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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/24/2026 has been entered.
Response to Amendment
Examiner notes the following amendments made to the claims:
Claim 1 amended
Claims 3-5 cancelled
Response to Arguments
Applicant's arguments filed 06/24/2026 have been fully considered but they are not persuasive. Specifically, examiner believes the swelling of the nanotubes would be an inherent property of the material, and that by using the same first and second set of carbon nanotubes as the instant claims, including the use of branched carbon nanotubes having the claimed diameter, wall thickness, and length as the claimed multi-wall carbon nanotubes, and the use of single walled nanotubes having the same average diameter, length, and number of walls as the instant claims, as is taught by the combination of Xu and Jiang, further in view of Shauer, Shevchenko, and Oh, as described in a previous rejection, that the multi-walled carbon nanotubes would inherently swell at least 15% more than the single-walled carbon nanotubes, even if this is not explicitly stated in the prior art. See MPEP 2112. II. or Schering Corp. v. Geneva Pharm. Inc., for case law regarding the fact that an inherent feature need not be recognized at the relevant time in order for it to still anticipate the feature, which is later recognized. Applicant does not provide data for the percentage of swelling based on the specific compositions of the nanotubes, so it is assumed that if the multi-walled carbon nanotubes and singe-walled nanotubes meet all of the limitations regarding all structural parameters found both in the claims and the instant specification (i.e. length, diameter, wall thickness, number of walls, aspect ratio), that they would exhibit the same properties as the carbon nanotubes used in the instant specification. Since no further arguments were presented regarding the patentability of the dependent claims, other than their dependency on claim 1, the previous rejections remain in place and unchanged, other than being further in view of Shauer, Shevchenko, and Oh, as used to reject amended claim 1. Thus, there is currently not considered to be any allowable subject matter present in the claims.
Claim Rejections - 35 USC § 103
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) 1-2, 6-13, 16, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu (US 20130004657 A1) in view of Jiang (US 20220052328 A1), further in view of Shauer (US 20180138514 A1), further in view of Shevchenko (US 20160308263 A1), and further in view of Oh (US 20220367855 A1).
Regarding claim 1, Xu teaches the following elements:
An electrode, comprising (“Carbon nanotube-based compositions and methods of making an electrode for a Li ion battery are disclosed.” Xu [0020]):
an active layer comprising (“FIG. 1A illustrates a schematic diagram of coating made of active materials, carbon nanotubes and binder on an aluminum film as an electrode of lithium battery.” Xu [0023]):
a network of high aspect ratio carbon elements defining void spaces within the network (“Therefore, a compatible, CNT-based conductive filler in terms of appropriate diameters to connect particles of various sizes is necessary.” Xu [0021]. Additionally, the dependent claims of claim 1 clearly state that the presence of carbon nanotubes functions as high aspect ratio carbon elements, and therefore the electrode of Xu, shown below as being extremely similar if not identical to the instant application, would meet the above and below limitations);
a plurality of electrode active material particles disposed in the void spaces within the network (“Carbon nanotubes 2, as shown, acted as conductive filler to form electrically conductive path throughout the active material particles, so as to enhance the overall conductivity.” Xu [0038]);
and a polymeric additive, the polymeric additive being at least one of (i) selected from a family of polyamides, or (ii) a modified polyamide or derivative of a polyamide. (“Polymeric binder choices include … polyamide” Xu [0043]).
PNG
media_image1.png
382
505
media_image1.png
Greyscale
PNG
media_image2.png
574
727
media_image2.png
Greyscale
Xu is silent on the following limitations of amended claim 1:
Wherein the network of high aspect ratio carbon elements comprises:
A first set of multi-wall carbon nanotubes;
A second set of single wall carbon nanotubes:
And wherein a ratio of an amount by weight of the first set of multi-wall carbon nanotubes to the second set of single-wall carbon nanotubes is about 2:1.
and wherein the multi-wall carbon nanotubes of the first set swell at least 15% more than the single-wall carbon nanotubes of the second set when wetted with an electrolyte.
However, Jiang teaches the following elements of claim 1 that are not found in Xu.
