DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
2. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
3. Claims 2, 3, 4, and 6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
4. Claim 2 recites the limitation " the DBP absorption " in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as " a DBP absorption ".
5. Claim 3 recites the limitation " the ash content " in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as " an ash content ".
6. Claim 4 recites the limitation " the iron content " in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as " an iron content ".
7. Claim 6 recites the limitation " the viscosity " in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office Action, the limitation has been interpreted as " a viscosity ".
Claim Rejections - 35 USC § 102
8. 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.
9. 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.
10. Claim(s) 1-3, 5, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hardman (WO 2019/046320) as cited in IDS dated 10/19/23.
Regarding claim 1, Hardman discloses carbon black having a specific surface area of 150 m2/g or more and 400 m2/g or less([00022], [00052] because Hardman teaches equal to values within the claimed range those specific values anticipate the claimed range), and a ratio (S2/S1) of a peak area (S2) of a peak at m/z 128 to a peak area (S1) of a peak at m/z 57 detected through thermal desorption spectroscopy of 0 (S2/S1 = 0 when polycyclic aromatic hydrocarbons (PAHs) is equal to 0 ppm [00031]) which is a specific value within the claim range of less than 2.00, thus anticipating on the limitation.
Regarding claim 2, Hardman discloses a DBP absorption is 200 mL/100 g or more and 300 mL/100 g or less([00054]) which is within the claim range of 200 mL/100 g or more and 350 mL/100 g or less, thus reading on the limitation.
Regarding claim 3, Hardman discloses an ash content is less than about 0.02% (claim 29) which is within the claim range of 0.02 mass % or less, thus reading on the limitation.
Regarding claim 5, Hardman discloses a slurry comprising the carbon black according to claim 1 and a dispersion medium (NMP or water [00074]).
Regarding claim 7, Hardman discloses a lithium ion secondary battery(claims 36 and 37), comprising a positive electrode, a negative electrode and a separator([00071]-[00072], [00082]), wherein at least one of the positive electrode and the negative electrode contains the carbon black according to claim 1([00068]-[00069], [00071]-[00072]).
Claim Rejections - 35 USC § 103
11. 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.
12. 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.
13. Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hardman (WO 2019/046320) as cited in IDS dated 10/19/23 as applied to claim 1 above.
Regarding claim 4, Hardman discloses an iron content is less than 5 ppm ([00030]) which overlaps the claim range of less than 2,000 ppb by mass, thus reading on the limitation.
Hardman is explicitly silent to the claim range however “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
14. Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hardman (WO 2019/046320) as cited in IDS dated 10/19/23 as applied to claims 1 and 5 above, and further in view of Spahr et al. (CA 2990338).
Regarding claim 6, Hardman discloses in a wet method of deposition, the binder may be dissolved into a wet solvent (e.g., NMP or water) and then carbon particles may be dispersed into the NMP/binder solution ([00074]) but does not explicitly disclose a 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.
Spahr teaches high conductive carbon black with low viscosity (title). Spahr teaches the material may be characterized by a BET SSA of between 80 and about 400 m2/g([0010]). Spahr teaches carbon black, polyvinylidene difluoride and lithium nickel manganese cobalt oxide powder were dispersed in N-methyl-2-prrolidone (NMP) ([0071]). Spahr teaches NMP was added to adjust viscosity of the paste for effective kneading and subsequently added again to dilute the paste to a slurry ([0071]).
It would have been obvious to one of ordinary skill in the art to provide the slurry of Hardman with a 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 in order to balance slurry dilution and low viscosity as taught by Spahr, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP §2144.05 (II-A).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA HOM LYNCH whose telephone number is (571)272-0489. The examiner can normally be reached 7:30 AM - 4:30 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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/VICTORIA H LYNCH/Primary Examiner, Art Unit 1724