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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on Jul. 30, 2024 have been considered by the examiner.
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 1-2 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 “a carbon-metal oxide mixture” in claim 1 is unclear and ambiguous, which renders the claim(s) indefinite. It is unclear what specific composition the term represents. The scope of the claim(s) must be consistent with the specification. In the specification, the MnO2 as claimed appears to be obtained by reacting KMnO4 with a conductive carbon (e.g., thermally-expanded reduced graphene oxide). In other words, KMnO4 is reduced to MnO2. As such, the conductive carbon (e.g., thermally-expanded reduced graphene oxide) should have been oxidized to form graphene oxide. The reaction product should be a mixture of graphene oxide and MnO2, rather than a mixture of carbon and metal oxide. The expression “carbon-metal oxide” is misleading. For purposes of examination, the term “a carbon-metal oxide mixture” is interpreted as referring to a mixture of graphene oxide and metal oxide. Applicant must define the term without introducing new matters.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Kong et al. (US 20180062142 A1, hereafter Kong) in view of Yang et al. (CN 112825289 A, whose English machine translation is being employed for citation purposes, hereafter referred to as Yang).
Regarding claims 1 and 2, Kong teaches a method for preparing a functional separator (e.g., [0037]) comprising:
coating a prepared carbon-metal oxide mixture (a mixture of graphene oxide and MnO2, as interpreted above in the 112 rejection. See [0037] and Fig. 4: graphene oxide 1222 and MnO2 1224) on a surface of a base separator (110, Fig. 4 and at least [0033]-[0037]).
Kong is silent on a step of preparing the prepared carbon-metal oxide mixture as claimed.
In the same field of endeavor, Yang discloses a process step of preparing the prepared carbon-metal oxide mixture by mixing and reacting a conductive carbon, which is thermally-expanded reduced graphene oxide, with KMnO4 as a metal oxide precursor in the presence of a solvent ([n0025]-[n0027]). This process step is similar to that disclosed in the instant specification to produce MnO2 (e.g., [0055], PgPub), and thus it is reasonably expected that a mixture of graphene oxide and MnO2 is obtained during the process step of Yang described above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have used the Yang’s method to produce a mixture of graphene oxide and MnO2 and use it as an alternative to the mixture of graphene oxide and MnO2 of Kong to prepare a predictable functional separator, since a simple substitution of one known element for another to obtain predictable results is prima facie obvious (MPEP § 2143).
As a result, Kong in view of Yang teaches the carbon-metal oxide mixture is coated on the base separator without a binder (no binder is disclosed to prepare a functional separator in Kong).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHONGQING WEI whose telephone number is (571)272-4809. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727
