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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 25 June 2025 has been entered.
Response to Amendment
Applicant amended claim 1 (i.e., a space was added between words in line 9) and added new claim 8. Claims 1-8 are pending and considered in the present Office action.
The 102 rejections of claims 1-6 are maintained provided Applicant’s amendment (a space between the words “less,” and “and”) in line 9 of claim 1 did not change the scope of the claim and evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973).
The 103 rejections of claim 7 over Yamada (as evidenced by Sakai), claims 1-2, and 5-7 over Yamamoto, and claim 3 over Yamamoto and Sakai, are maintained because the arguments of unexpected results are not persuasive (detailed next).
Response to Arguments
Applicant argues unexpected results and concludes H/C is critical with respect to performance characteristics (i.e., Charge Capacity (mAh/g), Discharge Capacity (mAh/g), Irreversible Capacity (mAh/g), and Efficiency (%)). Applicant provides data via Table 1 (from the disclosure) and through two affidavits (H/C 0.06 was presented in the affidavit dated 18 December 2024, while HC 0.05 was presented in the affidavit dated 25 June 2025), summarized below.
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Applicants must show the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991). MPEP 716.02(a). The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). MPEP 716.02(b).
The examiner provides four plots that represents the performance characteristics (i.e., Charge Capacity (mAh/g), Discharge Capacity (mAh/g), Irreversible Capacity (mAh/g), and Efficiency (%)) as a function of the H/C ratio for Examples 10, 1, 7, 4, and 8 (H/C: 0.05, 0.04, 0.03, 0.02, 0.01, respectively) and Comparative Examples 1-2 (0.08, 0.06); as will be apparent from the plots, Applicant’s arguments of unexpected results are not persuasive because the data does not appear to show results that are greater than expected to an unobvious extent, and the data does not appear to show the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.
Plot 1: Charge Capacity (mAh/g) vs HC
[Chart]
Plot 2: Discharge Capacity (mAh/g) vs HC
[Chart]
The plots of Charge Capacity vs. HC and Discharge Capacity vs HC show Charge Capacity (mAh/g) and Discharge Capacity (mAh/g) outside the claimed H/C values (0.06, 0.08) are greater than Charge Capacity (mAh/g) and Discharge Capacity (mAh/g) inside the claimed H/C range value (0.05); that is, Example 10 (H/C 0.05), which is inside the claimed range, results in a lower Charge Capacity (mAh/g) value and a lower Discharge Capacity (mAh/g) value compared to Comparative examples 1-2 (i.e., 0.08, and 0.06). Since data outside the claimed range (H/C at 0.06, 0.08) offers Charge Capacity (mAh/g) values and Discharge Capacity (mAh/g) values which are better than Charge Capacity (mAh/g) values and Discharge Capacity (mAh/g) values inside the claimed range (e.g., H/C at 0.05) the data outside the claimed range (e.g., 0.06, 0.08) does not appear to decrease greater than expected and to an unobvious extend, and the data outside the claimed range does not appear to show the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. Thus, applicant has not shown the claimed HC range (i.e., H/C of 0.05 or less) is critical with respect to Charge Capacity or Discharge Capacity. It is further noted that the data point at H/C 0.03 (Example 7), which results in the highest Charge Capacity (mAh/g), includes a pyrolytic coating not seen in the other examples, thereby making the comparison of Charge Capacity at H/C 0.03 with the rest of the data difficult provided the example includes a variable not consistent with the other examples and it is unclear how this variable can skew the Charge Capacity (mAh/g) value.
Finally, as detailed in the last Office action (page 4), Yamamoto suggests charge/discharge capacity is expected to improve as H/C ratio decreases (see e.g., [0048]). The instant data appears to follow the trend detailed in the prior art and does not appear to show the changes observed with respect to Charge Capacity and Discharge Capacity are anything other than this expectation.
Plot 3: Irreversible Capacity (mAh/g) vs HC
[Chart]
The plot of Irreversible Capacity as a function of HC appears to suggest as the ratio of HC increases the irreversible capacity (mAh/g) increases (i.e., fairly linearly). The data points outside the claimed range (i.e., H/C 0.06, 0.08) appear to follow the trend observed inside the claimed range (slope changes minimally), such that the values outside the claimed range are not greater than what would have been expected to an unobvious extent.
Plot 4: Efficiency (%) vs HC [Chart]
The plot of Efficiency as a function of HC appears to suggest as the ratio of HC increases the Efficiency (%) decreases (i.e., fairly linearly). The data points outside the claimed range (i.e., H/C 0.06, 0.08) appear to follow the trend observed inside the claimed range, such that the values outside the claimed range are not greater than what would have been expected to an unobvious extent.
