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 .
Summary
This is an initial Office Action for application 18/578,125, originally filed January 10, 2024. Claims 1-6 are currently pending.
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.
Claim 3 is 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 “wherein the energy storage device is used for a power source for a hybrid vehicle and a plug-in hybrid vehicle.” The limitation claims the energy storage device is used for a hybrid vehicle and a plug-in hybrid vehicle, which implies one energy storage device used by two separate vehicles. To advance prosecution, the limitation will be interpreted as “wherein the energy storage device is used for a power source for a hybrid vehicle or a plug-in hybrid vehicle.” Appropriate correction is respectfully required.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda et al (JP 2015185443 A) in view of Gantenbein et al “Capacity Fade in Lithium-Ion Batteries and Cyclic Aging over Various State-of-Charge Ranges,” Sustainability 2019, 11, 6697.
Regarding claims 1 and 4, Ueda teaches an energy storage device (i.e., a lithium secondary battery; p2 para 2 of machine translation) comprising:
A negative electrode including a negative active material layer (p20 para 7 discloses a negative electrode including an active material layer formed on the current collector); and
A nonaqueous electrolyte (p23 para 8-9 discloses non-aqueous solvents as the non-aqueous electrolyte), wherein
The negative active material layer contains a negative active material (the composite carbon material taught by Ueda corresponds to the negative active material, and it is within the negative active material layer; see p20 para 7),
The negative active material contains natural graphite particles (Examples 1-2 teach negative electrode material as a composite carbon material prepared from composite materials A to C (specifically A1 to C1, A2 to C2 in the examples), wherein each composite material comprises natural graphite particles, which can be raw material particles of a, b, c (p3 para 1-4; p7 para 4-6) and/or the particles of composite materials themselves A, B, C (p26 para 1-4; Table 1 of original document)),
The natural graphite particles have an internal porosity of 2% or less (Ueda teaches the internal porosity of carbon material (a), (c), which are natural graphite particles, and which are also components of natural graphite particles A to C, can have an internal porosity of 1% to 40% (p6 para 1). Thus, Ueda teaches internal porosity of the natural graphite particles that overlaps with the claimed range, and provides a prima facie case of obviousness; see MPEP 2144.05).
In the same field of endeavor, Gantenbein teaches that a lithium ion battery utilizing graphite anode material at state-of-charge (SOC) above graphite Stage II results in a high active lithium loss and hence a high capacity fade which affects the lifetime of the battery cell (p1 Abstract; p3 para 1), and Gantenbein further discloses an example wherein the position of Stage II corresponds to a SOC of about 55% (i.e., 0.55) and teaches charging up to the SOC of graphite Stage II to avoid a great deal of unnecessary degradation (Figs. 1-2; p12 para 2). A skilled artisan would have found it obvious at the time of filing to have modified Ueda’s energy storage device to use a state of charge of the negative active material in a charged state of 0.55 or less in order to avoid unnecessary degradation of their graphite active material as taught by Gantenbein, which would have resulted in an overlapping range with the claimed range of 0.6 or less (claim 1) and also an overlapping range with 0.45 or more (claim 4). In the case where the claimed ranges "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)
Additionally, Gantenbein discloses “It was found that the active lithium loss restricted the remaining cell capacity and that this loss strongly depended on the SOC range in which the battery was cycled” and recommends applying intelligent load management to avoid harmful SOC ranges associated with the graphite active material during operation (p12 para 2). A skilled artisan would thus have recognized the SOC range of operation as a result-effective variable and would have been motivated to adjust the state of charge (SOC) of the negative active material of modified Ueda’s energy storage device, which includes graphite, in a charged state to minimize loss of active lithium and optimize its cell capacity, thus prolonging battery lifetime (p14 para 2), as taught by Gantenbein, and would have accordingly arrived at the claimed range of 0.6 or less (claim 1) and 0.45 or more (claim 4).
Regarding claim 2, the combination above teaches the energy storage device of claim 1. Ueda additionally teaches composite material B can have an internal porosity of 1% or more to less than 40% (p17 para 7) and composite material C can have an internal porosity of 1% or more to less than 40% (p19 para 4), wherein the internal porosity of the composite materials corresponds to a porosity of the negative active material layer, and wherein the taught ranges overlap with the claimed range. The Courts have established that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) The boundary of 40% is so close to the claimed range that one of ordinary skill would reasonably expect the same properties for a porosity such as 39.9% as for 40%.
Regarding claim 5, the combination above teaches the energy storage device of claim 1. Ueda further teaches in Table 1 specific examples of composite materials A to C, which are natural graphite particles, which anticipate the claimed range for average particle size (Col 2 of Table 1 of original document and p26 para 1-4; p28 para 1-2). Additionally, particles of composite materials A to C are taught generally to have an average particle diameter of 3 µm to 60 µm (Claim 5), which overlaps with the claimed range. In the case where the claimed ranges "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).
Regarding claim 6, the combination above teaches the energy storage device of claim 1. Ueda further teaches specific examples wherein the natural graphite particles A to C have a BET specific surface area of 4.5 m2/g or less (Col 2 of Table 1: A1-A2, C1-C2). Ueda also teaches general ranges for the BET specific surface areas of A to C which are 0.5 m2/g to 8 m2/g for A (p14 para 5), 0.1 m2/g to 10 m2/g for B and C (p17 para 3; p18 para 6), and also BET specific surface areas for natural graphite particles a to c which are 4 to 11 m2/g for a and c (p4 para 7) and 0.5 m2/g to 20 m2/g for b (p8 para 2), which also overlap with the claimed range for BET specific surface area. In the case where the claimed ranges "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).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Ueda et al (JP 2015185443 A) in view of Gantenbein et al “Capacity Fade in Lithium-Ion Batteries and Cyclic Aging over Various State-of-Charge Ranges,” Sustainability 2019, 11, 6697.
Evidentiary support is provided by Kim et al (KR 20200085587 A, published 2020-07-15, machine translation provided).
Regarding claim 3, the combination above teaches the energy storage device of claim 1. The limitation of “wherein the energy storage device is used for a power source for a hybrid vehicle and a plug-in hybrid vehicle” is directed toward an intended use of the energy storage device. Evidentiary reference Kim teaches a lithium secondary battery utilizing a negative electrode comprising of graphite (machine translation of Abstract) which can be used for electric vehicles, hybrid electric vehicles, and plug-in hybrid electric vehicle (p8 para 2). Given that Ueda teaches lithium secondary batteries using a negative electrode material comprising of graphite in the context of electric vehicle applications (p2 para 5; p25 para 3-4), a skilled artisan would have identified the prior art structure of Ueda’s energy storage device as capable of being used for a power source for a plug-in hybrid vehicle. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GIGI LIN whose telephone number is (571)272-2017. The examiner can normally be reached Mon - Fri 8:30 - 6.
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, Jeffrey T Barton can be reached at (571) 272-1307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/G.L.L./Examiner, Art Unit 1726
/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 7 October 2026
