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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 2025 has been entered.
Response to Arguments
Applicant’s arguments in regard to the prior art have been considered but are moot because the new ground of rejection does not rely on the lead acid battery of Bosnyak et al. The previously noted prior art (Nakamura et al.) is now considered the most relevant prior art to claims as currently presented. Applicant has failed to address and the Double Patenting rejection and such maintained below. The Examiner notes that the response filed 25 November 2025 indicates a terminal disclaimer has been filed but no terminal disclaimer is included.
The Examiner maintains that this application is attempting to claims a very well-studied material (carbon nanotube conductive aids) and the volumes of prior art, such as those references cited above, speak to the obviousness of the necessity to optimize the variables claimed (size and uniformity etc.). Furthermore, the instant claims fail to establish criticality of the claimed ranges (by failing to be reasonable commensurate in scope with the results shown in the specification – see MPEP 716.02(d)) because the claims do not positively require a particular active material and binder or a particular amount of the MWCNTs. There is a single material combination tested in the instant specification –
[0078]Li(Ni0.6Mn0.2Co0.2)O2 as a positive electrode active material and PVdF as a binder were used. The positive electrode active material, the conductive material dispersed solution, and NMP were mixed to prepare a positive electrode slurry which has a solid content of 72% and in which a weight ratio of the positive electrode active material, the binder, the dispersant, and the multi-walled carbon nanotubes is 98:1.52:0.08:0.4.
The instant specification provides for two working Examples and two comparative Examples. Such limited data is not reasonably commensurate in scope with the breadth of the independent claim which current allows for any positive electrode active material/binder/MWCNT combination in any amount (such as for example lithium titanium oxide, SBR rubber and MWCNT in a 40:10:50 ratio). Therefore, the claims have not been given the benefit of unexpected results.
The prior art Nakamura et al. below appreciates the criticality for the size and distribution of the MWCNT and therefore obviates the claimed ranges including standard deviation as the claims currently lack criticality.
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.
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-21 of US Patent No. 12,531,249. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are currently broader than the co-pending claims. The patented claims require a lithium ion battery comprising: a first electrode, a second electrode, an electrolyte, and a separator interposed between the first electrode and the second electrode, wherein the first electrode comprises a current collector and a first electrode active material layer disposed on the current collector, wherein the first electrode active material layer comprises a lithium oxide containing at least one transition metal, multi-walled carbon nanotubes, and a binder, wherein the multi-walled carbon nanotubes have an average length of 1 μm to 2 μm and a length standard deviation at 0.5 μm or less, wherein no multi-walled carbon nanotube having a length exceeding 3 μm is included in the first electrode active material layer, wherein the first electrode active material layer contains the multi-walled carbon nanotubes in an amount from 0.1 wt. % to 1 wt. % with respect to a total weight of the first electrode active material layer in a manner which obviates the claimed ranges.
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,929,496. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are currently broader than the patented claims. The Examiner notes that the patented independent claim recites: “1. A positive electrode comprising: a current collector; and a positive electrode active material layer disposed on the current collector, wherein the positive electrode active material layer includes a positive electrode active material, a binder, and-a multi-walled carbon nanotubes, wherein the multi-walled carbon nanotubes have an average length of 1 to −2 μm and have a length standard deviation of 0.5 μm or less, wherein lengths of all of the multi-walled carbon nanotubes are from 0.5 to −3.0 μm, and wherein the multi-walled carbon nanotubes are contained in an amount of 0.1 to 1 wt % with respect to a total weight of the positive electrode active material layer” and the negative symbol in the ranges (see emphasis added above) appears to be an artifact of the amendments in the parent application where a strike through of a dash in the previously cited range did not translate to the printed claims.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (US Pub 2017/0331112 cited in IDS).
Regarding claim 1 and 2, Nakamura teaches a positive electrode (see [0130]) comprising:
a current collector (slurry applied to aluminum foil ([0131])); and
a positive electrode active material layer disposed on the current collector,
wherein the positive electrode active material layer includes a positive electrode active material (nickel manganese lithium cobaltite – i.e. a lithium oxide compound substituted with one or more transition metals), a PVDF binder, and a multi-walled carbon nanotube (10g MWCNT paste A - [0130]) where the MWCNT have a fiber length such as preferably 1.5 microns, and 99% or more by number of the MWCNTs conform to the described fiber diameter, aspect ratio and fiber length requirements (see discussion on multi-walled carbon nanotubes, [0030]-[0033]).
