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 § 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 1, 10, 15, 19, 24, 28, 33, 36, 38, 40, 47, 48, 54, 60, 69, 71, 74, 82, and 83 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 1 recites “high aspect ratio” which is a relative term. Neither the claims nor the specification provide sufficient information to determine how much longer a major axis of the material must be than the minor axis to correspond to an aspect ratio which is “high” rather than just being greater than 1.
Similarly, claim 28 recites the relative term “highly conductive”, claim 60 the relative term “thin polymeric layer”.
Further regarding claim 74, it is unclear if the claim requires the presence of a current collector, or instead it simply requires the surface treatment to promote adhesion of the active material to a current collector that may or may not be present. For examination purposes the Office will construe the claim to not require the presence of the current collector.
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.
Claim(s) 1, 2, 10, 15, 19, 24, 28, 33, 36, 38, 40, 47, 48, 54, 71, 74, and 82 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2011/0111279 to Smithyman (“Smithyman”). Regarding claims 1, 2, 10, 15, 19, 36, 54, Smithyman discloses electrodes. In particular, Example 4 discloses an electrode made by first dispersing single walled carbon nanotubes having an aspect ratio of 1,000 and TRITON X-100 ® in water followed by filtering, then forming another dispersion of single wall carbon nanotubes and silicon active material particles and poring/filtering this over the first filtered material, finally dispersing again SWNT in TRITON X-100 ® and filtering this through the already filtered material to make a layered structure having a network of carbon nanotubes with TRITON X-100 surfactant on the surface thereof and silicon active material particles dispersed within the interstitial space between carbon nanotubes.
Further regarding claim 24, the carbon nanotubes forming the network are greater than 90% carbon.
Further regarding claim 28, the carbon nanotubes are at least each a highly conductive pathway.
Further regarding claim 33, the SWNT used have a length of 1 micron, where the electrodes formed from those materials are large enough for use in a Swagelok T-cell, which has dimensions on the order of several millimeters. Moreover, the composite electrodes have a thickness of greater than 10 microns. Id. at paragraph [0045]
Further regarding claims 38 and 40, the Office notes that the surfactants used in Smithyman are common surfactants having a hydrophobic end and a hydrophilic end. Moreover, the Office finds that because they were used for dispersing carbon nanotubes, just as they are used by Applicant, that the same end (hydrophobic) will thus also be associated with the carbon nanotube surface, with the opposed end distal to the carbon surface and interacting/bonding with the active material particles at a minimum through electrostatic interactions.
Further regarding claims 47 and 48, ionic surfactants are used in other embodiments of Smithyman, such as sodium dodecyl sulfate.
Further regarding claim 71, in alternative embodiments of Smithyman, lithium metal oxide compounds are used as the active material. Smithyman at paragraph [0059].
Further regarding claim 74, because Smithyman uses surfactants similar to those used by Applicant, the Office finds they will necessarily promote adhesion with the same kinds of current collectors used by Applicant.
Further regarding claim 82 Smithyman discloses that its electrodes can be used as one electrode in a battery. Indeed, the composite electrodes were charge/discharge cycled in a cell using the composite electrode as a first electrode, a lithium foil as a reference electrode, and the two separated by a separator and immersed in lithium ion electrolyte.
Claims 60 and 69 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2014/0057164 to Brambilla (“Brambilla”). Brambilla discloses electrodes comprising aligned carbon nanotube bundles having active material particles distributed in the intersteces between the nanotubes. Additionally, conductive polymer may be dispersed within the composite, which will necessarily be in contact with the surface of the carbon nanotubes. In other embodiments, instead of conductive polymer, carbon black may be distributed within the composite. Although Brambilla does not disclose that the carbon block is formed by pyrolysis of a polymer, this limitation is a product-by-process limitation which is examined based on the product formed, not the method by which the product is made. Brambilla at paragraphs [0031], [0032] and [0034].
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.
Claim(s) 83 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smithyman. Smithyman is applied as described above. Smithyman differs from claim 83 in that the carbon nanotubes, surfactant, and active material are dispersed together simultaneously rather than first dispersing the carbon and surfactant and then adding the active material. However, changing the order of method steps, or combining two materials together simultaneously rather than separately is per se obvious absent a showing of unexpected results. MPEP 2144.04(IV)(c).
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 1, 2, 10, 15, 19, 24, 28, 33, 36, 38, 40, 47, 48, 54, 60, 69, 71, and 74 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 11,557,765. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘765 patent disclose all of the limitations of the pending claims in narrower forms, thereby anticipating the pending claims
Claims 1, 2, 10, 15, 28, 33, 36, 38, 40, 47, 48, 71, 74, and 82 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 11,848,499. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘499 patent discloses all of the limitation of the pending claims in various combinations.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT P MCCONNELL whose telephone number is (571)270-7531. The examiner can normally be reached 9am to 5pm M-F.
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/WYATT P MCCONNELL/Examiner, Art Unit 1727
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