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 .
Election/Restrictions
Claims 7-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/16/2026. Claims 1-6 and 15-17 are currently pending.
Information Disclosure Statement
The information disclosure statements (IDSs) filed 06/06/2023, 08/18/2023, and 09/16/2025 were received and have been considered by the examiner.
Drawings
The drawings filed 06/06/2023 were received and are approved by the examiner.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: Pore-Forming Compound for Electrode Plate And Method For Preparing The Same.
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.
Claim 2 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “R1 and R2 each are independently selected from hydrogen, a Ci to C6 alkane group, a C2 to C6 alkenyl group, or a phenyl group, wherein the alkane group, the alkenyl group, and the phenyl group each are independently optionally substituted by at least one of the following groups: a Ci to C3 alkyl group, a hydroxyl group, or an amino group”, and the claim also recites “optionally, Ri is selected from a Ci to C6 alkane group, a C2 to C6 alkenyl group, or a phenyl group, and the alkane group and the phenyl group each are independently substituted by a Ci to C3 alkyl or a hydroxy group; and R2 is hydrogen” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claim(s) 1-6 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Krasavtsev (WO 2014048505, presented in IDS submitted 08/18/2023, applicant’s provided translation used for reference herein).
With respect to claims 1-3 and 5-6, Krasavtsev discloses an electrode plate (anode, thus reading on claim 5) (pg. 9, L 1), comprising a current collector (pg. 20, L9-10) and an electrode material (anode composition/negative electrode mixture) layer disposed on at least one surface of the current collector (pg. 20, L 13-14), wherein the electrode material layer comprises an active material (graphite, thus reading on claim 6) (pg. 9, L 1-4) and a conductive agent (graphene, reading on applicant’s list of suitable conductive agents according to specification) (pg. 9, L 1-4), and the electrode material layer further comprises the formula
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178
132
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, wherein R4, R5, and R6 are hydrogen (thus reading on claim 2) and n is an integer from 10 to 100,000 (thus encompassing the claimed ranges of 10 to 10,000 (claim 1) and 75 to 5,000 (claim 3) (pg. 9, L23-30 through pg. 10 L1-12). The above compound reads on the applicant’s formula (1):
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147
161
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, wherein R1 and R2 are hydrogen.
Applicant is reminded that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
With respect to claim 4, Krasavtsev discloses the content of the compound represented by formula (II) above is present in the electrode plate at a weight percent of 1 to 20% (pg. 10, L 25-26), thus being encompassed by the claimed range of 0.1 to 20 wt%.
Applicant is reminded that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Claims 15 and 16 attempt to limit the use of the compound represented by formula (I) as a pore forming agent configured to form pores in the electrode material layer of the electrode plate. These limitations are an example of an intended use of the compound. Applicant is reminded that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). Further, recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim (MPEP [7.37.09]). Therefore, the presence of the compound within the negative electrode plate with the claimed components and amounts as demonstrated in the rejections of claims 1-6 above would be able to perform pore-forming capabilities absent to persuasive evidence to the contrary. Examiner suggests adding structural claim language regarding the dimensions or characteristics of the pores formed in order for the pores to have patentable weight.
With respect to claim 17, Krasavtsev discloses the electrode plate is a negative electrode plate (anode) (pg. 9, L 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JORDAN E BERRESFORD whose telephone number is (571)272-0641. The examiner can normally be reached M-F 8:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (572)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.E.B./Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727
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