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 .
Election/Restrictions
Applicant’s election without traverse of group III invention (amended claim 1-7 and 18) in the reply filed on 07/24/2026 is acknowledged.
Claims 8-15 and 17 are thus withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/24/2026.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 1-3 and 6-7 are rejected under 35 U.S.C. 102((a)1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Irisarri et al (Optimization of Large Scale Produced Hard Carbon Performance in Na-Ion Batteries: Effect of Precursor, Temperature and Processing Conditions, Journal of The Electrochemical Society, 165 (16) A4058-A4066 (2018)) as evidenced by Ponrouch (Optimisation of performance through electrode formulation in conversion materials for lithium ion batteries: Co3O4 as a case example, Journal of Power Sources 212 (2012) 233-246).
Irisarri et al. teaches a sodium ion battery using sodium metal as counter electrode (i.e. positive electrode) and a negative electrode comprising casted hard carbon containing slurry (page A4059 right col. 3rd para., page A4058 left col. first para., page A408 last para.-page A409 first para., table I). Irisarri et al. further teaches the hard carbon having an amount of CO2 being detected in TPD-MS being from about 0.2 to 0.3 mmol/g, and having an amount of CO being detected in TPD-Ms being from 0.46 to 0.94 mmol/g ( Fig. 8 and Fig 9 ), wherein such CO amount and CO2 amount respectively is within or overlap with that of instantly claimed CO amount and CO2 amount while CO having a desorption peak around 700 °C and CO2 having a desorption peak around 400 °C.
Regarding claim 1, Irisarri et al. does not expressly teach “an amount of generated CO2 is detected in thermal programmed desorption-mass spectrum (TPD-MS) to be less than or equal to 1.0 mmoL/g and an amount of generated CO is detected in thermal programmed desorption-mass spectrum to be less than or equal to 2.0 mmoL/g, when the hard carbon is heated from 50 °C to 1050 °C”, however, Irisarri et al. already teaches a same or substantially the same hard carbon having same or substantially the same amount of CO and same or substantially the same amount of CO2 detected as that of instantly claimed, therefore, same or substantially the same “an amount of generated CO2 is detected in thermal programmed desorption-mass spectrum (TPD-MS) to be less than or equal to 1.0 mmoL/g and an amount of generated CO is detected in thermal programmed desorption-mass spectrum to be less than or equal to 2.0 mmoL/g, when the hard carbon is heated from 50 °C to 1050 °C” would be associated or expected.
As for the claimed negative electrode sheet, Irisarri et al. discloses the negative electrode being casted as shown by Ponrouch disclosed method, wherein Ponrouch discloses the electrode material (e.g. carbon) containing slurry being casted onto a copper foil, then pressed and dried forming the electrode (see Ponrouch page 234 left col. 3rd para.), wherein a negative electrode sheet is envisioned.
Alternatively, it would have been obvious for one of ordinary skill in the art to adopt a well-known negative electrode sheet to practice the negative electrode of Irisarri et al. because adopting such well-known technique of electrode sheet to modify a well-known hard carbon containing negative electrode for improvement would have predictable results (see MPEP§ 2143 KSR).
Regarding claim 2, such limitations have been met as discussed above.
Regarding claim 3, Irisarri et al. does not expressly teach “an amount of generated H₂ is detected in thermal programmed desorption-mass spectrum (TPD- MS) to be less than or equal to 1.0 mmoL/g, when the hard carbon is heated from 50 °C to 1,050 °C”, but Irisarri et al. expressly teaches the hard carbon having an amount of hydrogen being detected by TPD-MS as shown in Fig 8. Since already teaches a same or substantially the same hard carbon having same or substantially the same hydrogen desorption capability, same or substantially the same “an amount of generated H₂ is detected in thermal programmed desorption-mass spectrum (TPD- MS) to be less than or equal to 1.0 mmoL/g, when the hard carbon is heated from 50 °C to 1,050 °C” as that of instantly claimed would be associated or expected.
Regarding claim 6 and 7, Irisarri et al further teaches the hard carbon having XRD patterns exhibit only two wide low intensity bands at ca. 23 ° and 42° in 2θ, corresponding to 002 and 100 (page A4063 left col. last para.). Irisarri et al also teaches the hard carbon can have specific surface area less than 5 m2/g, such as 0.8 or 2.4 m2/g (table I).
Claim 4 and 18 are rejected under 35 U.S.C. 103 as obvious over Irisarri et al (Optimization of Large Scale Produced Hard CarbMitsui (mance in Na-Ion Batteries: Effect of Precursor, Temperature and Processing Conditions, Journal of The Electrochemical Society, 165 (16) A4058-A4066 (2018)) as evidenced by Ponrouch (Optimisation of performance through electrode formulation in conversion materials for lithium ion batteries: Co3O4 as a case example, Journal of Power Sources 212 (2012) 233-246) as applied above, and in view of Mitsui (WO2017/110796) (For applicant’s convenience Machine translation has been provided for citations hereof).
