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 .
Response to Amendment
In response to the amendment received January 28, 2026:
Claims 1-20 are pending with claims 15-20 withdrawn as being drawn to an unelected invention.
The core of the previous rejection is maintained with slight changes made in light of the amendment. All changes to the rejection are necessitated by the amendment. Thus, the action is final.
Election/Restrictions
Applicant again traverses the restriction mailed August 11, 2025, arguing that burden does not exist as both inventions were examined together in the parent.
Examiner respectfully disagrees with Applicant’s position. Examiner would first like to emphasize that the restriction was maintained and made final in the Office Action mailed October 31, 2025. Again, burden consistent with MPEP 808.02 was set forth in the original restriction requirement.
For clarity’s sake, showing burden relies on showing one of the following:
(A) Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.
(B) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.
(C) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries), a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.
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.
Even with the amendment to claim 1 (Group I) (incorporating a portion of claim 15 (Group II)), restriction regarding the inventions remain proper.
Inventions I and II are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). 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.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Additionally, restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(A) Separate classification thereof (as set forth in the original restriction requirement): This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search.
(C) A different field of search (in light of the differences set forth above): Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together).
See MPEP §808.02.
Thus the argument is not persuasive. The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 1 is objected to because of the following informalities: by reciting “.03 % wt.” (This is seen as a typographical error where 0.3 was meant instead.) Appropriate correction is required.
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 11-14 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.).
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.
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.
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 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, and Atanassova et al., 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, and Atanassova et al., 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, and Atanassova et al., 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, and Atanassova et al., 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.
Claim 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hardman et al. in view of Yasuda et al., Jagannathan ‘386, and Atanassova et al., as applied to claim 1 above, further in view US 2012/0171564 (Jagannathan ‘564).
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.
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 the rejection to claim 1 for full details of the combination, incorporated herein but not reiterated herein for brevity’s sake.)
The combination does not render obvious that the conductive graphite is a synthetic conductive graphite.
However, 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).
Response to Arguments
Applicant's arguments filed January 28, 2026 have been fully considered but they are not persuasive.
Applicant argues the prior art does not teach/render obvious a plurality of expanders at 0.1-0.3 wt% of the negative active mass.
Examiner respectfully disagrees. Hardman et al. teaches expanders (e.g. organic molecules; para 0023) 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). Thus, the claimed weight range is within the prior art. Regarding the plurality, the following is reiterated from the rejection of claim 1 for clarity’s sake:
“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).”
Thus, the argument is not persuasive, and the rejection of record is maintained.
With respect to the arguments regarding the 103 rejections, Applicant argues that the prior art used to render obvious the rejected claims (Yasuda and Atanassova) do not cure the deficiencies of the rejection applied to the independent claim (Hardman et al.). Applicant does not argue how the combination is not proper. Therefore, the Examiner maintains the obviousness rejections and upholds the rejection to the independent claim, as above.
Applicant argues that one of ordinary skill would not have found a hint in Jagannathan ‘386 to adapt or modify the conventional system to arrive at the claimed invention.
Examiner respectfully disagrees. Obviousness, as consistent with the MPEP has been properly set forth. Substitution of components known in the art is obvious (see MPEP§2143(I)(B)), as is duplication of carbon materials (see MPEP §2144.04(VI)(B)). Rationales regarding both of the above reasons for obviousness has been set forth in the rejection to claim 1 (incorporated herein but not reiterated herein for brevity’s sake). 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
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.
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/EUGENIA WANG/Primary Examiner, Art Unit 1759