DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 14 and 15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. A review of the specification does not describe or articulate the negative electrode is a “dry electrode” or the battery is an “all-solid battery.” A review of the specification states a battery with a nonaqueous organic electrolyte, paragraphs [0099-0112], [0115], and [0123].
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.
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 1-7 and 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over Takahata et al. (US 2015/0030931) in view of Schott et al. (J. Electrochem. Soc. 164 A190, 2017).
Regarding claims 1-3, Takahata teaches a non-aqueous electrolyte secondary battery and negative electrode 50 comprising:
negative electrode current collector 52;
negative electrode active material layer 54 (abstract).
The negative electrode active material layer includes graphite material (a carbon negative active material, para 0058) and a conductive agent (para 0070). The conductive agent includes conductive material with a granular (particle) shape and/or with a fibrous shape (para 0071). The fibrous conductive agent has an average length of 10-20 µm (para 0175).
Moreover, negative electrode active material 55 is magnetic aligned (para 0022). The degree of orientation of the particles is measured as a ratio between x-ray diffraction intensities of plane (110) representing a non-planar angle according to the alleged invention with respect to graphitic planes (002) and (004), respectively, representing “all angles” according to the alleged invention. Results of measurements are summarized in Table I (also see para 0210-0213) for the ratio of (110/004) and Figure 10 for the ratio (110)/(002), the values of samples 1-3, 5, and 7 in Table 1 ranging from 0.3 to 0.91. Taking into consideration that the degree of divergence (DD) defined by equation 1 is (Ia/Itotal)*100, the values of Table 1 can be recalculated, thus resulting in DD ranging from 0.3/(1+0.3)*100 = 23 to 0.91/(1+0.91)*100 = 48, and 0.8/(1+0.8) = 44 for specific example 7.
The source of x-ray has not been explicitly been specified in Takahata, but does not have any effect on the above results intensities at defined crystal planes are measured in Takahata and not at predefined angles. Furthermore, it is noted that CuKα is virtually always used for XRD analysis in the art of carbon-based negative electrodes.
Takahata does not teach the negative active material includes a carbon negative active material and a Si-C composite negative active material.
Schott, directed to Li-ion batteries, teaches Si/C composites as performance-enhancing additives to graphite electrodes.
It would have been obvious to one of ordinary skill in the art before the effective filing date to further comprise Si/C composites because the composite electrodes with Si/C as additive to graphite allowed better specific charge retention than the electrodes made of simple mixture of silicon nanoparticles with graphite and carbon black (conclusion). With its high theoretical specific charge, silicon is a promising candidate as electrode additive to enhance specific charge of graphite electrodes for high-energy-density Li-ion batteries (abstract).
Regarding claim 4, Takahata teaches carbon nanotubes made by Showa Denko K.K., VGCF (para 0175). Evidentiary reference to Kim et al. (16th International Conference on Composite Materials 2007) teaches the surface area is 13 m2/g (p. 1, upper right col.).
Regarding claim 5, Takahata teaches an average fiber diameter of 0.15 µm and a length of 10-20 µm, which results in an aspect ratio of 67-133.
Regarding claim 6, Takahata teaches multilayer carbon nanotubes (multi-walled) (para 0175).
Regarding claim 7, Takahata discloses a surface loading of 9 mg/cm2 (para 0192).
Regarding claim 9, Takahata discloses measuring plane (110), (004), and (002), interpreted as peak intensities with peak integral area values.
Regarding claims 10 and 11, the ratio I(004)/I(002) may be approximated from the data in Table 1 I(110)/I(004) = 0.3 to 0.91 and Figure 10 I(110)/I(002) = 0.05 to 0.095 and results in a range I(004)/I(002) from around 0.05/0.91 = 0.05 to around 0.095/0.91 = 0.10.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the recited intensity ratio because a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Furthermore, "[ A ] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP 2144.05.
Regarding claim 12, Takahata teaches the graphite material may be artificial graphite (para 0058).
Regarding claim 13, Takahata teaches negative electrode active material layer 54 facing positive electrode 30 and “inactive region” not facing the positive electrode (Fig. 4), with inactive region having a DD value of 44 (see claim 1).
Regarding claim 14, instant claim 1 is directed to a negative electrode “for a battery”. The preamble reciting “for a battery” does not limit further limit the structure of the negative electrode. See MPEP 2111.02.
Regarding claim 15, Takahata teaches the negative electrode with active material applied to both sides and dried (para 0180), hence a dry electrode.
Regarding claim 16, Takahata further teaches positive electrode 30 and a non-aqueous electrolyte (abstract).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 12,080,874. Although the claims at issue are not identical, they are not patentably distinct from each other because conflicting claim 1 recites a current collector, a negative active material layer thereon including a carbon negative active material and at least one of a Si negative active material wherein the Si negative active material may be Si-C (conflicting claim 3), a fiber-shaped conductive agent, and the recited degree of divergence. With respect to claim 13, it would have been obvious to place the negative electrode for a battery in a battery including a cathode and electrolyte.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and with an approved terminal disclaimer for U.S. Patent No. 12,080,874.
Conclusion
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/CARLOS BARCENA/Primary Examiner, Art Unit 1723