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 .
Specification
The disclosure is objected to because of the following informalities: the abbreviation “BET” is cited (in addition to the claims), however the full name of the abbreviation (commonly known as “Battery Electrode Test”?) should be explicitly recited at least once in the Specification, such as at para 0005 with the first recitation of “BET”.
Appropriate correction is required.
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 1 and 6-9 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.
Amended claim 1 recites “A method for producing a negative electrode active material containing amorphous carbon-coated graphite particles, the method comprising the steps of: preparing graphite particles having a BET specific surface area […]; and coating at least a part of a surface of the graphite particles with the amorphous carbon” (emphasis added), rendering the claim unclear as to whether: 1) the “graphite particles” is intended to refer back to the ‘graphite particles’ of “amorphous carbon-coated graphite particles” or distinct ‘graphite particles’ thereof; and 2) “the amorphous carbon” is intended to refer to the ‘amorphous carbon’ of the “amorphous carbon-coated graphite particles” or a distinct ‘amorphous carbon’ thereof. Claims 6-8 are also rejected as depending on claim 1.
Amended claim 1 recites the limitation " the amorphous carbon ". There is insufficient antecedent basis for this limitation in the claim. Claims 6-8 are also rejected as depending on claim 1.
New claim 1 recites “A method for producing a negative electrode active material containing amorphous carbon-coated graphite particles, the method comprising the steps of: preparing graphite particles having a BET specific surface area […]; and coating at least a part of a surface of the graphite particles with the amorphous carbon” (emphasis added), rendering the claim unclear as to whether: 1) the “graphite particles” is intended to refer back to the ‘graphite particles’ of “amorphous carbon-coated graphite particles” or distinct ‘graphite particles’ thereof; and 2) “the amorphous carbon” is intended to refer to the ‘amorphous carbon’ of the “amorphous carbon-coated graphite particles” or a distinct ‘amorphous carbon’ thereof.
New claim 9 recites the limitation " the amorphous carbon ". There is insufficient antecedent basis for this limitation in the claim.
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:
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.
Claims 1 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al (JP No. 2005149792, machine translation cited below).
With respect to claims 1 and 6-7, Hayashi discloses a method for producing a negative electrode active material comprising amorphous carbon material coating at least part of a surface of “graphitic carbon materials” such as graphite powder (e.g. claimed “graphite particles”) (para 0001, 0011, 0045, 0054, and 0056), wherein the method comprises: preparing the graphite particles to have a BET specific surface area of 4-12 m2/g with a specific example from Example 1 being 10.8 m2/g (para 0011 and 0045), thus the BET specific surface area is between 10.8-12 m2/g; and coating at least part of the surface of the graphite particles with the amorphous carbon material (para 0011 and 0045), thereby forming the negative electrode active material containing amorphous carbon-coated graphite particles; a prima facie case of obviousness exists in the case where the claimed ranges (i.e. 10.9-12.2 m2/g of graphite particles) “overlap or lie inside ranges (i.e. 10.8-12 m2/g of graphite particles) disclosed by the prior art” (MPEP 2144.05, I). Hayashi further discloses in Table 1 that Examples 1-6 also suggest for a BET specific surface area of the negative electrode active material (i.e. the amorphous carbon-coated graphite particles) to be 3.7-4.2 m2/g with the BET specific surface area of the graphite particles being 10.8-12.2 m2/g (para 0045), resulting in a difference between the BET specific surface areas (i.e. DBET from Applicant’s Specification) of 7.1-8.0 m2/g; a prima facie case of obviousness exists in the case where the claimed ranges (i.e. 7.2-8.3 m2/g of DBET) “overlap or lie inside ranges (i.e. 7.1-8.0 m2/g of DBET) disclosed by the prior art” (MPEP 2144.05, I). Hayashi further discloses for an average particle diameter (D50) of the negative electrode active material to be 18 mm or less, with Example 1 teaching specifically 11 mm (para 0011 and 0044-0045; Table 1); Hayashi also teaches “it is usually not necessary to make it smaller than 10 mm” (para 0011), thereby suggesting that it is then known to have the D50 be smaller than 10 mm. It has been held that in the case where the claimed ranges (i.e. 7.2-8.3 mm) “overlap or lie inside ranges (i.e. 10 mm or less) disclosed by the prior art” a prima facie case of obviousness exists (MPEP 2144.05, I).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al (JP No. 2005149792, machine translation cited below) as applied to claim 1 above, and further in view of Yue et al (CN 106058211)..
With respect to claim 8, the reference is cited as discussed for claim 1. However Hayashi is limited in that while the graphite particles are from “natural graphite” and/or “natural graphite powder” (para 0002, 0008, 0027, 0045, 0054, and 0056), the graphite particles including the claimed “spherical natural graphite” is not specifically suggested.
Yue teaches a method of forming a negative electrode active material containing “amorphous carbon shell coated on the surface of the natural graphite” (para 0010 and 0122), similar to the negative electrode active material comprising the amorphous carbon-coated graphite particles of Hayashi. Yue further teaches the “natural graphite is selected from spherical natural graphite and/or flake natural graphite” (para 0019), and in particular Examples 1-8 teach the natural graphite is “spherical natural graphite”. Yue cites the advantages of the natural graphite being spherical natural graphite as improving uneven amorphous carbon coating, compaction, capacity, cyclic expansion rate, and cycle life (para 0008).
