to a peak intensity at 1580 cm-1 is 0.32 (Sample 17).
Therefore, it is the Examiner’s position that this disclosure teaches the limitations of Claim 16, wherein the negative active material for the lithium secondary battery has an Id/Ig of Raman spectrum measurement of 0.300 to 0.450, and the Id is the peak intensity measured at wavelength 1350cm-1, Ig is the peak intensity measured at wavelength 1575cm-1.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kitagawa, et al. (U.S. Patent Application Publication 2002/0061445 A1) in view of Okada, et al. (U.S. Patent Application Publication 2017/0207459 A1), and further in view of Ishii, et al. (U.S. Patent Application Publication 2018/0190975 A1).
In reference to Claim 15, it is noted that Claim 15 is indefinite, as described above. The following rejection represents the Examiner’s best understanding of the indefinite claim limitations.
Modified Kitagawa is silent regarding the residual carbon content of the coating material. Therefore, he does not teach the limitations of Claim 15.
However, as described in the rejection of Claim 10 above, modified Kitagawa teaches that the coating material is pitch.
To solve the same problem of providing graphite particles with a carbonized pitch coating for a negative electrode active material for a battery, Ishii teaches that such pitch should have a residual carbon ratio of 25-60 mass% (paragraph [0073]). Ishii teaches that pitches with residual carbon ratios below this range result in increased production cost, while pitches with residual carbon ratios above this range have high viscosity, which makes processing difficult (paragraph [0073]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have selected the pitch used in the material of modified Kitagawa to be a pitch that has a residual carbon ratio of 25-60 mass%, relative to the total pitch mass, based on the teachings of Ishii.
Selecting the pitch used in the material of modified Kitagawa to be a pitch that has a residual carbon ratio of 25-60 mass%, relative to the total pitch mass, based on the teachings of Ishi, teaches the limitations of Claim 15, wherein the coating material has a residual carbon content of 10 to 40 weight parts per 100 weight parts of the coating material.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I.
In the instant case, the claimed range of “10 to 40 weight parts per 100 weight parts of the coating material” overlaps with the taught range of 25 to 60 weight parts per 100 weight parts of the coating material.
Claims 10-13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Miyabayashi, et al. (U.S. Patent 5,401,598), as evidenced by Cheng, et al. (U.S. Patent Application Publication 2018/0065849 A1).
In reference to Claim 10, it is noted that Claim 10 is indefinite, as described above. The following rejection represents the Examiner’s best understanding of the indefinite claim limitations.
Miyabayashi teaches a negative active material for lithium secondary battery (Fig. 1, column 8, lines 7-20).
The negative active material of Miyabayashi comprises a base material for negative active material, corresponding to the nucleus material (N) (Fig. 1, column 8, lines 7-20).
The negative active material of Miyabayashi comprises a coating layer coating the base material, wherein, the coating layer is a graphitizable carbon, corresponding to the material used to form the surface layer (S) (Fig. 1, column 8, lines 7-20).
Miyabayashi teaches that this layer is made by coating the nucleus particles N with quinoline (column 8, lines 50-55) and carbonizing the quinoline surface layer (column 8, lines 7-20 and 36-45).
Evidentiary reference Cheng teaches that the melting point of quinoline is below 50 °C (paragraph [0034]).
Therefore, Miyabayashi teaches that the coating layer is a graphitizable carbon with a softening point of 50 °C or less.
Miyabayashi teaches that a coating material of the coating layer is included so that the nucleus comprises 20-99% of the final weight of the composite particles, while the graphitized coating layer comprises 1-80% of the final weight of the composite particles (column 9, lines 45-55).
This disclosure teaches the limitations of Claim 10, wherein a coating material of the coating layer is included so that a residual carbon amount is 1 to 5 weight parts with respect to 100 weight parts of the base material for the negative active material.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I.
In the instant case, the claimed range of “1 to 5 weight parts with respect to 100 weight parts of the base material for the negative active material” lies within the taught range of “1-80 wt%.”
In reference to Claim 11, Miyabayashi does not teach that the base material for the negative active material is necessarily graphitized coke.
However, he teaches that one of several materials suitable for use as the precursor of the nucleus material of his invention is coke, and that the final product of the nucleus material is graphite (column 8, lines 7-15).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have formed the material of the nucleus of the electrode material of Miyabayashi from graphitized coke, because he teaches that this is one of several materials suitable for use as the base material/nucleus of his invention.
Forming the material of the nucleus of the electrode material of Miyabayashi from graphitized coke teaches the limitations of Claim 11, wherein the base material for the negative active material is graphitized coke.
It is noted that Claim 11 is considered a product-by-process claim. The structural features imparted by the limitation “graphitized coke” are considered to include “graphite.”
The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
In reference to Claims 12-13, these claims are indefinite, as described above.
It is the Examiner’s position that, because Miyabayashi teaches that the base material comprises graphitized coke (column 8, lines 7-15), this disclosure teaches the limitations of Claim 12, wherein the coke contains 70 parts by weight or more of green coke, and calcined coke is the balance.
It is the Examiner’s position that, because Miyabayashi teaches that the base material comprises graphitized coke (column 8, lines 7-15), this disclosure teaches the limitations of Claim 13, wherein the green coke is petroleum-based green coke.
It is the Examiner’s position that Claims 12-13 are product-by-process claims. Because Miyabayashi teaches that the base material of the active material of his invention is graphitized coke, it is the Examiner’s position that he teaches the structural limitations required by Claims 12-13, which merely modify the type of coke used in the graphitization process.
The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
In reference to Claim 16, Miyabayashi teaches that the material of his invention has a Raman peak in the range of 1350-1370 cm-1 (corresponding to a non-crystalline carbon material) and a peak in the range of 1580-1620 cm-1 (corresponding to a crystalline carbon material, column 2, lines 44-50).
He further teaches that the ratio of the peak intensity at 1350-1370 cm-1 to the peak intensity at 1580-1620 cm-1 should be 0.4 or greater (column 2, lines 55-60).
This disclosure teaches the limitations of Claim 16, wherein the negative active material for the lithium secondary battery has an Id/Ig of Raman spectrum measurement of 0.300 to 0.450, and the Id is the peak intensity measured at wavelength 1350cm-1, Ig is the peak intensity measured at wavelength 1575cm-1.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I.
In the instant case, the claimed range of “0.3-0.45” overlaps with the taught range of “greater than 0.4.”
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Miyabayashi, et al. (U.S. Patent 5,401,598), as evidenced by Cheng, et al. (U.S. Patent Application Publication 2018/0065849 A1), and further as evidenced by Kim, et al. (J. Chem. Eng. Data 2002, 47, 216-218).
In reference to Claim 14, as described in the rejection of Claim 10 above, Miyabayashi teaches that the coating material is quinoline.
This disclosure teaches the limitations of Claim 14, wherein the coating material is a carbon type (i.e. a carbon containing material).
Evidentiary reference Kim teaches that the viscosity of quinoline is 3.36 mPa*s at 298.15 K(i.e. room temperature, Table 2). This is equal to 3.36 cPs.
Therefore, Miyabayashi teaches that the coating material has viscosity of 3,000 cPs or less at room temperature.
Conclusion
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/SADIE WHITE/Primary Examiner, Art Unit 1721