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 § 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsubara et al. (US 2017/0018763) in view of Busnaina et al. (US 2014/0093769).
With respect to claim 1, Matsubara et al. discloses an electrode for a secondary battery, comprising:
a collector; and
an active material layer formed on the collector [0062; 0071-0072],
wherein the active material layer includes a mixture of 30 weight% to 80 weight % (overlaps 75-99.8 mass %) of an active material and 1 wt % to 20 wt % (overlaps 0.1 mass% to 15 mass%) of carbon nanotubes the carbon nanotubes being dispersed within the active material layer, [0023-0027; 0032-0033; 0051],
at least a part of a surface of the carbon nanotubes is coated with a material including an element with a lower electronegativity than that of carbon (such as silicon), [0031; 0051] because the carbonaceous material includes carbon nanotubes and the carbonaceous material is coated on the surface of the alloy particles, it would be expected to one of ordinary skill in the art that "the surface of each of the carbon nanotubes" would be coated.
an average length of the carbon nanotubes is 2 µm (slightly different from 3 µm to 50 µm) [0085],
an average diameter of the carbon nanotubes is 20nm (lie inside from 0.5 nm to 20 nm) [0085], and
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05, Section I. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (MPEP 2144.05).
Matsubara et al. does not disclose wherein a coating ratio of the surface of the carbon nanotubes with the material including an element with a lower electronegativity than that of carbon is from 40% to 70%, or the carbon nanotubes coated with the material including an element with a lower electronegativity than that of carbon is obtained by preparing a dispersion of the material including an element having a lower electronegativity than that of carbon and having a particle diameter of nano order, immersing the carbon nanotube in the dispersion, and drying and removing a dispersion medium of the dispersion.
The further limitation regarding “is obtained by preparing a dispersion of the material including an element having a lower electronegativity than that of carbon and having a particle diameter of nano order, immersing the carbon nanotube in the dispersion, and drying and removing a dispersion medium of the dispersion” is a product-by-process limitation that does not further limit the scope of the claim.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Busnaina et al. discloses an electrode for a secondary battery [abstract], comprising:
a collector [0026]; and
an active material layer formed on the collector [0026-0034; Figure 3; Figure 4],
wherein the active material layer includes carbon nanotubes,
at least a part of a surface of the carbon nanotubes is coated with active material nanoparticles (a material including an element with a lower electronegativity than that of carbon). [0026-0034; Figure 3; Figure 4]
wherein the coating ratio of the surface of the carbon nanotubes with the active material nanoparticles (a material including an element with a lower electronegativity than that of carbon) is at least 50% and at least 70% (overlaps 40% or more and 70% or lower). [0034] because the carbon nanotube layer includes carbon nanotubes and the carbon nanotube layer is coated with a coating ratio of at least 50% and at least 70%, it would be expected to one of ordinary skill in the art that "the surface of each of the carbon nanotubes" would be coated.
Furthermore Busnaina et al. discloses that the amount of active material nanoparticles loading on the surface of the carbon nanotube (coating ratio) is a variable that can be modified to effect the power density of the battery [0029; Figure 3] Thus the precise claimed product would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed coating ratio cannot be considered critical. Accordingly, one of ordinary skill in the art at the time of the invention would have optimized, by routine experimentation, the coating ratio of the element on the surface of the carbon nanotube. (In re Boesch, 61 7 F.2d. 272,205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claims are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the carbon nanotubes in Matsubara et al. to have a coating ratio of 40% or more and 70% or lower as disclosed in Busnaina et al. in order to allow for desired power density.
Conclusion
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/KIRAN QURAISHI AKHTAR/Primary Examiner, Art Unit 1751