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
2. Applicant's election with traverse of Species I (Claims 1 and 5-11) in the reply filed on June 1, 2026, is acknowledged. The traversal is on the ground(s) that, “Regarding the species, the Office states merely that the application contains patentably distinct species and that "these species are not obvious variants of each other based on the current record.” However, the Office has not provided any reasoning regarding this being a patentable distinction. Further, the Requirement does not state how any differences would cause these different species to have a relevant difference in the context of the present application. The Requirement merely states a conclusion. Therefore, Applicant submits that no adequate reasons have been provided to support a conclusion of patentable distinctness between the species”. This is not found persuasive because This is not found persuasive because regardless of search method, invention of different limitations will require different search strategies, and the time to consider the relevancy of collective references would increase proportionally as well.
The requirement is still deemed proper and is therefore made FINAL.
3. Claims 2-4 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 1, 2026.
Priority
4. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f), which papers have been placed of record in the file.
Information Disclosure Statement
5. Information disclosure statements (IDS), submitted January 5, 2024; July 31, 2025; October 22, 2025; and, April 1, 2026, have been received and considered by the examiner.
Claim Rejections - 35 USC § 102
6. 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.
7. 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.
8. Claims 1, 5-7 and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mutoh et al. (US 2016/0181602 A1).
With regard to Claim 1, Mutoh et al. disclose a coated carbon material where a carbon material is coated with an organic compound (paragraphs 0085-0115). Mutoh et al. do not specifically disclose wherein a ratio Tol SA/Nn-SA of a BET specific surface area Tol-SA by toluene adsorption to a BET specific surface area Nn-SA by nitrogen adsorption is 0.70 to 0.95. However, such properties are inherent given that both Mutoh et al. and the instant application utilize the same materials. A reference which is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. See MPEP 2112.
With regard to Claim 5, Mutoh et al. disclose wherein the carbon material is graphite (paragraphs 0085-0115).
With regard to Claim 6, Mutoh et al. disclose wherein the carbon material contains pores (paragraphs 0085-0115).
With regard to Claim 7, Mutoh et al. disclose wherein the organic compound comprises a polyvinyl alcohol resin-derived compound (paragraph 0103).
With regard to Claim 10, Mutoh et al. disclose a negative electrode comprising a current collector and an active material layer formed on the current collector, wherein the active material layer comprises the coated carbon material noted above (paragraphs 0134-0144).
With regard to Claim 11, Mutoh et al. disclose a secondary battery comprising a positive electrode, a negative electrode and an electrolyte, wherein the negative electrode is the negative electrode noted above (paragraphs 0145-0150).
Claim Rejections - 35 USC § 103
9. 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.
10. 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.
11. 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.
12. Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Mutoh et al. (US 2016/0181602 A1), as applied to Claims 1, 5-7 and 10-11 above, and in further view of Himizu et al. (US 2020/0131379 A1).
With regard to Claims 8-9. Mutoh et al. disclose the coated carbon material in paragraph 8 above, but do not specifically disclose wherein the polyvinyl alcohol resin-derived compound contains a reactive substituent, and wherein the reactive substituent contains at least one substituent selected from a hydroxyl group, a carboxyl group, a carbonyl group, an acetyl group, a (meth)acrylic group, an epoxy group, a vinyl group, a hydrolyzable silyl group, a silanol group and a hydrosilyl group.
Himizu et al. disclose the use of polyvinyl alcohol resin-derived compounds containing a reactive substituent, in a case wherein modified polyvinyl alcohol is synthesized with methacrylic monomers, vinyl ester monomers, monomers having α-β unsaturated bonds and functional groups, and the like in a methanol solution or the like. In addition, the modified polyvinyl alcohol resin can be obtained by adding an acid anhydride to a polyvinyl alcohol resin to react them (paragraphs 0080-0088). Before the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the coated carbon material of Mutoh et al. to include the polyvinyl alcohol resin-derived compound containing a reactive substituent, and wherein the reactive substituent contains at least one substituent selected from a hydroxyl group, a carboxyl group, a carbonyl group, an acetyl group, a (meth)acrylic group, an epoxy group, a vinyl group, a hydrolyzable silyl group, a silanol group and a hydrosilyl group, because Himizu et al. teach that by using this type of polymer, film formability and film hardness can be adjusted, or rheological control can be performed.
Conclusion
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARIE O APICELLA whose telephone number is (571)272-8614. The examiner can normally be reached Monday thru Friday; 8:00AM to 5:00PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Buie-Hatcher can be reached at 571-270-3879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARIE O'NEILL APICELLA/Primary Examiner, Art Unit 1725
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