Wherein the network of high aspect ratio carbon elements comprises:
A first set of multi-wall carbon nanotubes;
A second set of single wall carbon nanotubes: (“The carbon material (single-wall carbon nanotube (SCNT) and/or multi-wall carbon nanotube (MCNT)) and a polymer were dispersed in water at high speed for about 12 hr to obtain a uniformly mixed slurry;” Jiang [0161] and table 4-1. Jiang uses a mixture of SCNT:MCNT, shown in example 18 in table 4-1.)
Jiang and Xu are considered to be analogous because they are both within the same field of electrodes containing mixtures of carbon nanotubes in their active material layer in order to improve properties. Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify the mixture of large and small carbon nanotubes of Xu to explicitly be a mixture of single and multi-wall carbon nanotubes, as taught by Jiang, both because of the reasoning provided by Jiang-- (“It can be seen from the test results of Example 7 and Examples 16 to 24 that coating a certain amount of the CNT-containing polymer layer on the anode active material in Example 7 can significantly improve the cycle performance and rate performance of lithium ion batteries.” Jiang [0167])—and the fact that this mixture is known in the art to be used for the same purpose, and would therefore only require a simple substitution in order to meet the claimed limitation, and the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. (see MPEP § 2143, B.).
By combining the teachings of Xu and Jiang, the remaining limitation of claim 1 would be met, as the desired ratio of first and second nanotubes is taught by Jiang. See above in responses to arguments for further reasoning.
And wherein a ratio of an amount by weight of the first set of multi-wall carbon nanotubes to the second set of single-wall carbon nanotubes is about 2:1. (“In some embodiments an electrode material composition for a coating applied to a conductive electrode, one of a cathode or anode, for a battery comprises multi-walled carbon nanotubes in an agglomerate comprising a first portion of large diameter carbon nanotubes, CNT(II), and a second portion of small diameter carbon nanotubes, CNT(I), such that the weight ratio of the second portion to the combined weight of the first portion and the second portion is between about 0.05 to about 0.50; “ Xu [0074]. In this case, if the weight ratio of the second portion to the combined weight of first and second was 0.33, then there would be a 2:1 ratio of the first particles to the second particles.)
The examiner takes note of the fact that the prior art range of about 19:1 to 1:1 of the ratio of the first particles to the second particles encompasses the claimed range of around 2:1 for the same parameter. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Xu and Jiang are silent on the following limitations of claim 1:
and wherein the multi-wall carbon nanotubes of the first set swell at least 15% more than the single-wall carbon nanotubes of the second set when wetted with an electrolyte.
However, by modifying Xu and Jiang with the teachings of Schauer, Shevchenko, and Oh, as described in a previous rejection, all of the additional limitations of claim 1 would be met without requiring any further modification or motivation.
and wherein the multi-wall carbon nanotubes of the first set swell at least 15% more than the single-wall carbon nanotubes of the second set when wetted with an electrolyte. (As described in the above response to arguments, examiner finds that by combining Xu and Jiang to use a combination of MWCNTs and SWCNTs, and further modifying with Shauer, Shevchenko, and Oh to alter the structure/substitute of each of the MWCNTs and SWCNTs to gain desirable effects, the limitations of the dependent claims regarding the aspect ratio, wall structure, average diameter, and average length for MWCNTs (see claims 6, 12) and average diameter, average length for SWCNTs (see claim 13) and aspect ratio difference between the two (see claim 20), that the same combination of MWCNTs and SWCNTs would be used as in the instant claims/specification, and therefore the swelling would be an inherent property of the material. See MPEP 2112. II. or Schering Corp. v. Geneva Pharm. Inc., for case law regarding the fact that an inherent feature need not be recognized at the relevant time in order for it to still anticipate the feature, which is later recognized.)
