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 .
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 4, 6, 11, 13, 17 and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. (CN204490510).
Regarding claims 1 and 11, Chen teaches that it is known to treat impure graphite with sodium hydroxide and water under conditions so as to remove a portion of impurities wherein thereafter the remaining composition is treated with hydrochloric and nitric acid and thereafter cleaned with water and dried to obtain purity in the range claimed (see preferred embodiment section). Further it is noted that although Chen does not explicitly state that the composition is a “slurry” after step (a), graphite is insoluble in water and as such forms an insoluble mixture, technically indistinguishable from a “slurry”, which is undefined by the current specification.
Regarding claim 4, Chen teaches that the graphite is reacted with sodium hydroxide dissolved in water, implying that it was formed prior to mixing with the graphite composition.
Regarding claim 6, Chen does not teach that pressure modification is employed in step (a) reasonably implying that the step takes place at atmospheric pressure.
Regarding claim 13, Chen teaches that his hydrochloric reaction time range substantially overlaps the range of the current claims.
Regarding claim 17, nitric acid is a known oxidizing agent.
Regarding claim 21, because the graphite of Chen is reportedly as pure as that currently claimed, it would be expected to exclude the same amounts of impurities claimed herein, especially considering that the graphite of Chen is processed in the same manner claimed as shown above. The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3, 8, 14 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (CN204490510) as applied to claims 1, 4, 6, 11, 13, 17 and 21 above.
Regarding claim 3, the teachings of Chen are as shown above. Chen fails to teach wherein the graphite is employed is from sodium ion batteries. However, the examiner is taking Official Notice to inform the applicant that sodium-ion batteries are a known source of impure graphite. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to treat graphite obtained from sodium ion batteries as a simple substitution of the graphite source of Bunney with that of sodium ion batteries wherein the results of said substitution would be predictable given that the method of Chen is employed on impure graphite.
Regarding claim 8, the teachings of Chen are as shown above. Chen is silent as to the solid-liquid ratio employed in his step (a). However, those of ordinary skill in the art would readily recognize that the step (a) is a chemical purification step as stated by Chen wherein oxides and silicates are converted to soluble components that are easily removed from the graphite wherein if not enough liquid is present, effective purification would not occur while using large amounts of purification materials in the fluid would be wasteful. Therefore, in the absence of criticality of the specific liquid-solid ratio of the current claims it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the solid-liquid ratio of Chen in order to balance factors affecting the purification step of Chen as described above. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 14, the teachings of Chen are as shown above. Chen is silent as to the solid-liquid ratio employed in his step (b). However, those of ordinary skill in the art would readily recognize that the step (b) is a leaching step wherein if not enough liquid is present, effective leaching would not occur while using large amounts of leaching fluid would be wasteful. Therefore, in the absence of criticality of the specific liquid-solid ratio of the current claims it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the solid-liquid ratio of Chen in order to balance factors affecting the leaching of Chen as described above. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 18, the teachings of Chen are as shown above. Chen teaches the use of nitric acid as claimed but is silent as to the amount of nitric acid employed such that it could be calculated as a percent of the hydrochloric acid solution. However, those of ordinary skill in the art would readily recognize that purpose of the nitric acid as an oxidizer as claimed wherein the amount of oxidizer present would directly control the ability of oxidizable components present in the impure graphite composition to be oxidized and thereafter dissolved so that they can be removed from the non-soluble graphite. Therefore, in the absence of criticality of the specific wt% of nitric acid claimed, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of nitric acid present in the invention of Chen in order to control the amount of oxidation and thus the level of especially metallic components present in the impure graphite of Chen.
Claim(s) 2 and 22-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (CN204490510) as applied to claims 1, 4, 6, 11, 13, 17 and 21 above and further in view of Kameda et al. (USPGPub 2012/0052393).
Regarding claim 2, the teachings of Chen are as shown above. Chen Bunney fails to teach wherein the graphite is further coated with amorphous carbon. However, Kameda teaches that it is known to coat the surface of graphite with amorphous carbon in order to provide a single material with both the properties of graphite and amorphous carbon [0004]. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to coat the graphite of Chen as guided by Kameda in order to form a material having both the properties of graphite and amorphous carbon as guided by Kameda.
Regarding claims 22-23, Kameda teaches employing the ratio of amorphous carbon source material and graphite claimed [0144-150].
Regarding claim 24, Kameda teaches specific surface areas in the range claimed [0052-0053][0078-0079].
Regarding claim 25, Kameda teaches the use of tap densities in the claimed range (abstract).
Claim(s) 5, 7, 9-10, 12, 15-16, 19-20 and 26-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (CN204490510) as applied to claims 1, 4, 11, 13, 17 and 21 above and further in view of Bunney et al. (USPGPub 2022/0281750).
Regarding claim 5, the teachings of Chen are as shown above. Chen fails to state the temperature at which step (a) is carried out. However, Bunney teaches that it known to treat graphite in a first hydroxide exposure step involving a hydroxide agent at a temperature that reads upon the current claimed temperature range, wherein the process is also noted as generally following that claimed including a later hydrochloric acid treatment step wherein the final product is purified graphite derived from impure graphite. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the hydroxide treatment step temperature of Bunney in the hydroxide treatment step of Chen generally employed for the same purpose wherein the substitution would have been predictable based upon the suitability of the temperature of Bunney for the intended purposes Chen.
