DETAILED ACTION
This Office Action is responsive to the July 1st, 2026 arguments and remarks (“Remarks”). The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 July 1st, 2026:
Claims 1-6 are pending in the current application. Claim 1 has been amended. Clams 4-6 were previously withdrawn.
All changes made to the rejection are necessitated by amendment.
Claim Objections
The objection to Claim 3 is withdrawn in view of the filed response.
Response to Arguments
Applicant's arguments filed July 1 have been fully considered as described below:
Applicant argues that reference Maenishi does not disclose a carbon film that covers the carbon material; and further argues that the stable graphite surface of Maenishi is not a discrete layer that covers the graphite surface (see pg. 5 of the “Remarks”).
"The Patent and Trademark Office ("PTO") determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction 'in light of the specification as it would be interpreted by one of ordinary skill in the art.' In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004)" (see MPEP 2111).
Claim 1 recites a carbon film that covers the carbon material of the negative electrode active material. Maenishi teaches that the boron containing graphite (carbon material) comprises a dense, stable graphite film or coating on the surface between the boron containing graphite and the electrolyte; the stable graphite surface or coating suppresses continuous decomposition of a highly reliable secondary battery with suppressed side reactions ([0018]-[0019]). Therefore, there are no distinguishing features between the graphite (carbon) film/coating of Maenishi and the claimed carbon coating. Examiner recommends further amendments to include physical characteristics of the carbon film of the present invention in which from the carbon film/coating and/or active material of Maenishi.
Applicant further argues that the only film disclosed by Maenishi is an electrolyte derived passivation film (see pgs. 5-6 of the “Remarks”). As described above, Maenishi also teaches a carbon film on the surface of a boron containing carbon material as claimed. Therefore, applicant’s arguments are deemed unpersuasive.
Further, applicant argues that Maenishi’s R value is a property of the boron-containing graphite surface, confirming the absence of a covering carbon film (see pg. 6 of the “Remarks”). There is no indication in Maenishi that the R Value is only for the boron-containing graphite surface. One of ordinary skill in the art would understand that the R value is for the negative electrode active material in which is a boron and carbon material comprising a carbon coating film ([0018]-[0019]). There are no structural differences between the negative electrode active material of the present invention as claimed and the active material of Maenishi. Therefore, applicant’s arguments are deemed unpersuasive.
Applicant further argues that the claimed carbon film is boron free as amended, whereas the stabilized surface of Maenishi is boron containing and boron-induced (see pgs. 6 of the “Remarks”). Said conclusion is unsupported by Maenishi. As described above, Maenishi clearly teaches a separate, distinct graphite film/coating on the surface of the boron containing carbon material ([0018]). It appears that the applicant is not considering reference Maenishi in its entirety. Therefore, applicant’s arguments are deemed unpersuasive.
Applicant further argues criticality of the presence of the carbon film (see pg. 7 of the “Remarks”). As described above, there are no structural differences between the carbon film as claimed and the carbon film of Maenishi. Although Maenishi does not teach the same advantage of improving lithium-precipitation resistance as disclosed in the specification of the present invention, "the fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious" Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (see MPEP 2145(II)). Further, applicant can demonstrate criticality of the claimed R value and/or boron content wherein a sufficient number of tests inside and outside the claimed range are provided; in this case, Examples 1-6 do not support the claimed upper and lower limit of an R value of 0.35 and 0.85 nor a boron content of 0.2 and 3.5 atomic %. Further, there is only a difference of 4% between the Li precipitation resistance of CE4 and Example 1 in which may not be deemed as a significant improvement to a skilled artisan to demonstrate criticality, absent additional tests/experimental data:
“Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results … See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984)” (see MPEP 716.01(c)).
“To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960)” (see MPEP 716.02(d)(II)).
“An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)” (see MPEP 716.02(e)).
“Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range” (see MPEP 716.02(d)).
All changes made to the rejection are necessitated by amendment.
Claim Rejections - 35 USC § 102/103
Claims 1-3 are rejected under 35 U.S.C. 102a(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Maenishi (JP Pat. No. 2018195559 A; see machine translation).
Regarding Claim 1, Maenishi teaches a negative electrode active material (negative electrode active material, [0012]) for a lithium ion battery (lithium-ion secondary battery 100, [0035] & Figure 1) the negative electrode active material (negative electrode active material) comprising a carbon material (boron-containing graphite, [0012]) and a carbon film (stable graphite surface, [0018]; there is no indication that the carbon film contains boron as it is recited as a graphite coating/film) that covers the carbon material (boron-containing graphite), wherein: the carbon material (boron-containing graphite) includes carbon and boron (see [0012] & [0013];
a content of boron in the carbon material is 0.2 atomic% or more and less than 3.5 atomic%; (boron content of 0.29% by mass, see [0077] or 0.31 atomic% - see analysis below for conversion to atomic%).
Assuming carbon material comprises of graphite and boron; the relative moles of each is calculated as follows:
B
o
r
o
n
=
29
g
10.81
g
/
m
o
l
=
2.68
m
o
l
e
s
G
r
a
p
h
i
t
e
=
71
g
12.01
g
/
m
o
l
=
5.91
m
o
l
e
s
T
o
t
a
l
m
o
l
e
s
=
2.68
m
o
l
e
s
+
5.91
m
o
l
e
s
=
8.59
m
o
l
e
s
A
t
o
m
i
c
%
o
f
B
o
r
o
n
=
2.68
m
o
l
e
s
8.59
m
o
l
e
s
=
0.31
Assuming, arguendo, that the mass conversion does not read on the atomic range, the reference is obvious for the following reason:
Maenishi teaches that the boron-containing graphite is preferably 0.01% by mass or more and preferably 5% by mass or less (see [0021]) and further teaches a boron content of 0.29% by mass (see [0077]).
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious (MPEP § 2144.05.II). In the instant case, the atomic% is a variable that achieves the recognized result of affecting the formation of by-products that do not participate in the intercalation and release of lithium ions and the feasibility of side reactions occurring, as disclosed by Maenishi (see [0021] which teaches that when the boron content is between 0.01% and 5%, the formation of by-products that do not participate in the intercalation and release of lithium ions is suppressed thus resulting in a high discharge capacity density), thus making the atomic% of the boron content a result-effective variable. Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the percent by mass of the boron content of Maenishi such that the boron content is 0.2 atomic% or more and less than 3.5 atomic%; via routine experimentation, for the purpose of suppressing the formation of by-products that do not participate in the intercalation and release of lithium ions and thus result in a high discharge capacity density.
The negative electrode active material (negative electrode active material) has an R value of 0.35 or more and 0.85 or less and the R value is a ratio of a D band with respect to a G band in a Raman spectrum of the negative electrode active material (see [0018]-[0019] which gives a Raman intensity ratio R of the D band to G band of the boron-containing graphite as 0.45 or greater and within the range of 0.53 or less).
Regarding Claim 2, Maenishi teaches all of the limitations as set forth above and further teaches wherein the carbon material (boron—containing graphite) includes artificial graphite (see [0029] which describes that graphite could be artificial graphite).
Regarding Claim 3, Maenishi teaches all of the limitations as set forth above and further teaches a lithium ion battery (lithium-ion secondary battery 100, [0035] & Figure 1) comprising a negative electrode (negative electrode 20, [0037]) including the negative electrode active material (negative electrode active material, [0012]), a positive electrode (positive electrode 10, [0037]), a separator (separator 30, [0037]), and an electrolytic solution (non-aqueous electrolyte, [0032]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/C.R.D./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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