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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 27, 2026 has been entered.
Response to Amendment
In response to the amendment received May 27, 2026:
Claims 1-20 are pending with claims 15-20 withdrawn as being drawn to an unelected invention.
The previous claim objection is withdrawn in light of the amendment.
The core of the previous rejection is maintained with a new reference relied upon to render obvious the newly cited limitations. All changes to the rejection are necessitated by the amendment.
Election/Restrictions
Applicant again traverses the restriction mailed August 11, 2025, arguing (1) that burden does not exist as the office has already searched and examined the subject matter of the Group I and Group III in the parent, (2) that Group II has been searched concurrently (linking it to examining Inventions I and III in the parent) and (3) that all groups should be classified in H01M 10/08, and (4) the amendment has the same subject matter for patentability to obviate the two-way distinctness test.
Examiner respectfully disagrees.
With respect to (1): Burden set forth in the MPEP does not require that child applications consider limitations examined in a parent application. In fact: “Even though inventions are grouped together in a requirement in a parent application, restriction or election among the inventions may be required in the divisional applications, if proper.” See MPEP 811.04.
With respect to (2): It is unclear whether Applicant is arguing Group II was searched in the parent (like Groups I and III – i.e. the same argument as set forth in (1)) If the same argument is set forth, then the same response as set forth is appropriate herein and is incorporated herein but not reiterated herein for brevity’s sake.
If Applicant is meaning to argue that the same subject matter is searched, Examiner submits that although some of the features may be the same, distinctness exists between the combination and subcombination. In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the combination does not require the particulars of the subcombination, as the combination does not require the amount of expander (Group I requires an amount assigned to a plurality of expanders; Group II requires an amount assigned to one expander); the combination does not require the same structure to the negative electrode (the presence of the negative current collector); the combination does not require a normalized CO2 savings of greater than 2 g CO2/km); the combination does not require the specific structure regarding the conductive carbons (surface area). The subcombination has separate utility such as within other batteries, like those with a different separator structure.
With respect to (3): Group I is drawn to a more generic battery (due to the relatively generic recitation regarding the carbon additive), and thus is classified in H01M 10/08. Group II is drawn towards an electrode (not the battery as a whole), and thus classified in H01M 4/14. Group III’s invention, although encompassing a battery, includes very specific attributes to the carbonaceous additives; thus classification in H 01M 4/625 would be the proper placement to capture the importance of the details to the carbonaceous additives.
With respect to (4): Although the same new limitation is added to all of the independent claims. This limitation does not put the application in condition for allowance (as examined in Group I). Thus the claims do not have the same subject matter for patentability and does not overcome the two-way distinctness test. (See the rejection below for full details.)
Thus the argument is not persuasive. The requirement is still deemed proper and is FINAL.
Claim Rejections - 35 USC § 103
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(s) 1-3, 8-9, and 10-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0093775 (Hardman et al.) in view of US 2007/0184349 (Yasuda et al.), US 2014/0120386 (Jagannathan ‘386), US 2012/0248383 (Atanassova et al.), US 2016/0322634 (Korchev et al.), and US 2012/0171564 (Jagannathan ‘564).
As to claim 1, Hardman et al. teach a lead-acid storage battery comprising:
one or more cell elements (lead-acid cells, para 0073), the one or more cell elements comprising:
a positive electrode (positive plate, para 0073),
a negative electrode, the negative electrode having a negative substrate (e.g. grid) and a negative active mass on the negative substrate, with the negative active mass having a composition comprising a leady oxide, 15expanders (e.g. organic molecules) in a 0.1-0.3 wt% of the negative active mass (examples 1-4 has 2 g Vanisperse A per 1000 g leady oxide, which is 0.2 wt% relative to the dry leady oxide; para 0033, 0063-0065; table 1), barium sulfate, a first plurality of conducive carbons being high surface area conductive carbon (para 0023,0032-0034, 0053-0057, 0060, 0063), and
an absorbent glass mat (AGM) separator between the positive electrode and the negative electrode, and an electrolyte (para 0073). (Note: AGM is understood in the art to be an absorbent/absorbed glass mat; Jagannathan ‘386 is relied upon as an evidentiary reference to show the common acronym as set forth; see para abs.)
