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 .
Remarks
Claims 1-7 are as previously presented. Claims 1-7 are currently examined.
Status of Objections and Rejections
The rejection as set forth within the previous office action has been maintained. Additional rejection has been added as necessitated by applicants IDS.
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 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 are rejected under 35 U.S.C. 103 as being unpatentable over Nagai (US 2019/0177551).
As to claim 1, Nagai discloses carbon black ([0014], discussed throughout) having a specific surface area of 150 m2/g or more and 400 m2/g or less ([0014], discussed throughout), and a ratio (Lc/SSA) of a crystallite size (Lc (Å)) to a specific surface area (SSA (m2/g)) of 0.15 or less ([0014], discussed throughout).
While Nagai is explicitly silent to the claimed ranges, Nagai overlaps each range; in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 2, Nagai discloses wherein, the DBP absorption is 200 mL/100 g or more and 350 mL/100 g or less ([0014], discussed throughout).
As to claims 3 and 4, Nagai does not specifically state wherein, wherein the ash content is 0.02 mass % or less (claim 3) or wherein the iron content is less than 2,000 ppb by mass (claim 4). However, it would have been obvious to one of ordinary skill within the art at the time of the effective filling date of the invention to purify and old product i.e. carbon black (see MPEP 2144.04 VII).
As to claim 5, Nagai discloses a slurry comprising the carbon black of claim 1 and a dispersion medium ([0046]-[0048], [0066], discussed throughout).
As to claim 6, Nagai does not specifically state wherein, the viscosity at a shear rate of 10 s−1 at 25° C. is 200 mPa·s or more and 1,200 mPa·s or less. However, given that Nagai discloses the same carbon black as the instant claimed invention (see above) and N- methylpyrrolidone ([0046]) as the dispersion medium which is the same as the instant claimed invention ([0049], instant specification). Therefore the same materials would in the same location would yield the same results (see MPEP 2112).
As to claim 7, Nagai discloses a lithium ion secondary battery (figure 1, [0003], [0004], [0044] and discussed throughout), including a positive electrode (figure 1 #1, [0050], discussed throughout), a negative electrode (figure 1 #2, [0050], discussed throughout) and a separator (figure 1 #3, [0050], discussed throughout), wherein at least one of the positive electrode and the negative electrode contains the carbon black according to claim 1 ([0046], [0062] and discussed throughout).
Claim 6 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Nagai as applied to claim 5 above, and further in view of Eguchi (KR 10-2019-0080698 see attached translation).
As to claim 6, should it be considered that Nagai is silent to wherein, the viscosity at a shear rate of 10 s−1 at 25° C. is 200 mPa·s or more and 1,200 mPa·s or less. Eguchi discloses an electrode (page 6) wherein viscosity and shear rate are result effective variables if the viscosity and shear rate are too low it is difficult to apply the mixture to the current collector and if the viscosity and shear rate and to high then the slurry is too hard to mix (page 6). Thus, it would have been obvious to one of ordinary skill within the art at the time of the effective filling date of the invention to optimize the viscosity and shear rate as result effective variables (see MPEP 2144.05 II).
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Tokano (JP 2012-38724 as cited within the IDS using US 2013/0130113 as equivalent translation).
As to claim 1, Tokano discloses carbon black ([0031], discussed throughout) having a specific surface area of 150 m2/g or more and 400 m2/g or less ([0038], discussed throughout), and a ratio (Lc/SSA) of a crystallite size (Lc (Å)) to a specific surface area (SSA (m2/g)) of 0.15 or less ([0055] and [0038], discussed throughout).
While Tokano is explicitly silent to the claimed ranges, Tokano overlaps each range; in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 2, Tokano discloses wherein, the DBP absorption is 200 mL/100 g or more and 350 mL/100 g or less ([0263]-[0264], discussed throughout) in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claims 3 and 4, Tokano does not specifically state wherein, wherein the ash content is 0.02 mass % or less (claim 3) or wherein the iron content is less than 2,000 ppb by mass (claim 4). However, it would have been obvious to one of ordinary skill within the art at the time of the effective filling date of the invention to purify and old product i.e. carbon black (see MPEP 2144.04 VII).
As to claim 5, Tokano discloses a slurry comprising the carbon black of claim 1 and a dispersion medium ([0295], [0215], discussed throughout).
As to claim 6, Tokano does not specifically state wherein, the viscosity at a shear rate of 10 s−1 at 25° C. is 200 mPa·s or more and 1,200 mPa·s or less. However, Tokano discloses the wherein viscosity and shear rate are result effective variables if the viscosity and shear rate are too low there is a possibility that a powder configured of secondary particles formed by aggregation of primary particles might be difficult to obtain and if the viscosity and shear rate and to high there is a possibility that the feed pump might go wrong or the nozzle might clog ([0235]). Thus, it would have been obvious to one of ordinary skill within the art at the time of the effective filling date of the invention to optimize the viscosity and shear rate as result effective variables (see MPEP 2144.05 II).
As to claim 7, Tokano discloses a lithium ion secondary battery ([0031] and discussed throughout), including a positive electrode ([0031], discussed throughout), a negative electrode ([0042], discussed throughout) and a separator ([0355], discussed throughout), wherein at least one of the positive electrode and the negative electrode contains the carbon black according to claim 1 ([0031], discussed throughout).
Response to Arguments
Applicant's arguments filed 3/17/2026 have been fully considered but they are not persuasive.
The applicant argument is directed toward Nagai (US 2019/0177551). The applicant argues that Nagai discloses La and not Lc and thus does not read on the instant claimed invention. The applicant then points to attached NPL which shows and Lc and an La crystal size at the same time and states the Lc and La are different.
The examiner respectfully disagrees. This is because L is used to denote the crystal size. La refers to the average crystal size of coherent scattering domains perpendicular to the crystal a-axis while Lc refers to average crystal size of coherent scattering domains perpendicular to the crystal c-axis. Thus the examiner understands that the applicant can be their own lexicographer, but the examiner reads the claim in regards to the broadest reasonable interpretation. Thus, Lc and La are relative and without the applicant claiming an orientation they axis can be considered interchangeable. This would be equivalent if the applicant claimed a width of a crystal and the examiner used the height of the crystal in the prior art. As the applicant has only claimed one dimension not relative to anything else the height and width could be interchangeable as could La and Lc. Thus the examiner maintains the rejection.
An additional rejection has also been added as necessitated by the applicants IDS.
Conclusion
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 1/29/2026 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN R OHARA whose telephone number is (571)272-0728. The examiner can normally be reached 7:30 AM-3:30 PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached at 571-270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN R OHARA/Examiner, Art Unit 1724
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