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
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/12/2026 has been entered.
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, and the carbon material dispersion has a viscosity at 25oC of 10 to 500 mPa*s (paragraph 0026).
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 5x10-8. 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.
Response to Arguments
Applicant's arguments filed 8/12/2026 have been fully considered but they are not persuasive.
Double Patenting Rejection
Regarding the Double Patenting Rejection of claims 1-6, the rejection has been withdrawn due to Applicant’s Terminal Disclaimer.
Rejection under USC 103
Regarding Applicant' s argument,” Applicant respectfully notes that, to the extent the Examiner is asserting inherency, an inherency-based rejection requires that the missing feature be necessarily present. The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993); In re Oelrich, 666 F.2d 578, 581-82, 212 USPQ 323, 326 (CCPA 1981). "To establish inherency, the extrinsic evidence 'must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950- 51 (Fed. Cir. 1999) (citations omitted). That is, a possibility of the missing feature being present is not sufficient to maintain such a rejection. "In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990),” the Examiner disagrees. The Examiner asserts that the design choice rejection is not an inherency argument. It is an obviousness rejection where the changing of variables related to the composition of the material would be a design choice to obtain a material with the desired composition at a specific temperature and pressure. Furthermore, 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.
Regarding Applicant’s argument, “Furthermore, Applicant respectfully submits the rejection relies on the premise that selecting a carbon concentration of 10-25% by mass is a mere "Design Choice" without technical significance. However, as described in the present specification, Applicant respectfully submits the specific carbon concentration range of 10-25% by mass directly interacts with the slurry properties and enables the achievement of the claimed mass fraction of magnetic metallic components. This specific combination leads to a concrete, practical advantage-namely, the reduction of metal contamination in batteries produced using the carbon material dispersion, thereby improving battery safety and performance,” the Examiner disagrees. The Examiner asserts that the technical advantage argued by the Applicant is also discussed in Yoshida (paragraph 0004 and 0010; where particulate metal is removed). Therefore, change in parameters desired would fall in with a design choice to obtain a material with the desired composition at a specific temperature and pressure.
Conclusion
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.
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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
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