DETAILED ACTION
Response to Amendment
Amendments, filed on June 8, 2023, have been entered in the above-identified application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Analysis
The present application contains one active independent claim(s) (claim 1) and twelve active dependent claims (claims 2 - 13).
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Specification
The substitute specification filed June 8, 2023 has been entered into the file record.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 8 and 11 – 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/835,006 (PGPUB 2025/0158071 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the above identified application likewise claims carbon nanotubes (CNTs) (see claim 6). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 2, the above identified App. meets the claimed BET range (claim 3).
Regarding claim 3, the Examiner takes Official Notice that single-walled CNTs are a known, obvious variant to CNTs (see art applied and cited below for support of the Examiner’s position of Official Notice).
Regarding claim 4, the above identified App. meets the claimed size limitations (claim 10).
Regarding claim 5, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the porosity through routine experimentation, especially given the knowledge in the art on corresponding porosity values (for support of this position, see art cited and applied below). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 6, the above identified App. meets the claimed material limitations (claim 8).
Regarding claim 7, the Examiner takes Official Notice that the claimed binders are conventional in the art (see art applied and cited below for support of the Examiner’s position of Official Notice).
Regarding claim 8, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the amounts of each component through routine experimentation, especially given the knowledge in the art on these composition values (for support of this position, see claims 11 – 14 and the art cited and applied below). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 11, the Examiner takes Official Notice that coatings on a current collector to the claimed thickness is conventional in the art (see art applied and cited below for support of the Examiner’s position of Official Notice).
Regarding claim 12, the above identified App. meets the claimed content amount limitations (claim 11).
Regarding claim 13, the above identified App. meets the claimed nominal apparatus/use limitations (claim 16).
Claims 1 – 8 and 11 – 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/705,434 (PGPUB 2025/0015343 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the above identified application likewise claims carbon nanotubes (CNTs) (see claims 4 and 5). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 2, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the BET surface area through routine experimentation, especially given the knowledge in the art on corresponding BET values (for support of this position, see art cited and applied below). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 3, the above identified App. meets the claimed CNT limitations (claim 5)
Regarding claim 4, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the diameter of the diameter and shape of the granules through routine experimentation, especially given the knowledge in the art on corresponding diameters for spherical granules (for support of this position, see art cited and applied below). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the porosity through routine experimentation, especially given the knowledge in the art on corresponding porosity values (for support of this position, see art cited and applied below). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 6, the above identified App. meets the claimed material limitations (claim 7).
Regarding claim 7, the above identified App. meets the claimed material limitations (claim 8).
Regarding claim 8, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the amounts of each component through routine experimentation, especially given the knowledge in the art on these composition values (for support of this position, see the art cited and applied below). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 11, the Examiner takes Official Notice that coatings on a current collector to the claimed thickness is conventional in the art (see art applied and cited below for support of the Examiner’s position of Official Notice).
Regarding claim 12, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the amount of the electrolyte through routine experimentation, especially given the knowledge in the art on these composition values (for support of this position, see the art cited and applied below). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 13, the above identified App. meets the claimed nominal apparatus/use limitations (claim 14).
Claim Objections
Claims 9 and 10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 – 8 and 11 -13 are rejected under 35 U.S.C. 103(a) as being unpatentable over IDS reference Iwasaki (U.S. Patent App. No. 2014/0057180 A1) in view of IDS reference Miki (U.S. Patent App. No. 2013/0295451 A1).
Regarding claim 1, Iwasaki discloses an electrode for an all-solid state battery (Title; Abstract) comprising granules coated with a sulfide-based solid electrolyte (Title; Abstract; Figures), wherein the granules comprise an active material (ibid and Paragraph 0043 – 0046), an electrically conductive material (Paragraph 0056), and a binder (Paragraph 0056).
Iwasaki fails to disclose wherein the electrically conductive (carbon) material in the granules are CNTs meeting the claimed limitations, but does disclose using CNTs meeting the claimed limitations for use in the coating layer (Paragraphs 0033 – 0036).
However, Miki teaches a similar electrode material for an all-solid state battery (Title; Abstract; Figures) wherein the granules comprise an active material, an electrically conductive agent, and a binder (ibid and Paragraph 0032), wherein the carbon black, etc. is explicitly taught as equivalent to carbon nanotubes for the conductive agent within the granule itself (Paragraph 0032).
Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, Iwasaki teaches adding conductive agents such as carbon fibers or carbon black into the granules and Miki explicitly teaches that these are functional equivalents to carbon nanotubes in the field of suitable conductive agents added to electrode granules for an all-solid state battery. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Iwasaki to include carbon nanotubes in both the coating and granule core layer as taught by Miki, as Miki teaches that using CNTs inside a granule is known in the art and is functionally equivalent to the other conductive agents taught by Iwasaki above.
