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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 4/1/2026 is acknowledged.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 8 and 19-20 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Sheem et al. (US 6,395,427).
Regarding claim 1, Sheem et al. discloses in Figs 1-5, a negative-electrode active material (C3/L7-8) comprising: a carbon matrix (C3/L8-9, Figs 1-4); boron (C3/L61-63); and iron (C3/L21) distributed in an interior (C7/L45-52, Figs 3-4) of the carbon matrix (C3/L8-9, Figs 1-4).
Regarding claim 2, Sheem et al. discloses all of the claim limitations as set forth above and also discloses the boron is distributed in a surface layer (C8/L13-14) of the carbon matrix (C3/L8-9, Figs 1-4).
Regarding claim 3, Sheem et al. discloses all of the claim limitations as set forth above and also discloses the iron (C3/L21) is in a zero-valence atomic state (C3/L39).
Regarding claim 4, Sheem et al. discloses all of the claim limitations as set forth above and also discloses a weight of the iron is 0.1 %-5% of a weight of the carbon matrix (C5/L9-11); a weight of the boron is 0.01%-3% of the weight of the carbon matrix (C8/L3-6, 20g to 500g = 0.04)
Regarding claim 5, Sheem et al. discloses all of the claim limitations as set forth above and also discloses a weight amount of the iron is greater than (C3/L49-50, 0.01 – 20 wt%) or equal to a weight amount of the boron (C3/L61-62, 0.005 – 10 wt%).
Regarding claim 8, Sheem et al. discloses all of the claim limitations as set forth above and also discloses the carbon matrix includes artificial graphite (C5/L61-62).
Regarding claim 19, Sheem et al. discloses in Figs 1-5, a secondary battery (C3/L7-8) comprising a negative-electrode plate (C8/L12-14), wherein the negative-electrode plate (C8/L12-14) includes a negative-electrode active material (C3/L7-8) comprising: a carbon matrix (C3/L8-9, Figs 1-4); boron (C3/L61-63); and iron (C3/L21) distributed in an interior (C7/L45-52, Figs 3-4) of the carbon matrix (C3/L8-9, Figs 1-4).
Regarding claim 20, Sheem et al. discloses in Figs 1-5, an apparatus (Abstract, C1/L16-20, implicit in utilizing the battery of the invention) comprising the secondary battery (C3/L7-8) as set forth above.
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 non-obviousness.
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 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Sheem et al. (US 6,395,427) as applied to claim 1 above.
Regarding claim 6, Sheem et al. discloses all of the claim limitations as set forth above but does not explicitly disclose wherein an X-ray photoelectron spectroscopy (XPS) analysis of the negative-electrode active material shows a characteristic peak only in a binding energy range of 183.0eV-188.0eV – which is a structural indicator of the material mix of the negative active material. However, the material mix of the negative active material is not considered to confer patentability to the claims. Sheem et al. (see C3/L49 – C4/L15) teaches that it was known in the art at the time of the invention that varying Fe and B content relative to carbon in the negative active material will vary the capacity and cycle characteristics of a battery utilizing the aforementioned negative active material. Therefore the the capacity and cycle characteristics are variables that can be modified, among others, by varying the Fe and B content of said negative active material. For that reason, the Fe and B content, would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was filed. As such, without showing unexpected results, the Fe and B content cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was filed would have optimized, by routine experimentation, the Fe and B content in the negative active material of Sheem et al. to obtain the desired the capacity and cycle characteristics of a battery utilizing the aforementioned negative active material (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 7, Sheem et al. discloses all of the claim limitations as set forth above but does not explicitly disclose at a discharge rate of 0.33C, a delithiation platform voltage of the negative-electrode active material is 0.18V-0.22V – which is a structural indicator of the material mix of the negative active material. However, the material mix of the negative active material is not considered to confer patentability to the claims. Sheem et al. (see C3/L49 – C4/L15) teaches that it was known in the art at the time of the invention that varying Fe and B content relative to carbon in the negative active material will vary the capacity and cycle characteristics of a battery utilizing the aforementioned negative active material. Therefore the the capacity and cycle characteristics are variables that can be modified, among others, by varying the Fe and B content of said negative active material. For that reason, the Fe and B content, would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was filed. As such, without showing unexpected results, the Fe and B content cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was filed would have optimized, by routine experimentation, the Fe and B content in the negative active material of Sheem et al. to obtain the desired the capacity and cycle characteristics of a battery utilizing the aforementioned negative active material (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Takeuchi et al. (US 6,030,726) discloses in Figs 1-5, a lithium secondary battery (Abstract) including a negative electrode (ref 17) material comprising a carbon matrix with a boron material and an iron material therein (C7/L29-67).
Swoyer et al. (US 2006/0014078) discloses a secondary battery ([0115]) including a negative active material including iron and boron within a carbon matrix ([0119]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH J DOUYETTE whose telephone number is (571)270-1212. The examiner can normally be reached Monday - Friday 8A - 4P EST.
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/KENNETH J DOUYETTE/Primary Examiner, Art Unit 1725
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