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
In response to the amendment received on June 24, 2026:
Claims 1-10 are pending;
The claim objection set forth in the previous Office Action is withdrawn in light of the amendment;
The 101 rejections set forth in the previous Office Action stand in light of the amendment;
The 112 rejections set forth in the previous Office Action are withdrawn in light of the amendment;
The prior art rejections of record set forth in the previous Office Action stand.
Claim Interpretation
As to claims 1-9, while intended use recitations and other types of functional language cannot be entirely disregarded. However, in apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963).
Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). See also MPEP § 2114.
The manner of operating the device does not differentiate an apparatus claim from the prior art. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
In claims 1-9, the electrode “for a lithium-ion secondary battery” can be interpreted as intended use.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 5 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract mathematical evaluation without significantly more. The claim(s) recite(s)
A method of evaluating a negative electrode material for a lithium- ion secondary battery comprising, preparing a regression formula obtained by multiple regression analysis with a springback rate of graphite particles included in the negative electrode material for a lithium-ion secondary battery and a compressive load (kN/cm²) of the graphite particles as explanatory variables and a liquid absorption time of a negative electrode including the negative electrode material for a lithium-ion secondary battery as an objective variable; and obtaining, based on the regression formula, a calculated value of the liquid absorption time of the negative electrode including the negative electrode material for a lithium-ion secondary battery.
Statutory category:
This claim is nominally directed to a method (process) which is a recognized statutory class of invention. However, the invention appears to be directed to an abstract idea (mathematical concept) and this judicial exception is not integrated into a practical application because the claim appears drawn to an abstract mathematical concept.
Judicial Exception – abstract idea (mathematical concept/mental process):
Claim 5 appears to be framed as mainly preparing a regression formula and obtaining a calculated value based on the regression formula to “evaluate” a material and may be an abstract evaluation as claimed rather than a technical process. The only positive steps recited appears to be preparing a regression formula (performing a mathematical relationship on measured or provided data) and obtaining a calculated result based on the regression formula.
This is directed to preparing a regression formula and obtaining a calculated value to evaluate a material which can be performed as a mental process, with pencil and paper or on a generic computer. For example other than reciting preparing a regression formula and obtaining a calculated value from the formula nothing in the claim element precludes the step from practically being performed in the mind.
Accordingly, claim 5 is directed to an abstract idea (mathematical relationship - a regression formula).
No integration into a practical application:
The additional elements in the claim beyond the method of evaluating by preparing a regression formula and obtaining a calculated value from the formula do not integrate the abstract idea into a practical application. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The surrounding language provides a field of use which is insufficient to amount to a meaningful limitation on the abstract idea.
Abstract ideas include, inter alia, mathematical relationships. The claim does not recite any concrete physical testing steps and does not require any specific use of an evaluation result in making or operating the battery. There is no explicit limitation to physically prepare or test the negative electrode material, no explicit limitation(s) to measure the variables recited therein; no manufacture or control of the battery or electrode from the evaluation result(s). Rather, claim 5 appears to only recite steps of preparing a regression formula and obtaining a calculated result based on the regression formula, appearing to merely use an abstract idea as the focus of the invention.
Not “significantly more”:
Considering the elements of the claim individually and as an ordered combination, the claim does not recite an inventive concept to transform the abstract idea into patent-eligible subject matter.
The only substantive limitations are preparing a regression formula to evaluate a negative electrode material and obtaining a calculated value from based on the regression formula. There are no additional limitations that amount to significantly more than the judicial exception itself (mathematical concept or relationship). The additional element of preparing a regression formula and obtaining a calculated value amounts to no more than mere instructions to use the exception. Again, the claim appears to merely use an abstract idea as the focus of the invention.
The amendment further does not overcome the 101 rejection as the preparing step does not overcome the nature of the prior evaluating as it relates to an abstract idea. Nor does the obtaining step, based on the regression formula overcome the nature of the prior evaluating as it relates to an abstract idea as both clauses are still further held to only fall within the abstract idea.
The claim is still directed to a regression based evaluation method, presenting abstract data analysis. Claim 5 merely prepares a regression formula and obtains a calculated value which is essentially mathematical processing applied to material data. Even though the inputs come from a battery context, the claim does not itself recite a new battery structure, manufacturing step or test apparatus. Rather, it appears to simply be mathematical processing in the construct of an abstract idea.
As discussed above, the additional limitations to the battery context are just choice inputs and outputs, which do not amount to an inventive concept under § 101.
Therefore, Claim 5 is ineligible under 35 USC § 101.