Regarding having a plurality of organic expanders (totaling the amount set forth in the examples), Hardman et al.’s generic teaching acknowledges a plurality “expanders,” exemplifying organic molecules (para 0023). In one interpretation, this can be taken to at the very least suggest the presence of a plurality of organic expanders. Alternately, if this generic teaching is taken to be an organic expander in the singular, at the very least, a plurality of organic expanders (i.e. those set forth in para 0033) (in the amount set forth in the examples (i.e. a 0.2 wt %)) would at the very least be obvious. It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a plurality of organic expanders rather than just one expander, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Also see MPEP §2144.04(VI)(B). At the very least, Hardman et al. teaches the adding a singular organic expander at a 0.2 wt% para 0033, 0063-0065; table 1 (lies within the claimed range of 0.1-0.3 wt %). As set forth above, Hardman et al. also renders obvious using a plurality of expanders (para 0023, 0033 alone or in conjunction with MPEP 2144.04(VI)(B).). Thus, the substitution of multiple organic expanders in a 0.2 wt% (of the active mass) for one organic expander in a 0.2 wt% would yield the predictable result of providing an organic expander function to the battery (as the substituted components and their functions were known in the art – i.e. one organic expander provides expander function; multiple organic expanders provide expander function). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to substitute multiple organic expanders in a 0.2 wt% (of the active mass) for one organic expander in a 0.2 wt%, as the substitution would yield the predictable result of providing an organic expander function to the battery (as the substituted components and their functions were known in the art – i.e. one organic expander provides expander function; multiple organic expanders provide expander function). “When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id . at ___, 82 USPQ2d at 1396.” See MPEP §2141(I).
Hardman et al. do not teach (a) a container with a cover, the container including one or more compartments (wherein one or more cell elements are in the one or more compartments, and the electrolyte is within the container), and 20one or more terminal posts extending from the container or the cover and electrically coupled to the one or more cell elements, (b) the presence of at least a second plurality of conductive carbons, (c) the positive electrode, having a positive substrate 10and a positive electrochemically active material on the positive substrate, (d) that the barium sulfate is a present as fine particles, (e) that at least one carbon of the first plurality of conductive carbons and the second plurality of conductive carbons having an oxidized surface, or (f) that the conductive graphite is a synthetic conductive graphite.
With respect to (a), Yasuda et al. teaches a general structure of the lead acid battery including a container [29] with a cover [32], the container including one or more compartments (to house one or more cell elements, wherein electrolyte is therein) and one or more terminal posts (positive terminal [33], negative terminal [34]) extend from the container or cover and electrically coupled to the one or more cell elements (via respective poles (i.e. [26]), straps [24, 25], and connectors (i.e. [27]) (fig. 1; para 0028-0031). The combination of a cell (e.g. that of Hardman et al.) within a known battery container (e.g. that of Yasuda et al.) would yield the predictable result of providing an operable battery structure. Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to combine a known cell (e.g. that of Hardman et al.) within a known battery container (e.g. that of Jagannathan), as the combination would yield the predictable result of providing an operable battery structure. “When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id . at ___, 82 USPQ2d at 1396.” See MPEP §2141(I).
With respect to (b), Jagannthan ‘386 teaches having a carbon additive, including singular or combinations, such as activated carbon and graphite (para 0029). Additionally, the carbon additive(s) can have surface areas from 250-550 m2/g or 1000-2000 m2/g (both surface areas overlap that of Hardman’s as well as fall within the claimed surface area), or combinations thereof (para 0032, 0034-0035). Substituting a carbon additive (singular (both graphite and activated carbon recognized), surface area of 250 m2/g or higher, as appreciated by both Hardman and Jagannthan ‘386) with another (a combination/plurality of activated carbon and graphite, i.e. two, surface areas from 250-550 m2/g or 1000-2000 m2/g, as in surface areas from 250-550 m2/g or 1000-2000 m2/g, as appreciated by Jagannthan ‘386) would yield the predictable result of acting as a carbon additive within a lead-acid battery (substitution and its components known in the art). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to substitute a carbon additive, such as graphite or activated carbon, with a surface area of 250 m2/g or higher with a combination/plurality (i.e. two) carbon additives, one being graphite and one being activated carbon, wherein one has a surface area of 250-550 m2/g and the other has a surface area of 1000-2000 m2/g, as the substitution would yield the predictable result of acting as a carbon additive within a lead-acid battery (substitution and its components known in the art). Additionally, it would have been obvious to one having ordinary skill in the art at the time the invention was made to duplicate the number of types of carbon additives (i.e. to have a plurality) while retaining the surface area set forth by the singular carbon additive, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Also see MPEP §2144.04(VI)(B). This is supported by Jagannthan ‘386’s teaching of para 0032, 0034-0035).
