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 .
Claim Rejections - 35 USC § 112
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.
Claims 1 and 8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: the excitation wavelength at which the Raman spectrum was taken at, it is known in the art that changing the excitation wavelength greatly affects the graphical output and therefore the G/D ratio.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morita et al. (US 20220376262 A1) in view of Yushin et al. (US 20200083542 A1).
Regarding claim 1, Morita teaches a Carbon nanotube dispersion liquid for an electrode slurry (0001) alongside a dispersant and a solvent (0043, the solvent can be called a dispersion medium, 0071, the dispersant can be carboxymethyl cellulose). Morita further teaches that the average diameter of the carbon nanotubes are between 3 and 25 nanometers with a standard deviation of 1 to 5 nanometers (0047, 0048). What this means is that that if the average diameter is 3-25 nm and the standard deviation is 1-5 nm then the range of values is 0-30 nm which has significant overlap with the instant application. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. It should further be noted that in table 1-continued the TUBALL SWCNT 93% has an outer diameter of 1.2-2 nm which also overlaps with the instant application.
Morita is silent in respect to a G/D ratio of between 50 and 200 in a Raman spectrum. It should be noted, however, that the G/D ratio of the same material can significantly change depending on the excitation wavelength used which is not disclosed in the instant application.
Yushin teaches that a Raman spectrum of carbon nanotubes in a slurry (0079) with a diameter of between 0.3 nm and 5 micrometers (0071) can result in a G band and a D band where the G band is significantly higher than the D band (fig. 6, 0095). The peak intensity of the bands is at 1580 cm-1- for the G band and 1360 cm-1 for the D band. While the G band is a point within the range described in the instant application and therefore rendered obvious, the D band is merely close, but similarly to overlapping ranges, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, see MPEP 2144.05, it is also clear by the use of the word typically that Yushin knows and expects there to be a range of valid values and the resulting material is expected to behave the same regardless of slight differences in the wavenumber peak (0093). While the exact data numbers are not given, by looking at the graph of fig. 6 it is apparent that carbon nanotubes can form a G/D value that is well within the range of 50 to 200 described by the instant application.
Regarding the volume-based particle size distribution, While the prior art does not explicitly teach carbon nanotubes having 3-5 peaks with a center peak being the highest, these properties are considered inherent in the prior art barring any differences shown by objective evidence between carbon nanotubes disclosed in the prior art and the applicant. As carbon nanotubes taught by the prior art and the applicant are identical within the scope of claim 1, Morita in view of Yushin inherently teaches that the carbon nanotubes of the same size range will have the same properties and same data resulting from them. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) MPEP 2112.01. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02.
It would have been obvious for a person having ordinary skill in the art at the time the invention was effectively filed to take the carbon nanotubes and the resulting Raman spectrum of Yushin and be able to apply that Raman spectrum to the carbon nanotube dispersion liquid of Morita as the Raman spectrum is inherent to the carbon nanotubes themselves and can vary based off of the excitation wavelength used. Further, as the size distribution has been established to be inherent to the carbon nanotubes, it would be obvious to form the distribution as claimed by the instant application.
Regarding claim 2, Morita in view of Yushin teaches the carbon nanotube dispersion liquid of claim 1 and further teaches the dispersion liquid is .5 to 3 parts by mass where 100 parts by mass is the total carbon nanotube dispersion liquid (Morita, 0031). In this case the parts by mass can be directly converted into percentages and overlaps with the limitation’s range of .1 to 1.5%. 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.
Regarding claim 3, Morita in view of Yushin teaches the carbon nanotube dispersion liquid of claim 1 and further teaches that the dispersant can be 20 and 100 parts by mass where 100 parts by mass is the amount of carbon nanotubes (Morita, 0029). In this case there is an overlap with the limitation’s range of 50 to 250 parts by mass. 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.
Regarding claim 4, Morita in view of Yushin teaches the carbon nanotube dispersion liquid of claim 1 and further teaches the dispersant can be carboxymethyl cellulose (Morita, 0071).
Regarding claim 5, Morita in view of Yushin teaches the carbon nanotube dispersion liquid of claim 4 and further teaches the viscosity of a .5 to 3 parts by mass mixture of carbon nanotubes can result in a viscosity between 10 mPas and 2000 mPas (Morita, 0031). In this case there is substantial overlap with the limitation’s range of 2 mPas to 200 mPas. 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.