Schauer is considered to be analogous to Xu because it is related to carbon nanotube compositions being used to improve electrical conductivity to an active material layer, and they are both classified within the H01M umbrella. Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify the multi-walled CNTs of Xu to use explicitly branches multi-wall CNTs, as the CNTs of Schauer (“can provide the necessary electrical and ionic conductivity for a LiB at about 8 to 16 times lower concentration than carbon black, and also provide the mechanical support that enables thicker cathodes, flexible batteries, and advanced anode and cathode chemistries.” Schauer [0025]). This would be desirable in an active material layer as it would provide the necessary electrical conductivity and the ability to use it in lower concentration would allow for both less material needed and more space available to fill with active material. Additionally, since the teachings of Xu and Schauer are both related to MWCNTs used in electrodes, it would only require a simple substitution to use the CNTs of Schauer, and the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. (see MPEP § 2143, B.).
The modification of Jiang with Schauer used to meet the limitation of claim 1 would also meet the limitations of claims 9 and 10, and therefore no further motivation or modification would be required to mee the limitations of claims 9 and 10.
Shevchenko and Jiang are considered to be analogous because they are both within the field of using SWCNTs as a conductive agent in an electrode. Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify the SWCNTs of Jiang, used in the mixture of Xu, to contain the specific size parameters of Shevchenko, as it is a material clearly known in the art and would only require a simple substitution to include in the conductive filler mixture. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. (see MPEP § 2143, B.).
By modifying Jiang with Shevchenko, no further modification or motivation would be required to meet the additional limitations of claim 12.
Oh and Jiang are considered to be analogous because they are both within the field of using SWCNTs as a conductive agent in an electrode. Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify the SWCNTs of Jiang, used in the mixture of Xu, to contain the specific size parameters of Oh, as it is a material clearly known in the art and would only require a simple substitution to include in the conductive filler mixture. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. (see MPEP § 2143, B.).
By modifying Jiang with Oh, no further modification or motivation would be required to meet the additional limitations of claim 13.
Regarding claim 2, Xu teaches all of the following elements:
The electrode of claim 1, wherein the first set of multi- wall carbon nanotubes comprises a plurality of first multi-wall carbon nanotubes or a plurality of bundles of first multi-wall carbon nanotubes; and a second set of single-wall carbon nanotubes comprises a plurality of second single-wall carbon nanotubes or a plurality of bundles of second single-wall carbon nanotubes. (“The resultant paste then contains mixture of both large and small nanotubes crossing each other and forming the desired network in a new paste.” Xu [0051]. Xu teaches the use of a mixture containing small and large carbon nanotubes. By modifying with Jiang to meet the limitations of claim 1, as shown above, there would be a mixture of multi and single-walled nanotubes, and there would be a plurality of each, as Xu teaches a mixture of first and second nanotubes where there is a plurality of each.)
Regarding claim 6, Xu teaches all of the following elements:
The electrode of claim 1, wherein the network of high aspect ratio carbon elements comprises a set of multi-wall carbon nanotubes. (“In some embodiments an electrode material composition for a coating applied to a conductive electrode, one of a cathode or anode, for a battery comprises multi-walled carbon nanotubes in an agglomerate comprising a first portion of large diameter carbon nanotubes, CNT(II), and a second portion of small diameter carbon nanotubes, CNT(I),” Xu [0074])
Regarding claim 7, Xu teaches all of the following elements:
The electrode of claim 6, wherein the active layer comprises between 0.25% and 1.5% of multi-wall carbon nanotubes by weight of the active layer. (“electrode active materials; dispersant; and polymeric binder such that the polymeric binder is less than about 0.5% to about 5% by weight of the electrode material composition wherein the electrode active material is in a range of about 30-60% by weight, the total carbon nanotubes are in a range from about 0.2 to about 5% by weight and the dispersant is in a range from about 0.1 to 2% by weight” Xu [0074])
The examiner takes note of the fact that the prior art range of about 0.2-5% of multi-walled carbon nanotubes by weight out of the total weight of the electrode active layer overlaps the claimed range of 0.25-1.5% for the same parameter. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Regarding claim 8, Xu teaches all of the following elements:
The electrode of claim 6, wherein the active layer comprises between 0.2% and 2% of multi-wall carbon nanotubes by weight of the active layer. (“electrode active materials; dispersant; and polymeric binder such that the polymeric binder is less than about 0.5% to about 5% by weight of the electrode material composition wherein the electrode active material is in a range of about 30-60% by weight, the total carbon nanotubes are in a range from about 0.2 to about 5% by weight and the dispersant is in a range from about 0.1 to 2% by weight” Xu [0074])
The examiner takes note of the fact that the prior art range of about 0.2-5% of multi-walled carbon nanotubes by weight out of the total weight of the electrode active layer encompasses the claimed range of 0.2-2% for the same parameter. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Regarding claim 9, Xu teaches all of the elements of claim 6, as shown above. Xu and Jiang are silent on the following elements of claim 9:
The electrode of claim 6, wherein the multi-wall carbon nanotubes are branched carbon nanotubes.