Regarding claim 4, Irisarri et al does not expressly teach the mass content of C element in the hard carbon being from 95% to 98%.
Mitsui teaches carbon material used for negative electrode material can have carbon content 95% by mass or more, e.g. 100% by mass and such carbon material can be hard carbon (page 4 lines 14-28).
It would have been obvious for one of ordinary skill in the art to adopt such well-known content of carbon as shown by Mitsui to modify the hard carbon of Irisarri et al because adopting such well-known technique of carbon content in a carbon material to modify a well-known hard carbon material for improvement would have predictable results (see MPEP §2143 KSR).
Regarding claim 18, Irisarri et al does not expressly teach an electric apparatus comprising the secondary battery containing hard carbon.
Mitsui teaches a secondary battery containing the hard carbon can be contained in electric apparatus such as mobile phone or automobile (page 2 first para.).
It would have been obvious for one of ordinary skill in the art to adopt Irisarri et al disclosed secondary battery into an electric apparatus such as mobile phone or automobile as shown by Mitsui for intended application of such secondary battery.
Claim 5 is rejected under 35 U.S.C. 103 as obvious over Irisarri et al (Optimization of Large Scale Produced Hard Carbon Performance in Na-Ion Batteries: Effect of Precursor, Temperature and Processing Conditions, Journal of The Electrochemical Society, 165 (16) A4058-A4066 (2018)) as evidenced by Ponrouch (Optimisation of performance through electrode formulation in conversion materials for lithium ion batteries: Co3O4 as a case example, Journal of Power Sources 212 (2012) 233-246) as applied above, and in view of Shen(CN113363468) (For applicant’s convenience Machine translation has been provided for citations hereof).
Regarding claim 5, Irisarri et al does not expressly teach in a Raman spectrum of the hard carbon having a Id/Ig from 1.2 to 1.3. However, Irisarri et al already teaches hard carbon can have Id/Ig range from 1.42 to 1.78 (table II).
Shen teaches a modified hard carbon and modification of hard carbon whose Raman test results of each hard carbon material are shown in Table 1, where values of Id/lg are commonly used to assess the number of carbon material defects and the degree of disorder, the larger the Id/lg value, the more defects and the more disorder of the material. Shen also teaches the Id/Ig of commercially available hard carbon is 1.23 and such Id/Ig range can be modified (page 4, table 1).
It would have been obvious to adopt a same Id/Ig of the hard carbon as that of instantly claimed via routine experimentation (see MPEP§ 2144. 05 II) to modify the hard carbon of Irisarri et al because by doing so can help obtaining a hard carbon with desired disorder degree and controlling the hard carbon material defects as suggested by Shen.
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, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (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 1-3 and 5-7, 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 and 18-19 of U.S. Patent No. 12126023 in view of Irisarri et al (Optimization of Large Scale Produced Hard Carbon Performance in Na-Ion Batteries: Effect of Precursor, Temperature and Processing Conditions, Journal of The Electrochemical Society, 165 (16) A4058-A4066 (2018)). US’023 teaches a same or substantially the same secondary battery comprising a negative electrode sheet which comprises a hard carbon and such hard carbon has same or substantially the same Id/Ig range, X-ray diffraction pattern with 2-theta value corresponding to peaks 002 between 22° and 24° etc. US’023 does not expressly teach the instantly claimed amount of generated CO2, CO or hydrogen detected by TPD-MS, but such limitations are taught by Irisarri et al as discussed above. It would have been obvious for one of ordinary skill in the art to adopt such well-known amount of generated CO2, CO or hydrogen detected by TPD-MS as shown by Irisarri et al to modify the hard carbon of US’023 because adopting such well-known technique to modify a well-known hard carbon for improvement would have predictable results.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 and 18-19 of U.S. Patent No. 12126023 in view of Irisarri et al (Optimization of Large Scale Produced Hard Carbon Performance in Na-Ion Batteries: Effect of Precursor, Temperature and Processing Conditions, Journal of The Electrochemical Society, 165 (16) A4058-A4066 (2018)) as applied above, and further in view of Mitsui (WO2017/110796).
US’023 in view of Irisarri et al does not expressly teach the carbon content in the hard carbon but such limitation has been taught by Mitsui. It would have been obvious for one of ordinary skill in the art to adopt such well-known content of carbon as shown by Mitsui to modify the hard carbon of US’023 in view of Irisarri et al because adopting such well-known technique of carbon content in a carbon material to modify a well-known hard carbon material for improvement would have predictable results (see MPEP§ 2143 KSR).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example Yang to CN 110577204 teaches a N/O co doped hard carbon material.
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/JUN LI/ Primary Examiner, Art Unit 1732
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