Regarding claim 6, Morita in view of Yushin teaches the carbon nanotube dispersion liquid of claim 1 and further teaches the dispersion liquid is for use in a mixture slurry (Morita, 0001) which can be applied to a negative electrode containing graphite and silicon (Morita, 0004, adds carbon nanotubes to the negative electrode).
Regarding claim 7, Morita in view of Yushin teaches the carbon nanotube dispersion liquid of claim 6 and further teaches that the resulting negative electrode is for use in a secondary battery (Morita, 0004, improves cycle life of lithium secondary batteries).
Regarding claim 8, Morita teaches a method for manufacturing a Carbon nanotube dispersion liquid for an electrode slurry (0001) via mixing carbon nanotubes alongside a dispersant and a solvent (0043, the solvent can be called a dispersion medium, 0071, the dispersant can be carboxymethyl cellulose). Morita further teaches that the average diameter of the carbon nanotubes are between 3 and 25 nanometers with a standard deviation of 1 to 5 nanometers (0047, 0048). What this means is that that if the average diameter is 3-25 nm and the standard deviation is 1-5 nm then the range of values is 0-30 nm which has significant overlap with the instant application and It would have been obvious to a person of ordinary skill in the art in view of routine experimentation and the optimization of ranges, see MPEP 2144.05. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. It should further be noted that in table 1-continued the TUBALL SWCNT 93% has an outer diameter of 1.2-2 nm which also overlaps with the instant application.
Morita is silent in respect to a G/D ratio of between 50 and 200 in a Raman spectrum. It should be noted, however, that the G/D ratio of the same material can significantly change depending on the excitation wavelength used which is not disclosed in the instant application.
Yushin teaches that a Raman spectrum of carbon nanotubes in a slurry (0079) with a diameter of between 0.3 nm and 5 micrometers (0071) can result in a G band and a D band where the G band is significantly higher than the D band (fig. 6, 0095). The peak intensity of the bands is at 1580 cm-1- for the G band and 1360 cm-1 for the D band. While the G band is a point within the range described in the instant application and therefore rendered obvious, the D band is merely close, but similarly to overlapping ranges, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, see MPEP 2144.05, it is also clear by the use of the word typically that Yushin knows and expects there to be a range of valid values and the resulting material is expected to behave the same regardless of slight differences in the wavenumber peak (0093). While the exact data numbers are not given, by looking at the graph of fig. 6 it is apparent that carbon nanotubes can form a G/D value that is well within the range of 50 to 200 described by the instant application.
Regarding the volume-based particle size distribution, While the prior art does not explicitly teach carbon nanotubes having 3-5 peaks with a center peak being the highest, these properties are considered inherent in the prior art barring any differences shown by objective evidence between carbon nanotubes disclosed in the prior art and the applicant. As carbon nanotubes taught by the prior art and the applicant are identical within the scope of claim 1, Morita in view of Yushin inherently teaches that the carbon nanotubes of the same size range will have the same properties and same data resulting from them. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) MPEP 2112.01. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02.
It would have been obvious for a person having ordinary skill in the art at the time the invention was effectively filed to take the carbon nanotubes and the resulting Raman spectrum of Yushin and be able to apply that Raman spectrum to the carbon nanotube dispersion liquid of Morita as the Raman spectrum is inherent to the carbon nanotubes themselves and can vary based off of the excitation wavelength used. Further, as the size distribution has been established to be inherent to the carbon nanotubes, it would be obvious to form the distribution as claimed by the instant application.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of Fukumoto et al. U.S. Patent No. 12374693 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant invention and Fukumoto both claim a carbon nanotube dispersion liquid for an electrode slurry that identifies a content percentage of the carbon nanotubes and a dispersant where the dispersant is carboxymethyl cellulose which has a defined viscosity. Further, both claim sets claim a method of manufacture for the electrode slurry as well as use of the slurry in a secondary battery where the electrode has a carbon and silicon based active material. Regarding the instant application’s claim of G/D peaks and the size distribution, as both are simply results of data testing, if the materials and all other components as claimed are the same then a prima facia case of obviousness is present. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) MPEP 2112.01.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN ROBERT BROWN whose telephone number is (571)272-0640. The examiner can normally be reached M-F, 9-5 ET.
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/SEAN R. BROWN/Examiner, Art Unit 1743
/ADAM J FRANCIS/Primary Examiner, Art Unit 1728