Claim 6 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract mathematical evaluation without significantly more. The claim(s) recite(s)
Claim 6 recites a method of producing a negative electrode material for a lithium- ion secondary battery comprising producing a negative electrode material for a lithium- ion secondary battery based the calculated value of the liquid absorption time in the method of evaluating of a negative electrode material for a lithium-ion secondary battery according to claim 5.
Statutory category:
Claim 6 is directed to a process, which is a statutory category under 35 USC § 101.
Judicial Exception – claim 6 relies on the same abstract idea (mathematical concept/mental process) of claim 5:
Although directed to a method claim (method of producing a negative electrode active material), claim 6 also does not comply with 35 USC § 101 as it appears to rely on the same abstract idea of claim 5 and further only recites “producing … based on an evaluation result … according to claim 5”.
The judicial exception is not integrated into a practical application because the claim appears drawn to the same abstract mathematical evaluation of claim 5. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because claim 6 appears to be framed as mainly “producing … based on an evaluation result … according to claim 5” and may still be an abstract evaluation as claimed rather than a patent-eligible technical process.
There is no explicit limitation to physically prepare or test the negative electrode material, no explicit limitation(s) to measure the variables recited therein; no manufacture or control of the battery or electrode from the evaluation result(s). Rather, claim 6 appears to only recite “producing … based on an evaluation result … according to claim 5”, the invention of claim 6. Using the output of an abstract mathematical evaluation (of claim 5) to make a decision about a product in the method of claim 6, at such a generic level as currently expressed, is treated as a generic “post-solution activity”.
There is no meaningful integration of the abstract idea of claim 5 into the method of claim 6 with claim 6 reciting “producing … based on an evaluation result … according to claim 5”. The claim does not specify any concrete manufacturing steps or any specific structural limitations of the electrode that flow from the evaluation. The language “based on” in claim 6 can be satisfied by simply choosing between known materials using the evaluation result, which is a generic decision making step and an example of an extra-solution activity. The claim additionally does not recite additional elements that amount to more than the abstract evaluation. Merely reciting production of a product “based on” an abstract evaluation is not enough to supply an inventive concept.
Therefore, Claim 6 is ineligible under 35 USC § 101.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Spahr et al. (WO2010/089326A).
As to claim 1, Spahr discloses a negative electrode material for a lithium-ion secondary battery comprising graphite particles satisfying the following Formula (1):
[Springback rate x 7.6] + [Compressive load (kN/cm²)] ≥4.2
Notably, Spahr teaches on page 17 under “Spring-back”:
The spring-back is a source of information regarding the resilience of compacted graphite powders. A defined amount of powder is poured into a die. After inserting the punch and sealing the die, air is evacuated from the die. Compression force of 1.5 metric tons/cm2 is applied and the powder height is recorded. This height is recorded again after pressure has been released. Spring-back is the height difference in percent relative to the height under pressure.
In the various Examples, Spahr teaches of spring-back ranging from 7.2% (Example 4) to 15.7% (Example 3).
Therefore, spring back can be 0.072 (Example 4), 0.157 (Example 3) after compression of 1.5 metric tons/cm². 1 ton/cm2=9.8 kN/cm². Therefore, 1.5 ton/cm2=14.7 kN/cm².
Supplying the exemplary spring-back percentages of Spahr, such as 7.2% (0.072) and compressive force of Spahr, 14.7 kN/cm² to the formula of claim 1 follows:
[Springback rate x 7.6] + [Compressive load (kN/cm²)] ≥4.2
[0.072 x 7.6] + [14.7 kN/cm²] = 15.42 which is greater than the lower limit of 4.2 of claim 1.
Therefore, the negative electrode graphite particulate material of Spahr satisfies Formula (1) of claim 1 and anticipates claim 1.
As to claim 2, the compressive load of Spahr is 1.5 metric tons/cm² which converts to 14.7 kN/cm².
As to claim 9, Spahr discloses the material as a negative electrode material layer for a battery.
Claims 1, 2, 4 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Spahr et al. (U.S. Patent Application Publication No. 2012/0077035).
As to claim 1, Spahr discloses a negative electrode material for a lithium-ion secondary battery comprising graphite particles satisfying the following Formula (1):
[Springback rate x 7.6] + [Compressive load (kN/cm²)] ≥4.2
Notably, Spahr of determining elastic recovery by pressing the particles under a pressure of 1.5 ton/cm² (para. [0090]).
In the various Examples, Spahr teaches of spring-back ranging from 5.8% (Example 5) to 9.6% (Example 3).
Therefore, spring back can be 0.058 (Example 5), 0.096 (Example 3) after compression of 1.5 tons/cm². 1 ton/cm2=9.8 kN/cm². Therefore, 1.5 ton/cm2=14.7 kN/cm².
