DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 21, 2026 has been entered.
Response to Amendment
The amendment filed May 26, 2026 has been entered and fully considered.
Claims 1-20 are pending with claims 1, 17 and 18 amended.
The amendment appears supported by the specification as originally filed.
Information Disclosure Statement
The information disclosure statement filed 7/30/2026 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but all the information referred to therein has not been considered, specifically the referenced OFFICE ACTION for Japanese Application No. 2023-520525 as no translation has been provided.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-17 of copending Application No. 17/583422 (US 202280238853) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed method is anticipated entirely by the claimed method of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-9, 11-15, 17-20 are rejected under 35 U.S.C. 102(a1) as anticipated by JANG et al. (US 2017/0040647 A1).
Regarding claims 1 and 17, JANG et al. discloses a method for fabricating an electrode for an energy storage device (abstract), the method comprising heating a mixture of solvent and materials for use as energy storage media, adding active material and dispersant ([0055]) to the mixture to make a slurry and subsequently coating a current collector with the slurry ([0043] – [0059]). JANG et al. further teaches compression of the coated slurry ([0066]) which meets the present limitations for the calendaring step. Regarding the “free from binder” limitation, JANG et al. clearly teaches the optional use of a binder in paragraph [0066] wherein a binder is used “if necessary” [0066]. Regarding the newly added property limitations of volume expansion of at least one cell is less than about 10% when energy storage device goes from a state of charge of 0% to a state of charge of 100%, it is noted the method of JANG et al. fully anticipates the method of the instant application. JANG et al. does not appear to measure the volume expansion of at least one cell during cycling however charge/discharge capacity is clearly important ([0113]-[0117]) and performance of the lithium secondary battery taught therein is improved as a whole. It is the position of the office that the claimed measured properties are necessarily present given the claimed method and claimed composition is the same as the prior art and there is no evidence to suggest otherwise. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”. See MPEP 2112.01 I.
Regarding claims 2-5, JANG et al. further teaches high aspect ratio carbon elements ([0027] - [0031]) with an aspect ratio of 1 to 1,000 with preferably ranges given and a surface treatment thereof (para [0053]-[0054)). The high aspect ratio carbon elements meet the instant limitations for nanocarbons.
Regarding claims 6, 7 and 9, surface treatment of the fibrous carbon materials is taught wherein the surface treatment comprises addition of materials to promote adhesion of the active material to the nanocarbons ([0053], [0054]).
Regarding claim 8, JANG et al. further discloses the contents of the nanofilm coating ([0025]-[0026]) which meets the instant limitations for a polymeric layer on the nanocarbon.
Regarding claim 11, the nanofilm coated active material of JANG et al. is specifically selected from any one or a mixture of two or more selected from the group consisting of LiCoO2, LiNiO2, LiMnO2, LiMn2O4, Li[NiaCobMnc]O2 (0<a, b, c≦1, and a+b+c=1), and LiFePO.sub.4.([0041], [0111])
Regarding claims 14 and 15, JANG et al. teach the inclusion of binders including polyacrylic acid and polyvinylpyrrolidone ([0069], [0071]).
Regarding claims 18-20, JANG et al. summarizes the properties of the inventive energy storage devices including the energy capacity retention thereof being at least 90% which is within the claimed range (TABLE 1 & TABLE 2; [0113]-[0123]). Moreover given the JANG et al clearly anticipates the claimed energy storge material, it is the position of the office that the properties of the prior art device would be inherently the same given there is no evidence of record to suggest otherwise (MPEP 2112.01 I).
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over JANG et al. (2017/0040647) in view of BRAMBILLA (WO 2021007183 A1).
JANG et al does not specially teach the size of the active material when in particulate form ([0111]) however BRAMBILLA teaches electrodes for energy storage devices wherein the electrodes contain active material particles having a median particle size in the range of 0.1 um and 50 micrometers and the active layer the particles are contained therein having a mass loading of at least 20 mg/cm2 (page 13, lines 4-12).
Therefore it would have been obvious to one of ordinary skill in the art before the effective date of the application to incorporate the particulate active material of JANG et al. in the size specifications described by BRAMBILLA et al. with the expectation of obtaining high mechanical stability and high mass loading.
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.
Claims 10 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over JANG et al. (2017/0040647) in view of TAKEUCHI et al. (US 5,543,249).
Regarding claims 10 and 16, JANG et al. does not teach a pyrolized form of the polymeric layer disposed on the nanocarbon taught therein. However TAKEUCHI discloses a method for preparing an electrode component comprising mixing a high surface area carbonaceous cathode active material with a water/surfactant mixture and adding a binder material. A a sintered form of the polymeric layer (col 3, lines 53-60; col 5, lines 26-36) is taught; but does not specifically disclose that the form is pyrolized. However, the high temperature heating (565 to 615 degrees Fahrenheit, would necessarily pyrolize the coated material. Therefore it would have been obvious before the effective filing date of the invention to heat the material of JANG et al. to use the high temperature of TAKEUCHI in order to optimize the removal of water and surfactant from the active material (col 3, lines 53-67).
Response to Arguments
Applicant's arguments filed May 26, 2026 have been fully considered but they are not persuasive regarding the rejection under 35 USC 102 over JANG et al.
Applicant’s arguments rely on the premise that the added property limitations of the instant application is not taught by JANG et al. Additionally it is noted that there are no claimed limitations to cycling, wherein according to the specification as originally filed at paragraphs, the volume expansion is measured. The claimed method steps are specific to the method of making the electrode. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The rejection of claims 14 and 15 under USC 112b is withdrawn in light of Applicant’s arguments.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BARBARA GILLIAM whose telephone number is (571)272-1330. The examiner can normally be reached Monday-Thursday 7:00 AM - 4:00 PM& 2nd Friday 7:00 AM - 3:00 PM.
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BARBARA L GILLIAM
Supervisory Patent Examiner
Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727
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