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 . If status of the application as subject to 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 a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-20 are pending in the application. Claims 16-20 are withdrawn. Claims 1-15 are presently examined.
Election/Restriction
Applicant’s election without traverse of Group I (claims 1-15), in the reply filed on 6/5/2026, is acknowledged. Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group.
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.
Claim 15 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor(s) regard as the invention. Claim 15 states “the multi-wall nanotubes”. There is insufficient antecedent basis for this limitation in this claim.
Claim Rejections - 35 USC § 102
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.
The claims are in bold font, the prior art is in parentheses.
Claims 1-3 & 9-10 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US20220123289A1 (Bae).
Bae teaches the following claim 1 limitations:
An electrode (paragraph 50; figures 1-2: anode 130), comprising: an active layer (paragraph 50; figures 1-2: anode active material layer 120) comprising:
a network of high aspect ratio carbon elements defining void spaces within the network (paragraphs 65-67: the anode active material includes a carbon-based active material, which can include carbon nanotubes);
a plurality of electrode active material particles (paragraphs 65-66 & 70: the anode active material includes a carbon-based active material, which can include carbon black) disposed in the void spaces within the network (paragraphs 71: anode materials are mixed together)
Claim 1 also requires the active layer to comprise:
a first binder material comprising a water soluble styrene butadiene rubber
Bae states that the anode can include a styrene-butadiene rubber (SBR) binder (paragraph 73); however, Bae fails to explicitly state that this is an aqueous / water soluble SBR. Bae’s anode active material and binder are mixed with water, in all of the examples, to form an anode slurry (paragraph 110). Bae’s SBR would not function with the water solvent unless Bae’s SBR was a water soluble SBR; therefore, Bae’s SBR must be a water soluble SBR.
With regard to claim 2, Bae teaches the limitations of claim 1 as discussed above. Bae also teaches the following limitation of claim 2:
the network of high aspect ratio carbon elements comprises multiwall carbon nanotubes (paragraph 111)
With regard to claim 3, Bae teaches the limitations of claims 1-2 as discussed above. Bae also teaches the following limitations of claim 3:
the multiwall carbon nanotubes have average diameters of 6 to 12 nanometers (paragraph 111: 8-17 nm) and average lengths of 1 to 20 micrometers (paragraph 111: 10-50 μm)
Bae’s 8-17 nm & 10-50 μm ranges overlap the claimed 6-12 nm & 1-20 μm ranges, respectively. MPEP 2144.05 (II)(A) provides the law for this issue:
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Given that Bae’s ranges are similar to and substantially overlaps the claimed ranges, and further given the fact that no criticality is disclosed for the claimed ranges, the ranges in claim 3 are obvious variants of Bae’s ranges.
With regard to claims 9-10, Bae teaches the limitations of claim 1 as discussed above. Bae also teaches the following limitations of claims 9-10:
Claim 9
the active layer comprises a second binder material that contains cellulose (paragraph 73)
Claim 10
the cellulose is carboxymethylcellulose (paragraph 73)
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
The claims are in bold font, the prior art is in parentheses.
Claims 1-3 & 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over US20220123289A1 (Bae).
Bae teaches the following claim 1 limitations:
An electrode (paragraph 50; figures 1-2: anode 130), comprising: an active layer (paragraph 50; figures 1-2: anode active material layer 120) comprising:
a network of high aspect ratio carbon elements defining void spaces within the network (paragraphs 65-67: the anode active material includes a carbon-based active material, which can include carbon nanotubes);
a plurality of electrode active material particles (paragraphs 65-66 & 70: the anode active material includes a carbon-based active material, which can include carbon black) disposed in the void spaces within the network (paragraphs 71: anode materials are mixed together)
Claim 1 also requires the active layer to comprise:
a first binder material comprising a water soluble styrene butadiene rubber
Bae states that the anode can include a SBR binder (paragraph 73); however, Bae fails to state that this is a water soluble SBR. All of Bae’s examples use water to form the anode slurry (paragraph 110). It would have been obvious to one of ordinary skill in the art, to use a water soluble SBR for Bae’s anode so that the SBR would be soluble in the water solvent of the slurry.
With regard to claim 2, modified Bae teaches the limitations of claim 1 as discussed above. Bae also teaches the following limitation of claim 2:
the network of high aspect ratio carbon elements comprises multiwall carbon nanotubes (paragraph 111)
With regard to claim 3, modified Bae teaches the limitations of claims 1-2 as discussed above. Bae also teaches the following limitations of claim 3:
the multiwall carbon nanotubes have average diameters of 6 to 12 nanometers (paragraph 111: 8-17 nm) and average lengths of 1 to 20 micrometers (paragraph 111: 10-50 μm)
Bae’s 8-17 nm & 10-50 μm ranges overlap the claimed 6-12 nm & 1-20 μm ranges, respectively. MPEP 2144.05 (II)(A) provides the law for this issue:
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Given that Bae’s ranges are similar to and substantially overlaps the claimed ranges, and further given the fact that no criticality is disclosed for the claimed ranges, the ranges in claim 3 are obvious variants of Bae’s ranges.
With regard to claims 9-10, modified Bae teaches the limitations of claim 1 as discussed above. Bae also teaches the following limitations of claims 9-10:
Claim 9
the active layer comprises a second binder material that contains cellulose (paragraph 73)
Claim 10
the cellulose is carboxymethylcellulose (paragraph 73)
Claims 4 & 15 are rejected under 35 U.S.C. 103 as being unpatentable over US20220123289A1 (Bae), as applied to claims 1-3, and further in view of US20110163274A1 (Plee).
