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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-12, drawn to an anode active material, anode thereof, and a secondary battery thereof, classified in H01M 10/0525.
II. Claims 13-15 drawn to a method for preparing an anode active material, classified in H01M 4/583.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the product as claimed can be made by another and materially different process, for example, a process involving supporting graphite in a non-organic solvent.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
A search burden exists due to the different classifications of each invention, see above.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Attorney Grace Kim on 09 June 9, 2026 a provisional election was made without traverse to prosecute the invention of a method for preparing an anode active material, Claims 13-15. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-12 are provisionally withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Priority
Acknowledgment is made that the instant application was effectively filed on 10 October 2023, but claims priority to Korean Patent Application No. KR 10-2021-0129991, filed on 11 October 2022.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10 October 2023, 01 March 2024, and 11 July 2025 were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 13, the recitations “wherein graphite has an interlayer distance d002 increased by 0.001 Å to 0.003 Å” is indefinite, because it is unclear whether applicant intends for this graphite to be the dried graphite, low-temperature treated graphite, graphite supported in the organic solvent, or an additional, previously unrecited graphite. Further, the claim is indefinite because it is unclear what value the interlayer distance is increased relative to; the claim could be reasonably interpreted to mean the final graphite d002 value is increased relative to that of the starting material, or that the graphite d002 value is increased relative to a theoretical value for graphite interlayer distance.
For examination purposes, the aforementioned recitation is interpreted such that the anode active material comprises, at any step, a graphite with an interlayer distance d002 increased by 0.001 Å to 0.003 Å, relative to any other component graphite involved in the method.
Regarding claim 15, the recitations “the low temperature treatment…” is indefinite, because there is insufficient antecedent basis for this limitation in the claim; it is unclear whether applicant intends for the low-temperature treatment step to be the same as the low-temperature treating of the graphite in claim 13 or an additional treatment.
For examination purposes, the aforementioned recitation is interpreted to mean “the low-temperature treating…”.
Claims 14-15 are rejected, as they depend from, and therefore incorporate the claimed subject matter from claims rejected under this statute.
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.
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.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (CN 110429265, Machine Translation attached), in view of Kim et al. (U.S. Pub. US 2022/0344648), Li et al. (CN 110182908, Machine Translation attached) and Harada et al. (WO 2020110942, Machine Translation attached).
Regarding claim 13, Chen teaches a method for preparing an anode active material (see Example 2, Page4), comprising the steps of:
supporting graphite (microcrystalline graphite, Page4:L23) in a solvent (nitric acid/potassium permanganate, Page4:L23);
low-temperature treating (ice water bath, Page4:L24-25) graphite supported in the solvent;
drying low-temperature treated graphite (placed in vacuum oven, Page4:L27); and
mixing dried graphite with a silicon-based active material (ball milled with nano-silica powder, Page4:L32-33),
wherein graphite (micro-expanded graphite (MEG), Page4:L32, see 35 U.S.C. § 112b rejection, above for interpretation) has an interlayer distance d002 increased (layer spacing d002 increased to 0.3354818 nm, Page5:L39-41, see explanation below),
but does not teach supporting graphite in an organic solvent, low-temperature treating graphite supported in the organic solvent, and wherein graphite has an interlayer distance increased by 0.001 Å to 0.003 Å.
However, Kim teaches supporting graphite (graphite-based material, [0062]) in an organic solvent (organic solvent, [0062]).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the solvent of Chen, such that it was an organic solvent, as taught by Kim teaches it as an effective equivalent solvent in which graphite-based materials can be dissolved or dispersed for subsequent processing ([0058 and 0062]).
Chen, in view of Kim, still does not teach low-temperature treating graphite supported in the organic solvent, and wherein graphite has an interlayer distance increased by 0.001 Å to 0.003 Å.
Further, Li teaches low-temperature treating graphite (graphite immersed in liquid nitrogen, Page2:L3, see explanation, below) in an organic solvent (ethanol solution, Page2:L3-4).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the step of low-temperature treatment of Chen, in view of Kim, such that it occurs in an organic solvent, as taught by Li, to obtain expanded graphite useful for electrodes (Page1:L32-34).
