COMPOSITION OF MATTER FOR THE PRODUCTION OF GRAPHITE POWDER
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/5/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
In response to communication filed on 3/5/2026:
Claims 4, 5, and 19 have been amended; no new matter has been entered.
Previous double patenting rejections have been withdrawn due to filing of terminal disclaimer.
Previous rejections under 35 USC 112(b) have been modified.
Previous rejections under 35 USC 103 have been upheld.
Response to Arguments
Applicant's arguments filed 3/5/2026 have been fully considered but they are not persuasive.
The Applicant discloses: “Applicant amended claims 4, 5, and 19 to address the antecedent basis rejection and claims 11 and 12 which depend on the amended claims. The amendments, therefore, resolve the antecedent basis issue, and applicant requests withdrawal of the rejections.”
The Examiner respectfully traverses. There is still a lack of antecedent basis for “the particulate sizes”.
The Applicant discloses: “Accordingly, the percentage ratios in the claimed composition cannot be characterised as routine optimisation. Consider the following reasons.
In catalytic graphitization processes, metal loading governs carbide formation, carbon reordering kinetics, and graphitic domain development. These structural and kinetic effects are coupled and are not predictable by simply changing compositions adjustments. They cannot be reduced to a conductivity tuning variable by simply adjusting levels of metal present. As such, amending one component has an unpredictable effect on other components and the overall properties of the composition.
At the graphite levels disclosed in Chen (approximately 7-8 wt.%), the graphite exists as a minor dispersed phase within the cited art composition and does not form a continuous graphite phase. “
The Examiner respectfully traverses. The reasons Applicant cites above are not disclosed anywhere in the specification. Further, the concept of a minor dispersed phased vs a continuous graphite phase is neither commensurate within the scope of the claim nor cited in the prior art and specification.
The Applicant discloses: “The minimum graphite content in the present claims (25 wt.%) is more than three times the graphite content disclosed in Chen (7.7 wt.%) and, therefore, cannot reasonably be characterized as a "close" or overlapping range. Applicant respectfully submits that increasing graphitic content from ~7.7 wt.% to 25-65 wt.% is a change in the regime from a dispersed phase in Chen to a substantially continuous phase in the compositions recited in the present claims, and the claimed compositions have substantially different properties. Thus, the change in graphite composition cannot be appropriately characterized as "fine tuning."
The Examiner respectfully traverses. As stated in the previous Action, Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) has not been applied to the graphite content limitation. The Examiner relies on MPEP 2144.05 IIA: in re Aller. MPEP 2144.05 I was applied to the metal content amount (Chen discloses 77% by weight, Claim discloses 15-75% by weight which yields a different of 2.).
The Applicant discloses: “Because these effects are coupled and simultaneously change, a skilled person in the art cannot reliably predict outcomes when increasing graphite from ~7.7 wt.% to >25 wt.%. Applicant, therefore, respectfully submits that the rejection's assertion that such changes are "routine optimization" is scientifically unsound and cannot be predicted.”
The Examiner respectfully traverses. The cited effects and properties by Applicant are not disclosed in the specification.
The Applicant discloses: “Chen discloses a composition having graphite present as a minor dispersed phase, while Wagner discloses graphite production methods. Chen and Wagner each address different material systems and different technical objectives. Neither Chen nor Wagner, alone or in combination, teaches or suggests the specific wt.% balance recited by the present claims, nor does Wagner provide any motivation to restructure or reconstitute the compositions disclosed in Chen to the composition of claim 1.”
The Examiner respectfully traverses. Both Chen and Wagner are in the same field of endeavor which is battery science. Both references are disclosing electrode compositions that have a graphite component.
The Applicant discloses: “The rejection does not identify any common problem in which both of the cited references frame solutions to a common, identified problem. Instead, the rejection merely concludes that one of ordinary skill in the art would modify Chen with Wagner to "improve charge capacity." (See 24 November 2025 Office Action at p. 5, 21.) Wagner specifically teaches that the metal (catalyst) is used for transient chemical transformation, not as a retained component in the resulting graphite to promote or diminish charge capacity. The metal catalyst (e.g., Fe, Co, Ni, or alloys) is typically separated and/or removed after the laser process and not intended to remain as an ingredient in a composite material. (See Wagner at [0078].)
As discussed above, the metal in the presently claimed composition during graphitization is deliberately introduced to act as a graphitization catalyst governing carbide formation and graphitic domain development during graphitization and not as a conductivity enhancer.
The metal in the present composition is also removed in subsequent processing steps. Crucially, however, residual metal is undesirable in lithium-ion graphite-based anodes and is intentionally reduced or removed after graphitization.
The presently claimed compositions recite metal proportions in a range that in practice is a process-control window, and not an end-use product.
Wagner provides no teaching or suggestion that modifying Chen's composition by substantially increasing graphite content and reducing retained metal would reliably or predictably yield materials that provided improved battery performance having the requisite d-spacing, specific surface area, capacity, and first- cycle efficiency thresholds. Nor is there any reasonable expectation of success that such a restructuring would transition the composition of Chen into the claimed composition.”
The Examiner respectfully traverses. Wagner is relied on by the Examiner to address the limitations of the graphite component. As stated above, Chen and Wagner are in the same field of endeavor which is battery science. Both references are disclosing electrode compositions that have a graphite component.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 19 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 19 recites the limitations "the particulate sizes”, the biochar component”, the metal component”, and “the graphite component”. There is insufficient antecedent basis for these limitations in the claim.
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 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 1, 8, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (CN 112397764 A).