It would have been obvious to one of ordinary skill in the art to include the spherical natural graphite of Yue as the graphite particles from natural graphite powder of Hayashi to gain the advantages of improving uneven amorphous carbon coating, compaction, capacity, cyclic expansion rate, and cycle life. In addition it would have been obvious to one of ordinary skill in the art to include spherical natural graphite of Yue as the natural graphite powder since Hayashi fails to specify a particular shape (e.g. spherical, flaked, etc.) of the graphite particles from natural graphite powder, and one of ordinary skill would have had a reasonable expectation for success in making the modification since Yue has shown success in coating the spherical natural graphite with the amorphous carbon to form the negative electrode active material.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al (JP No. 2005149792, machine translation cited below) in view of Yue et al (CN 106058211).
With respect to claim 1, Hayashi discloses a method for producing a negative electrode active material comprising amorphous carbon material coating at least part of a surface of “graphitic carbon materials” such as graphite powder (e.g. claimed “graphite particles”) (para 0001, 0011, 0045, 0054, and 0056), wherein the method comprises: preparing the graphite particles to have a BET specific surface area of 4-12 m2/g with a specific example from Example 1 being 10.8 m2/g (para 0011 and 0045), thus the BET specific surface area is between 10.8-12 m2/g; and coating at least part of the surface of the graphite particles with the amorphous carbon (para 0011 and 0045), thereby forming the negative electrode active material containing amorphous carbon-coated graphite particles; a prima facie case of obviousness exists in the case where the claimed ranges (i.e. 10.9-12.2 m2/g of graphite particles) “overlap or lie inside ranges (i.e. 10.8-12 m2/g of graphite particles) disclosed by the prior art” (MPEP 2144.05, I). Hayashi further discloses in Table 1 that Examples 1-6 also suggest for a BET specific surface area of the negative electrode active material (i.e. the amorphous carbon-coated graphite particles) to be 3.7-4.2 m2/g with the BET specific surface area of the graphite particles being 10.8-12.2 m2/g (para 0045), resulting in a difference between the BET specific surface areas (i.e. DBET from Applicant’s Specification) of 7.1-8.0 m2/g; a prima facie case of obviousness exists in the case where the claimed ranges (i.e. 7.4-8.3 m2/g of DBET) “overlap or lie inside ranges (i.e. 7.1-8.0 m2/g of DBET) disclosed by the prior art” (MPEP 2144.05, I). Hayashi further discloses for an average particle diameter (D50) of the negative electrode active material to be 18 mm or less, with Example 1 teaching specifically 11 mm (para 0011 and 0044-0045; Table 1); Hayashi also teaches “it is usually not necessary to make it smaller than 10 mm” (para 0011), thereby suggesting that it is then known to have the D50 be smaller than 10 mm. It has been held that in the case where the claimed ranges (i.e. 7.2-9.1 mm) “overlap or lie inside ranges (i.e. 10 mm or less) disclosed by the prior art” a prima facie case of obviousness exists (MPEP 2144.05, I).
However Hayashi is limited in that while the graphite particles are from “natural graphite” and/or “natural graphite powder” (para 0002, 0008, 0027, 0045, 0054, and 0056), the graphite particles including the claimed “spherical natural graphite” is not specifically suggested.
Yue teaches a method of forming a negative electrode active material containing “amorphous carbon shell coated on the surface of the natural graphite” (para 0010 and 0122), similar to the negative electrode active material comprising the amorphous carbon-coated graphite particles of Hayashi. Yue further teaches the “natural graphite is selected from spherical natural graphite and/or flake natural graphite” (para 0019), with Examples 1-8 specifically teaching the natural graphite is “spherical natural graphite”. Yue cites the advantages of the natural graphite being spherical natural graphite as improving uneven amorphous carbon coating, compaction, capacity, cyclic expansion rate, and cycle life (para 0008).
It would have been obvious to one of ordinary skill in the art to include the spherical natural graphite of Yue as the graphite particles from natural graphite powder of Hayashi to gain the advantages of improving uneven amorphous carbon coating, compaction, capacity, cyclic expansion rate, and cycle life. In addition it would have been obvious to one of ordinary skill in the art to include spherical natural graphite of Yue as the natural graphite powder since Hayashi fails to specify a particular shape (e.g. spherical, flaked, etc.) of the graphite particles from natural graphite powder, and one of ordinary skill would have had a reasonable expectation for success in making the modification since Yue has shown success in coating the spherical natural graphite with the amorphous carbon to form the negative electrode active material.
Response to Arguments
Applicant’s Remarks on p. 5-7 filed 12/4/2025 are addressed below.
112 Rejections
Claim 1 has been amended to clarify ‘part of surface’ and “BET”; these previous 112(b) have been withdrawn.
103 Rejections
On p. 6, Applicant argues that Hayashi does not teach the limitation “BET specific surface area of 10.9 m2/g or larger and 12.2 m2/g or smaller” as recited by amended claim 1.
The Examiner respectfully disagrees since Hayashi teaches the BET specific surface area of 4-12 m2/g with a specific example from Example 1 being 10.8 m2/g (para 0011 and 0045), thus the BET specific surface area is between 10.8-12 m2/g; a prima facie case of obviousness exists in the case where the claimed ranges (i.e. 10.9-12.2 m2/g of graphite particles) “overlap or lie inside ranges (i.e. 10.8-12 m2/g of graphite particles) disclosed by the prior art” (MPEP 2144.05, I).
On p. 6, Applicant argues that Hayashi does not reasonably teach nor suggest all combination of features recited in amended claim 1.
The Examiner respectfully disagrees since Hayashi does reasonably and/or suggest all combination of features from the various parameters in the Specification and Table 1 as discussed above in the rejection of claim 1, similar to amended claim 1 reciting various parameters form Applicant’s Table 1.
Rejoinder Request
The request on p. 5 is noted.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A BAND whose telephone number is (571)272-9815. The examiner can normally be reached Mon-Fri, 9am-5pm EST.
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794
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