Supplying the exemplary spring-back percentages of Spahr, such as 5.8% (0.058) and compressive force of Spahr, 14.7 kN/cm² to the formula of claim 1 follows:
[Springback rate x 7.6] + [Compressive load (kN/cm²)] ≥4.2
[0.058 x 7.6] + [14.7 kN/cm²] = 15.14 which is greater than the lower limit of 4.2 of claim 1.
Therefore, the negative electrode graphite particulate material of Spahr satisfies Formula (1) of claim 1 and anticipates claim 1.
As to claim 2, the compressive load of Spahr is 1.5 metric tons/cm² which converts to 14.7 kN/cm².
As to claim 4, the graphite particles are platelet shape (Figs. 4-5, para. [0060]).
As to claim 9, Spahr discloses the material as a negative electrode material layer for a battery (paras. [0027]; [0041]; [0066]).
Claims 1-3 and 9-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gulas et al. (U.S. Patent Application Publication No. 2017/0200950).
As to claim 1, Gulas discloses a negative electrode material for a lithium-ion secondary battery comprising graphite particles satisfying the following Formula (1):
[Springback rate x 7.6] + [Compressive load (kN/cm²)] ≥4.2
Notably, Gulas of determining elastic recovery by pressing the particles under a pressure of 0.477 ton/cm² (para. [0046]).
Gulas further teaches that the spring back ration is about 15-75%, preferably about 20-60% or 25-50% (para. [0046]).
Therefore, spring back can be 0.15 to 0.75, 0.20 to 0.60 or 0.25 to 0.50 after compression of 0.477 tons/cm². 1 ton/cm2=9.8 kN/cm². Therefore, 0.477 ton/cm2=4.68 kN/cm².
Supplying the exemplary spring-back percentages of Gulas, such as 25-50% (0.25-0.50) and compressive force of Gulas, 4.68 kN/cm² to the formula of claim 1 follows:
[Springback rate x 7.6] + [Compressive load (kN/cm²)] ≥4.2
[0.25 x 7.6] + [4.68 kN/cm²] = 6.58 which is greater than the lower limit of 4.2 of claim 1.
[0.5 x 7.6] + [4.68 kN/cm²] = 8.48 which is greater than the lower limit of 4.2 of claim 1.
Therefore, the negative electrode graphite particulate material of Gulas satisfies Formula (1) of claim 1 and anticipates claim 1.
As to claim 2, the compressive load of Gulas is 0.477 metric tons/cm² which converts to 4.67 kN/cm².
As to claim 3, Gulas further teaches that the spring back ration is about 15-75%, preferably about 20-60% or 25-50% (para. [0046]). Therefore, spring back can be 0.15 to 0.75, 0.20 to 0.60 or 0.25 to 0.50, wherein not only does the range significantly overlap but the narrow range of 25-50% (0.25-0.50) anticipates the rate of claim 3.
As to claim 9, Gulas discloses the material as a negative electrode material layer for a battery (paras. [0019]).
As to claim 10, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). See MPEP section 2113.
The process of graphitizing coke is a product-by-process feature. The product of Gulas is graphite which satisfies the relationship of claims 1, 7 and 10.
As to claim 10, Gulas teaches of a lithium ion battery comprising an electrode according to claim 9, an opposing electrode and an electrolyte (paras. [0131]-[0139]).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Gulas et al. (U.S. Patent Application Publication No. 2017/0200950) as applied to claim 1 above, and further in view of Iijima et al. (JP 07282799A) or Sotowa et al. (U.S. Patent Application Publication No. 2011/0236767).
As to claim 7, Gulas teaches of a method for producing a negative electrode material for a lithium-ion secondary battery comprising
Producing the material for a lithium-ion secondary battery according to claim 1.
As to claims 7-8, Gulas does not teach of the method of graphitizing coke (claim 7), wherein the coke has a thermal expansion coefficient after firing at 1400oC of 2.30x10-6/oC or more (claim 8).
Iijima is drawn to the same field of endeavor, particular to lithium secondary batteries with graphite electrodes fabricated from graphitization of coke having high electrochemical performance characteristics. Iijima teaches that graphitized coke having a thermal expansion coefficient (CTE) after firing at high temperature of 3.50x10-6/oC or more. Iijima teaches that graphite having a CTE on the order of 3.50x10-6/oC or more provides for good initial discharge efficiency, increased capacity and improved cycling efficiency.
