DETAILED ACTION
Claims 1-12 are presented for examination, wherein claim 1 is currently amended; plus, claims 5-12 and the subject matter of species I.A are withdrawn.
The 35 U.S.C. § 112(b) rejections of claims 1-4 are withdrawn, as a result of the amendments to claim 1, from which the other claims depend.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046 (Fed. Cir. 1993); In re Longi, 759 F.2d 887 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937 (CCPA 1982); In re Vogel, 422 F.2d 438 (CCPA 1970); In re Thorington, 418 F.2d 528 (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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of 18/149,904 (“reference”), for which a Notice of Allowance was issued on November 18, 2025, in view of Chen et al (US 2021/0238039). Although the claims at issue are not identical, they are not patentably distinct from each other because some of the scope is broader and some are narrower. Further:
In Step a), the reference claims “heating a heavy hydrocarbon oil so as to form the heavy hydrocarbon oil into a green coke,” but does not expressly claim “heating … under a condition of 480° C.-550° C.”
However, Chen teaches a method of making a soft carbon, wherein heavy oil may be changed into coke “by any process well-known to those skilled in the art,” including heating heavy oil from room temperature to a temperature ranging from 400° C. to 600° C. (e.g. ¶¶ 0023-24, 36-38, 43-44, and 61-62).
As a result, it would have been obvious to use the heating temperature range of Chen in the Step (A) of the reference, since Chen teaches it is a well known process in the art, so would be considered to be reliable and reliably provide coke product.
In step c), the reference claims “grinding the carbon-containing material into a powder, and sizing the powder to collect a portion of the powder which has a D50 particle size in a range from 8 μm to 12 μm, and a D10 particle size in a range from 1 μm to 8 μm,” establishing a prima facie case of obviousness of the claimed particle size distribution, see also e.g. MPEP § 2144.05(I), reading on “a cumulative amount of the powder with a particle size below 5 μm is 1.0% or less by weight of the overall carbon-containing powder.”
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al (US 2021/0238039), noting the instant inventor is a named inventor in the art.
Regarding newly amended independent claim 1, Chen teaches a method for manufacturing a soft carbon, wherein soft carbon may be utilized to make an anode of a battery having improved performance, said method comprising steps including
a) providing a coke; and
b) subjecting said coke to a carbonization process
(e.g. ¶¶ 00022, 07-08, 15-21, 32, and 63),
wherein said coke may be “obtained by any process well-known to those skilled in the art,” including heating heavy oil from room temperature to a temperature ranging from 400° C. to 600° C. at a rate ranging from 5° C./min to 10° C./min, and then maintained at the temperature for 1 hour to 16 hours under a pressure ranging from 0.2 MPa to 4 MPa, so that the heavy oil is subjected to pyrolysis and polycondensation reactions, thereby obtaining said coke (e.g. ¶¶ 0023-24, 36-38, 43-44, and 61-62);
wherein said carbonization process includes a preliminary calcination treatment, followed by a combination of a main calcination treatment and said surface-modifying calcination treatment,
wherein said preliminary calcination treatment is conducted by calcining said coke at a first temperature within a range of 800° C. to 1000° C. to obtain a pre-calcinated coke,
wherein said main calcination treatment is conducted by calcining said pre-calcinated coke at a second temperature that is higher than said first temperature and within a range of 1000° C. to 1200° C,
wherein said surface-modifying calcination treatment is conducted by calcining said pre-calcinated coke resulting from said main calcination treatment in a presence of a carbonaceous material for modifying surfaces of said pre-calcinated coke, and at a third temperature that is higher than the first temperature and within the range of 1000° C. to 1200° C, said surface-modifying calcination treatment covering and coating micropores on surfaces of said pre-calcinated coke with said pitch, so that a specific surface area of said resulting soft carbon may be effectively reduced,
wherein after said preliminary calcination treatment, said pre-calcinated coke is subjected to a grinding and sizing treatment, which may allow the soft carbon to have a uniform grain size and shape,
an express example (Example 1) teaching said coke is subjected to
said preliminary calcination treatment, in which said coke is heated from room temperature to said first temperature of 850° C. at a rate of 10° C./min and then calcinated at 850° C. for 4 hours, a resultant pre-calcinated coke was ground and then sized so that pre-calcinated coke having an average grain size (D50) ranging from 12 μm to 15 μm was collected and then subjected to subsequent calcination treatments, including said main calcination treatment followed by said surface-modifying calcination treatment so as to obtain said soft carbon,
wherein in said main calcination treatment of said example (Example 1), said pre-calcinated coke was heated from room temperature to the second temperature of 1100° C. at a rate of 10° C./min and then calcinated at 1100° C. for 4 hours; and,
