DETAILED ACTION
(1)
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 . Applicant’s preliminary amendment, filed January 15, 2025, is entered. Applicant cancelled claims 1-17 and added claims 18-32. Claims 18-32 are pending before the Office for review.
(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 18-32 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 18 requires the anode material comprises graphite particles of “predominantly” two distinct sizes. It’s unclear how this feature of the claimed invention should be interpreted. Is this a requirement for 50.1% or greater amount of the graphite particles or is the claimed invention satisfied if the highest weight amount within the anode material is the two distinct sizes of graphite particles? Does the “predominantly” requirement apply to a different unit of measurement, such as volume?
Claim 18 further requires the smaller graphite particles are provided in the form of secondary graphite particles that “approximate an oblate spheroid….” It’s unclear how this shape should be interpreted because there is no appreciable standard for determining how approximate a shape has to be to an oblate spheroid to satisfy the requirements of the claimed invention.
Claim 18 recites the limitation "the smaller graphite particles" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "the larger graphite particles" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 21 recites the limitation "the ratio" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation "the ratio" in line 1. There is insufficient antecedent basis for this limitation in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 25 recites the broad recitation less than about 5 microns, and the claim also recites less than about 2 microns which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 26 is additionally unclear as to the characteristics required of the product produced by the product-by-process claim.
Claim 27 recites the limitation "the amount of carbon-based material" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 27 recites the limitation "the range" in line 2. There is insufficient antecedent basis for this limitation in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 28 recites the broad recitation less than about 15 microns, and the claim also recites less than about 10 microns or in the range of about 0.5 to 6 microns, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 29 recites the broad recitation of about 2 to 60 m2/g, and the claim also recites 7 to 9 m2/g, or 7 m2/g, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 31 and 32 recite methods without any steps or directions as to how the method is to be performed, meaning the claim scope is insolubly ambiguous.
Therefore, the claims are indefinite because their scope is unascertainable to one ordinarily skilled in the art. Claims 19-32 are also rejected due to their dependency on claim 18.
(3)
Claim Rejections - 35 USC § 103
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.
Claims 18-25, 28, 31 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Koike et al. (WO 2016/084531 A1) in view of Lee et al. (U.S. Publication No. 2023/0307640) and Bruzda et al. (U.S. Publication No. 2012/0080639). The citations to Koike refer to the included English-language machine translation.
With respect to claims 18, 19 and 20, Koike teaches an anode material (Abstract) comprising graphite particles of predominantly two distinct sizes (Page 10, Detailed configuration 2 of a plurality of carbon particles), wherein the smaller graphite particles have a D50 of 1 to 8 microns and the larger graphite particles have a D50 of 10 to 25 microns. Page 10, Detailed configuration 2 of a plurality of carbon particles. As per the MPEP, where claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05(I). Koike further teaches the larger graphite particles are in the form of a synthetic graphite or a natural graphitic material. Page 4, First, second, third and fourth paragraphs.
Koike is silent as to whether the smaller particles graphite particles are in the form of secondary graphite particles.
However, Lee, which deals with negative electrode active material, teaches the graphite particles included in a negative electrode material can be provided in the form of primary graphite particles that are aggregated to secondary graphite particles. Paragraphs 36-41.
It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention the combination of Koike with Lee is the use of a known technique to improve a similar device in the same way. Both Koike and Lee are directed toward anode active materials comprising graphite particles. Lee teaches the graphite particles are effectively included as secondary particles of aggregated primary graphite particles. It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to similarly use secondary graphite particles in Koike’s anode active material because Lee teaches this to be an effective technique in the art for anode active materials, meaning the modification has a reasonable expectation of success.
Modified Koike is silent as to whether the graphite has an approximate oblate spheroid shape.
However, Bruzda, which deals with graphite material, teaches graphite particles having an oblate spheroid shape. Paragraph 45. Bruzda teaches this type of graphite is associated with high electrical conductivity. Paragraph 40.
Koike teaches the carbon particles in the anode material help maintain an excellent conductive network. Pages 7-8, Bridge paragraph.
Therefore, it would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to utilize oblate spheroid shaped graphite particles in modified Koike’s anode material because Bruzda teaches it to be associated with high electrical conductivity, meaning the modification has a reasonable expectation of success. One ordinarily skilled in the art at a time before the effective filing date of the claimed invention would be motivated to make the modification because modified Koike also teaches the carbon particles in the anode material maintain an excellent conductive network, meaning using high electrical conductivity graphite oblate spheroid particles therein would be an improvement of the network.
With respect to claims 21 and 22, Koike teaches the weight amount of the smaller and larger particles is between 0 to 99 and 0 to 99, respectively, which covers the claimed range. Pages 10-11, Detailed configuration 2 of a plurality of carbon particles. As per the MPEP, where claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05(I).