With regard to claim 4, Bae fails to teach the following limitations, which are taught by Plee:
the multiwall carbon nanotubes are present in the active layer in an amount of 8 to 12 wt%, based on the total weight of the active layer (paragraphs 54 & 150: 10 wt% MWNT / multi-walled carbon nanotubes)
Plee is directed to a battery with high capacity retention, a low internal resistance, and high charge and discharge rates (paragraph 52). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Bae’s anode active material layer to include 10 wt% multi-wall carbon nanotubes, as taught by Plee, for a battery with high capacity retention, a low internal resistance, and high charge and discharge rates.
With regard to claim 15, Bae teaches the limitations of claim 1 as discussed above. Bae also teaches the following limitations of claim 15:
An energy storage device (paragraph 97; figure 1: electrode assembly 150) comprising: an electrolyte (paragraph 97: electrolyte) the electrode of claim 1 (see discussion under claim 1 above)
Bae, however, fails to teach the following claim 15 limitations:
the multi-wall nanotubes form a percolating network through the active layer
For present examination, Examiner presumes that “the multi-wall nanotubes” are multiwall carbon nanotubes. The present specification teaches that a percolating network is an electrically interconnected network (paragraphs 19 & 28). In order for the active layer to have an electrically interconnected network of multiwall carbon nanotubes, there must be a sufficiently-high percentage of multiwall carbon nanotubes. As discussed under claim 4 above, Plee teaches a wt% of multiwall carbon nanotubes that is within the claimed range; therefore, presumably an active material with this percent of multiwall carbon nanotubes will have a percolating network. This claim limitation is thus obvious over Bae in view of Plee for the reasons noted under claim 4.
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over US20220123289A1 (Bae), as applied to claim 1, and further in view of US20190280288A1 (Ensling). Bae fails to teach the following limitations of claims 5-8, which are taught by Ensling:
Claim 5
the electrode active material particles comprise activated carbon (paragraphs 9 & 16: negative electrode comprises a carbon-based storage material, which can be activated carbon fibers)
Claim 6
the activated carbon is selected from the group consisting of… activated carbon fibers (paragraphs 9 & 16: negative electrode comprises a carbon-based storage material, which can be activated carbon fibers)
Claim 7
the activated carbon is present in the active layer in an amount of 67 to 85 wt%, based on the total weight of the active layer (paragraph 24: 40-94.9% wt% of the negative electrode is the carbon-based storage material)
Claim 8
the activated carbon is present in the active layer in an amount of 70 to 80 wt%, based on the total weight of the active layer (paragraph 24: 40-94.9% wt% of the negative electrode is the carbon-based storage material)
Ensling is directed to a secondary electrochemical cell for electric charge storage (abstract), with activated carbon fibers with a high specific capacity and extraordinarily good conductivity (paragraph 18). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Bae’s carbon-based active material [claimed active material particles] to be activated carbon fibers, with 40-94.9% wt% in the negative electrode, as taught by Ensling, for electric charge storage, high specific capacity, and extraordinarily good conductivity.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over US20220123289A1 (Bae), as applied to claims 1 & 9-10, and further in view of US20140335409A1 (Wang). Bae fails to teach the following limitations, which are taught by Wang:
Claim 11
second binder is present in the active layer in an amount of 3 to 7 wt%, based on the weight of the active layer (paragraphs 9 & 40: 5 wt% CMC / carboxymethylcellulose)
Claim 12
the styrene butadiene rubber is present in the active layer in an amount of 7 to 13 wt%, based on the weight of the active layer (paragraphs 9 & 40: 5 wt% styrene butadiene rubber / SBR)
Claim 13
the styrene butadiene rubber is present in the active layer in an amount of 8 to 12 wt%, based on the weight of the active layer (paragraphs 9 & 40: 5 wt% styrene butadiene rubber / SBR)
Wang is directed to a battery with a water-soluble binder for reduced cost, improved manufacturing, and environment friendliness (paragraph 28). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Bae’s styrene-butadiene rubber binder to be 5 wt% of the active layer, and for Bae’s carboxymethylcellulose binders to be 5 wt% of the active layer, as taught by Wang, for a battery with a water-soluble binder for reduced cost, improved manufacturing, and environment friendliness.
Regarding claims 12-13, Wang discloses 5 wt% polymer whereas claim 12 requires 7-13 wt% and claim 13 requires 8-12 wt%. MPEP 2144.05 (I) provides the law for this issue:
“Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)… ‘The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.’”
Given that there is only a slight difference between Wang’s 5 wt% and the claimed 7-13 wt% and 8-12 wt%, and further given the fact that no criticality is disclosed for the claimed ranges, the claimed ranges are obvious variants of Wang’s value.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over US20220123289A1 (Bae), as applied to claim 1, and further in view of US20070275302A1 (Sotowa). Bae fails to teach the following limitation of claim 14, which is taught by Sotowa:
the styrene butadiene rubber is in the form a latex (paragraphs 49-50)
Sotowa is directed to a lithium battery with low electrode resistance, high electrode strength, excellent electrolytic solution permeability, high energy density, and good high-speed charging/discharging performance (abstract). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Bae’s styrene butadiene rubber to be latex, as taught by Sotowa, for low electrode resistance, high electrode strength, excellent electrolytic solution permeability, high energy density, and good high-speed charging/discharging performance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
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/R.G.W./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
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