However, Schauer teaches all of the elements of claim 9 that are not explicitly stated in Xu. Specifically, Schauer teaches:
The electrode of claim 6, wherein the multi-wall carbon nanotubes are branched carbon nanotubes. (“In some embodiments, the structures incorporate a interconnected network formed from a plurality of bundles of well-entangled CNTs that achieve a percolation threshold for electron transport throughout the active material at a much lower concentration than either CB or powdered CNTs. In some embodiments, a well-entangled network of branched, bundled, and well-dispersed CNT pulp containing long CNTs (>1 mm) can provide the necessary electrical and ionic conductivity” Schauer [0025])
Regarding claim 10, Xu teaches all of the elements of claim 6, as shown above. Xu and Jiang are silent on the following elements of claim 10:
The electrode of claim 6, wherein the multi-wall carbon nanotubes are branched, interdigitated, entangled and/or share common walls.
However, Schauer teaches all of the elements of claim 10 that are not explicitly stated in Xu. Specifically, Schauer teaches:
The electrode of claim 6, wherein the multi-wall carbon nanotubes are branched, interdigitated, entangled and/or share common walls. (“In some embodiments, the structures incorporate a interconnected network formed from a plurality of bundles of well-entangled CNTs that achieve a percolation threshold for electron transport throughout the active material at a much lower concentration than either CB or powdered CNTs. In some embodiments, a well-entangled network of branched, bundled, and well-dispersed CNT pulp containing long CNTs (>1 mm) can provide the necessary electrical and ionic conductivity” Schauer [0025])
Regarding claim 11, modified Xu with Jiang teaches all of the elements of claim 2, as shown above. The modified version of Xu with Jiang which meets claim 2 would also meet all of the limitations of claim 11 due to inherency. The following limitations are met due to inherency:
An energy storage device comprising: an electrolyte; and the electrode of claim 2, wherein wetted with the electrolyte the multi-wall nanotubes comprised in the first set of carbon nanotubes swell more than the single-wall carbon nanotubes comprised in the second set of carbon nanotubes.
In this case, if the:
binder (polyamide taught by Xu and instant application),
mixture of nanotubes (multiwall and single wall, as taught by Jiang and Xu.),
electrolyte (Jiang teaches “In some embodiments, the electrolytic solution comprises an organic solvent, a lithium salt, and an additive.” Which is essentially identical to that stated in paragraph [0114] of instant spec “In some such embodiments, the electrolyte may be a lithium salt dissolved in a solvent” [instant spec 0114])
Are all identical, then the swelling properties observed in the nanotubes (and, expanding to claim 19, the electrode as a whole) would also be the same, as this would be an inherent property of the material and it would be necessary to specifically claim this characteristic in the prior art. See MPEP 2112. II. or Schering Corp. v. Geneva Pharm. Inc., for case law regarding the fact that an inherent feature need not be recognized at the relevant time in order for it to still anticipate the feature, which is later recognized.
Regarding claim 12, modified Xu teaches all of the elements of claim 2, as shown above. Xu and Jiang are silent on the following elements of claim 12:
The electrode of claim 2, wherein the multi-wall carbon nanotubes comprise: an average diameter of between 6 nm and 10 nm; an average wall thickness of between 6 nm and 7 nm; and an average length of about 16 microns.
