DETAILED ACTION
Claims 1-12 are presented for examination, wherein claims 5-12 and the subject matter of species I.A are withdrawn.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I Species I.B in the reply filed on January 9, 2026 is acknowledged.
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 § 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 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the limitation “the temperature” in Step (B) does not have sufficient antecedent basis for this limitation in Step (B).
Still regarding claim 1, limitation “the temperature” in Step (D) does not have sufficient antecedent basis for this limitation in Step (D).
Still regarding claim 1, limitation “the temperature” in Step (E) does not have sufficient antecedent basis for this limitation in Step (E).
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.
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 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 “step (B), heating the raw coke to 850° C.-900° C. at a first heating rate … and holding the temperature 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 “step (D), heating the carbon-containing powder to 1030° C.-1220° C. at a second heating rate of 3° C./min to 10° C./min and holding the temperature 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 “step (E), adding pitch to the carbon material powder, and then heating the carbon material powder to 1030° C.-1220° C. at a third heating rate 0.90° C./min to 1.25° C./min and holding the temperature 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.
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)
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.
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/YOSHITOSHI TAKEUCHI/Primary Examiner, Art Unit 1723