RESPONSE TO AMENDMENT
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-6 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Feaver et al. (U.S. App. Pub. No. 2011/0159375) in view of ‘386 (JP4727386).
Regarding claims 1 and 6, Feaver et al. discloses a porous carbon material used in electrical devices such as a lead acid battery (Abstract) made from a polymer precursor material (par. [0118]]) having a pore volume of at least 0.75 ml/g for pore sizes in the range of greater than 20 Angstroms (2 nm) (par. [0024]), a modal pore diameter of less than 10 nm. (see Fig. 3-4 peaks and showing no porosity at 150 nm or more, which implies a modal pore value less than 150 nm) and an average particle diameter of 1 to 1000 microns. (par. [0177]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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). Given that the porous carbon comprises micropores and mesopores, the modal diameter of the porous carbon would lie within the range of 1-40 nm, which overlaps with the presently claimed range.
Feaver et al. does not disclose the bulk density of the porous carbon material.
‘386 discloses a positive electrode material including a first and second conductive agent such as a carbon material. (Abstract, page 3 Tech Solution). ‘386 discloses that the tap density of the conductive agents can be set between 0.02 to 0.1 g/cc or 0.2 to 0.5 g/cc (page 3, 4th paragraph) which the reference teaches improves mixing properties with reduced separation of the conductive agent with the active electrode materials. (page 8, 1st-2nd paragraph). The tap density of a material being higher than the bulk density, the bulk density of the carbon material would lie within or lower than the ranges disclosed in ‘386.
It would have been obvious to one of ordinary skill in the art to optimize the bulk density of the carbon material disclosed in Feaver et al. to lie in the ranges disclosed in ‘386, overlapping with the presently claimed range.
One of ordinary skill in the art would have found it obvious to optimize the bulk density of the carbon material in order to improve the mixing properties and reducing likelihood of separation of the porous carbon materials when mixed with the active electrode materials to form a positive electrode, as taught in ‘386.
Regarding claim 2, Feaver et al. discloses that the total pore content of the mesoporous carbon material for mesopores (i.e. pore sizes of 2 nm to 50 nm) accounts for greater than 50% by weight of the total pore volume of the carbon material and a microporosity of less than 5%. (par. [0100] and par. [0159]). This suggests that the total pore volume of pores of 1 nm or less may be close to 0 or substantially less than 0.35 cm3/g, as shown in Fig. 5.
Regarding claim 3, Feaver et al. discloses a specific surface area value of at least 400 m2/g (par. [0159]), overlapping with the claimed range.
Regarding claims 4-5, Feaver et al. discloses that the impurity contents for specific impurities such as Ca, S or Si in the range of 1000 ppm for each of these impurity elements. (par. [0125]).
Regarding claim 22, ‘386 teaches tap densities between 0.02 to 0.1 g/cc or 0.2 to 0.5 g/cc (page 3, 4th paragraph) which the reference teaches improves mixing properties with reduced separation of the conductive agent with the active electrode materials. (page 8, 1st-2nd paragraph). It would therefore have been obvious to one of ordinary skill in the art to adjust the density of the carbonaceous material in Feaver et al. in order to obtain the improved properties taught in ‘386.
Claims 1-3, 6 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (EP 3670447) (cited in the IDS filed on 10/02/2025) in view of ‘386 (JP4727386).
Regarding claims 1 and 6, Lee et al. discloses a porous carbon material for a positive electrode material (Abstract) having micropores and mesopores having respective diameters in the range of 1 nm to 8 nm and 20 nm to 40 nm and average particle diameter of the porous carbon material lies in the range of 2-10 micrometers. (par. [0016]) wherein the volume of mesopores is in the range of 3.5 cm3/g or more (par. [0018], overlapping with the presently claimed range of 0.8 cm3/g or more. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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). Given that the porous carbon comprises micropores and mesopores, the modal diameter of the porous carbon would lie within the range of 1-40 nm, which overlaps with the presently claimed range.
Lee et al. does not disclose the bulk density of the porous carbon material.
‘386 discloses a positive electrode material including a first and second conductive agent such as a carbon material. (Abstract, page 3 Tech Solution). ‘386 discloses that the tap density of the conductive agents can be set between 0.02 to 0.1 g/cc or 0.2 to 0.5 g/cc (page 3, 4th paragraph) which the reference teaches improves mixing properties with reduced separation of the conductive agent with the active electrode materials. (page 8, 1st-2nd paragraph). The tap density of a material being higher than the bulk density, the bulk density of the carbon material would lie within or lower than the ranges disclosed in ‘386.
It would have been obvious to one of ordinary skill in the art to optimize the bulk density of the carbon material disclosed in Lee et al. to lie in the ranges disclosed in ‘386, overlapping with the presently claimed range.
One of ordinary skill in the art would have found it obvious to optimize the bulk density of the carbon material in order to improve the mixing properties and reducing likelihood of separation of the porous carbon materials when mixed with the active electrode materials to form a positive electrode, as taught in ‘386.
Regarding claim 2, Lee et al. does not teach the specific volume of micropores (pores having diameters of 1 nm or less, par. [0041]) but teaches that the size and content therefore affects their ability to be clogged with sulfur and surface area of the carbon material. (par. [0041]). Since the overall pore volume of micropores would be related to both the size and content thereof in the porous carbon material of Lee et al. and since the reference teaches the result effective nature of the micropores for controlling sulfur content and surface area thereof, it would have been obvious to one of ordinary skill in the art to optimize the overall pore volume of micropores in the porous carbon particle of Lee et al., since it has been held that where the general conditions of the claim 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).
