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
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
In this instance, the abstract recites the phrase that can be implied “The present disclosure relates to…” in the 1st line.
The use of the term “Ketjen black”, which is a trade name or a mark used in commerce, has been noted in this application (see paragraph [0036] of the specification). The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim 1 is objected to because of the following informalities: in the 1st line of claim 1, add “a” before “secondary” for clarity. 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 1-18 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.
With regard to independent claim 1, the limitation “a measurement of a particle size distribution of the conductive material in the slurry composition exhibits a first peak and a second peak” is indefinite, as it is unclear as to what instrumental analysis technique the “measurement” is derived from for obtaining “a first peak and a second peak”, as well as if each “peak” corresponds to a different component and/or elements of the periodic table of the elements. Since claims 2-18 depend from independent claim 1 (including that claim 2 also refers to “the first peak” and “the second peak”, with each of the “peaks” defining a “maximum peak value”), these claims are rejected for the same reason as applied to independent claim 1. In view of the indefiniteness of this limitation, the examiner is taking the broadest reasonable interpretation that each “peak” corresponds to a corresponding element of the periodic table of the elements. Correction and clarification are required.
Regarding claim 3, the phrase "or the like" (in this instance, “type” of “bundle type”) renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Regarding claim 3, the phrase "or the like" (in this instance, “type” of “high-structure type”) renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
The term “high” (of “high-structure type”) in claim 3 is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “low” (of “low-structure”) in claim 4 is a relative term which renders the claim indefinite. The term “low” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “medium” (of “medium-structure”) in claim 4 is a relative term which renders the claim indefinite. The term “medium” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
With regard to claim 6, since the claimed linear carbon material has an average diameter of “equal to or less than about 40 nm”, it is unclear whether the linear carbon material should have an average length of equal to or less than about 250 µm, or should its average length be 250 nm? Correction and/or clarification is/are required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3, and 10-18 insofar as definite (in view of the 35 USC 112(b) rejections above) are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 20180075180 A, of which a complete copy of the Korean document with an English abstract was provided with the Information Disclosure Statement dated December 27, 2022, and with a machine translation provided with this Office Action.
Regarding independent claim 1, as well as claims 17 and 18, KR ‘180 discloses a slurry composition to from a secondary battery electrode for a secondary battery that includes a cathode manufactured using a cathode active material and the slurry composition, an anode, and a separator (abstract; and pages 2-8 of translation under the heading DESCRIPTION-OF-EMBODIMENTS; and Examples 1 and 2), in which the slurry composition comprises the following components:
a conductive material containing a linear carbon material and a point-like carbon material (see abstract; and pages 2 and 3 of translation);
a dispersant (see abstract; and page 2 of translation); and
an organic solvent (see abstract; and page 2 of translation),
wherein a measured particle size distribution of the conductive material in the slurry composition are defined with at least a first peak and a second peak, and when taken in view of the broadest reasonable interpretation and in view of the 35 USC 112(b) rejections above, occurrences and properties of multiple peaks (due to the presence of both a linear carbon material and a point-like carbon material in the conductive material) would inherently be present and vary in height and width, and therefore, there would be a plurality of different peaks therein that correspond to different components and/or elements of the periodic table of the elements.
Regarding claim 3, KR ‘180 discloses that the linear carbon material has a “bundle type” (in view of the 35 USC 112(b) rejection above) since the linear carbon material would include microfine carbon fibers and fibrous carbon that are adapted to be wound into a “bundle”, as well as that the point-like carbon material has a “high-structure type” (in view of the 35 USC 112(b) rejection above) since the point-like carbon materials include a particulate phase and are selected from materials such as natural graphite, artificial graphite, carbon black, ketjen black etc. (see the first five paragraphs on page 3 of translation).
Regarding claim 10, KR ‘180 discloses that the point-like conductive material is present at a weight ratio of “less than 0.25 times” the linear conductive material, which falls within the claimed range of about 55%:45% to about 95%:5% by weight of content ratio of the linear carbon material to the point-like carbon material (see the last paragraph on page 3 of translation).
Regarding claim 11, KR ‘180 discloses that the point-like carbon material has an average size (particle diameter) within a range of 5 to 150 nm, which completely encompasses the claimed range of about 5 to about 100 nm (see the 5th and 6th paragraphs on page 3 of translation).
Regarding claims 12 and 13, KR ‘180 discloses that the dispersant comprises a rubber-based dispersant having repeating units derived from acrylonitrile-based monomers and olefin-based monomers (of claim 12) that meet one or both of repeating units represented by Formula 1 and Formula 2 (of claim 13), including the broad range that m + n = 1 and m is 0.1 to 0.9, and thus n is also 0.1 to 0.9 (see the first three paragraphs on page 4 of translation that discloses hydrogenated nitrile butadiene rubber (HNBR) having both acrylonitrile-based monomers and olefin-based monomers meeting the parameters m and n above).
