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 .
Specification
The disclosure is objected to because of the following informalities:
On page 5, lines 32-33 of the specification, the language “the present invention has surprisingly found to have an effect” should read “the present invention has surprisingly been found to have an effect”.
On page 9, line 14, the word “pyrogenic” should read “porogenic”, unless pyrogenic was intended.
On page 10, line 35, the language “it preferable in step (i)” should read “it is preferable in step (i)”.
On page 11, lines 16-17, the language “dispersion of the more carbon-containing starting materials” should read “dispersion of the one or more carbon-containing starting materials”.
On page 11, lines 22-23, the language “separated from the solvent by the means of the dehydration” should read “separated from the solvent by means of dehydration”.
On page 13, line 29, the language “step (ii) preferably includes using alkali and/or acid conditions” should read “step (iii) preferably includes using alkali and/or acid conditions”.
Appropriate correction is required.
Claim Interpretation
The “templated porous carbon material” recited in the claims shall be interpreted as a porous carbon material produced by an endo-templating using a porogenic substance as a template, as defined on page 6, lines 6-23. For reference, the disclosed endo-templating process used for making the templated porous carbon material of the present invention is outlined on page 8, lines 19-31, and on page 37, lines 25-36, and page 38, lines 1-2.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 9-11 are 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.
The term “about” in claims 1 and 9-11 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For a relative term, a standard for measuring the degrees intended is required. See MPEP 2173.05(b) Relative Terminology, sections I. Terms of Degree and III. A. Approximations, “About”.
Double Patenting
Claim 1 of this application is patentably indistinct from claim 1 of Application No. 17/925893. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/925893 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claims recite a non-graphitic core comprising one or more primary carbon containing materials and an outer surface comprising one or more carbonized materials chemically bonded to the core, wherein the open micropore specific surface area is between 0 m2/g and 5 m2/g.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102 and 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 1, 3-12, and 17 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Otter et al. (US 20170008769 A1, hereinafter "Otter").
Regarding Claim 1, Otter teaches a carbon containing anode material which is capable of the insertion and extraction of alkali metal ions (insertion and removal of lithium ions, [0011]), comprising a carbon structure (porous carbon structures, [0011]) comprising:
a) a core comprising one or more primary carbon-containing materials selected from i) a templated porous carbon material (Abstract, [0002]-[0009], and [0028]-[0030] disclose the method for producing the porous carbon product having a core shell structure, and the particles are formed by an endo-templating process), and
b) an outer surface comprising one or more carbonized materials chemically bonded on the one or more primary carbon-containing materials ([0007]-[0008], [0017], [0024], and [0041]-[0046] teach the formation of the outer surface comprising carbonized non-graphitizable carbon via a process such as gas phase deposition).
It is deemed that the carbon-containing anode material has an open micropore specific surface area of 0 m2/g to 5 m2/g, as determined using nitrogen gas BET analysis is an inherent characteristic and/or property of the specifically disclosed carbon containing anode material. In this respect, MPEP 2112 sets forth the following:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In this case, the methods between prior art and instant application are similar and would yield the same product, and the basic structure is given and is the same as in the present invention. Additionally, paragraph [0018] teaches the low porosity carbon of the outer layer reduces microporosity and the specific surface area of the composite material without impeding accessibility of liquid electrolyte to the inner layer, suggesting that, in producing the surface layer, it would have been expected to have filled the micropores with the secondary carbon-containing material and thereby reduce the specific surface area of the micropores.
In another prior art reference, Kobayashi et al. (US 20180287153 A1, hereinafter “Kobayashi”), which deals with forming a carbonaceous negative electrode material for a sodium-ion battery, comprising a coating step by pyrolytic carbon. Paragraph [0032] describes this process:
By the coating step by pyrolytic carbon, the specific surface area of the obtained carbonaceous material can be controlled. The pyrolytic carbon used in the present invention is one which can be heated as a hydrocarbon gas, and provided that it is one which can reduce the specific surface area of the carbonaceous material, it is not particularly limited.
A hydrocarbon is used as the carbon source for coating the core of the carbonaceous anode material, and the coating process closely resembles the process disclosed in the present application, which is expected to lead to a shell or surface coating having similar characteristics.
In paragraph [0013] of Kobayashi teaches a specific surface area lower bound of 0.5 m2/g, which demonstrates that the specific surface area of the outer surface, which includes the micropores, is decreasing such that the specific surface area of the micropores may be between 0 and 5 m2/g.
Kobayashi also teaches, “when the specific surface area is 100 m2/g or less, the pores which do not contribute to storage of sodium are reduced, and pores of the size which can store sodium are increased, and it is possible to display excellent discharge capacity,” in paragraph [0013]. This teaching strongly supports that it would have been expected that the specific surface area of the micropores be decreased for advantageous effects. In combination with the lower range of the specific surface area taught above, it would be expected that the micropores, which are depicted by the lower end of the range of specific surface area values, would have a specific surface area between 0 and 5 m2/g.