after cooling to 30° C., in said surface-modifying calcination treatment of said example (Example 1), said pre-calcinated coke from the main calcination treatment was heated again to said third temperature of 1100° C. at a rate of 1.5° C./min and then calcinated at said third temperature for 5 hours in a presence of a pitch having a softening point of 250° C
(e.g. ¶¶ 0008-09, 19, 25-32, 36-38, and 63), said method for manufacturing said soft carbon reading on “preparation method of soft carbon,” said method comprising:
(1) heating heavy oil from room temperature to said temperature ranging from 400° C. to 600° C. at a rate ranging from 5° C./min to 10° C./min, and then maintained at the temperature for 1 hour to 16 hours under a pressure ranging from 0.2 MPa to 4 MPa, so that the heavy oil is subjected to pyrolysis and polycondensation reactions, thereby obtaining said coke (e.g. supra), wherein Chen teaches forming coke from heavy oil, noting since said coke has not yet been further processed, it therefore is “raw,” and establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.05(I), reading on “step (A), heating heavy oil to raw coke under a condition of 480° C.-550° C;”
(2) subjecting said coke to said carbonization process, wherein said carbonization process includes said preliminary calcination treatment,
wherein said preliminary calcination treatment is conducted by calcining said coke at said first temperature within a range of 800° C. to 1000° C. to obtain said pre-calcinated coke,
said express example (Example 1) teaching said preliminary calcination treatment, in which said coke is heated from room temperature to said first temperature of 850° C. at said rate of 10° C./min and then calcinated at 850° C. for 4 hours
(e.g. supra), establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.05(I), reading on the newly amended limitation “step (B), heating the raw coke to a temperature of 850° C.-900° C. at a first heating rate … and holding the temperature of 850° C.-900° C. for 4 hours or more to obtain a carbon-containing material;
(3) wherein after said preliminary calcination treatment, said pre-calcinated coke is subjected to said grinding and sizing treatment, which may allow the soft carbon to have a uniform grain size and shape,
said express example (Example 1) teaching said resultant pre-calcinated coke was ground and then sized so that pre-calcinated coke having said average grain size (D50) ranging from 12 μm to 15 μm was collected
(e.g. supra), establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.05(I), reading on “step (C), grinding and grading the carbon-containing material to obtain a carbon-containing powder, wherein a particle size distribution D50 of the carbon-containing powder is 8 μm-12 μm,”
(4) said carbonization process comprising said subsequent calcination treatments including said main calcination treatment,
wherein said main calcination treatment is conducted by calcining said pre-calcinated coke at a second temperature that is higher than said first temperature and within a range of 1000° C. to 1200° C,
said express example (Example 1) teaching said main calcination includes said pre-calcinated coke was heated from room temperature to the second temperature of 1100° C. at a rate of 10° C./min and then calcinated at 1100° C. for 4 hours
(e.g. supra), severably establishing a prima facie case of obviousness of the claimed ranges, see also e.g. MPEP § 2144.05(I), reading on the newly amended limitation “step (D), heating the carbon-containing powder to a temperature of 1030° C.-1220° C. at a second heating rate of 3° C./min to 10° C./min and holding the temperature of 1030° C.-1220° C. for 4 hours or more to obtain a carbon material powder;” and,
(5) said carbonization process comprising said subsequent calcination treatments including said surface-modifying calcination treatment,
said pre-calcinated coke from said main calcination treatment was heated again to said third temperature of 1100° C. at said rate of 1.5° C./min and then calcinated at said third temperature for 5 hours in a presence of a pitch having a softening point of 250° C,
said surface-modifying calcination treatment covering and coating micropores on surfaces of said pre-calcinated coke with said pitch, so that a specific surface area of said resulting soft carbon may be effectively reduced
(e.g. supra), said surface-modifying calcination treatment being in the presence of pitch indicates pitch is added during said surface-modifying calcination treatment, establishing a prima facie case of obviousness of the claimed temperature range, see also e.g. MPEP § 2144.05(I); plus, said heating rate is sufficiently close to the claimed heating rate range to establish a prima facie case of obviousness, see also e.g. Table 1, noting that both Embodiments and comparative example use the same heating rate (1.22 °C/min), reading on newly amended limitation “step (E), adding pitch to the carbon material powder, and then heating the carbon material powder to a temperature of 1030° C.-1220° C. at a third heating rate 0.90° C./min to 1.25° C./min and holding the temperature of 1030° C.-1220° C. for 5 hours or more to obtain soft carbon.”