However, Schevchenko teaches all of the elements of claim 12 that are not found in Xu and Jiang. Specifically, Schevchenko teaches a single-walled carbon nanotube with the desired characteristics, used in a similar context:
The electrode of claim 2, wherein the multi-wall carbon nanotubes comprise: an average diameter of between 6 nm and 10 nm; an average wall thickness of between 6 nm and 7 nm; and an average length of about 16 microns. (“Typically, the carbon nanotubes will have an average tube diameter in the range of about 1.5 to about 15 nm and an average tube wall thickness in the range of about 1 to about 6 nm). Lithium and be intercalated within the carbon nanotubes, the nanoparticles, the microparticles, or any combination thereof. Optionally, each of the layers independently can have an average thickness in the range of about 15 to about 50 μm. The carbon nanotubes preferably have lengths in the range of about 0.5 to about 200 μm (e.g., about 1 to about 25 μm),” Shevchenko [0017])
The examiner takes note of the fact that the prior art ranges of 1.5-15 nm, 1-6 nm, and 0.5-200 μm, for the average tube diameter, average wall thickness, and average length of single-wall carbon nanotubes, respectively, encompass or overlap the claimed ranges of 6-10 nm, 6-7nm, and around 16 μm for the same parameters. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Regarding claim 13, modified Xu teaches all of the elements of claim 2, as shown above. Xu and Jiang are silent on the following elements of claim 13:
The electrode of claim 2, wherein the single-wall carbon nanotubes comprise: an average diameter of between 1 nm and 2 nm; an average length of about 5 microns.
However, Oh teaches all of the elements of claim 13 that are not found in Xu and Jiang. Specifically, Oh teaches:
The electrode of claim 2, wherein the single-wall carbon nanotubes comprise: an average diameter of between 1 nm and 2 nm; an average length of about 5 microns. (“The SWCNTs may have an average diameter of 0.1 nm to 15 nm, and preferably, 2 nm to 7 nm. “ Oh [0055]) and “A ratio of the average length of the SWCNTs to the average diameter of the SWCNTs may be in a range of 500:1 or more, preferably, 500:1 to 10,000:1” Oh [0057]. Based on the above ratio, the average length of SWCNTs would be in a range between 0.05 μm [500 times 0.1nm] to 150 μm [10,000 times 15nm)
The examiner takes note of the fact that the prior art ranges of 0.1-15nm and 0.05-150μm, for the average diameter and average length of single-wall carbon nanotubes, respectively, encompass the claimed ranges of 1-2 nm and around 5 μm for the same parameters. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Oh and Jiang are considered to be analogous because they are both within the field of using SWCNTs as a conductive agent in an electrode. Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify the SWCNTs of Jiang, used in the mixture of Xu, to contain the specific size parameters of Oh, as it is a material clearly known in the art and would only require a simple substitution to include in the conductive filler mixture. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. (see MPEP § 2143, B.).
Regarding claim 16, modified Xu with Jiang teaches all of the elements of claim 2, as shown above. All of the additional limitations of claim 16 would be met by definition. Specifically, that the definition of a single-walled carbon nanotube, commonly known in the art, would meet all of the following limitations:
The electrode of claim 2, wherein the single-wall carbon nanotubes comprise on average 1 or 2 layers of walls. (by definition, a single-wall carbon nanotube would comprise on average 1 layer of wall. This is even explicitly stated in Xu “ A single-walled carbon nanotube (SWCNT) consists of a single graphite, or graphene, sheet wrapped around to form a cylindrical tube.” Xu [0004]. Therefore, the usage of the single-wall nanotubes of Jiang would meet the definition of claim 16 as it is the commonly known and used definition of a single-walled carbon nanotube.)
Regarding claim 19, modified Xu with Jiang teaches all of the elements of claim 2, as shown above. This modification would also meet all of the limitations of claim 19, as an electrode with the same composition and electrolyte would inherently react the same way as the claimed invention when wetted with electrolyte, without needing to specifically mention this characteristic. See claim 11 for inherency argument. Additionally, Jiang explicitly shows in its examples that the swelling is less than 10%:
The electrode of claim 2, wherein after wetted with an electrolyte an average thickness of the electrode increases less than 10%. (Jiang tables 1-3 and 2-2 show swelling rates of less than 10% in all of their examples and comparative examples. Additionally, table 4-2 shows a swelling rate of 8.1% for the mixture of SCNT and MCNT used in example 18.)