With respect to (c), Atanassova et al. teaches the general structure of a positive electrode - positive substrate (grid/metal plate) 10and a positive electrochemically active material on the positive substrate (para 0003). The combination of a cell (e.g. that of Hardman et al.) within a known positive electrode structure (e.g. that of Atanassova et al.) would yield the predictable result of providing an operable battery. Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to combine a known positive electrode structure (e.g. that of Atanassova et al.) within a known battery (e.g. that of Hardman et al., has a positive electrode but not specification to the structure), as the combination would yield the predictable result of providing an operable battery. “When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id . at ___, 82 USPQ2d at 1396.” See MPEP §2141(I).
With respect to (d), Atanassova et al. teaches that barium sulfate should be present in very small in particle size (0.5-5 micrometers) (para 0025). The motivation for having fine barium sulfate is to implant a very large number of small seed crystals in the negative active material which ensures that lead sulfate crystals growing thereon are small and of uniform size so that they are easily converted to lead active material when the plate is charged (para 0025). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to use a fine barium sulfate in order to implant a very large number of small seed crystals in the negative active material, which ensures that lead sulfate crystals growing thereon are small and of uniform size so that they are easily converted to lead active material when the plate is charged.
With respect to (e), Korchev et al., in the same field of endeavor (providing carbonaceous additives to lead acid batteries (para 0002)) teach of a conductive carbon having an oxidized surface ((para 0002, 0079-0080). The motivation for using a conductive carbon having an oxidized surface (with certain morphologies) is to both introduce the charge acceptance and cycle improvement with carbonaceous materials, while improving dynamic charge acceptance and minimizing water loss (para 0003, 0192-0193). Therefore, it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to use a conductive carbon having an oxidized surface (with certain morphologies) is to both introduce the charge acceptance and cycle improvement with carbonaceous materials, while improving dynamic charge acceptance and minimizing water loss.
(Note: This teaching regarding an oxidizes surface is applied to the at least one carbon of the first plurality of conductive carbons and the second plurality, set forth to be present in part (b) above, incorporated herein but not reiterated herein for brevity’s sake.)
With respect to (f), again, regarding the second plurality of conductive carbons, Jagannathan ‘386, relied upon to render obvious the second plurality of conductive carbons, teaches graphite (para 0029). (See above full details of the combination, incorporated herein but not reiterated herein for brevity’s sake.)
Regarding the conductive graphite is a synthetic conductive graphite: Jagannathan ‘564, in the same field of endeavor, teach of conductive carbon additives and recognizes synthetic graphite (para 0017, 0068). The substitution of synthetic graphite (Jagannathan ‘564) in for graphite in general (in both Jagannathan ‘564 and Jagannathan ‘386) would yield the predictable result providing conductive carbon materials (wherein the substituted components and their functions were known in the art). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to substitute synthetic graphite for graphite, as the substitution would yield the predictable result providing conductive carbons (wherein the substituted components and their functions were known in the art). “When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id . at ___, 82 USPQ2d at 1396.” See MPEP §2141(I). Additionally, in light of Obuchi et al.’s teaching that phenol sulfones (via bisphenol S) and naphthalene-based sulfur containing condensation products as known synthetic organic expanders sets forth that phenol sulfone and naphthalene sulfones are structurally similar and would be expected to have similar properties and uses, which supports obviousness via MPEP 2144.08(II)(c) and MPEP 2144.08(II)(d) (structural similar products, similar properties and uses).
As to claim 2, Hardman et al. teaches the negative active mass comprises:
0.15-1% of the first conductive carbon embodied (overlaps the claimed range of 0.1-0.3 wt% and thus renders it obvious) by total weight (note: examples 1-4 has 5 g carbon black per 1000 g leady oxide, which is 0.5 wt%; although this exemplified amount falls outside the claimed range, an exemplified range is 0.15-1% by total weight which would overlap the claimed range; using the same amounts of the other materials in examples 1-4 would yield this, for example 2 g of carbon black would yield 0.2 wt% relative to the dry leady oxide and would be within the prescribed amount appreciated by Hardman (which is also 0.2 wt%) (para 0042, 0063-0065; table 1), and 0.8 wt% of barium sulfate (overlaps the claimed range of 0.5 25- 1.5 wt% of barium sulfate) (examples 1-4 has 8 g BaSO4 per 1000 g of leady oxide, which is 0.8 wt% relative to the dry leady oxide) (para 0063-0065; table 1) (note: (very) “fine particle” aspect rendered obvious by Atanassova et al. in the rejection to claim 1, incorporated herein but not reiterated herein for brevity’s sake),
wt% being an amount relative to the leady oxide used in the negative active mass.
