DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claim 9 is objected to for the use of an acronym (“Dv50”) without detailing what the acronym stands for. Appropriate correction is required.
Claim Rejections - 35 USC § 112
3. 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.
4. Claim 9 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 9 recites: “wherein the manganese-containing active material comprises particles with Dv50 from 50 nm to 99 nm intercalated-able in a tube cavity of the functionalized carbon nanotube.” The term “intercalated-able” is not a standard dictionary word and the meaning is not clear rendering the claim indefinite.
Appropriate correction is required. The claim will be examined as best as possible for prior art application.
Claim Rejections - 35 USC § 102
5. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
6. Claims 1, 3, 10, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shen et al. (CN 103141529)1 (machine translation provided).
Regarding claim 1, Shen teaches a positive electrode material, comprising a manganese-containing active material (P16, 36-37; claims 1, 4) and a functionalized carbon nanotube (P13-14, 21, 26, 36, 38, claims 1-2), a surface of the functionalized carbon nanotube comprising lone pair electrons by way of any of the taught polar (“functional”) groups of (P14, 26, 38; claim 2):
-CHO (aldehyde functional group with lone pairs on oxygen)
-COOH (carboxyl functional group with the lone pairs shown below)
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-OH; or
-OCOOH.
Regarding claim 3, Shen teaches wherein the functionalized carbon nanotube includes a carboxylated (-COOH group is a carboxyl group) carbon nanotube (P14, 26, 38; claim 2).
Regarding claim 10, Shen teaches wherein the manganese-containing active material comprises at least one LiMn2O4 (P16, 36-37).
Regarding claim 12, Shen teaches a secondary battery, comprising the positive electrode plate according to claim 11 (P36, 40-44; examples; claims 1-6).
Claim Rejections - 35 USC § 103
7. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
8. Claims 2, 4-8, and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Shen et al. (CN 103141529) (machine translation provided) as applied to at least claims 1 and 12 above.
Regarding claim 2, Shen teaches wherein a mass ratio of the functionalized carbon nanotube to the manganese-containing active material is from 0.2-10 wt% (P13, 21, 47, 68, 70; Table 1). It is noted that Examples 1-7 utilized 2 wt% functionalized carbon nanotube; Example 9 utilizes 0.1 wt% functionalized carbon nanotube; and Example 10 utilizes 0.2 wt% functionalized carbon nanotube, etc. – each based on 100 wt% active material (see Table 1; P47).
Regarding the taught range of 0.2-10 wt% functionalized carbon nanotube relative to 100 wt% manganese-containing active material, this is equivalent to 0.002-0.1: 1, with the claimed ranges recited being 0.0005:1 to 0.004:1, and preferably from 0.001:1 to 0.003:1. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP § 2144.05).
Regarding claim 4, Shen teaches wherein a substitution value of the polar group (i.e., “functionalization degree”) of the functionalized carbon nanotube is 0.2-1.5 (P13, 21, 38, 91 Examples, Table 1). The taught substitution value or degree of susbtitution, more frequently referred to as the degree of functionalization or functional group density, would be understood by one having ordinary skill in the art as a ratio of the number of attached functional groups to the total number of carbon atoms in the nanotube lattice. Thus, 0.2-1.5 substitution value is equivalent to 0.2-1.5% substitution/functionalization degree relative to 100% of carbon nanotube lattice, with the claimed range recited as 0.1% to 6%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP § 2144.05).
Moreover, Shen teaches that by utilizing carbon nanotubes with the polar (“functional”) groups, the lithium-ion battery using the positive electrode active material achieves more uniform dispersion in the prepareation of the positive electrode (abstract), wherein a positive electrode with high compact density, good electrical conductivity, having a smooth surface can be achieved (abstract), and the carbon nanotubes with said polar groups is suitable for high rate charging and discharging and is excellent in cycling performance (abstract). When the degree of substitution/functionalization is in the range of 0.2-1.5%, Shen teaches that the energy density of the battery was higher, the resitivity less, the specific capacity is larger, and the cycle performance is better (P91; Table 1). Accordingly, Shen demonstrates that the substitution/functionalization degree is a known result-effective variable.
