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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-18 and 36 in the reply filed on 5/26/26 is acknowledged.
Claim 30 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/26/26.
Claim Objections
Claim 6 is objected to because of the following informalities: “one or more or all” should strictly be “one or more”, as “more” already encompass “all”. Appropriate correction is required.
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 3 and 13 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.
Claim 3 recites “carbon fabrics” and “carbon cloths”. The examiner is unclear the structural difference between a fabric and a cloth. Clarification is needed.
Claim 13 contains the trademark/trade name “ketjen” black carbon. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe carbon black and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 102
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.
Claims 1-10, 12-14, 17-18, and 36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yushin et al. (US 2014/0287301).
Regarding claim 1, Yushin discloses an anode material [0014] comprising an electrically conducting three-dimensional matrix (Fig. 12, [0017], [0096]), and a plurality of chemical bonding groups [0051], wherein each of the plurality of chemical bonding groups are chemically bonded to a surface of the electrically conducting 3D matrix ([0051], [0096, Fig. 12).
Regarding claims 2-3, Yushin discloses that the 3D matrix material as claimed [0017].
Regarding claims 4-5, Yushin discloses that the electrically conducting 3D matrix comprises a plurality of porous regions and are at least partially continuous (Fig. 12).
Regarding claim 6, Yushin discloses the porous regions dimensions as claimed [0119].
Regarding claim 7, Yushin discloses that the porous regions comprise 48% of a total volume of the electrically conducting 3D matrix [0137].
Regarding claim 8, Yushin discloses that the chemical bonding is carboxyl group [0051].
Regarding claims 9-10, Yushin discloses that portion of the chemical bonding groups are bound to a surface via a linking group, specifically metal oxides [0051].
Regarding claim 12, Yushin discloses a material as claimed ([0051], [0096], Fig 12).
Regarding claim 13, Yushin discloses the specific material as claimed [0051, 0116].
Regarding claim 14, given that Yushin discloses conformal coating corresponds to 100% of the exterior surfaces [0014], thereby the chemical bonding groups are disposed on at least 25% of an exterior surface of the electrically conducting 3D matrix.
Regarding claim 17, Yushin disclose the electrically conducting 3D matrix is disposed on a metal (Fig. 6, [0063], [0128]).
Regarding claim 18, Yushin discloses an anode as claimed [0014].
Regarding claim 36, Yushin discloses a device as claimed [0010-0011].
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 11 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Yushin et al. (US 2014/0287301).
Regarding claim 11, Yushin discloses a chemical bonding group as set forth above, and further discloses that portion of the chemical bonding groups is bound to a surface via a linking group, specifically metal oxides ([0051]: epoxy groups reacting with metal oxides (M-O) which thereby creates linking group comprising metal), however, is silent on the type of metal as claimed.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to choose any of the conventional claimed metals. The motivation would have been obvious to explore different types of metals in the course of routine engineering optimization/experimentation to successfully obtain chemical attachments to various surfaces, thus it would thus be obvious to experiment or optimize. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA) 1980. Moreover, absent a showing of criticality, i.e., unobvious or unexpected results, the specific type of metals set forth in claim 11 considered to be within the level of ordinary skill in the art.
Regarding claim 15, Yushin discloses chemical bonding groups as set forth above, however, fails to expressly disclose a number of density of the chemical bonding groups as claimed. The examiner deems that it would have been obvious to one of ordinary skill in the art at the time of the invention to have determined the optimum value of a results effective variable such as number of density of the chemical bonding groups through routine experimentation, especially given the knowledge in the art number of density of the chemical bonding group can impact the overall chemical attachments on the surface [0051]. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re After, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the number density of the chemical bonding group to be of 0.1-10/nm2, since the number of density is a known results effective variable in the electrode/battery art.
Regarding claim 16, Yushin discloses an electrically conducting 3D matrix as claimed, however, is silent on the conductivity. However, a person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation.
Additionally, a person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to optimize conductivity of the electrically conducting 3D matrix since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed property range is critical and has unexpected results. In the present invention, one would have been motivate to optimize the conductivity dependent on what the end use anode material was used for.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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