Regarding claims 14 and 15, KR ‘180 discloses the claimed rubber-based dispersant that includes hydrogenated nitrile butadiene rubber (HNBR) having a molecular weight falling within the claimed range of about 50,000 to about 200,000 g/mol, while being provided in a range of about 0.1% to about 10% by weight of the slurry composition (see the first three paragraphs on page 4 of translation).
Regarding claim 16, KR ‘180 discloses that the organic solvent includes one or more of N-methyl pyrrolidone (NMP), dimethyl sulfoxide (DMSO), isopropyl alcohol (IPA), acetone, and water (see the last full paragraph on page 6 of translation).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The 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.
Claims 2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over KR 20180075180 A.
Regarding claim 2, KR ‘180 discloses the claimed features of the composition of independent claim 1, including the particle size distribution ranges of the conductive material containing a linear carbon material and a point-like carbon material (of claims 10 and 11 above), but fails to explicitly teach the first peak and the second peak with maximum peak value and with particle ranges. However, when taken in view of the broadest reasonable interpretation (and in view of the 35 USC 112(b) rejections applied above to independent claim 1), occurrences and properties of multiple peaks would inherently be present and vary in height and width, and therefore there will be a plurality of different peaks corresponding to different components and/or elements of the periodic table of the elements). Moreover, since KR ‘180 is concerned with different particle sizes in order to make a more efficient secondary electrode, it would have been obvious to one of ordinary skill in the art to conduct routine experimentation to determine the most effective range of first and second peaks that correspond to particle size ranges from 0.01 to 1.0 µm and from 1.0 to 20.0 µm, respectively (see page 3 of translation). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claim 4, KR ‘180 discloses a linear carbon material and a point-like carbon material (of independent claim 1), as well as the “bundle type” linear carbon material and the “high-structure type” point-like carbon material (of claim 3), but does not explicitly disclose a “semi-bundled” linear carbon material, wherein a network structure comprising a “low-structure” point-like carbon material and a “medium-structure” point-like carbon material is disposed between the “semi-bundled” linear carbon materials. However, it would have been obvious to one of ordinary skill in the art to modify properties thereof via altering a degree of “bundling” (including “semi-bundled”, and optionally with a network structure comprising “low-structure” and “medium-structure” point-like carbon materials, as broadly interpreted in view of the 35 USC 112(b) rejection) of the linear carbon material and the point-like carbon material, since each of the linear carbon material and the point-like carbon material would be appropriately shaped when making a composition for subsequent manufacturing of a secondary battery electrode, since it would be within a desired design choice via routine experimentation with a reasonable expectation of success (see the first five paragraphs on page 3 of translation). With regard to the types of materials that are suitable for use, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 5, although KR ‘180 discloses the claimed features of the composition of independent claim 1, including the particle size distribution ranges of the conductive material containing a linear carbon material and a point-like carbon material (of claims 10 and 11 above), KR ‘180 does not explicitly disclose conditions 1 to 4 that include respective particle size distribution D10, D50, D90, and Dmax within the claimed ranges. However, one of ordinary skill in the art would have recognized that determination of particle size distribution ranges would include calculation of at least D10, D50, and D90, in order to optimize particle sizes via routine experimentation with a reasonable expectation of success. Moreover, since KR ‘180 is concerned with different particle sizes in order to make a more efficient secondary electrode, it would have been obvious to one of ordinary skill in the art to conduct routine experimentation to determine the most effective ranges (see page 3 of translation), including optimizing values of D10, D50, and D90. Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claim 6, although KR ‘180 discloses that the linear carbon material has an average diameter of “less than 100 nm” (for the fine carbon fibers) and “100 nm or more” (for the fibrous carbon), KR ‘180 does not explicitly disclose that an average length would be less than about 250 µm (or 250 nm). However, one of ordinary skill in the art would have recognized that the aspect ratio of length to diameter of the linear carbon material (such as fine carbon fibers and fibrous carbon – see the first five paragraphs on page 3 of translation) would be subject to routine optimization with a reasonable expectation of success, since KR ‘180 is concerned with different particle sizes in order to make a more efficient secondary electrode (see page 3 of translation). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claims 7-9, KR ‘180 discloses and/or suggests the conductive material containing a linear carbon material and a point-like carbon material of independent claim 1, as well as disclosing and/or suggesting the claimed ranges of claims 5 and 6 above (average length, diameter, particle size etc.), but lacks explicit disclosure of ranges of BET-specific surface area of the conductive material, the linear carbon material, and the point-like carbon material. However, since KR ‘180 includes disclosure and/or suggestion of parameters of length, diameter, and particle size, one of ordinary skill in the art would have recognized that routine experimentation via calculations derived from these parameters would result in selectively choosing of optimal ranges of BET-specific surface areas given these parameters from the teachings of KR ‘180, in order to produce a more efficient secondary electrode (see page 3 of translation). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN P KERNS whose telephone number is (571)272-1178. The examiner can normally be reached Monday-Friday 8am-430pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571)272-3458. 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.
/KEVIN P KERNS/Primary Examiner, Art Unit 1735 January 14, 2026