Additionally, Otter teaches the shell has a specific BET surface area in the range of 50 m2/g or less ([0060]), anticipating the range of 0 to 5 m2/g. Taking Kobayashi’s teaching into perspective, it could have been assumed that the micropores would have had a specific surface area within the range claimed in the present application.
Regarding Claim 3, Otter teaches the carbon-containing anode material according to claim 1.
It is deemed that the average pore radius of 9 angstroms or greater is an inherent characteristic and/or property of the specifically disclosed carbon-containing anode material. In this respect, MPEP 2112 sets forth the following:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In this case, the mesopores have pore size in range of 2 nm to 50 nm ([0018] of Otter), which is a pore radius of 10 angstroms to 250 angstroms, which is greater than 9 angstroms. The micropores have pore size of 2 nm or less ([0025] of Otter), which is a pore radius of 10 angstroms or less. The average pore radius can be expected to be greater than 9 angstroms as the mean is shifted by larger values. Additionally, since the products were produced by similar process and have the same compositions, they would be expected to have the same physical characteristics.
Regarding Claim 4, Otter teaches the carbon-containing anode material according to claim 1, wherein the templated porous carbon material is derived from a carbon-containing starting material (first precursor for carbon, [0004]-[0006]) which is then treated by an endo-templating process ([0028]-[0030] and [0041]-[0046] disclose the method for producing the porous carbon product having a core shell structure, and the particles are formed by an endo-templating process; the process matches the description for the endo-templating process disclosed on page 8 , lines 19-31 of the specification of the present application).
Regarding Claim 5, Otter teaches the carbon-containing anode material according to claim 1, wherein the one or more primary carbon-containing materials are derived from the pyrolysis of carbohydrate materials (carbon precursor is a carbohydrate solution, such as a sugar-water solution, [0017] and [0097]).
Regarding Claim 6, Otter teaches the anode of claim 1, wherein the one or more primary carbon-containing materials comprise one or more carbon composite materials represented by (carbon)-X, where X is an oxide of silicon (silicon oxide was used for templating the primary carbon containing material, [0017], [0086]-[0088], and [0098]).
Regarding Claim 7, Otter teaches the anode according to claim 1, wherein the carbonised material is derived from one or more secondary carbon-containing materials selected from organic and hydrocarbon materials (second C precursor can be liquid pitch, an organic material, [0017]).
Regarding Claim 8, Otter teaches the anode according to claim 1.
Otter does not teach that the anode comprises a minimum of 92.0 atomic percent of carbon on its outer surface.
However, the carbonization process is expected to significantly raise the atomic percent of carbon on the outer surface of Otter’s anode material. The liquid pitch is pyrolyzed to obtain a surface comprising primarily carbon.
Thus, the limitation of 92.0 atomic percent of carbon in the outer surface of the anode material is deemed an inherent characteristic of Otter’s anode material.
Regarding Claim 9, Otter teaches the carbon-containing anode material according to claim 1, wherein the one or more primary carbon-containing materials have a particle size from about 1 nm to 30 μm (the intermediate-product particles have a mean particle size in the range of 5 μm to 100 μm, or 25 μm to 75 μm).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Regarding Claim 10, Otter teaches a process for the preparation of a carbon-containing anode material, which is capable of the insertion and extraction of alkali metal ions comprising:
providing a core that comprises a templated porous carbon material ([0098]-[0100] teach the steps for providing the core, describing the templating process)
contacting the core with a secondary carbon-containing material at a temperature of up to 950 °C (the surface coating secondary particles are carbonized at a temperature of 700 °C, [0108]), to yield a carbon-containing anode material that has an outer surface comprising a carbonized material chemically bonded on the one or more primary carbon-containing materials ([0109] describes this composite structure).
The carbon-containing anode material having an open micropore specific surface area of 0 m2/g to 5 m2/g, as determined using nitrogen gas BET analysis, has been deemed an inherent property of the specifically disclosed carbon containing anode material. See the rejection for claim 1 above.
Regarding Claim 11, Otter teaches the process according to claim 10, in which the templated porous carbon material in step a. is formed by:
(i) providing one or more carbon-containing starting materials together with one or more porogenic substances (cane sugar melt for the starting material and silicon oxide as the porogenic substance, [0098]);
(ii) optionally initially heating the components provided in step (i) at a temperature from about 60 to 950 °C (160 to 205 °C, [0098]-[0099]).