Alternatively regarding the third heating rate of “0.90° C./min to 1.25° C./min,” differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical. Here, the claimed heating rate appears to be merely optimization through routine optimization, noting for example that reducing the heating rate reduces the energy load of the furnace, thereby reducing potential spikes in the power supply—further noting a spike in power demand is more costly/more difficult to provide than a more even power demand. See also the instant specification, that provides the comparative example and embodiments use the same heating rate, at e.g. Table 1. See further e.g. MPEP § 2144.05.
Regarding the first heating rate of “3° C./min to 5° C./min” in the limitation “step (B), heating the raw coke to 850° C.-900° C. at a first heating rate of 3° C./min to 5° C./min and holding the temperature for 4 hours or more to obtain a carbon-containing material,” Chen teaches said carbonization process includes said preliminary calcination treatment, wherein said preliminary calcination treatment is conducted by calcining said coke at said first temperature within a range of 800° C. to 1000° C. to obtain said pre-calcinated coke; and, said express example (Example 1) teaching said coke is subjected to said preliminary calcination treatment, in which said coke is heated from room temperature to said first temperature of 850° C. at a rate of 10° C./min and then calcinated at 850° C. for 4 hours (e.g. supra), but does not expressly teach the claimed range of said first heating rate.
However, differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical. Here, the claimed heating rate appears to be merely optimization through routine optimization, noting for example that reducing the heating rate reduces the energy load of the furnace, thereby reducing potential spikes in the power supply—further noting a spike in power demand is more costly/more difficult to provide than a more even power demand. See also the instant specification, that provides the comparative example and embodiments use the same heating rate, at e.g. Table 1. See further e.g. MPEP § 2144.05.
Regarding the limitation “Step (C) and a cumulative amount of the powder with a particle size below 5 μm is 1.0% or less by weight of the overall carbon-containing powder,” Chen teaches said after said preliminary calcination treatment, said pre-calcinated coke is subjected to said grinding and sizing treatment, which may allow the soft carbon to have a uniform grain size and shape; and, said express example (Example 1) teaching said resultant pre-calcinated coke was ground and then sized so that pre-calcinated coke having said average grain size (D50) ranging from 12 μm to 15 μm was collected (e.g. supra), but does not expressly teach the claimed limitation.
However, Chen teaches a substantially identical pre-calcinated coke (entire disclosure supra incorporated herein by reference, compared with instant specification, at e.g. ¶¶ 0036-38) processed by a substantially identical process (e.g. grinding and sizing, compared with instant specification, at e.g. ¶¶ 0038-39), establishing a prima facie case of obviousness of said limitation, see also e.g. MPEP § 2112.01; and/or, differences in size do not patentably distinguish the instant invention from the art, in the absence of persuasive evidence of its importance. See e.g. MPEP § 2144.04(IV)(A). See e.g. Embodiment 2 in Table 1, which indicates a particle size distribution outside the claimed range.
Regarding claim 2, wherein said carbonization process comprising said subsequent calcination treatments including said surface-modifying calcination treatment,
said pre-calcinated coke from said main calcination treatment was heated again to said third temperature of 1100° C. at said rate of 1.5° C./min and then calcinated at said third temperature for 5 hours in said presence of a pitch having a softening point of 250° C (e.g. supra), but does not expressly teach the amount in “in step (E), the amount of pitch added is 5-8% by weight of the carbon material powder.”
However, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. See e.g. In re Cooper, 57 USPQ 117 (CCPA 1943). In absence of evidence to the contrary, the selection of the proportions of elements would appear to require no more than routine investigation by those of ordinary skill in the art. In re Austin, 149 USPQ 685, 688 (CCPA 1966).
Here, the examiner references instant specification, at e.g. Table 1, noting that embodiment 1 includes a pitch content of 4%, which is outside the scope of the claimed range.