Therefore, additionally, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to determine the optimum value of the substitution/ functionalization degree for a specific functional group (e.g., -CHO; -COOH; -OH; -OCOOH) in any mathematical format (i.e., standrad functionalization degree, weight percentage, atomic percentage, etc.) in order to achieve a desired energy density, resitivity, specific capacity, and/or cycle performance, and/or desirable outcomes for a given set or all of these features given Shen teaches that the substitution/functionalization degree is a known-result effective variable for these featuers (abstract; P91; Table 1). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). See also: “Where 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 claims 5, 7, and 8, Shen is silent as to: a length-diameter ratio of the functionalized carbon nanotube is from 200 to 20,000 (claim 5); a length of the functionalized carbon nanotube is from 0.1 μm to 50 μm (claim 7); and a specific surface area of the functionalized carbon nanotube is from 50 m2/g to 2,000 m2/g (claim 8).
The functionalized carbon nanotube of Shen intrinsically has some length, and thus some length-diamter ratio, and some specific surface area value that is simply not disclosed. The court has held, “Where 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).
Therefore, in the absence of new or unexpected results for which objective evidence exists that is fully commensurate in scope with the claims2, determining routine parameters of the selected carbon nantoubes is considered routine optimization of intrinsic, known parameters of the carbon nanotubes utilized. It is noted these claims are alternatively rejected as well below with additional secondary references.
Regarding claim 6, Shen teaches wherein a tube diameter of the functionalized carbon nanotube is from 2 ~ 20 nm (P39), with the claimed range recited being 1 nm to 100 nm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP § 2144.05).
Regarding claim 11, Shen teaches a positive electrode plate (P13), comprising a positive electrode material layer (P13), the positive electrode material layer comprising the positive electrode material according to claim 1 (rejection of which is incorporated in its entirety and not repeated here), wherein the examples utilize an active material: carbon nanotube: binder (PVDF) in a weight ratio of 100: 2 : 3 (P47). Accordingly, using this taught suitable weight ratio for when LiMn2O4, or LiCoxNiyMnzO2 (“a manganese containing active material”) is the specific active material (a functional equivalent positive active material taught at P37 for the LiFePO4 utilized in the example), this results in:
a percentage mass content of the manganese-containing active material is 95.2 wt% (claimed range: 95.7% to 96.05%), and a percentage mass content of the functionalized carbon nanotube is 0.19 wt% (claimed range: 0.05% to 0.4%) , based on a mass [using the sum of the active material, carbon, and binder – it is noted this does not recite “a total mass of the positive electrode material layer” so it is open to interpretation as to what is or is not included in the calculation] of the positive electrode material layer.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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) (i.e., the 95.2 wt% active material relative to claimed range beginning at 95.7 wt%).
Moreover, each of the active material, carbon nanotube, and binder are performing well-known roles in a positive active material layer of a battery that would be immediately understood by one having ordinary skill in the art: lithium ion intercalation/deintercalation for the active material; electrical conductivity for the carbon nanotube; cohesiveness for the binder.
Therefore, additionally, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to determine the workable or optimum amounts of positive active material and carbon nanotubes, relative to a mass of the positive electrode layer (i.e., whether including binder or not in this calculation), in order to provide a viable, suitable positive electrode active layer performing the required functions of lithium intercalation/ deintercalation, electricaly conductivity, and cohesiveness of components given the court has held, “Where 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 claims 13-17, Shen does not explicitly teach a battery module, comprising the secondary battery according to claim 12; a battery pack, comprising the battery module according to claim 13, or an electrical apparatus, comprising any of: the secondary battery according to claim 12, the battery module according to claim 13, or the battery pack according to claim 14; however, the implementation of a plurality of batteries to create a battery module, or the implementation of a plurality of modules to create a battery pack, is considered prima facie obvious in view of the immediately known constructs to one having ordinary skill in the art, thereby achieving the immediately known, predictable result of increased voltage and/or current.
Additionally, providing any of the individual battery taught by Shen, a battery module comprised of a plurality of said individual batteries, or a battery pack comprised of a plurality of modules within an electrical apparatus is also considered prima facie obvious in view of the fact that one of ordinary skill in the art would understand that batteries, modules, and packs are provided for the functionality and intended purpose of providing power to an electrical apparatus.
9. Claims 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Shen et al. (CN 103141529) (machine translation provided) as applied to at least claims 1 above, and further in view of Shim et al. (US 2013/0248757)3.
Regarding claims 5 and 7, Shen is silent as to a length of the functionalized carbon nanotube (claimed range is from 0.1 μm to 50 μm) (claim 7) or a length-diameter ratio of the functionalized carbon nanotube is from 200 to 20,000 (claim 5). It is noted Shen teaches the
tube diameter of the functionalized carbon nanotube is from 2 ~ 20 nm (P39), with the claimed range recited being 1 nm to 100 nm.
