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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP 2022-104535, filed on June 29, 2022.
Claim Objections
Claim 1 is objected to because of the following informalities: the term “a strain ε” is present twice in claim 1. The second instance of “a strain ε” should read “the strain ε”. Appropriate correction is required.
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 4-6 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. Claim 4 is rejected as it is unclear what the term “balance” refers to. For the purpose of examination “balance” is assumed to be the portion of the mixed carbon powder that is not the non-graphitizable carbon.
Double Patenting
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.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-5 of copending Application No. 18/716,408 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending application No. 18/716,408 teaches a substantially identical preparation method of the claimed non-graphitizable carbon of the instant application. This gives the appearance that the non-graphitizable carbon of copending application No. 18/716,408 is the same material as the non-graphitizable carbon of the instant application, with the difference in claimed elements being a mere difference of characterization methods.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sonobe (U.S. Patent No. 5,587,255).
Regarding Claim 1, Sonobe teaches a non-graphitizable carbon (Col. 2 lines 50-55 teach a non-graphitizable component).
Sonobe does not explicitly teach a strain ε determined by a method in which an X-ray diffraction pattern is subjected to Rietveld analysis to obtain a profile and the profile is used to determine a strain ε by a Williamson-Hall method is 0.081 to 0.120, and a lattice plane distance d002 corresponding to 002 reflection as obtained by subjecting the X-ray diffraction pattern to Rietveld analysis is 0.360 to 0.370 nm.
Sonobe teaches the non-graphitizable carbon has an interlayer spacing d002 of at least 0.365 nm (abstract and Col.3 lines 28-33 teach a d002 spacing of at least 0.365 before reacting with water). This disclosure teaches the limitation of the d002 spacing being 0.360-0.370 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 I. In the instant case the claimed range of 0.360-0.370 nm overlaps with the taught range of at least 0.365 nm. While Sonobe does not disclose a strain ε of the non-graphitizable carbon determined by a Williamson-Hall method, the physical properties of the non-graphitizable carbon taught by Sonobe sufficiently overlap with the non-graphitizable carbon of the instant application that the non-graphitizable carbon of Sonobe would inherently have a strain that overlaps with the strain claimed in the instant application. These physical properties include particle size (Col. 9 lines 45-55 teach an average particle diameter of 5-100), surface area (Col. 11 lines 7-13 teach a BET surface area of 2.4 m2/g), and true density (Col. 4 lines 13-25 teach a true density of 1.45-1.70 g/cm3). The instant specification recognizes that these, and similar, physical properties contribute to the measured strain. Therefore, it would have been obvious to a person having ordinary skill in the art at the time of filing to produce a non-graphitizable carbon material with a strain that overlaps with the strain claimed in the instant application.
Regarding Claim 2, modified Sonobe teaches all the limitations of Claim 1 as discussed above.
Sonobe further teaches the use of the non-graphitizable carbon material in a negative electrode for a lithium-ion battery (Col. 13 lines 47-49).
Regarding Claim 3, Sonobe teaches all the limitations of Claim 2 as discussed above.
Sonobe further teaches the use of the negative electrode for a lithium-ion secondary battery (Col. 13 lines 41-49).
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sonobe (U.S. Patent No. 5,587,255) in view of Endo (U.S. Patent Application Publication No. 2018/0145329).
Regarding Claim 4, modified Sonobe teaches all the limitations of Claim 1 as discussed previously.
Sonobe does not teach a mixed carbon powder comprising the non-graphitizable carbon and graphite, wherein a content amount of the non-graphitizable carbon is 1 to 20 mass% with respect to a total mass of the mixed carbon powder, and a balance is the graphite.
Endo teaches a mixed carbon powder comprising the non-graphitizable carbon and graphite, wherein a content amount of the non-graphitizable carbon is 1 to 20 mass% with respect to a total mass of the mixed carbon powder, and a balance is the graphite ([0047] teaches in a preferred embodiment the ratio of non-graphitizable carbon to a total mass of non-graphitizable carbon and graphite is 10-20 mass%).
To solve the same problem of providing a negative electrode of a mixed carbon material, Endo teaches incorporating a moderate amount of non-graphitizable carbon into graphite for a negative electrode to enhance the conductivity of the negative electrode ([0012]). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of filing to mix the non-graphitizable carbon with graphite in the ratio claimed in the instant application.
Regarding Claim 5, modified Sonobe teaches all the limitations of Claim 4 as discussed above.
Sonobe further teaches the use of the non-graphitizable carbon material in a negative electrode for a lithium-ion battery (Col. 13 lines 47-49).
Regarding Claim 6, modified Sonobe teaches all the limitations of Claim 5 as discussed above.
Sonobe further teaches the use of the negative electrode for a lithium-ion secondary battery (Col. 13 lines 41-49).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Haga (US 2014/0294714) teaches a method of producing non-graphitizable carbon very similar to the synthetic method taught by the instant specification, leading to a very similar non-graphitizable carbon material.
Imaji (US 2014/0080004) teaches a non-graphitizable carbon with a d002 spacing of 0.365-0.400 nm and a particle size within the range taught by the instant specification.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN G. DIAMOND whose telephone number is (571)270-5888. The examiner can normally be reached Monday - Friday 8:30 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Xiao Zhao can be reached at (571) 270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.G.D./ Examiner, Art Unit 1744
/SADIE WHITE/ Primary Examiner, Art Unit 1721
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