Hardman et al. do not teach 0.1 - 0.3 wt% of a second conductive carbon.
However, Jagannathan ‘386 has been relied upon to render obvious the presence of the second conductive carbon. (See the rejection to claim 1 for full details, incorporated herein but not reiterated herein for brevity’s sake.) Jagannathan ‘386 teaches that the carbon additives (plurality of high-surface area carbons rendered obvious; see the rejection to claim 1 for full details, incorporated herein but not reiterated herein for brevity’s sake) should be from 0.5-3 wt % (para 0031).
As set forth above, Hardman et al. encompasses 0.2 wt% first conductive carbon. Taking the general teaching of Jagannathan ’386 into account, 0.3-2.8 wt% would be available for the second carbon wherein 0.3 wt% would overlap the claim. Thus, the combination would render this amount obvious.
As to claim 3, Hardman et al. do not teach wherein the electrolyte comprises a sulfuric acid solution including at least one metal sulfates, wherein the at least one metal sulfate is a soluble metal sulfate selected from the group consisting of the 30elements Al, Mg, Na, K, Li, and Zn.
However, Yasuda et al. teach of adding an alkali metal/alkaline earth metal sulfate, such as sodium (Na) sulfate to the electrolyte (para 0036). The motivation to add an alkali metal/alkaline earth metal sulfate, such as sodium (Na) sulfate to the electrolyte is to improve chargeability upon recharging and increase discharge capacity after recharging (para 0036). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to add an alkali metal/alkaline earth metal sulfate, such as sodium (Na) sulfate to the electrolyte in order to improve chargeability upon recharging and increase discharge capacity after recharging.
With respect to claim 8, although Hardman et al. does not mention a C20 discharge capacity at 25 degrees Celsius (ranging from approximately 75 Ah at 1 week to approximately 70 Ah at 18 weeks), this characteristic would either (a) be expected, or (b) be obvious.
With respect to (a): The reason that the characteristic is expected is that the same battery as claimed has been rendered obvious. Accordingly, this characteristic of the battery would be expected.
With respect to (b): If it is shown that the characteristic is not present, than any differences would be small, such that obviousness would exist (as the claimed battery is rendered obvious by the prior art and at the very least should have similar characteristics). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)). Also see MPEP §2144.05(I).
As to claim 9, although Hardman et al. do not specifically mention a charge 1acceptance (at 90 percent state of charge, a range of approximately 200 A at 1 seconds to approximately 70 - 80 A at 60 seconds: at 80 percent state of charge, a range of approximately 200 A at 1 seconds to approximately 120 - 130 A at 60 seconds: 20at 70 percent state of charge, a range of approximately 200 A at 1 seconds to approximately 160 to 170 A at 60 seconds: at 60 percent state of charge. a range of approximately 200 A at 1 seconds to approximately 190 to 200 A at 60 seconds), this characteristic would either (a) be expected, or (b) be obvious.
With respect to (a): The reason that the characteristic is expected is that the same battery as claimed has been rendered obvious. Accordingly, this characteristic of the battery would be expected.
With respect to (b): If it is shown that the characteristic is not present, than any differences would be small, such that obviousness would exist (as the claimed battery is rendered obvious by the prior art and at the very least should have similar characteristics). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)). Also see MPEP §2144.05(I).
As to claim 10, Hardman et al. teach the first plurality of conductive carbons having high surface area (250-2100 m2/g) (para 0034). Although the first plurality of conductive carbons is not set forth to be thermally prepared in Hardman et al., this a product by process limitation, wherein the product is present and the process of making the product (thermally prepared) does not further limit the product.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)(citations omitted).
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). See MPEP section 2113.
As to claim 11, although Hardman et al. do not specifically mention a charge acceptance (of approximately 0.02 Ah/s, a normalized recuperation time of approximately 220 seconds, and a normalized charged Ah of approximately 5, these characteristics would either (a) be expected, or (b) be obvious.