It is the position of the Examiner that while the graphite is immersed in liquid nitrogen prior to being supported in the organic solvent, the treatment taught by Li of expanding the graphite only occurs once the graphite is immersed in ethanol, while still at low temperature (see Page3:L17-19).
Chen, in view of Kim and Li, still does not teach wherein graphite has an interlayer distance increased by 0.001 Å to 0.003 Å.
However, Harada teaches graphite (artificial graphite, Example 16, Table 3, see 35 U.S.C. § 112b rejection, above for interpretation) has an interlayer distance d002 increased by 0.001 Å to 0.003 Å (increased by 0.001 Å, Example 1, see Annotated Table 1, and explanation, below).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the graphite of Chen, such that the interlayer distance, is increased by 0.001 Å, as taught by Harada, to provide increased space for lithium intercalation, resulting in higher capacity (Page5:L32-37).
Examiner’s Annotated Table 1
PNG
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164
857
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Greyscale
It is the position of the Examiner that Harada teaches the artificial active graphite has an interlayer distance 3.357 Å (Example 1) increased compared to the natural graphite component with an interlayer distance of 3.356 Å (Page10:L11-17).
Regarding claim 14, Chen in view of Kim, Li, and Harada, teaches wherein the organic solvent (organic solvent, [0062] of Kim, see rejection of claim 13 for modification) is selected from the group consisting of a linear alcohol-based organic solvent (ethanol, [0062] of Kim), a linear carbonate-based organic solvent, a cyclic carbonate-based organic solvent, a linear ester-based organic solvent, a ketone-based organic solvent, and mixtures thereof.
Regarding claim 15, Chen, in view of Kim, Li, and Harada, teaches wherein the low-temperature treatment (ice bath, see 35 U.S.C. § 112b rejection, above for interpretation) is performed at 0 to -40°C (0°C, Page4:L24-25, see explanation below) for 0.1 to 168 hours (4 hours, Page4:L24-25).
It is the position of the Examiner that the ice bath is performed at or below 0°C, because one of ordinary skill in the art would recognize 0°C to be the temperature at which ice generally forms. While the lower bound is not specified, one of ordinary skill in the art would recognize that the conditions required for temperatures to fall below -40°C are not disclosed by Chen (i.e., dry ice, liquid nitrogen, nonaqueous solvent system, etc.). Therefore, Chen inherently teaches a temperature in the claimed range.
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 13-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 6-13 of copending Application No. 18/286,102 [hereinafter ‘102], in view of Chen et al. (CN 110429265, Machine Translation attached).
Regarding claim 13, ‘102 teaches a method for preparing an anode active material, comprising the steps of: supporting graphite in an organic solvent; low-temperature treating graphite supported in the organic solvent; drying low-temperature treated graphite; and, wherein graphite has an interlayer distance d002 increased by 0.001 Å to 0.003 Å (Claim 11 of ‘102),
but does not teach mixing dried graphite with a silicon-based active material.
However, Chen teaches mixing dried graphite with a silicon-based active material (ball milled with nano-silica powder, Page4:L32-33).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the method of preparing an anode active material of ‘102, such that it further comprises mixing the graphite with a silicon-based active material to form an anode active material, as taught by Chen, to provide an anode material with improved cycle stability and lithium ion implantation (Page3:L10-13).
Regarding claim 14, ‘102, in view of Chen, teaches wherein the organic solvent is selected from the group consisting of a linear alcohol-based organic solvent, a linear carbonate-based organic solvent, a cyclic carbonate-based organic solvent, a linear ester-based organic solvent, a ketone-based organic solvent, and mixtures thereof (Claim 12 of ‘102).
Regarding claim 15, ‘102, in view of Chen, teaches wherein the low-temperature treatment is performed at 0 to -40°C for 0.1 to 168 hours (Claim 13 of ‘102).
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aidan L Papandria whose telephone number is (571)272-1831. The examiner can normally be reached M-F 8-5 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tiffany Legette can be reached at (571) 270-7078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AIDAN LACHLAN PAPANDRIA/Examiner, Art Unit 1723 /TIFFANY LEGETTE/Supervisory Patent Examiner, Art Unit 1723
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