Regarding claims 1 and 8, Chen et al. teach a composition of matter comprising a mixture of biochar, a metal and graphite (Paragraph 0016 discloses a negative electrode comprising a mixture of biomass, graphite, and lithium titanate in particulate form.), (c) a biochar content of between 1 and 35 percent by weight (Paragraph 0016 discloses ~15% by weight of biomass.). However, Chen et al. do not specifically teach (b) a metal content of between about 15 to 75 percent by weight.
Chen et al. teach the metal content is present at approximately 77% by weight (Paragraph 0016). (MPEP 2144.05 I: Similarly, 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).)
However, Chen et al. do not specifically teach the mixture has (a) a graphite content of between about 25 to 65 percent by weight. (Paragraph 0016 discloses graphite is present in the amount of approximately 7.7% by weight.). However, this is merely an example of routine optimization. (MPEP 2144.05 IIA: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).)
Regarding claim 15, Chen et al. teach the composition as claimed in claim 1. However, Chen et al. do not specifically teach wherein the mixture is a binary mixture having an elemental composition of between about 25 to 75 percent carbon made up of biochar and graphite and between about 75 to 25 percent of a selected metal.
However, Chen et al. teach roughly 15% by weight of biomass and 7.7% by weight of graphite. Together, this is almost 23% by weight of carbon leaving 77% by weight of metal (Paragraph 0016 discloses mass ratio of 2:1:10 of biomass, graphite, and metal, respectively.) (MPEP 2144.05 I: Similarly, 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).)
Claims 2-7, 9-14, and 16-19 and are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (CN 112397764 A) as applied to claim 1 above, and further in view of Wagner et al. (US 2020/0381732 A1).
Regarding claim 2, Chen et al. teach the composition as claimed in claim 1. However, they do not teach wherein the graphite has a d-spacing of between about 0.3354 and 0.3401 nm.
Wagner et al. teach a high-quality flake graphite is produced by methods that include mixing a carbon-containing feedstock with a catalyst to form a feedstock/catalyst mixture (Abstract). Further, the graphite has a d-spacing of between about 0.3354 and 0.3401 nm (Paragraph 0091 discloses a d-spacing of 0.3360 nm.).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Chen with Wagner in order to improve charge capacity.
Regarding claim 3, Chen et al. teach the composition as claimed in claim 1. However, they do not teach wherein the graphite electrochemical capacity is at least 200 mAh/g or preferably at least 300 mAh/g.
Wagner et al. teach a capacity of at least 300 mAh/g (Paragraph 0093 discloses a nearly constant charge capacity of about 310 mAh/g for over 600 cycles.).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Chen with Wagner in order to improve charge capacity.
Regarding claims 4 and 5 Chen et al. teach the composition as claimed in claim 1. However, they do not teach wherein the specific surface area of the graphite is between about 0.2 and 50 m2/g or 0.5 to 20 m2/g.
Wagner et al. teach wherein the specific surface area of the graphite is between about 0.5 to 20 m2/g (Paragraph 0138 discloses a surface area of 10.3 m2/g.).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Chen with Wagner in order to improve charge capacity.
Regarding claims 6 and 7, Chen et al. teach the composition as claimed in claim 1. However, they do not teach wherein the graphite exhibits a "Coulombic" or first cycle efficiency of greater than 80%.
Wagner discloses wherein the graphite exhibits a "Coulombic" or first cycle efficiency of greater than 80% (Fig. 5 discloses nearly constant capacity and as such the efficiency is at least 90%.)
Therefore, it would have been obvious to one of ordinary skill in the art to modify Chen with Wagner in order to improve charge capacity.
Regarding claims 9-14, the combination of Chen and Wagner et al. teach the composition of claims 2-7. Further, Chen et al. teach wherein one or more of the following apply: (i) the graphite content in the mixture is in particulate form; (ii) the metal content in the mixture is in particulate form; (iii) the biochar content in the mixture is in particulate form; and (iv) the graphite, metal and biochar content are all in particulate form (Paragraph 0016 discloses a negative electrode comprising a mixture of biomass, graphite, and lithium titanate in particulate form.).
Regarding claim 16, Chen et al. teach the composition as claimed in claim 1. However, they do not teach wherein the biochar content is derived from woody biomass heated to temperatures of between about 200 and 1000 degrees Celsius.
Wagner et al. teach woody flour sawdust being pyrolyzed at a temperature of 400 degrees Celsius (Paragraph 109).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Chen with Wagner in order to produce crystalline graphite.
Regarding claims 17 and 18, Chen et al. teach the composition as claimed in claim 1. However, they do not teach wherein the metal is a transition metal.
Wagner et al. teach woody flour sawdust being pyrolyzed at a temperature of 400 degrees Celsius with Co powder (Paragraph 0109).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Chen with Wagner in order to produce crystalline graphite.
Regarding claim 19, Chen et al. teach the composition as claimed in claim 1. However, they do not teach wherein one or more of the following apply: (i) the particulate sizes of the biochar component are less than about 1 mm; (ii) the particulate sizes of the metal component are less than about 1; (iii) the particulate sizes of the graphite component are less than about 1 mm; and (iv) the particulate sizes of all the components are less than 1 mm.
Wagner et al. teach the granules can be 2.5 microns or smaller (Paragraph 0058).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Chen with Wagner in order to improve charge capacity.
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 DANIEL S GATEWOOD whose telephone number is (571)270-7958. The examiner can normally be reached M-F 8:00-5:30.
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Daniel S. Gatewood, Ph.D.
Primary Examiner
Art Unit 1729
/DANIEL S GATEWOOD, Ph. D/Primary Examiner, Art Unit 1729 April 10th, 2026
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