Regarding claim 2, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the BET surface area of the CNTs through routine experimentation, especially given the knowledge in the art on corresponding BET values (for support of this position, see art cited and applied below). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 3, Iwasaki teaches the claimed CNTs (Paragraphs 0033 – 0036).
Regarding claim 4, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the diameter and shape of the granules through routine experimentation, especially given the knowledge in the art on corresponding diameters for spherical granules (see Iwasaki, Figures and Paragraph 0046 and, more pertinent, Miki, Figures and Paragraph 0025). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the porosity through routine experimentation, especially given the knowledge in the art on corresponding porosity values (for support of this position, see art cited and applied below). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 6, Iwasaki discloses the claimed active materials (Paragraphs 0043 – 0046).
Regarding claim 7, Iwasaki discloses the claimed binders as routine and obvious (Paragraph 0056).
Regarding claim 8, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the amounts of each component through routine experimentation, especially given the knowledge in the art on these composition values (see Iwasaki, Paragraphs 0047 and 0064 and Miki, Paragraphs 0026 - 0032). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 11, Iwasaki discloses the claimed current collector and coating thickness range (at least Paragraphs 0064 and 0070).
Regarding claim 12, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the amount of the electrolyte through routine experimentation, especially given the knowledge in the art on these composition values (see Iwasaki, at least Paragraphs 0055, 0068 and 0069). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 13, Iwasaki discloses the claimed nominal apparatus/use limitations (see citations above).
Claim 2 is rejected under 35 U.S.C. 103(a) as being unpatentable over Iwasaki in view of Miki as applied above, and further in view of one or more of Okuno et al. (U.S. Patent App. No. 2015/0287547 A1), Park et al. (U.S. Patent App. No. 2018/0090770 A1), and/or Nomura et al. (U.S. Patent App. No. 2024/0097147 A1).
Iwasaki and Miki are relied upon as described above.
While the Examiner maintains that BET surface areas of the CNTs would have been obvious for a person of ordinary skill as set forth above, the Examiner acknowledges that neither Iwasaki nor Miki explicitly disclose ranges for BET surface areas of CNTs.
However, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the BET surface area through routine experimentation, especially given the knowledge in the art on corresponding BET values (Okuno et al., Title; Abstract; and entire disclosure; Park et al., Paragraphs 0050 – 0052; Nomura et al., Title; Abstract; and at least Paragraphs 0022 - 0027). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 5 is rejected under 35 U.S.C. 103(a) as being unpatentable over Iwasaki in view of Miki as applied above, and further in view of Hellring et al. (U.S. Patent App. No. 2023/0361308 A1).
Iwasaki and Miki are relied upon as described above.
While the Examiner maintains that the porosity of the granules/electrode layer formed from said granules would have been obvious for a person of ordinary skill as set forth above, the Examiner acknowledges that neither Iwasaki nor Miki explicitly disclose ranges suitable porosity values meeting the claimed limitations.
However, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the porosity of the granules meeting the claimed limitations through routine experimentation, especially given the knowledge in the art on corresponding porosity values that are suitable for similar electrode material layers (Hellring et al., at least Paragraph 0170). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: claims 9 and 10 require, in addition to the limitations set forth in claim 1, the concentration of the electrically conductive material (CNTs per claim 1) increases as recited in claim 9. The prior art of record fails to provide sufficient teaching or guidance to teach or render obvious the requirements of claim 9, and based on dependency, also claim 10.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. BET surface areas of CNTs can vary widely, but high BET surface area CNTs are taught with encompassing/overlapping BET surface areas in at least Okuno et al. (U.S. Patent App. No. 2015/0287547 A1), Park et al. (U.S. Patent App. No. 2018/0090770 A1), and/or Nomura et al. (U.S. Patent App. No. 2024/0097147 A1). Porosity values are recognized as an important (cause-effective) variable for electrode layers and while exact ranges in porosity are not widely reported, at least Hellring et al. (U.S. Patent App. No. 2023/0361308 A1) disclose a similar (encompassed) porosity value as a known, desired magnitude. Lower ranges of BET surface area are taught by Kim et al. (U.S. Patent App. No. 2018/0198129 A1) (Paragraph 0048: 180 – 300 m2/g); Kang et al. (U.S. Patent App. No. 2018/0175439 A1) (Paragraph 0040: 30 – 120 m2/g, and aspect ratios of 5 – 50,000 in Paragraph 0032); Hellring et al. (U.S. Patent App. No. 2023/0361308 A1) (Paragraph 0022: 10 – 2000 m2/g); and Schweiss (U.S. Patent App. No. 2017/0222241 A1 (Paragraph 0049: various forms of conductive carbon with BET surface areas ranging from 30 – 260 m2/g).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
February 6, 2026