With respect to (a): The reason that the characteristic is expected is that the same battery as claimed has been rendered obvious. Accordingly, this characteristic of the battery would be expected.
With respect to (b): If it is shown that the characteristic is not present, than any differences would be small, such that obviousness would exist (as the claimed battery is rendered obvious by the prior art and at the very least should have similar characteristics). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)). Also see MPEP §2144.05(I).
As to claim 12, although Hardman et al. does not mention CO2 reduction ( Cbattery delivers approximately 2.2g/km CO2 reduction), this characteristic would either (a) be expected, or (b) be obvious.
With respect to (a): The reason that the characteristic is expected is that the same battery as claimed has been rendered obvious. Accordingly, this characteristic of the battery would be expected.
With respect to (b): If it is shown that the characteristic is not present, than any differences would be small, such that obviousness would exist (as the claimed battery is rendered obvious by the prior art and at the very least should have similar characteristics). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)). Also see MPEP §2144.05(I).
As to claim 13, Hardman et al. teach that the dynamic charge acceptance (DCA) is at least greater than two times (at least 100% improvement) an industry average (standard prior art battery) (para 0062).
Although Hardman et al. does not specifically recite the industry average/standard prior art battery, an industry standard/standard prior art battery should be the same or at the very least close (as these are standards/what know batteries operate at). Accordingly, two times the industry average of approximately 0.22A/Ah would either be (a) expected or (b) obvious.
With respect to (a): In the case the industry standards are the same, Hardman et al.’s teaching of 100% improvement (two times) would read on the claim language.
With respect to (b): If slight differences in industry averages exist, then at the very least the teaching of 100% improvement over Hardman’s standard would be close to two times above an industry average of approximately 0.22 A/Ah. It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)) Also see MPEP §2144.05(I).
As to claim 14, Hardman et al. teaches that their battery has improved performance in DCA (dynamic charge acceptance) and life cycle, while maintaining/improving cold crank ability and/or decreasing water loss (para 0003, 0060). This constitutes 10endurance (improved life cycle), high charge acceptance (improved dynamic charge acceptance), high current performance, and high capacity (the latter two indicated by (1) maintained/improved cold crank ability and (2) by decreased water loss, which indicates less depolarization of the negative electrode, and less effect of positive and negative plate potentials, as these indicate healthy battery performance (as applicable to both high current and capacity being maintained)) (para 0003, 0025-0026, 0060).
Claim 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hardman et al. in view of Yasuda et al., Jagannathan ‘386, Atanassova et al., Korchev et al., and Jagannathan ‘564, as applied to claim 1 above, further in view of US 2015/0050986 (Dhar et al.).
As to claim 4, Hardman et al. do not teach wherein at least one of the positive active mass and the negative active mass has a bimodal particle size distribution of oxide.
However, Dhar et al. teach of lead acid batteries (abs), wherein metal oxide materials have a bi-modal size distribution (para 0077; figs. 8A, 8B). The motivation for having a bi-modal size distribution of metal oxide is to enable packing more active material into the same volume, which contributes to longer cycle life (para 0082). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have a bi-modal size distribution of metal oxide in order to enable packing more active material into the same volume, which contributes to longer cycle life.
Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hardman et al. in view of Yasuda et al., Jagannathan ‘386, Atanassova et al., Korchev et al., and Jagannathan ‘564, as applied to claim 1 above, further in view of US 2018/0151886/WO 2016/194328 (Obuchi et al.; note: both the US and WO are applicable with different priority dates, the US version is relied upon as the English translation for the corresponding WO document).
As to claim 5, Hardman et al. do not teach (a) the organic expander is a polycondensate of an aromatic sulfone, specifically (b) at least one of a phenyl sulfone, naphthalene sulfone, and a benzyl sulfone.
With respect to (a), Obuchi et al., in the same field of endeavor, teach a lead acid battery (title), wherein the expander is a synthetic expander having sulfur element of 6000 µmol/g or less (para 0024, 0055). Specifically, the expander can be a condensation product of bisphenol S (polycondensate of aromatic sulfone) (para 0056). The motivation for using a condensation product of bisphenol S (polycondensate of aromatic sulfone) having a sulfur element of 6000 µmol/g or less as the synthetic organic expander is to achieve a battery excellent in low-temperature high rate discharge performance and low rate discharge performance (para 0024, 0056). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to use of a condensation product of bisphenol S (synthetic organic expander that is a polycondensate of aromatic sulfone) having a sulfur element of 6000 µmol/g or less in order to achieve a battery excellent in low-temperature high rate discharge performance and low rate discharge performance.