Sotowa is drawn to the same field of endeavor, particular to lithium secondary batteries with graphite electrodes fabricated from graphitization of coke having high electrochemical performance characteristics. Sotowa teaches that graphitized coke having a thermal expansion coefficient (CTE) after firing at high temperature (1100-1900oC) of 4.80x10-6/oC or more. Iijima teaches that graphite having a CTE on the order of 4.80x10-6/oC or more provides for increased capacity and improved cycling efficiency.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention Gulas by graphitizing coke to produce graphite with a CTE on the order of 3.50x10-6/oC or more as taught by Iijima and Sotowa since it would have provided for good initial discharge efficiency, increased capacity and improved cycling efficiency.
Response to Arguments
Applicant's arguments filed June 24, 2026 have been fully considered but they are not persuasive.
Applicant argues that the amendments to claims 5-6 are such that they overcome the 101 rejection set forth in the previous Office Action by now recites preparing and obtaining as steps of the method of claim 5 as practical result not merely directed to an abstract idea.
The Examiner respectfully disagrees.
As discussed above, the amendment to claim 5 still defines an evaluation method which appears to merely prepare a regression formula obtains by multiple regression analysis and obtain a calculated value based on the regression formula. The whole idea is a statistical or analytical concept used to evaluate a material which makes it a conceptual method.
Preparing the regression formula is still held to be abstract in nature as it does nothing further to what the claim previously recited (evaluating … using compared to preparing). It describes the acts of constructing a mathematical relationship for obtaining a result which is a conceptual analytical task rather than a concrete process. This language is usually assessed as formula-building or data-processing ideas. Additionally obtaining a calculated value based on the regression formula is also held to be an abstract idea step in an abstract method. The obtaining is not enough to overcome a 101 issue as the claim as a whole still reads like an abstract evaluation or data processing concept. Obtaining a calculated value is legally treated as “extra-solution activity. Even if the calculated result is useful, simply ending an evaluation claim based on a formula does not make the evaluation method a practical application. Arguing that the formula produces a practical result because it uses specific variables is not persuasive as picking a specific material just limits the abstract idea to a field of use which does not satisfy Step 2A, Prong Two of the Alice/Mayo framework. The core of the claim is still simply data in, data out mathematics which correlate to purely mathematical manipulation of date which is an unpatentable abstract idea. Reciting specific parameters as the inputs and outputs merely limits the formula to a particular field of use which does not transform the underlying abstract calculation into a patent-eligible practical application.
In summation the language remains directed to an abstract idea because it describes obtaining a regression-based value using a regression formula to reach an evaluation outcome without more.
As to the prior art rejections to the Spahr references and Gulas reference:
Applicant argues that neither the Spahr references nor Gulas disclose measuring either springback or compressive load according to the methods defined by the present disclosure and do not disclose compressing graphite to a certain density or evaluating the degree of density after pressure release from that specific density condition.
The arguments have been considered but are not persuasive for the following reasons.
As to claims 1-4 and 9-10, the claims are not drawn to a method and do not require the narrower interpretation that Applicant attempts to apply to the claims by attempting to limit the material of claims 1-4 and 9-10 by unduly importing disclosed method constraints into the claimed material.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that the negative electrode material and satisfying of the claimed formula is bound by specific method constraints) are not recited in the rejected claim(s). 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 disclosed process details in the specification matter mainly for support, enablement and how you understand the inventive properties but not automatically as claim restrictions. The disclosure may define the invention further but the claim scope is what is considered for prior art purposes and the current scope of the formula of claim 1 does not require the importing of disclosed methodology as argued by Applicant. Because applicant has the opportunity to amend the claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969).
The court explained that “reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim.” The court found that applicant was advocating the latter, i.e., the impermissible importation of subject matter from the specification into the claim.). See also In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). “Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim.
As to claim 1, each of the Spahr references as well as Gulas define negative electrode materials which fundamentally satisfy the claimed formula. The fact that methodologies are different is irrelevant to the currently claimed subject matter as the claims do not limit the negative electrode material to the extent that Applicant has alleged. According to claim 1 all that the material needs to satisfy is the following claimed relationship:
[Springback rate x 7.6] + [Compressive load (kN/cm²)] ≥4.2.
As discussed above, each of Spahr references and Gulas effectively teach of parameters therein (spring back rate and compressive loads as discussed above) that when supplying those parameters into the formula of claim 1, each of the Spahr references and Gulas have rates that are more than 4.2 as required by claim 1.
Therefore, since each Spahr reference and the Gulas satisfy the claimed formula, then anticipation of the claims are met as discussed above.
Conclusion
THIS ACTION IS MADE FINAL. 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 GREGG CANTELMO whose telephone number is (571)272-1283. The examiner can normally be reached Mon-Thurs 7am to 5pm.
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/GREGG CANTELMO/Primary Examiner, Art Unit 1725
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