In the same field of endeavor and teaching an anticipatory construct of at least claim 1, Shim teaches a positive active material including “a manganese-containg active maerial” (i.e., lithium manganese phosphate) and carbon nanotube that has been acid-treated and functionalized to including carboxyl groups (P24) on the surface thereof (i.e., (“the functionalized carbon nanotube comprising lone pair electrons”) (P23). Shim teaches a suitable a suitable carbon nanotube diameter is 1 nm or greater, preferably 5 to 50 nm (P26), and a suitable length thereof is 10 µm or greater, preferably 10 µm to 50 µm (P26). This is equivalent to a length-diameter ratio of: 10-50 µm: 0.005- 0.05 µm (5-50 nm) which calculates to 200-10,000. Utilizing the more narrow range taught by Shen of 2-20 nm diameter, this calculates to 500-25,000.
Therefore, it would have been obvious to to one having ordinary skill in the art at the effective filing date of the invention to adopt known, suitable ranges for the length and/or diameter of the carbon nanotube from an analogous construct such as Shim, and thus a calculatable length-diameter ratio, given Shen is silent on these parameters, in order to provide a suitable carbon nanotube for use as a positive active material (P23-26).
It is noted that in the absence of new or unexpected results for which objective evidence exists that is fully commensurate in scope with the claims4, determining routine parameters of the selected carbon nantoubes is considered routine optimization of intrinsic, known parameters of the carbon nanotubes utilized.
10. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Shen et al. (CN 103141529) (machine translation provided) as applied to at least claims 1 above, and further in view of Azami et al. (US 2015/0104701).
Regarding claim 8, Shen is silent as to the specific surface area of the functionalized carbon nanotube (claimed range is from 50 m2/g to 2,000 m2/g).
In the same field of endeavor, Azami teaches analogous art of a positive electrode active material layer that includes carbon nanotubes and teaches the following:
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Therefore, it would have been obvious to one having ordinary skill in the art at the effective filng date of the invention to select and utilized carbon nanotubes having a specific surface area in the range of 40- 2,000 m2/g given Azami teaches the specific area of the carbon nanotubes is a known result effective variable as detailed above (P50), and that when within this range, there is a great effect in suppressing a reaction of the carbon nanotubes with the electrolytic solution and the positive electrode active material can be efficiently covered (P50).
It is noted that in the absence of new or unexpected results for which objective evidence exists that is fully commensurate in scope with the claims5, determining routine parameters of the selected carbon nantoubes is considered routine optimization of intrinsic, known parameters of the carbon nanotubes utilized.
11. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Shen et al. (CN 103141529) (machine translation provided) as applied to at least claim 1 above, and further in view of Yang et al., “Carbon nanotube capsules enapsulating SnO2 nanoparticles as an anode material for lithium ion batteries,” Electrochimica Acta 55 (2009) 521-527 (copy provided).
Regarding claim 9, Shen teaches the use of a manganese-containing active material such as LiMn2O4, LiFeMnPO4, LiCoxNiyMnzO2 (P16), wherein all of said materials are intrinsically capable of lithium ion intercalation and deinteracalation (“i.e., “intercalataed-able6”).
Shen is silent as to the manganese-containing active material comprising particles with a Dv50 (assumed to be the median particle size by volume) from 50-99 nm in a tube cavity of the functionalized carbon nanotube.
In an analogous field of endeavor, Yang teaches it is a known technique in the art of providing active material for lithium ion batteries such that the the active material is provided as nanoparticles that are encpasulated in a carbon nanotube (CNT). Yang teaches that CNTs should bea suitable matrix material of metals or metal oxides to increase their electrochemical properteis (p. 521). Yang teaches the creation of carbon nanotube capsules (CNCs) with hollow interior and stout walls that are acid modified (i.e., functionalized and intrinsically having lone pair electrons via carboxyl groups) that provide a favorable structure for use as a matrix material of metal oxide/CNC composites such that the active metal or metal oxide could be encapsulated into the interior of the CNC (p.522).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to configure the positive active material of Shen such that the manganese-containing active material of LiMn2O4, LiFeMnPO4, LiCoxNiyMnzO2, all metal oxides, are encapsulated into the interior of the fucntionalized carbon nanotube given Yang teaches that such a technique is known in the art with respect to provide active material for a lithium ion battery within a carbon nanotube capsules (CNCs), wherein the applied technique provides for the taught, predictable result of providing a favorable structure of a matrix material for metal oxide active materials to increase their electrochemical properteis (p. 521).
