DETAILED ACTION
Response to Amendment
Amendments, filed on May 15, 2026, have been entered in the above-identified application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/266,105 (PGPUB 2024/0030489 A1) in view of Iwasaki (U.S. Patent App. No. 2014/0057180 A1) as set forth in Paragraph No. 9 of the Office Action mailed on February 20, 2026, now further in view of one or both of IDS references Tamaki et al. (U.S. Patent App. No. 2019/0067678 A1) and/or Yang (EP 3772764 A1). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The above identified App. and Iwasaki are relied upon as previously set forth.
Regarding the amended limitation in the two aspect ratios being met simultaneously, while the Examiner previously set forth reasons for these limitations being met individually in prior claims 3 and 5 that are still pertinent, the Examiner notes that IDS reference Tamaki et al. (see at least Paragraphs 0020 and 0034 – 0038) disclose a substantially identical electrode for an all-solid state battery1 wherein the core comprises a conductive material that can include carbon nanotubes, graphene, carbon black, etc. and the shell also comprises a conductive material that can include carbon nanotubes, graphene, carbon black, etc. I.e. different conductive materials of different shapes, etc. are taught as functional equivalents for the core and shell conductive materials. Similarly, IDS reference Yang (at least Paragraphs 0013, 0014 and 0022 – 0034) likewise disclose an all-solid state battery1 wherein the core comprises a conductive material that can include carbon nanotubes, graphene, carbon black, etc. and the shell also comprises a conductive material that can include carbon nanotubes, graphene, carbon black, etc. I.e. different conductive materials of different shapes, etc. are taught as functional equivalents for the core and shell conductive materials.
Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, first and second conductive materials having a wide range of aspect ratios are all taught as functional equivalents in the field of suitable conductive materials inside the core (first conductive material) or in the shell/coating (second conductive material). In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Claims 1 – 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/705,434 (PGPUB 2025/0015343 A1) in view of Iwasaki (U.S. Patent App. No. 2014/0057180 A1) as set forth in Paragraph No. 10 of the Office Action mailed on February 20, 2026, now further in view of one or both of IDS references Tamaki et al. (U.S. Patent App. No. 2019/0067678 A1) and/or Yang (EP 3772764 A1). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The above identified App. and Iwasaki are relied upon as previously set forth.
Regarding the amended limitation in the two aspect ratios being met simultaneously, while the Examiner previously set forth reasons for these limitations being met individually in prior claims 3 and 5 that are still pertinent, the Examiner notes that IDS reference Tamaki et al. (see at least Paragraphs 0020 and 0034 – 0038) disclose a substantially identical electrode for an all-solid state battery2 wherein the core comprises a conductive material that can include carbon nanotubes, graphene, carbon black, etc. and the shell also comprises a conductive material that can include carbon nanotubes, graphene, carbon black, etc. I.e. different conductive materials of different shapes, etc. are taught as functional equivalents for the core and shell conductive materials. Similarly, IDS reference Yang (at least Paragraphs 0013, 0014 and 0022 – 0034) likewise disclose an all-solid state battery1 wherein the core comprises a conductive material that can include carbon nanotubes, graphene, carbon black, etc. and the shell also comprises a conductive material that can include carbon nanotubes, graphene, carbon black, etc. I.e. different conductive materials of different shapes, etc. are taught as functional equivalents for the core and shell conductive materials.
Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, first and second conductive materials having a wide range of aspect ratios are all taught as functional equivalents in the field of suitable conductive materials inside the core (first conductive material) or in the shell/coating (second conductive material). In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
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 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 – 17 are rejected under 35 U.S.C. 103(a) as being unpatentable over Iwasaki (U.S. Patent App. No. 2014/0057180 A1) as set forth in Paragraph No. 13 of the Office Action mailed on February 20, 2026, now further in view of one or both of IDS references Tamaki et al. (U.S. Patent App. No. 2019/0067678 A1) and/or Yang (EP 3772764 A1).
Iwasaki is relied upon as previously set forth.
Regarding the amended limitation in the two aspect ratios being met simultaneously, while the Examiner previously set forth reasons for these limitations being met individually in prior claims 3 and 5 that are still pertinent, the Examiner notes that IDS reference Tamaki et al. (see at least Paragraphs 0020 and 0034 – 0038) disclose a substantially identical electrode for an all-solid state battery3 wherein the core comprises a conductive material that can include carbon nanotubes, graphene, carbon black, etc. and the shell also comprises a conductive material that can include carbon nanotubes, graphene, carbon black, etc. I.e. different conductive materials of different shapes, etc. are taught as functional equivalents for the core and shell conductive materials. Similarly, IDS reference Yang (at least Paragraphs 0013, 0014 and 0022 – 0034) likewise disclose an all-solid state battery1 wherein the core comprises a conductive material that can include carbon nanotubes, graphene, carbon black, etc. and the shell also comprises a conductive material that can include carbon nanotubes, graphene, carbon black, etc. I.e. different conductive materials of different shapes, etc. are taught as functional equivalents for the core and shell conductive materials.
Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, first and second conductive materials having a wide range of aspect ratios are all taught as functional equivalents in the field of suitable conductive materials inside the core (first conductive material) or in the shell/coating (second conductive material). In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding the alleged difference in structure (first conductive material in the core; second conductive material in the shell), while the Examiner maintains that Iwasaki renders obvious this structure, both IDS references provide additional support for a first and second conductive material in the core and shell of the electrode material (see IDS citations above).
It would, therefore, have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Iwasaki to meet the claimed limitations as taught by one or both of IDS references Tamaki et al. or Yang, as using a first and second conductive material in the core and shell is known in the art and the exact shape and size (aspect ratios) are taught as functionally equivalent. Furthermore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the aspect ratio of the first and second conductive materials through routine experimentation, especially given the teaching in IDS references Tamaki et al. and Yang regarding the equivalence of all forms of conductive material/carbon. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: While no claim has been indicated as allowable, the Examiner acknowledges that the prior art only broadly discloses that a wide range of conductive materials (of various shapes, sizes, types, etc.) can be used as the first and second conductive materials. Applicants have limited embodiments presently of record (one example and a few comparative), but the Examiner deems that the examples appear to support a position of non-equivalency for an embodiment wherein the first conductive material comprises carbon nanotubes (i.e. claim 6), the second conductive material comprises carbon nanofibers (i.e. claim 7), and the active material is a positive electrode active material of a Li-(transition metal)-Ox type (i.e. claim 8). Incorporation of claims 6, 7 and 8, along with a detailed explanation of the non-obviousness/unexpected results demonstrated would appear to provide sufficient evidence for allowability4.
Applicant(s) are reminded that a detailed description of the reasons and evidence supporting a position of unexpected results must be provided by applicant(s). A mere pointing to data requiring the examiner to ferret out evidence of unexpected results is not sufficient to prove that the results would be truly unexpected to one of ordinary skill in the art. In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (1971) and In re Merck & Co, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986).
In addition, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the Examiner’s position that the arguments provided by applicant(s) regarding the alleged unexpected results should be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Response to Arguments
The Double Patenting rejection of claims in view of two commonly assigned Applications
Applicants’ arguments have been considered but are moot in view of the new ground(s) of rejection. In so far as they apply to the present rejection of record, Applicant(s) argue that Iwasaki fails to disclose the claimed aspect ratios, which the Examiner agrees with … but the prior art clearly teach that different shaped conductive materials (i.e. different aspect ratios) are all deemed functionally equivalent absent a showing of non-obviousness. Presently, no such showing commensurate with the claims has been set forth on the record.
The rejection of claims 1 - 17 under 35 U.S.C § 103(a) – Iwasaki in view of IDS references
Applicants’ arguments have been considered but are moot in view of the new ground(s) of rejection. In so far as they apply to the present rejection of record, Applicant(s) argue that Iwasaki fails to disclose the claimed aspect ratios, which the Examiner agrees with … but the prior art clearly teach that different shaped conductive materials (i.e. different aspect ratios) are all deemed functionally equivalent absent a showing of non-obviousness. Presently, no such showing commensurate with the claims has been set forth on the record.
Regarding the alleged difference in structure, both IDS references provide additional support for a first and second conductive material in the core and shell of the electrode material. As noted above, no claim is presently commensurate with any showing of non-obviousness based on the specific aspect ratios as set forth in claim 1 (see Paragraph 10, above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Applicants’ amendment resulted in embodiments not previously considered (i.e. incorporation of both aspect ratios into claim 1) which necessitated the new grounds of rejection, and hence the finality of this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
June 23, 2026
1 For additional support for this position of ‘substantially identical electrode’, see the provide European Written Opinion which uses this reference as an “X” reference (on IDS filed May 21, 2026).
2 For additional support for this position of ‘substantially identical electrode’, see the provide European Written Opinion which uses this reference as an “X” reference (on IDS filed May 21, 2026).
3 For additional support for this position of ‘substantially identical electrode’, see the provide European Written Opinion which uses this reference as an “X” reference (on IDS filed May 21, 2026).
4 For clarity of the record, the Examiner notes that several of the pertinent prior art references cited herewith disclose negative electrode active materials with conductive material in the core (Si/C cores, for example), further coated with a coating containing a different conductive additive. As such, the Examiner deems that the type of active material is a critical component for the showing of non-obviousness as the present invention does not appear to be directed to negative electrodes based on the examples.
Prosecution Insights