The expected trends with respect to Irreversible Capacity and Efficiency are further supported by what is known to one of ordinary skill in the art, as set forth in the last Office action, pages 3-4. In short, the relationship between the H/C value, irreversible capacity, and efficiency in carbon anodes is understood in view of Miyagi (US 2010/0015514), Komatsu (US 20150180020), and Jung (KR 20150137451). Miyagi explains higher H/C values have higher amounts of hydrogen with respect to carbon on the particle surface, [0447-0448]. Komatsu explains the H/C value is an indicator of the amount of functional groups present on the carbon; an increase in H with respect to C is an indication of increased functional groups ([0057]). Miyagi and Komatsu suggest higher values of H/C are expected to result in increased irreversible capacity due to increased reactions between lithium and the H/functional groups on the edge faces of the carbon material, see [0447-0448] of Miyagi and [0057] of Komatsu. While Miyagi and Komatsu are related to the reactions within a lithium ion battery, the same is expected in a sodium ion battery. Jung, concerned with sodium ion batteries, explains the H/C values are an indication of the side reactions with the functional groups and electrolyte, wherein a reduced H/C value (which suggests reduced H/functional groups having side reactions with the electrolyte) is expected to improve efficiency, [0063].
In view of the foregoing, applicant’s data has not shown results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Further, the evidence relied upon has not established that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. Since arguments of unexpected results are not persuasive, the 103 rejections are maintained.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamada (US 6,335,122), as evidenced by Sakai (US 2017/0179537), hereinafter Yamada and Sakai.
Regarding Claim 1-2, 4, and 6, Yamada suggests a sodium ion secondary battery, comprising: a negative electrode (carbon) capable to dope and dedope sodium ions (e.g., considering the carbon in Yamada has a d002 spacing of 0.377 nm, see Comp. Ex. 3, the carbon is capable of doping/dedoping sodium ions, as evidenced by Sakai in [0036]); a positive electrode (e.g., TiS2) capable to dope and de-dope sodium ions (as evidenced by Sakai [0068]); a separator between the negative and positive electrodes; and an electrolyte containing a non-aqueous solvent (e.g., organic solvent) and a sodium electrolyte material (salt of sodium, see e.g., cols. 8-9), wherein the negative electrode comprises a carbonaceous material obtained from a plant carbon source (e.g., coffee beans, coconut shell, etc., see e.g., Comp. Ex. 3-5, see also the Claim Interpretation section), a BET specific surface area of the carbonaceous material is 100 m2/g or less (e.g., 3.02 m2/g in Comp. Ex. 3), and a ratio H/C of hydrogen atoms to carbon atoms of the carbonaceous material determined by elemental analysis is 0.05 (0.04) or less (e.g., 0.03, Comp. Ex. 3), see e.g., Table 1. NOTE: A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination. Yamada clearly names the species (sodium salt); further, provided the list of salts is short (three species, i.e., lithium, sodium, aluminum), and well delineated, one of ordinary skill in the art could at once envision the use of the sodium salt in the electrolyte, see MPEP 2131.02.
Regarding Claim 3, Yamada suggests the true density is less than 1.53 g/cm3, see Comp. Ex. 3 which has a true density of 1.45 g/cm3.
Regarding Claim 5, Yamada suggests the average particle diameter is from 1-50 microns (i.e., 25 microns), see Comp. Ex. 3
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as obvious over Yamada, as evidenced by Sakai, cited in the rejection of claim 1.
Regarding Claim 7, Yamada suggests H/C ratios of at most 0.1, with examples comprising H/C values as low as 0.02, from the standpoint minimizing the non-dedoping capacity, resulting in an increase in discharge efficiency, see e.g., col. 3 and Tables 1-3; for example, an H/C value of 0.23 resulted in a non-dedpoing capacity of 355 Ah/kg and a discharge efficiency of 55.9% (Comp. Ex. 1), while an H/C value of 0.02 achieved a significant drop in the non-dedoping capacity (45 Ah/kg) and an increase in the discharge efficiency (87.8 %, see Comp. Ex. 2). It would be obvious to one having ordinary skill in the art the H/C ratio is reduced to 0.02 or less with the expectation of reducing the non-dedoping capacity, and increasing the discharge efficiency. See MPEP 2144.05.
Claim(s) 1-2 and 5-7 is/are rejected under 35 U.S.C. 103 as obvious over Yamamoto et al. (US 2011/0135990, of record), hereinafter Yamamoto.