Shen teaches the use of LiFeMnPO4 as one of the manganese-containing active material, and Shen as modified by Yang teaches the techqniue of encapsulating nanoparticles of active material metal oxides within CNCs. There is not a disclosure of a Dv50 of 50-99 nm for the LiFeMnPO4; however, in adopting the technique of Yang to the Shen construct, one of ordinary skill in the art would be led to select as the form of the active material nanoparticles (as taught by Yang). Determining an appropriate size thereof, whether quantified in terms of Dv50 (volume), Dw50 (weight), median particle size/ (D50), etc. is considered routine optimization in terms of determining optimum or workable active material nanoparticles to fit within the CNCs given the court has held, “Where 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). Accordingly, in the absence of new or unexpected results for which objective evidence exists that is fully commensurate in scope with the claims7, determining routine parameters such as the median size by volume of the nanoparticles of LiFeMnPO4 to be encapsulated in the CNT/CNCs of modified Shen is considered routine optimization of known parameters.
12. Claims 13-17 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Shen et al. (CN 103141529) (machine translation provided) as applied to at least claim 1 and 12 above, and further in view of Song et al. (US 2019/0334138).
Regarding claims 13-17, Shen does not explicitly teach a battery module, comprising the secondary battery according to claim 12; a battery pack, comprising the battery module according to claim 13, or an electrical apparatus, comprising any of: the secondary battery according to claim 12, the battery module according to claim 13, or the battery pack according to claim 14.
The implementation of a plurality of batteries to create a battery module, or the implementation of a plurality of modules to create a battery pack, is taught by Song in order to achieve the predictable result of increased output capacity and/or output voltage or current (P4). The implementation within an electric or hybrid vehcle to provide power thereto is also taught by Song (P4).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to provide a plurality of the individual batteries of Shen to achieve a module, or a plurality of modules to achieve a battery pack, and to provide any of said components as part of a vehicle (“electrical apparaqtus”) given Song teaches the technique is known in the art and achieves the predictable results of increased output capacity and/or output voltage or current (P4), as well as implementing them for their intended purpose of providing power to an electrical apparatus.
Conclusion
13. The prior art made of record considered pertinent to applicant's disclosure:
The EP Office cites three (3) anticipatory references against at least claim 1 (D2 being appiled above):
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The JP Office in examining the instant application counterpart cites six (6) anticipatory references (Citations 1-6, and 9) against at least claim 1 (all cited in the IDS’s filed with the instant applicatino):
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The ISA cites the following anticaptory reference (equivalent to Shim applied above as a secondary reference):
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Additional noteworthy prior art cited by the Examiner:
Manthiram (US 2009/0117020) teaches analogous art of cathode (“positive electrode”) active material of LiMPO4, wherein M may be one or more elements including Mn and Fe (abstract) that is nanostructured in the form of nanorods having a width of 25 + 6 nm and length up to 100 nm in length (P14) and is encapsulated within a multi-walled carbon nanotube (MWCNT) (P92).
Liu et al, “Encapsulation of Manganese Carbides within Carbon Nanotubes and Nanoparticles,” Carbon, Vol. 33, No. 6 pp. 749-756, 1995 (copy provided) teaches manganese carbides encapsulated in a carbon nanotube.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BILLIET whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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, Ula C Tavares-Crockett can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA J BILLIET/Primary Examiner, Art Unit 1729
1 “D2” of EP search report; Citation 2 by JP Office Actions.
2 See MPEP 716: Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." Thus, for example, the claims read on an active material comprising -OH functionalized carbon nanotube in combination with MnO2 given the bradth of “a manganese-containing active material” and “a functionalized carbon nanotube comprising lone pair electrons” which is a vastly different construct than what is specifically disclosed in the application for which any evidence is provided (see MPEP 716.02(d)). Accordingly, if there is any future allegation of new or unexpected results, the claims must be commensurate in scope with the objective evidence presented for any nonobviousness alleged.
3 US counterpart to D1 of ISA (=CN 103367742)
4 See footnote 2.
5 See footnote 2.
6 See rejection under 35 U.S.C. 112(b)/second paragraph.
7 See footnote 2.
Prosecution Insights