With respect to claim 23, modified Koike teaches artificial and natural graphite are recognized equivalents in the art, meaning it’s within the scope of the combination of Koike, Lee and Bruzda, as explained above, that the smaller graphite particles are provided in the form of natural graphite material. Page 4, First, second, third and fourth paragraphs.
With respect to claim 24, Examiner notes the claim is a product-by-process claim. “If the product in the product-by-process 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 695, 698 (Fed. Cir. 1985); MPEP 2113. In this case, the claim is a product-by-process claim to the extent it requires the primary particles be ground.
Modified Koike teaches the secondary graphite particles comprise an aggregate of primary graphite particles providing the approximate oblate spheroid form. Lee, Paragraphs 36-41 and Bruzda, Paragraphs 40 and 45.
With respect to claims 25 and 28, modified Koike teaches the secondary graphite particles have a D50 of less than 5 microns, meaning the primary graphite particles are also below this threshold. Page 10, Detailed configuration 2 of a plurality of carbon particles. As per the MPEP, where claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05(I).
With respect to claims 31 and 32, modified Koike teaches a method for producing an anode material comprising the above-described graphite particles of predominantly two distinct sizes and a method for producing a battery comprising the anode material. Abstract and Page 19, Method for producing secondary battery.
(4)
Claims 26 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Koike et al. (WO 2016/084531 A1) in view of Lee et al. (U.S. Publication No. 2023/0307640) and Bruzda et al. (U.S. Publication No. 2012/0080639), as applied to claims 18-25, 28, 31 and 32 above, and further in view of Choi et al. WO 2019/164347 A1. The citations to Choi refer to the included English-language machine translation.
With respect to claims 26 and 27, Examiner notes claim 26 is a product-by-process claim. “If the product in the product-by-process 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 695, 698 (Fed. Cir. 1985); MPEP 2113. In this case, claim 26 defines a pyrolysation process.
Modified Koike teaches the primary graphite particles but is silent as to the coating with a carbon-based material.
However, Choi, which deals with negative electrode materials comprising graphite, teaches during the aggregating process, the primary graphite particles are coated with pitch and subjected to a heat treatment step at a temperature of between 1,000 to 4,000 °C, wherein the carbon coating is present in an amount of 8 parts by weight to 100 parts by weight of the graphite particles, both values of which are within the claimed range. Choi, Page 6, Second to last paragraph and Page 7, First paragraph. As per the MPEP, where claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05(I). Choi teaches the coating facilitates access of lithium ions and lowers the charge transfer resistance of the lithium ions. Choi, Page 6, Third to last paragraph. Choi further teaches the graphite particles are spherical. Page 7, Fourth paragraph.
Therefore, it would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to form the carbon coating on the primary graphite particles taught by modified Koike because Choi teaches doing so lowers the charge transfer resistance of the lithium ions.
(5)
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Koike et al. (WO 2016/084531 A1) in view of Lee et al. (U.S. Publication No. 2023/0307640) and Bruzda et al. (U.S. Publication No. 2012/0080639), as applied to claims 18-25, 28, 31 and 32 above, and further in view of Takei et al. (JP-WO2002059040 A1).
With respect to claim 29, modified Koike teaches the primary graphite particles but is silent as to their BET.
However, Takei, which deals with primary graphite particles for negative electrode materials, teaches a BET surface area for the primary graphite particles of between 3 to 6 m2/g is associated with excellent rapid charge/discharge characteristics and high safety. Page 5, Last paragraph. As per the MPEP, where claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05(I).
Therefore, it would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to use primary graphite particles with a BET specific surface area of between 3 to 6 m2/g because Takei teaches doing so is associated with high safety and excellent rapid charge/discharge characteristics in the produced battery.
(6)
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Koike et al. (WO 2016/084531 A1) in view of Lee et al. (U.S. Publication No. 2023/0307640) and Bruzda et al. (U.S. Publication No. 2012/0080639), as applied to claims 18-25, 28, 31 and 32 above, and further in view of Song et al. (CN 105794027 A). The citations to Song refer to the included English-language machine translation.
With respect to claim 30, modified Koike teaches the primary graphite particles but is silent as to the value of their d002.
However, Song, which deals with graphite particles for batteries, teaches the primary graphite particle has a d002 spacing measured via XRD of between 0.3355 to 0.3365 nm. Page 6, Second to last paragraph. As per the MPEP, where claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05(I).
It would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to use primary graphite particles meeting the d002 requirements of the claimed invention because Song teaches particles meeting this criteria are effective for negative electrode material, meaning the modification has a reasonable expectation of success.
(7)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI S MEKHLIN whose telephone number is (571)270-7597. The examiner can normally be reached Monday-Friday 7:00 am to 5:00 pm EST.
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/ELI S MEKHLIN/Primary Examiner, Art Unit 1759
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