Regarding Claims 1-2 and 7, Yamamoto suggests a sodium ion secondary battery, comprising a positive electrode capable of doping/dedoping sodium ions ([0075-0077, 0088]), a negative electrode comprising a carbonaceous material capable of doping/dedoping sodium ions obtained from a plant carbon source (from the standpoint of reducing the load on the environment [0050, 0065-0066, 0075-0077]), a separator between the negative electrode and positive electrode ([0075-0077]), and an electrolyte containing a solvent and sodium electrolyte, [0094]. Yamada suggests the carbonaceous material has a BET specific surface area of 100 m2/g or less (e.g., 20 m2/g in Example 2) from the standpoint of good wettability and shorter immersion time during battery assembly, hence advantageous battery production, [0046, 0184]), and a ratio H/C of hydrogen atoms to carbon atoms of the carbonaceous material determined by elemental analysis is 0.05 or less, 0.04 or less, and 0.02 or less (e.g., 0.2 or less, [0048]) to improve the charge/discharge capacity of a sodium secondary battery. The values suggested by Yamamoto (i.e., 0.2 or less) overlaps with that claimed (0.05, 0.04, 0.02) or are close. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). "The 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." Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. One of ordinary skill in the art would be motivated to reduce H/C values to 0.05, 0.04 and 0.02 (which overlaps with the suggested prior art of 0.2 or less) with the expectation of improving charge/discharge capacity. See MPEP 2144.05 I., and II.
Regarding Claim 5, Yamamoto suggests the average particle diameter of the carbonaceous material is between 1 µm to 50 µm from the standpoint of packing density and internal resistance, i.e., 50 µm or less, [0047, 0174].
Regarding Claims 1 and 6, the “source” limitations in these claims do not further limit the structure of the product hence are not given patentable weight. As set forth under the claim interpretation section, determination of patentability is based on the product itself; the patentability of a product does not depend on its method of production.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as obvious over Yamamoto et al. (US 2011/0135990, of record) in view of Sakai, hereinafter Sakai.
Regarding Claim 3, Yamamoto does not suggest the true density of the carbonaceous material in the sodium ion battery. However, Sakai suggests a sodium ion battery which utilizes a carbon negative electrode comprising a true density between 1.4 – 1.7 g/cm3, thereby leading to only a small change in volume due to the occlusion release of the sodium ions during charging/discharging, effectively inhibiting degradation of the carbon active material, [0040]. It would be obvious to one having ordinary skill in the art the carbonaceous material of Yamamoto has a true density of 1.53 g/cm3 or less with the expectation of effectively inhibit degradation of the carbon material during charging/discharge, as suggested by Sakai.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as obvious over Yamamoto et al. (cited above) in view of Sonobe et al. (US 2017/0237070), hereinafter Sonobe.
Regarding Claim 8, Yamamoto does not suggest the carbonaceous material is coated with pyrolytic carbon. However, Sonobe suggest controlling the specific surface area of a carbonaceous material in the anode of a battery is preferred from the standpoint of controlling the reactions of the carbonaceous material with the electrolyte, which can lead to increases in irreversible capacity and decreased performance characteristics, [0110]; Sonobe suggests the carbonaceous material of the anode is coated with pyrolytic carbon to control the specific surface area of the carbonaceous material, see e.g., [0089-0090, 0095]. It would be obvious to one having ordinary skill in the art the carbonaceous material in the anode is coated with pyrolytic caron to control the specific surface area of the carbonaceous material, thereby controlling the reactions of the carbonaceous material with the electrolyte so as to not increase irreversible capacity or decrease performance characteristics.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as obvious over Yamada, as evidenced by Sakai, cited in the rejection of claim 1, in view of Sonobe et al. (US 2017/0237070), hereinafter Sonobe.
Regarding Claim 8, Yamada does not suggest the carbonaceous material is coated with pyrolytic carbon. However, Sonobe suggest controlling the specific surface area of a carbonaceous material in the anode of a battery is preferred from the standpoint of controlling the reactions of the carbonaceous material with the electrolyte, which can lead to increases in irreversible capacity and decreased performance characteristics, [0110]; Sonobe suggests the carbonaceous material of the anode is coated with pyrolytic carbon to control the specific surface area of the carbonaceous material, see e.g., [0089-0090, 0095]. It would be obvious to one having ordinary skill in the art the carbonaceous material in the anode is coated with pyrolytic caron to control the specific surface area of the carbonaceous material, thereby controlling the reactions of the carbonaceous material with the electrolyte so as to not increase irreversible capacity or decrease performance characteristics.
Conclusion
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/ANNA KOROVINA/Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729