Regarding claims 3-4, Chen teaches the method of claims 1-2, wherein after said preliminary calcination treatment, said pre-calcinated coke is subjected to said grinding and sizing treatment, which may allow the soft carbon to have a uniform grain size and shape (e.g. supra), reading on “step (F), … carrying out smoothing after the step (C),” but does not expressly teach the limitation “to reduce BET specific surface area of the carbon-containing powder by 20% or more.”
However, Chen teaches a substantially identical process (e.g. supra, compared with instant specification, at e.g. ¶¶ 0009 and 44-45), establishing a prima facie case of obviousness of said limitation, see also e.g. MPEP § 2112.01.
Response to Arguments
Applicant’s arguments filed April 30, 2026 have been fully considered but they are not persuasive.
First, the applicant alleges the following regarding the NSDP rejection of claim 1 over the reference application (18/149,904) in view of Chen.
The Applicant respectfully submits that claim 1 is patentably distinct over claim 1 of U.S. Application No. 18/149,904 in view of Chen (US 2021/0238039 A1). In particular, claim 1 expressly recites that, in Step (C), the carbon-containing powder has a particle size distribution D50 of 8 m to 12 µm, and a cumulative amount of the powder with a particle size below 5 µm of 1.0 wt% or less by weight of the overall carbon-containing powder.
By contrast, Chen generally discloses that grinding and sizing may be performed after preliminary calcination so that the material may have a more uniform grain size and shape. Although Example 1 of Chen discloses collecting pre-calcinated coke having an average grain size (D50) ranging from 12 µm to 15 µm, Chen is completely silent regarding the further limitation that the cumulative amount of particles below 5 µm is 1.0 wt% or less.
Accordingly, aside from the fact that the D50 range disclosed in Chen is not fully identical to that of claim 1, Chen fails to disclose the above-recited fine powder limitation. Thus, at least with respect to the feature requiring that the cumulative amount of powder having a particle size below 5 µm be 1.0 wt% or less, claim 1 is patentably distinct from the cited reference claim, either alone or in combination with Chen.
In addition, this limitation has technical significance in the present application. As explained in the specification, reducing the proportion of fine particles having a particle size below 5 µm can reduce the formation of the SEI layer on the anode surface, thereby improving capacity retention and fast-charging cycle life.
For at least the reasons set forth above, the Applicant respectfully submits that claim 1 is patentably distinct from claim 1 of U.S. Application No. 18/149,904 in view of Chen.
(Remarks, at 7:3-8:2.)
In response, the examiner respectfully notes that the reference expressly claims in step c), the reference claims “grinding the carbon-containing material into a powder, and sizing the powder to collect a portion of the powder which has a D50 particle size in a range from 8 μm to 12 μm, and a D10 particle size in a range from 1 μm to 8 μm” (emphasis added), which establishing a prima facie case of obviousness of the claimed limitation, see also e.g. MPEP § 2144.05(I), reading on “a cumulative amount of the powder with a particle size below 5 μm is 1.0% or less by weight of the overall carbon-containing powder.”
Since a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments or evidence to rebut the prima facie case. See e.g., In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented by way of an affidavit or declaration under 37 CFR 1.132. However, arguments of counsel cannot take the place of factually supported objective evidence. See e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). See also MPEP § 2145.
The showing of unexpected results must be commensurate in scope with the invention as claimed. The results must be due to the claimed features, not to unclaimed features.
The showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. 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. MPEP § 716.02(d). Absent such showing, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” MPEP § 2144.05.
Furthermore, the unexpected property or result must actually be unexpected and of statistical and practical significance. MPEP § 716.02(a).
Unexpected results for a claimed range, as compared with the range disclosed in the prior art, must be shown by a demonstration of “a marked improvement, over the results achieved under other ratios, as to be classified as a difference in kind, rather than one of degree.” See MPEP § 716.02.
Second, the applicant alleges the following regarding the 35 U.S.C. rejection of claims 1-4 over Chen.
In the present application, the technical focus of claim 1 is not merely the recited D50 range or the heating temperature ranges. Rather, claim 1 further requires that the cumulative amount of particles having a particle size below 5 µm is 1.0 wt% or less by weight of the overall carbon-containing powder. Chen is completely silent regarding this limitation.
More specifically, Chen only discloses the D50 value of the carbon-containing powder, but fails to disclose the complete particle size distribution, much less the proportion of particles having a particle size below 5 µm. D50 only represents the median particle size in the cumulative particle size distribution, i.e., 50% of the particles are smaller than the stated value and 50% are larger. Therefore, D50 does not indicate the proportion of particles in the smaller-size region below S m. Even if two powders have similar D50 values, their proportions of particles below
5 µm may differ significantly.