Regarding claim 3, the surface area of the porous carbon material is disclosed to lie in the range of 1,000-1,300 m2/g (par. [0019]), overlapping with the presently claimed range.
Regarding claim 22, ‘386 teaches tap densities between 0.02 to 0.1 g/cc or 0.2 to 0.5 g/cc (page 3, 4th paragraph) which the reference teaches improves mixing properties with reduced separation of the conductive agent with the active electrode materials. (page 8, 1st-2nd paragraph). It would therefore have been obvious to one of ordinary skill in the art to adjust the density of the carbonaceous material in Lee et al. in order to obtain the improved properties taught in ‘386.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (EP 3670447) (cited in the IDS filed on 10/02/2025) in view of ‘386 (JP4727386), further in view of Feaver et al. (U.S. App. Pub. No. 2011/0159375)
Lee in view of ‘386 are relied upon as described in the rejection of claim 1, above.
Regarding claims 4-5, Lee in view of ‘386 does not disclose the content of calcium, sulfur or silicon prior to be made into an electrode material.
Feaver et al. teaches a porous carbon material used in electrical devices such as a lead acid battery (Abstract) made from a polymer precursor material having an impurity content for specific impurities such as Ca, S or Si in the range of 1000 ppm for each of these impurity elements. (par. [0125] and [0164]).
It would have been obvious to of ordinary skill in the art to have an impurity content for elements such as Ca, S or Si for the porous carbon materials disclosed in Lee et la. in the range of 1,000 ppm or less, overlapping with the ranges in claims 4-5.
One of ordinary skill in the art would have found it obvious to have a low impurity content in the range disclosed by Feaver et al. for improving the material properties of the carbon material by having a substantially homogenous composition that is not impaired by the presence of unwanted elements.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 02/17/2026 regarding the 35 U.S.C. §103 rejections made of record in the office action mailed on 11/19/2025 have been carefully considered but are deemed unpersuasive.
Applicant argues that because Feaver et al. discloses a density of 0.1-1.0 g/cc, one of ordinary skill in the art would not have modified the density of the carbon material based on the teachings of ‘386 due to the difference in the nature of the material from the secondary reference.
The strongest rationale for combining references is a recognition in the prior art of some advantage or expected beneficial result that would have been produced by the combination. MPEP 2144 II. In view of the disclosure in ‘386 that the density of carbon materials for use as conductive agents in batteries has a result effective nature with improvements relating to mixing properties with reduced separation, one of ordinary skill in the art would have been motivated to modify the teachings of Feaver et al. to obtain similar expected improved results. In particular, both Feaver and ‘386 are directed to carbon materials for use in a battery and therefore there is a reasonable expectation of success in obtaining similar improvements due to the similarities in the field of invention of the two references. Applicant’s arguments therefore are not persuasive and do not overcome the prima facie case of obviousness as set forth in the claim rejections above.
Applicant further argues that the present invention demonstrates unexpected and improved properties relating to charge/discharge capacity retention. (Applicant’s arguments filed on 02/17/2026, page 8).
In order to traverse a rejection under 35 U.S.C. §103 based on allegations of unexpected results, the evidence provided must be of probative value, commensurate in scope with the claims and show that the results are unexpected. MPEP 716.02. The evidence must further be weighed against the evidence supporting a prima facie case obviousness. Id.
When making allegations of unexpected results, the Applicant bears the burden to demonstrate whether the differences between the prior art and claimed invention differ to such an extent that the difference is unexpected. (MPEP 716.02 and 716.02(b)). The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance”. (MPEP 716.02(b), citing Ex Parte Gelles, 22 USPQ2d 1318, 1318, Bd. Pat. App. & Inter. 1992). It should be noted that mere allegation of improved properties alone is no sufficient to serve as the basis of unexpected results if they do not show a significance equal to or greater than the expected properties. (see MPEP 716.02(c) I). Furthermore, the unexpected results relied upon by the Applicant for patentability must be commensurate in scope with the claims which the evidence is offered to support. MPEP 716.02(d).
In the present instance, the evidence does not appear to be commensurate in scope with the data shown in Table 2 for at least the following parameters: the primary particle size being significantly narrower and the impurity content and shape not being claimed. Furthermore, the Applicant has not demonstrated why these alleged improved properties are truly unexpected, noting that improved properties alone does not necessarily demonstrate that the improvements are unexpected. (see MPEP 716.02).
With respect to the rejections based on Lee in view of ‘386, Applicant argues that the particle size of Lee in the range of 2-10 micrometers is distinguished from the materials in ‘386 which “generally has a particle diameter of 1 micrometer or less”. (Applicant’s arguments filed on 02/17/2026, page 9).
The Examiner notes that in ‘386 that the particle diameter is not explicitly disclosed in the reference and that particle diameters for carbon black, which is actively disclosed as suitable conductive agent (par. [0018]), may have diameters of several microns depending on the method of manufacturing. (see e.g. www.ampacet.com/faqs/tutorials/carbon-black-black-masterbatch/). Therefore, Applicant’s arguments are not found persuasive because they are not tied directly to a particle diameter that is explicitly disclosed in the secondary reference and are not supported by the disclosure as a whole. The Examiner would favorably consider additional evidence in the record to support Applicant’s arguments that the teachings would not be combinable to support a conclusion of nonobviousness.
The claims remain unpatentable over the cited prior art for reasons as set forth above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 04/22/2026
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