With respect to (b), Obuchi et al. teach that instead of bisphenol-based organic expanders, a naphthalene-based sulfonic acid group containing product can be used instead (para 0057). With the teaching of bisphenol S, as well as using a naphthalene base instead would at the very least render obvious a naphthalene sulfone (as the replacement of the aromatic chains of bisphenol S would yield naphthalene sulfone), as the substitution of the naphthalene for phenol would within the sulfone-containing expander would yield the predictable result providing an operable synthetic organic expander (wherein the substituted components and their functions were known in the art). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to substitute naphthalene for phenol would within the sulfone-containing expander, as the substitution would yield the predictable result providing an operable synthetic organic expander (wherein the substituted components and their functions were known in the art). “When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id . at ___, 82 USPQ2d at 1396.” See MPEP §2141(I). Additionally, in light of Obuchi et al.’s teaching that phenol sulfones (via bisphenol S) and naphthalene-based sulfur containing condensation products as known synthetic organic expanders sets forth that phenol sulfone and naphthalene sulfones are structurally similar and would be expected to have similar properties and uses, which supports obviousness via MPEP 2144.08(II)(c) and MPEP 2144.08(II)(d) (structural similar products, similar properties and uses).
Claim 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hardman et al. in view of Yasuda et al., Jagannathan ‘386, Atanassova et al., Korchev et al., and Jagannathan ‘564, as applied to claim 1 above, further in view of US 2011/0143184 (Mccarthy et al.).
As to claim 6, Hardman et al. do not teach an additional separator between the positive electrode and the negative electrode.
However, Mccarthy et al. teach of a two-layered separator with two layers (primary separator layer and secondary separator layer (para 0008). The motivation for using a two-layered separator structure is to facilitate movement of electrolyte to eliminate spaces between the positive and negative electrolyte with little or no electrolyte (note: liquid electrolyte embodied; para 0022) (para 0026-0027). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have an additional separator between the positive electrode and the negative electrode (resulting in a two-layered separator structure) in order to facilitate movement of electrolyte to eliminate spaces between the positive and negative electrolyte with little or no electrolyte.
Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hardman et al. in view of Yasuda et al., Jagannathan ‘386, Atanassova et al., Korchev et al., and Jagannathan ‘564, as applied to claim 1 above, further in view US 2014/0127587 (Mack et al.),
As to claim 7, Hardman et al. do not teach a pasting paper.
However, Mack et al. tech of using a pasting paper (para 0049). The motivation for using a pasting paper is to support active material after deposition onto a grid (para 0049). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have a pasting paper in order to support active material after deposition onto a grid.
Response to Arguments
Applicant's arguments filed May 27, 2026 have been fully considered but they are not persuasive.
Applicant argues that the amendment (regarding conductive carbon with an oxidized surface) is not present in the prior art and would not be obvious due to non-oxidized graphite being highly electrically conductive, while oxidized synthetic graphite is much lower in electrical conductivity and increases electrical resistance and reduces strength (known in the art, disparaging properties).
Examiner respectfully disagrees, Korchev et al., in the same field of endeavor (providing carbonaceous additives to lead acid batteries (para 0002)) teach of a conductive carbon having an oxidized surface ((para 0002, 0079-0080). The motivation for using a conductive carbon having an oxidized surface (with certain morphologies) is to both introduce the charge acceptance and cycle improvement with carbonaceous materials, while improving dynamic charge acceptance and minimizing water loss (para 0003, 0192-0193). Accordingly Korchev et al. does recognize that specific surface oxidized carbons improve issues regarding conductive non-oxidized carbon additives. Thus, the argument is not persuasive, and the rejection of record is maintained.
Applicant argues that the dependent claims are distinct from the prior art of record for the same reason as the independent claim.
Examiner respectfully disagrees. The rejection with respect to the independent claim has been maintained, and thus the rejections to the dependent claims are maintained as well.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENIA WANG whose telephone number is (571)272-4942. The examiner can normally be reached a flex schedule, generally Monday-Thursday 5:00 -7:30 (AM) and 9:45-3:15 ET.
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, Curtis Mayes can be reached at 571-272-1234. 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.
/EUGENIA WANG/Primary Examiner, Art Unit 1759
Prosecution Insights