Regarding claim 20, modified Xu with Jiang teaches all of the elements of claim 2, as shown above. The mixture of CNTs taught by Xu would meet the additional limitations of claim 20, and the usage of the SWCNTs of Jiang in place of the smaller-diameter CNTs of Xu would also meet the following limitations of claim 20:
The electrode of claim 2, wherein a first average aspect ratio of the first set of carbon nanotubes is larger than a second average aspect ratio of the second set of carbon nanotubes. (Xu states that the distinct difference between the two kinds of nanotubes is diameter “There are various kinds of carbon nanotube structure reported in the art, namely single-walled nanotube, multi-wall nanotube, vapor-phase grown carbon fibers, VGCF, etc. The distinct difference is the diameter, where 0.4-1.2 nm for SWCNT, 2-100 nm for MWCNT” Xu [0037]. If the only difference between the first and second nanotubes in the mixture is the diameter, then the aspect ratios would be higher for the first set of nanotubes than the second, as the lengths would be the same but the diameters would vary. Additionally, it can be seen in in Xu figure 1C that the diameter of the CNT (II) is significantly larger than that of CNT (I), whereas the lengths are around double. “In some embodiments a range of diameters for small CNTs is about 5-20 nm; a range for large diameter nanotubes is about 40-100 nm.” Xu [0034]. If there were a mixture of SWCNTs having a diameter of 0.4-1.2nm along with the larger diameter nanotubes with diameters of 40-100nm, in order for them to have the same aspect ratios the length of the larger diameter nanotubes would have to be 33-250 times as long as those of the SWCNTs, which is clearly not the case.)
PNG
media_image3.png
406
457
media_image3.png
Greyscale
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu (US 20130004657 A1) in view of Jiang (US 20220052328 A1), further in view of Shauer (US 20180138514 A1), further in view of Shevchenko (US 20160308263 A1), further in view of Oh (US 20220367855 A1) and further in view of Cha (US 20190252673 A1).
Regarding claim 14, modified Xu teaches all of the elements of claim 2, as shown above. Xu and Jiang are silent on the following elements of claim 14:
The electrode of claim 2, wherein the single-wall carbon nanotubes comprise: an average diameter of between 3 nm and 5 nm; and an average length of at least 200 microns.
However, Cha teaches all of the elements of claim 13 that are not found in Xu and Jiang. Specifically, Cha teaches:
The electrode of claim 2, wherein the single-wall carbon nanotubes comprise: an average diameter of between 3 nm and 5 nm; and an average length of at least 200 microns. (“The average length of the linear-shaped carbon-based material may be about 70 μm to about 250 μm. An average diameter of the linear-shaped carbon-based material may be about 1 nm to about 20 nm.” Cha [0010-0011] and “The linear-shaped carbon-based material may include a carbon nanotube, a carbon nano fiber, or a combination thereof.” Cha [0013])
The examiner takes note of the fact that the prior art ranges of 1-20 nm and 70-250 μm, for the average diameter and average length of single-wall carbon nanotubes, respectively, encompass or overlap the claimed ranges of 3-5 nm and at least 200 μm for the same parameters. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Cha and Jiang are considered to be analogous because they are both within the field of using SWCNTs as a conductive agent in an electrode. Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify the SWCNTs of Jiang, used in the mixture of Xu, to contain the specific size parameters of Cha, as it is a material clearly known in the art and would only require a simple substitution to include in the conductive filler mixture. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. (see MPEP § 2143, B.).
Claim(s) 15, 17, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu (US 20130004657 A1) in view of Jiang (US 20220052328 A1), ), further in view of Shauer (US 20180138514 A1), further in view of Shevchenko (US 20160308263 A1), further in view of Oh (US 20220367855 A1) and further in view of Oh (US20220255060A1), hereinafter referred to as Oh ‘060.
Regarding claim 15, modified Xu teaches all of the elements of claim 2, as shown above. Xu and Jiang are silent on the following elements of claim 15:
The electrode of claim 2, wherein the single-wall carbon nanotubes comprise: an average diameter of between 3 nm and 5 nm; and an average length of between 7 and 8 microns.
