DETAILED 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
The Amendment filed May 19, 2026 has been entered. Claims 1 and 4 – 7 remain pending in the application. Applicant’s amendments to the Specification have overcome each and every objection previously set forth in the Non-Final Action mailed March 3, 2026.
Claim Rejections - 35 USC § 103
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 and 4 through 7 are rejected under 35 U.S.C. 103 as being unpatentable over Moon et al. (U.S. Publication number: 2024/0290984 A1), hereinafter Moon, and further in view of Onuma et al. (US 2022/0246979 A1), hereinafter Onuma, and in further view of Yamakawa (US 2024/0234708 A1), hereinafter Yamakawa.
Regarding claims 1 and 5, Moon teaches:
a negative electrode (Abstract, Figure, paragraph [0065]) comprising
a negative electrode current collector; (current collector 100, Figure, paragraph [0065])
a negative electrode active material layer supported on the negative electrode current collector, (active material layer 200 disposed on a current collector, Figure, paragraph [0065]) wherein
the negative electrode active material layer includes a negative electrode active material and single-wall carbon nanotubes, (negative electrode active material layer includes a negative electrode active material, a binder, a conductive agent, and a dispersant, wherein the conductive agent includes a carbon nanotube structure in which a plurality of single-walled carbon nanotube units are bonded side by side, paragraph [0022])
the negative electrode active material consists essentially of graphite, (only graphite may be used as the negative electrode material, paragraph [0028])
Regarding claims 1 and 5, Moon fails to disclose specifically:
a mass proportion of the single-wall carbon nanotubes to the negative electrode active material is 0.02 mass% or more and 0.08 mass% or less.
Moon teaches in paragraph [0042]: The carbon nanotube structure may be included in an amount of, for example, 0.005 wt % to 0.2 wt % in the negative electrode active material layer. The carbon nanotube wt% range disclosed in Moon overlaps the claimed carbon nanotube mass% range. Absent any additional and more specific information, a prima facie case of obviousness exists. (MPEP § 2144.05 I)
Regarding amended claims 1 and 5, Moon fails to disclose:
an average diameter of the single-wall carbon nanotubes is 0.5 nm or more and 3.0 nm or less.
Onuma teaches:
A negative electrode (12) comprising a negative electrode current collector (12A), with a negative active material layer (32A) supported on the current collector and comprising active material (121) and single-walled carbon nanotubes (123) (Figures 2 and 4-6, paragraph [0087])
the single-walled carbon nanotubes each have an outer diameter of approximately 1 nm to approximately 2 nm (paragraph [0064])
The range of single-wall carbon nanotube diameters disclosed in Onuma falls within the range in the claimed invention. Onuma further teaches that the smaller diameter enhances the dispersibility of the single-wall carbon nanotubes, which increases the electron conductivity of the negative electrode active material layer (paragraph [0065]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the narrower diameter range of single-wall carbon nanotube diameters disclosed in Onuma into the negative electrode in Moon in order to enhance dispersibility of the nanotubes in the active material layer. The diameter range of single-wall carbon nanotubes in Onuma falls completely within the claimed range. Absent any additional and more specific information, a prima facie case of obviousness exists. (MPEP § 2144.05)
Regarding amended claims 1 and 5, Moon fails to disclose:
a proportion of graphite in the negative electrode active material is 99 mass% or more.
Yamakawa teaches:
The graphite content in all negative active materials contained in negative active material layer is more preferably 99% by mass or more (paragraph [0062])
The mass% disclosed in Yamakawa falls within the range in the claimed invention. Yamakawa teaches that by mainly using graphite as the negative active material, the capacity retention ratio after a charge-discharge cycle can be further increased. (paragraph [0062]) Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the mass% range of graphite disclosed in Yamakawa into the negative electrode active materials in Moon in order to increase the capacity retention ratio. The mass% range overlaps the claimed graphite mass% range. Absent any additional and more specific information, a prima facie case of obviousness exists. (MPEP § 2144.05 I)Regarding claim 4, Moon as modified by Onuma and Yamakawa teaches:
The negative electrode according to claim 1, wherein the negative electrode is a negative electrode of a lithium ion secondary battery
Moon teaches that the negative electrode of claim 1 as discussed above is part of a lithium ion secondary battery (paragraphs [0009], [0012], [0097]-[0111], which teach all of the components that a skilled artisan would recognize to inherently form a lithium ion battery).
