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 .
Response to Amendment
This Office Action is in response to the amendment filed 5/14/26. Claim 1 is amended. The rejection of claim 1 over Spahr is withdrawn in light of the amendment; however, a new rejection is made over Matsuo, below.
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.
Claims 1, 2, and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Spahr et al. (US 2018/0155552) in view of Matsuo et al. (US 2022/0359876).
Regarding claim 1, Spahr teaches carbon black having a specific surface area of, for example, 209 m2/g and a ratio (OAN/cOAN) of 1.79 (Example CB3, Table 1).
The examiner takes note of the fact that the oil absorption of Spahr is tested using paraffin rather than dibutyl phthalate. The examiner finds that the oil used in the test does not change the structure of the carbon black, and therefore the structure in the reference is substantially identical to that of the claims and claimed properties (i.e. DBP and cDBP absorption) are presumed to be inherent. MPEP 2112.01 I
Further regarding claim 1, Spahr fails to teach specifically the claimed average primary particle size.
Matsuo teaches conductive carbon black for use in lithium ion batteries wherein the carbon black preferably has an average primary particle size of not greater than 30nm, and further teaches that the average primary particle diameter is result effective for controlling viscosity of the conductive material dispersion liquid as well as providing sufficient electric conductivity ([0027]).
It would have been obvious to the skilled artisan at the time of the invention to provide the carbon black of Spahr having average primary particle diameter such as within the claimed range in order to control the viscosity of the conductive material dispersion liquid as well as provide sufficient electric conductivity.
The examiner takes note of the fact that the prior art range of Matsuo completely encompasses the claimed range. Absent any additional and more specific information, a prima facie case of obviousness exists. MPEP 2144.05 I
Additionally, the examiner finds that the general conditions of the claim are disclosed in the prior art, and therefore it would have been obvious to the skilled artisan to discover workable ranges for the average primary particle diameter by routine experimentation in order to form a favorably low viscosity slurry as well as provide sufficient electric conductivity. MPEP 2144.05 II A
As for claim 2, Spahr teaches an OAN of 283 mL/100g (Example CB3, Table 1).
Regarding claim 5, Spahr teaches a slurry comprising the carbon black and a dispersion medium ([0058]).
As for claim 6, Spahr teaches the slurry of claim 1 including the slurry having a viscosity at a shear rate of 13 s-1 of below 2500 mPa∙s, and that it is favorable for the slurry to have a low viscosity ([0058]).
The examiner takes note of the fact that the prior art range completely encompasses the claimed range. Absent any additional and more specific information, a prima facie case of obviousness exists. MPEP 2144.05 I
Additionally, the examiner finds that the general conditions of the claim are disclosed in the prior art, and therefore it would have been obvious to the skilled artisan to discover workable ranges for the viscosity of the claimed conditions by routine experimentation in order to form a favorably low viscosity slurry. MPEP 2144.05 II A
With regard to claim 7, Spahr teaches the carbon black as an electrode in a lithium ion battery ([0021], [0133]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Spahr in view of Matsuo as applied to claim 1 above, and further in view of Nagai et al. (WO 2019/216275, published 11/14/2019, with US 2021/0119206 used as translation).
The teachings of Spahr as discussed above are incorporated herein.
Spahr in view of Matsuo teaches the carbon black of claim 1 but is silent on the ash content.
Nagai teaches that the ash content of carbon black is preferably small, specifically 0.04mass% or less, in order to suppress side reactions ([0028]).
It would have been obvious to the person having ordinary skill in the art at the time of the invention to form the carbon black of Spahr in view of Matsuo having an ash content of 0.04mass% or less as suggested by Nagai in order to suppress side reactions.
The examiner takes note of the fact that the prior art range completely encompasses the claimed range. Absent any additional and more specific information, a prima facie case of obviousness exists. MPEP 2144.05 I
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Spahr in view of Matsuo as applied to claim 1 above, and further in view of Honma et al. (US 2016/0190594).
The teachings of Spahr in view of Matsuo as discussed above are incorporated herein.
Spahr in view of Matsuo teaches the carbon black of claim 1 but is silent on the iron content.
Honma teaches that the iron content of carbon black is, for example, 0.1 ppm (i.e. 100 ppb), in order to have appropriate purification efficiency ([0052]).
It would have been obvious to the person having ordinary skill in the art at the time of the invention to form the carbon black of Spahr in view of Matsuo having an iron content of 100 ppb as suggested by Honma in order to have appropriate purification efficiency.
Response to Arguments
Applicant’s arguments, see Remarks, filed 5/14/26, with respect to the rejection(s) of newly amended claim(s) 1 under Spahr have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Matsuo, above.
As to the arguments on pages 4-6, the examiner notes that, in fact, Matsuo recognizes the effect of particle size on viscosity. As to the suggestion that an appropriate reference would need to anticipate both the claimed particle size and the claimed DBP/CDBP, Applicant is reminded that the person of ordinary skill in the art is not an automaton, etc., per MPEP 2141.03 I. Should Applicant have evidence to support the suggestion that the claimed DBP/CDBP ratio cannot be achieved with the claimed particle size, the examiner will consider it.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALIX ECHELMEYER EGGERDING whose telephone number is (571)272-1101. The examiner can normally be reached 8:30am - 4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached at 571-272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALIX E EGGERDING/Primary Examiner, Art Unit 1729
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