However, Oh ‘060 teaches all of the elements of claim 13 that are not found in Xu and Jiang. Specifically, Oh ‘060 teaches:
The electrode of claim 2, wherein the single-wall carbon nanotubes comprise: an average diameter of between 3 nm and 5 nm; and an average length of between 7 and 8 microns. (“The SWCNT aggregates may have an average diameter of 3 nm to 20 nm,” Oh [0055] and “The SWCNT aggregates may have an average length of 3 μm to 20 μm, preferably, 5 μm to 15 μm, and more preferably, 7.8 μm to 8.8 μm.” Oh [0057])
The examiner takes note of the fact that the prior art ranges of 3-20 nm and 7.8-8.8 μm, for the average diameter and average length of single-wall carbon nanotubes, respectively, encompass or overlap the claimed ranges of 3-5 nm and 7-8 μm for the same parameters. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Oh ‘060 and Jiang are considered to be analogous because they are both within the field of using SWCNTs as a conductive agent in an electrode. Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify the SWCNTs of Jiang, used in the mixture of Xu, to contain the specific size parameters of Oh ‘060, as it is a material clearly known in the art and would only require a simple substitution to include in the conductive filler mixture. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. (see MPEP § 2143, B.).
Regarding claims 17 and 18, the SWCNT of Oh ‘060 teaches all of the additional limitations of those claims, and thus no further modifications or motivation is needed.
Regarding claim 17, modified Xu teaches all of the elements of claim 2, as shown above. Xu and Jiang are silent on the following elements of claim 17 :
The electrode of claim 2, wherein the single-wall carbon nanotubes comprise: an average diameter of between 5 nm and 6 nm; an average length of between 7 and 8 microns.
However, Oh ‘060 teaches all of the elements of claim 17 that are not found in Xu and Jiang. Specifically, Oh ‘060 teaches:
The electrode of claim 2, wherein the single-wall carbon nanotubes comprise: an average diameter of between 5 nm and 6 nm; an average length of between 7 and 8 microns. (“The SWCNT aggregates may have an average diameter of 3 nm to 20 nm,” Oh [0055] and “The SWCNT aggregates may have an average length of 3 μm to 20 μm, preferably, 5 μm to 15 μm, and more preferably, 7.8 μm to 8.8 μm.” Oh [0057])
The examiner takes note of the fact that the prior art ranges of 3-20 nm and 7.8-8.8 μm, for the average diameter and average length of single-wall carbon nanotubes, respectively, encompass or overlap the claimed ranges of 5-6 nm and 7-8 μm for the same parameters. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Regarding claim 18, modified Xu teaches all of the elements of claim 2, as shown above. Xu and Jiang are silent on the following elements of claim 18 :
The electrode of claim 2, wherein the single-wall carbon nanotubes comprise: a range of lengths between 1 nm and 34 nm; an average length of between 7 and 8 microns. [see 112(b) rejection for why this claim is interpreted as “a range of lengths between 1 μm and 34 μm” rather than nm.)
However, Oh ‘060 teaches all of the elements of claim 18 that are not found in Xu and Jiang. Specifically, Oh ‘060 teaches:
The electrode of claim 2, wherein the single-wall carbon nanotubes comprise: a range of lengths between 1 nm and 34 nm; an average length of between 7 and 8 microns. (“The SWCNT aggregates may have an average diameter of 3 nm to 20 nm,” Oh [0055] and “The SWCNT aggregates may have an average length of 3 μm to 20 μm, preferably, 5 μm to 15 μm, and more preferably, 7.8 μm to 8.8 μm.” Oh [0057])
The examiner takes note of the fact that the prior art range of 7.8-8.8 μm for the average length of single-wall carbon nanotubes overlap the claimed ranges of comprising a range of lengths between 1 and 34 μm and having an average length of 7-8 μm. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN ELI KASS-MULLET whose telephone number is (571)272-0156. The examiner can normally be reached Monday-Friday 8:30am-6pm except for the first Friday of bi-week.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, NICHOLAS SMITH can be reached at (571) 272-8760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BENJAMIN ELI KASS-MULLET/Examiner, Art Unit 1752
/NICHOLAS A SMITH/Supervisory Primary Examiner, Art Unit 1752