The Office Action appears to rely on inherency in asserting that the claimed proportion of particles below 5 µm would result from Chen. Applicant respectfully submits that such a position is not supported by the record.
Under MPEP 2112.01 and applicable Federal Circuit case law, inherency requires that the missing feature necessarily be present, not merely probably or possibly present (See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). Here, Chen does not disclose any particle size distribution data or experimental evidence demonstrating that, under Chen’s process conditions, the proportion of particles below 5 µm would necessarily be 1.0 wt% or less. The proportion of such fine particles may vary depending on multiple factors, including grinding condition classification equipment, and sieving conditions, and thus cannot be derived from the D50 value alone.
Furthermore, the specification of the present application confirms that the claimed fine-powder limitation is not an inherent result of merely obtaining a D50 of 8-12 µm. Specifically, Comparative Example 1 and Embodiment 1 employ the same conditions in Steps (A), (B), (D), and (E), and both have a D50 of 8-12 µm after Step (C). The cumulative amount of particles below 5 µm is 3.04 wt% in Comparative Example 1, while it is 0.82 wt% in Embodiment 1. This comparison shows that, even where the D50 falls within the same range, the proportion of particles below 5 µm can differ substantially. Accordingly, the limitation requiring that the cumulative amount of particles below 5 µm be 1.0 wt% or less is not an inherent result of a D50 range of 8-12 µm, but rather is achieved through deliberate control in Step (C).
(Remarks, at 9:1-10:2, underlining added.)
In response, the examiner respectfully notes that the art expressly teaches said express example (Example 1) teaching said resultant pre-calcinated coke was ground and then sized so that pre-calcinated coke having said average grain size (D50) ranging from 12 μm to 15 μm was collected, and further teaches the general teaching of wherein after said preliminary calcination treatment, said pre-calcinated coke is subjected to said grinding and sizing treatment, which may allow the soft carbon to have a uniform grain size and shape (see prior and instant Office actions).
Furthermore, the examiner respectfully refers to the prior and instant Office actions, which provides the following.
Regarding the limitation “Step (C) and a cumulative amount of the powder with a particle size below 5 μm is 1.0% or less by weight of the overall carbon-containing powder,” Chen teaches said after said preliminary calcination treatment, said pre-calcinated coke is subjected to said grinding and sizing treatment, which may allow the soft carbon to have a uniform grain size and shape; and, said express example (Example 1) teaching said resultant pre-calcinated coke was ground and then sized so that pre-calcinated coke having said average grain size (D50) ranging from 12 μm to 15 μm was collected (e.g. supra), but does not expressly teach the claimed limitation.
However, Chen teaches a substantially identical pre-calcinated coke (entire disclosure supra incorporated herein by reference, compared with instant specification, at e.g. ¶¶ 0036-38) processed by a substantially identical process (e.g. grinding and sizing, compared with instant specification, at e.g. ¶¶ 0038-39), establishing a prima facie case of obviousness of said limitation, see also e.g. MPEP § 2112.01; and/or, differences in size do not patentably distinguish the instant invention from the art, in the absence of persuasive evidence of its importance. See e.g. MPEP § 2144.04(IV)(A). See e.g. Embodiment 2 in Table 1, which indicates a particle size distribution outside the claimed range.
(e.g. February 9, 2026 non-final Office action, at e.g. §15a, bolding in the original and underlining and bolded underlining added.)
Since a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments or evidence to rebut the prima facie case. See e.g., In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented by way of an affidavit or declaration under 37 CFR 1.132. However, arguments of counsel cannot take the place of factually supported objective evidence. See e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). See also MPEP § 2145.
The showing of unexpected results must be commensurate in scope with the invention as claimed. The results must be due to the claimed features, not to unclaimed features.
The showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. 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. MPEP § 716.02(d). Absent such showing, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” MPEP § 2144.05.
Furthermore, the unexpected property or result must actually be unexpected and of statistical and practical significance. MPEP § 716.02(a).
Unexpected results for a claimed range, as compared with the range disclosed in the prior art, must be shown by a demonstration of “a marked improvement, over the results achieved under other ratios, as to be classified as a difference in kind, rather than one of degree.” See MPEP § 716.02.