Regarding claim 7, the teachings of Chen are as shown above. Chen fails to state the treatment time for step (a). However, Bunney teaches that it known to treat graphite in a first hydroxide exposure step involving a hydroxide agent using a timeframe that reads upon the current claimed timeframe, wherein the process is also noted as generally following that claimed including a later hydrochloric acid treatment step wherein the final product is purified graphite derived from impure graphite. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the hydroxide treatment step time of Bunney in the hydroxide treatment step of Chen generally employed for the same purpose wherein the substitution would have been predictable based upon the suitability of the time of Bunney for the intended purposes Chen.
Regarding claims 9-10 and 26-27, the teachings of Chen are as shown above. Chen fails to state concentration of strong base in step (a). However, Bunney teaches that it known to treat graphite in a first hydroxide exposure step involving a hydroxide agent using a concentration of strong base that reads upon the current claimed timeframe, wherein the process is also noted as generally following that claimed including a later hydrochloric acid treatment step wherein the final product is purified graphite derived from impure graphite. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the hydroxide treatment step strong base concentration of Bunney in the hydroxide treatment step of Chen generally employed for the same purpose wherein the substitution would have been predictable based upon the suitability of the strong base concentration of Bunney for the intended purposes Chen.
Regarding claim 5, the teachings of Chen are as shown above. Chen fails to state the temperature at which step (a) is carried out. However, Bunney teaches that it known to treat graphite in a first hydroxide exposure step involving a hydroxide agent at a temperature that reads upon the current claimed temperature range, wherein the process is also noted as generally following that claimed including a later hydrochloric acid treatment step wherein the final product is purified graphite derived from impure graphite. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the hydroxide treatment step temperature of Bunney in the hydroxide treatment step of Chen generally employed for the same purpose wherein the substitution would have been predictable based upon the suitability of the temperature of Bunney for the intended purposes Chen.
Regarding claim 12, the teachings of Chen are as shown above. Chen fails to state the temperature at which step (b) is carried out. However, Bunney teaches that it known to treat graphite in a first hydroxide exposure step involving a hydroxide agent followed by a process including a later hydrochloric acid treatment step similar to step (b) performed in the temperature range claimed, wherein the final product is purified graphite derived from impure graphite. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the step (b) temperature of Bunney in the HCl treatment step of Chen generally employed for the same purpose wherein the substitution would have been predictable based upon the suitability of the temperature of Bunney for the intended purposes Chen.
Regarding claims 15-16, the teachings of Chen are as shown above. Chen fails to state concentration of HCl in step (b). However, Bunney teaches that it known to treat graphite in a first hydroxide exposure step involving a hydroxide agent using a concentration of HCl that reads upon the current claimed timeframe, wherein the process is also noted as generally following that claimed earlier sodium hydroxide treatment step. wherein the final product is purified graphite derived from impure graphite. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the HCl concentration of Bunney in the step (b) of Chen generally employed for the same purpose wherein the substitution would have been predictable based upon the suitability of the strong base concentration of Bunney for the intended purposes Chen.
Regarding claim 19, the teachings of Chen are as shown above. Chen fails to teach washing the graphite composition between steps (a) and (b) using de-ionized water. However, Bunney teaches that it known to wash graphite treated with hydroxide compositions as is done by Chen before a later HCl treatment step also performed by Chen. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to include washing technique of Bunney in the known process of Chen ready for improvement wherein the results of incorporation would’ve been predictable based upon the teachings of Bunney and would be expected to provide a cleaner, improved product due to the additional cleaning step.
Regarding claim 20, it is noted that repeating the steps of Chen in view of Bunney reads upon referencing the treatment and washing steps as a single step and separating that single step into multiple steps that are equivalent in terms of function, manner and result. The Court has long held that this splitting of one step into two does not patentably distinguish the claimed process over the prior art process. See ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959).
Regarding claim 28, the teachings of Chen in view of Bunney are as shown above. Chen in view of Bunney generally teaches performing his step (a) at temperature range of 120-300C and standard pressure wherein water is “dehydrated” in step (a). However, the examiner is taking Official Notice to inform the applicant that those of ordinary skill in the art readily recognize that increasing in boiling or volatilization temperatures, especially for water, increases the speed of removal of the water by volatilization. However, water boils at higher temperature at higher pressure and lower temperature at lower pressure. Therefore modifications to pressures of water volatilization vary directly with the pressure and changes in pressure allow for modification to temperature to achieve the same result. The realization of this effect is seen in many fields such as cooking wherein products may provide different temperature instructions for cooking in different location such as in the mountains of Colorado due to the decreased pressure there or the use of pressure cookers to apply additional temperature to a food composition to speed cooking while preventing the escape of the cooking fluid through volatilization. This is further seen in freeze drying of many products wherein liquid water is frozen and preserve is removed to cause immediate evaporation of the water without changing to liquid. Therefore, in the absence of criticality of the specific pressure range of the current claims, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the pressure of the step (a) of Chen in view of Bunney in order to control the temperature employed in the invention of Chen in view of Bunney thereby achieving similar results. Further as describe above alterations to the pressure directly affect the volatilization of the water present in step (a), wherein volatilization temperature, volatilization rate and pressure employed all directly affect one another and are all controllable variables that affect one another. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. Further the examiner is taking Official Notice to inform the applicant that in general pressurization requires a sealed environment in order to contain the pressure. This is associated with vacuum chambers, freeze drying, gas and refrigerant tanks and vacuum pumps as well as objects like vacuum tubes and light bulbs. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide the pressure of Chen in view of Bunney using a sealed chamber because it is the common way to provide increased or decreased pressure known to those of ordinary skill in the art in almost all fields wherein increased or decreased pressure in provided.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection as the primary reference. As such, all arguments provided are not largely relevant to any of the particular combinations of references provided.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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/ANDREW J BOWMAN/ Examiner, Art Unit 1717
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