Nakamura does not teach wherein the multi-walled carbon nanotubes have a length standard deviation of 0.5 µm or less. However, this feature would have been obvious in view of Nakamura as the materials described and shown in the figures and micrographs show a material which overlaps the claimed range in a manner which provides a prima facie case of obviousness (see MPEP 2144.05).
Nakamura teaches an electrically conductive paste that is easily dispersed without leaving aggregates ([0014]). The conductive paste may include multi-walled carbon nanotubes (hereafter referred to as MWCNTs, see [0030]-[0041]). The dimensions of the MWCNTs are discussed at [0033]-[0034]. Nakamura specifically teaches that the length of the MWCNTs are preferably from 1.0 to 10 µm, and more preferably 1.5 to 5 µm, and both of these ranges overlap with the instantly claimed average length range of 1-2 µm. Overlapping ranges are prima facie evidence of obviousness, see MPEP 2144.05 §I. Thus, it would have been obvious before the effective filing date of the claimed invention to have arrived at the claimed invention wherein the average length of the MWCNTs are from 1-2 µm, because Nakamura teaches a length that overlaps with the claimed range.
Regarding the limitation that the length standard deviation is 0.5 µm or less, Nakamura does not explicitly teach this feature. However, Nakamura teaches that the length of the MWCNTs is a result-effective variable. Specifically, Nakamura teaches that the length of the MWCNTs is a result-effective variable for conduction (“[w]hen the fiber length is too short, the nanotubes have little effect of imparting conductivity” ([0033])) and for dispersibility (“[w]hen the fiber length is too long, the nanotubes tend to be poor in the dispersibility in the electrically conductive paste.” ([0033]))
Generally, such differences will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating the claimed parameter is critical. “[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). See MPEP 2144.05 §II.A. In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) and MPEP 2144.05 §III.A.
Thus, absent evidence of unexpected results, it would have been obvious before the effective filing date of the claimed invention to have arrived at the claimed positive electrode by routine experimentation. Further, as noted above the claim only requires a single MWCNT with the claimed properties.
Regarding claims 3-5¸ Nakamura teaches in the Positive Electrode Example of paragraphs [0130-0131] that 96.5 g of positive electrode active material substance is mixed with 3g binder and 10 g MWCNT paste (which contains 5% MWCNTs therefore the mass of MWCNTs is 0.5g, note the solvents in the paste volatize and do not contribute to final positive electrode active material layer - see Paste A production in [0120]) which correlates to an active material, binder and MWCNT ratio of 96.5: 3 :0.5 which is an example which falls squarely within the claimed ranges (see MPEP 2131.03: Anticipation of Ranges). Alternatively, the prior art discloses more general ranges which overlap with the claimed range. Overlapping ranges are prima facie evidence of obviousness, see MPEP 2144.05 §I.
Regarding claim 6¸ Nakamura teaches wherein a loading amount of the positive electrode active material layer is 15 mg/cm2 (see [0131], the example positive electrode was coated with 15 mg/cm2).
Regarding claim 7, Nakamura teaches a secondary battery (see [0134], a reference cell was made using the MWCNT-containing electrodes) comprising: a positive electrode according to claim 1 (see [0130]-[0131] and rejection of claim 1 above), a negative electrode (see [0132]-[0133]); a separator interposed between the positive electrode and the negative electrode (polypropylene microporous film, see [0134]); and an electrolyte (see [0135]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure – Shimooka et al. (US Pub 2011/0262796) teaches a positive electrode comprises a positive electrode material mixture layer containing a positive electrode (1) active material and a conductivity enhancing agent on one or both sides of a current collector, where the positive electrode active material contains a lithium-containing composite oxide, and the conductivity enhancing agent contains carbon fibers having an average fiber length of 10-1000 nm and an average fiber diameter of 1-100 nm or less, and the content of the carbon fibers in the positive electrode material mixture layer is 0.25-1.5 mass % (abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas P D'Aniello whose telephone number is (571)270-3635. The examiner can normally be reached Monday to Friday 9am to 5pm EST.
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/NICHOLAS P D'ANIELLO/Primary Examiner, Art Unit 1723