Third, the applicant alleges the following regarding the 35 U.S.C. rejection of claims 1-4 over Chen.
In addition, it is alleged on the first paragraph of page 14 of the Office Action that differences in size do not patentably distinguish the instant invention from the art, in the absence of persuasive evidence of its importance. Applicant respectfully submits that the specification of the present application has provided such evidence of importance. Claim 1 recites a specific limitation on the proportion of particles in the fine-particle region below 5 µm, and this limitation is associated with demonstrated technical effects.
Referring to paragraph [0038] of the specification reducing the proportion of particles below 5 µm can reduce the amount of SEI formed on the anode surface, thereby improving capacity retention and fast-charging cycle life. Referring to paragraph [0058] and Table 3 of the specification, based on TGA results, when the proportion of particles below 5 µm is reduced from 3.04 wt% to 0.82 wt%, the residual SEI weight decreases from 0.29 mg to 0.20 mg. Paragraph [0064] of the specification also indicates that controlling the fine particle proportion to 1 wt% or less improves capacity retention and fast-charging cycle life. Further, referring to paragraph [0073], when the proportion is further reduced to 0.75 wt%, capacity retention continues to improve. These results indicate that the claimed limitation is associated with improved battery performance and thus is not merely an arbitrary numerical choice.
It is alleged on page 13 of the current Office Action that Embodiment 2 in Table 1 indicates a particle size distribution outside the claimed range. Applicant respectfully clarifies that Embodiment 2 was not used to demonstrate the technical effect of the limitation “the cumulative amount of particles below 5 µm is 1.0 wt% or less.” Instead, Embodiment 2 is directed to a different technical feature, namely the effect of increasing the pitch content in Step (E) from 4 wt% to 5 wt%. By contrast, the technical effect of the fine-powder limitation is primarily demonstrated by the comparisons between Comparative Example 1 and Embodiment 1, and between Embodiment 4 and Embodiment 5. Thus, the presence of Embodiment 2 does not negate the technical significance of the claimed fine-powder limitation. On the contrary, Embodiment 2 further illustrates that, even when D50 remains 8-12 µm, the proportion of particles below 5 µm may still be 3.04 wt%, confirming that such a proportion is not inherently determined by the D50 range and is not a necessary result of the process disclosed in Chen.
Accordingly, it is respectfully submitted that Chen does not disclose or suggest that the cumulative amount of particles having a particle size below 5 µm be 1.0 wt% or less. Furthermore, Chen is entirely silent regarding the relationship between this limitation and reduction of SEI formation or improvement in cycle life. Absent such teaching or suggestion, a person of ordinary skill in the art would have had no motivation to arrive the claimed invention. For at least these reasons, Chen does not render claim 1 of the present application obvious.
(Remarks, at 10:3-11:3.)
In response, the examiner respectfully notes that argument is not commensurate with the scope of the data. Embodiment 2—which is an example, not a comparative example—expressly provides in step (C) that the cumulative amount of powder with a particle size below 5µm is 3.4 wt%, wherein Figure 4A illustrates the capacity retention between Embodiment 2 and Comparative example 1.
Further, regarding the difference between an amount of pitch being 4 wt% verses 5 wt%, the argument is not commensurate with the scope of the claims, as claimed, since no pitch content amount is claimed.
Furthermore, Embodiment 3 is expressly “the same as Embodiment 2 except for the use of a collision plate grinder” (instant specification, at e.g. ¶0049).
Fourth, the applicant alleges the following regarding the 35 U.S.C. rejection of claims 2-4 over Chen.
Based on at least the foregoing, claim 1 of the present application is patentable over Chen, and thus claims 2-4 depending thereupon are also patentable.
(Remarks, at 11:4.)
In response, the examiner respectfully refers supra.
Conclusion
The art made of record and not relied upon is considered pertinent to applicant's disclosure.
Arima et al (US 2022/0371893);
Choi et al (US 2020/0020947);
Tabata et al (US 2017/0141396);
Wakizaka et al (US 2015/0162600); and,
Ikeda et al (US 2004/0131857).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YOSHITOSHI TAKEUCHI whose telephone number is (571)270-5828. The examiner can normally be reached M-F, 8-4.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TIFFANY LEGETTE-THOMPSON can be reached at (571)270-7078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YOSHITOSHI TAKEUCHI/Primary Examiner, Art Unit 1723
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