(iv) pyrolyzing the components provided in step (i) or the optional resulting product of step (ii) or (iii), at a temperature from about 600 to about 3000 C (650 °C, [0100]).
Regarding Claim 12, Otter teaches the process according to claim 11, in which step i) comprises a physical mixture and the carbon-containing starting material is selected from a carbohydrate material (cane sugar, [0097]), and the porogenic substance is an inorganic compound (silicon oxide, SiO2, [0098]).
Regarding Claim 17, Otter teaches the carbon-containing anode material according to claim 1. Otter further teaches its use in a lithium-ion cell ([0011] and [0026]). Lithium-ion cells always comprise a cathode electrode, an anode electrode, and an electrolyte. Thus, Otter anticipates the lithium-ion cell of claim 17.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Otter et al. (US 20170008769 A1, hereinafter "Otter") in view of Lei et al. (CN 104201388 A, hereinafter "Lei").
Regarding Claim 2, Otter teaches the carbon-containing anode material according to claim 1.
Otter does not explicitly teach that the overall specific surface area of the carbon-containing anode material is between 0 m2/g to 5 m2/g, as determined using nitrogen gas BET analysis.
However, Lei teaches a porous carbon-containing composite anode material produced by a similar preparation method using petroleum resin and hard carbon coating, wherein the specific surface area of the anode material can be controlled to within 2 m2/g to 5 m2/g (Abstract). Lei teaches that his anode produced by his method similar to that used in the present application produces an anode with high energy density, high rate charging and discharging performance, and good circulation performance of the lithium-ion battery (Abstract).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the porous carbon-containing anode material of Otter to have a specific surface area between 0 m2/g and 5 m2/g to have improved performance and cycle characteristics as taught by Lei.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Otter et al. (US 20170008769 A1, hereinafter "Otter") in view of Yu et al. (CN 111547723 A, hereinafter "Yu").
Regarding Claim 13, Otter teaches the process according to claim 12, in which the carbon-containing starting material comprises a carbohydrate material (cane sugar, [0017] and [0097]).
Otter does not teach that the porogenic substance or the compound used to derive the porogenic substance comprises a magnesium salt.
However, Yu teaches magnesium gluconate as the compound used to derive the porogenic substance in his own disclosed endo-templating process for producing a porous carbon-containing anode material ([0016]-[0017] of the machine translated description teaches the magnesium salt magnesium gluconate), and the resulting anode material has rich pores, large specific surface area, and good conductivity ([0016]). Paragraph [0031] further teaches that the anode material can be applied to energy storage devices and has a high specific capacity and excellent cycle performance.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the process for forming the templated porous carbon material by using a magnesium salt, improving the pore quality and conductivity and leading to excellent performance when used in a battery as taught by Yu.
Regarding Claim 14, Otter teaches the process according to claim 11.
Otter does not teach using alkali or acidic conditions.
However, Yu teaches the use of alkali conditions for preparing a porous carbon material such as potassium hydroxide to process renewable biomass materials an enable a cheap and sustainable method ([005]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the process taught by Otter to use alkali conditions for processing renewable, alternative primary carbon sources for making the templated porous carbon-containing anode material, reducing costs long-term as taught by Yu.
Regarding Claim 15, Otter teaches the carbon-containing anode material according to claim 1.
Otter does not teach a sodium-ion cell comprising this carbon-containing anode material.
However, Yu teaches an analogous templated porous carbon-containing anode material applied to the negative electrode of a sodium ion battery ([0070]-[0071]).
The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. (see MPEP § 2143, B.).
Therefore, it would have been obvious to one of ordinary skill in the art to have substituted the templated porous carbon-containing anode material from Otter for the one taught by Yu in a negative electrode of a sodium ion battery.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Otter et al. (US 20170008769 A1, hereinafter "Otter") in view of Yu et al. (CN 111547723 A, hereinafter "Yu"), and further in view of Kano et al. (WO 2014188722 A1, hereinafter "Kano").
Regarding Claim 16, Otter modified by Yu teaches the sodium-ion cell according to claim 15.
Otter modified by Yu does not teach that the anode electrode further comprises a polymeric binder, and the polymer binder comprises carboxymethylcellulose.
However, Kano teaches a negative electrode active material for a sodium ion secondary battery having high capacity ([003]). In his sodium-ion battery, Kano teaches a binder such as carboxymethylcellulose is used for improving the binding property of the material constituting the electrode ([0061]).
The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. see MPEP § 2143, C.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have improved the negative electrode for use in a sodium-ion battery taught by Otter modified by Yu by including a binder such as carboxymethylcellulose to improve the binding property of the electrode as taught by Kano.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW N KIM whose telephone number is (571)272-9169. The examiner can normally be reached Mon-Fri. 7:30am-3:30pm.
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/ANDREW KIM/Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727
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