Regarding amended claim 5, Moon teaches:
A secondary battery (paragraphs [0097]-[0098]) comprising:
a positive electrode (paragraph [0099]);
the negative electrode (Abstract, Figure, paragraph [0065]); and
an electrolyte (paragraph [0107]).
Regarding new claim 6, Moon, as modified by Onuma and Yamakawa, does not specifically teach the negative electrode according to claim 1, wherein
an average length of the single- wall carbon nanotubes is 1.0 µm or more and 3.0 µm or less.
Moon teaches a carbon nanotube structure in which a plurality of single-walled carbon nanotube units are bonded side by side, the carbon nanotube structure has an average length of 1 μm to 20 μm (paragraph [0022]). Moon further teaches that the carbon nanotube structure may have an average length of 1 μm to 20 μm, particularly 1 μm to 10 μm. Moon notes that for carbon nanotubes less 1 μm, the conductive network may not be effectively formed in the negative electrode. If average length of the carbon nanotube structure is greater than 20 μm, the number of carbon nanotube structures is decreased when the same amount of carbon nanotube structure is used, making it difficult to form a wide and uniform network in the electrode (paragraph [0039]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the range of average length of carbon nanotube structures from Moon into the claimed invention to create an effective and uniform network in the electrode. The range for the average length of single walled carbon nanotubes disclosed in Moon overlaps with the range of the claimed invention. Absent any additional and more specific information, a prima facie case of obviousness exists. (MPEP § 2144.05 I) Regarding new claim 7, Moon as modified by Onuma and Yamakawa, teaches the negative electrode according to claim 1, wherein
the negative electrode active material layer includes a carbon nanotube dispersant, and
the carbon nanotube dispersant is a polymer having a polynuclear aromatic group in a side chain, or a polynuclear aromatic ammonium derivative.
Moon teaches a negative electrode according to the present disclosure may be a negative electrode including a negative electrode active material layer, wherein the negative electrode active material layer includes a negative electrode active material, a binder, a conductive agent, and a dispersant (paragraph [0022]). Moon further identifies that the dispersant may include an amine and a phenolic compound containing two or more aromatic rings, and may specifically be composed of a polymer dispersant containing an amine and a phenolic compound containing two or more aromatic rings. In this case, the carbon nanotube structures are effectively dispersed and present in the negative electrode and may form a long network. (paragraph [0048])
Response to Arguments
Applicant's arguments filed May 19, 2026 have been fully considered but they are not persuasive.
In response to the applicant’s arguments that Onuma is specifically directed to using single-walled carbon nanotubes (SWCNTs) in combination with a silicon-containing material, not graphite, as the negative electrode active material (Remarks, page 6). The claims are rejected based on the combined teachings of Moon and Onuma, and “one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.” (MPEP 2145(IV).
The applicant also argues that Onuma teaches away from using SWCNTs with graphite as the negative electrode active material based on the data presented comparative examples (Remarks, page 7). Onuma does not explicitly indicate that the graphite-only embodiment should not be used. Therefore, the disclosed examples do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (MPEP 2123(II)).
The applicant submits that a person of ordinary skill in the art would not have been motivated to combine Onuma's teachings regarding small-diameter SWCNTs with Moon's graphite-based negative electrode, and asserts that there is no reasonable expectation of success in applying Onuma's SWCNT diameter teachings to a graphite-based system as disclosed in Moon. However, Onuma teaches that using smaller diameter CNTs enhances dispersibility, which increases the electron conductivity between the particles of the electrode material. A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. (MPEP 2141.03(I))
Furthermore, the test for obviousness requires a reasonable expectation of success. The comparative examples in Onuma disclose that a graphite-based electrode in combination with the SWCNTs demonstrate a working battery. As previously noted, "a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (MPEP 2123(II)).
The applicant submits that the combination of Moon, Onuma, and Yamakawa fail to disclose the claim limitations of claim 1 based on the assertion that Moon and Onuma could not be combined. As noted previously, a person of ordinary skill in the art is also a person of ordinary creativity, not an automaton, and is able to fit the teachings of Moon, Onuma, and Yamakawa together to demonstrate a prima facie case of obviousness. (MPEP 2141.03(I))
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mario Gamboa whose telephone number is (571)272-9213. The examiner can normally be reached Mon-Thur 8:00 -5:00, Fri 8:00- 12:00 EST.
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/MARIO R GAMBOA/Examiner, Art Unit 1729
/ALIX E EGGERDING/Primary Examiner, Art Unit 1729
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