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 .
DETAILED ACTION
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 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 of this title, 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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida (JP 2015191756) in view of Design Choice.
Regarding claim 1, Yoshida discloses a carbon material dispersion comprising a carbon material and a dispersing medium dispersing the carbon material (paragraph 0010; where a dispersion step is performed), and a mass fraction of a magnetic metallic component (paragraph 0010; where a particulate metal removal step is performed by a magnet) to the carbon material.
Yoshida does not explicitly disclose a carbon material dispersion comprising a content of the carbon material in the dispersing medium being in a range of 10-25 % by mass based on a total mass of the carbon material dispersion and a mass fraction of the metallic component to the carbon material is not more than 1x10-7. However, before the time the invention was effectively filed, it would have been an obvious matter of design choice to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to obtaining a carbon material dispersion because Applicant has not disclosed that specific content range and mass fraction provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Yoshida, and applicant’s invention, to perform equally well with either dispersing step because both steps would perform the same function of a dispersing carbon material and separating magnetic material for the purpose of obtaining a desired content and mass fraction carbon material dispersion.
Regarding claims 2-6, the claims are product by process claims. The method steps do not structurally change the product and therefore are not patentably distinct from claim 1 (see MPEP 2113). As such, only the end product (as claimed in claim 1) produced by the method steps, and not the method steps themselves, are required.
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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,076,730 in view of Yoshida (JP 2015191756).
18772778 (Claim 2) USP 12076730 (Claim 1) in view of Yoshida
a method for producing carbon material dispersion comprising a first magnetic separation and a second magnetic separation
A method for producing carbon material dispersion comprising a first magnetic separation and a second magnetic separation
the first magnetic separation comprising applying a carbon material to a surface of a rotating magnetic roll in order to remove a metallic component from the carbon material, the carbon material being in dry state and being in powdered and/or granulated form
the first magnetic separation comprising applying a carbon material to a surface of a rotating magnetic roll in order to remove a metallic component from the carbon material, the carbon material being in dry state and being in powdered and/or granulated form
the second magnetic separation comprising placing a magnet element in a carbon material dispersion in order to remove the metallic component from the carbon material dispersion
the second magnetic separation comprising placing a magnet element in a carbon material dispersion in order to remove the metallic component from the carbon material dispersion
the carbon material dispersion being prepared by dispersing the carbon material from which the metallic component has been removed in the first magnetic separation in a dispersing medium, in advance of the second magnetic separation
the carbon material dispersion being prepared by dispersing the carbon material from which the metallic component has been removed in the first magnetic separation in a dispersing medium, in advance of the second magnetic separation
Claim 3
Claim 2
Claim 4
Claim 3
Claim 5
Claim 4
Claim 6
Claim 5
Regarding claim 1, ‘730 does not disclose the limitations of claim 1. Yoshida discloses a carbon material dispersion comprising a carbon material and a dispersing medium dispersing the carbon material (paragraph 0010; where a dispersion step is performed), and a mass fraction of a magnetic metallic component (paragraph 0010; where a particulate metal removal step is performed by a magnet) to the carbon material. Yoshida does not explicitly disclose a carbon material dispersion comprising a content of the carbon material in the dispersing medium being in a range of 10-25 % by mass based on a total mass of the carbon material dispersion and a mass fraction of the metallic component to the carbon material is not more than 1x10-7. However, before the time the invention was effectively filed, it would have been an obvious matter of design choice to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to obtaining a carbon material dispersion because Applicant has not disclosed that specific content range and mass fraction provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Yoshida, and applicant’s invention, to perform equally well with either dispersing step because both steps would perform the same function of a dispersing carbon material and separating magnetic material for the purpose of obtaining a desired content and mass fraction carbon material dispersion.
Response to Arguments
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive.
Claim Objection
Regarding the claim objection to claim 1, the objection has been withdrawn due to Applicant’s amendment.
Double Patenting Rejection and Rejection under USC 103
Regarding Applicant’s argument,” Applicant also respectfully disagrees with the Examiner's assertion that Applicant has not disclosed the specific content range and mass fraction provides an advantage, is used for a particular purpose, or solves a stated problem. Applicant respectfully submits the application does disclose the specific content range and mass fraction provides an advantage, is used for a particular purpose, or solves a stated problem at least at paragraphs [0040] and [0086] of the application (as numbered in Patent Application Publication No. 2024/0367177).
For example, paragraph [0040] states (emphasis added): According to the present invention, a high-quality carbon material dispersion that have been purified by extreme removal of metallic components can be obtained, and thus, for example, when the carbon material dispersion is used as a conductive auxiliary material for electrode formation in secondary batteries, it is possible to produce stable secondary batteries of high quality.
Additionally, paragraph [0086] states (emphasis added): By implementing the method for producing carbon material dispersion according to the first aspect of the present invention as described above, it is possible to manufacture a high-quality carbon material dispersion with a very low content of metallic components. When the carbon material content in the dispersion is about 10-25 % by mass based on the total mass of the carbon material dispersion, it is possible to produce a carbon material dispersion in which the mass fraction of a magnetic metallic component to the carbon material is not more than 1x10⁻⁷, preferably, not more than 5x10⁻⁸ or less, and more preferably, not more than 3x10⁻⁸,” the Examiner disagrees. The Examiner asserts cited paragraphs 0040 and 0086 restates the limitation in claim 1, but do not provide an explanation or analysis. The design choice analysis used in the USC 103 rejection and Double Patenting rejection relates that it would have been an obvious matter of design choice to provide for a carbon material dispersion of a desired content percentage and a mass fraction of a magnetic metallic component to the carbon material limit for the purpose of obtaining a desired material dispersion. The argument that the specific carbon percentage and mass fraction of magnetic metallic component relies on paragraphs 0040 where it is stated that obtaining high-quality carbon material dispersion and paragraph 0086 restates the claim limitation of specific number does not provide an advantage, is used for a particular purpose, or solves a state problem.
Regarding Applicant’s argument,” During the interview, the Examiner pointed to paragraph [0025] of YOSHIDA and requested Applicant explain how the recited carbon content of the carbon material dispersion of the present application differed from the total solid content concentration of paragraph [0025] of YOSHIDA. As discussed in the interview, Applicant respectfully submits that this portion of YOSHIDA teaches a total solid content concentration. Applicant respectfully submits the total solid content concentration is not a teaching of carbon content. For at least these reasons, Applicant respectfully submits that YOSHIDA's teaching of a total solid content concentration does not teach or suggest the presently claimed content of the carbon material in the dispersing medium,” the Examiner disagrees. The Examiner asserts that each of the components of the slurry composition are the cited percentages. As seen in paragraph 0024, the carbon material is one of the components of the dispersion and would coincide with the cited percentages in paragraph 0025.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kalyanavenkateshware Kumar whose telephone number is (571)272-8102. The examiner can normally be reached on M-F 08:00-16:30.
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, Michael McCullough can be reached on 571-272-7805. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.K./Examiner, Art Unit 3653
/MICHAEL MCCULLOUGH/Supervisory Patent Examiner, Art Unit 3653