DETAILED ACTION
Response to Amendment
Amendments, filed on July 31, 2024, 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.
Claim Analysis
The present application contains one active independent claim(s) (claim 1) and twelve active dependent claims (claims 2 - 13).
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.
Regarding the limitation(s) “different sizes or shapes” in claim 1, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants’ specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, “size or shape” can be anything from sphericity, macro-shape (fiber, rod, tube, ellipsoidal particles, spherical particles, etc.), aspect ratios, BET surface areas (per specification, page 6), etc. I.e. any macro-difference in a dimension or area is considered to read on ‘different sizes or shapes’.
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”.
Specification
The substitute specification filed July 31, 2024 has been entered into the file record.
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). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, App. ‘105 claims an electrode for an all-solid-state battery, the electrode comprising granules (claim 1), wherein the granules comprise: a core containing an active material, a first conductive material, and a binder (claim 1); and a coating layer containing a solid electrolyte (claim 1), and disposed in contact with an outside of the core (necessarily given it is a coated layer).
App. ‘105 fails to disclose wherein the coating layer comprises a second conductive material having different sizes or shapes from the first conductive material.
However, Iwasaki discloses a similar granule (Title; Abstract; Figures) wherein the core includes a conductive material that is either a nanofiber, particle or spherical powder (Paragraph 0056: carbon black or carbon nanofibers), while the coating layer includes carbon nanotubes (Title; Abstract; and at least Paragraphs 0033 – 0036). These necessarily have different sizes and/or shapes and allows for thin coating layers and improved electrode performance (at least Paragraphs 0012 – 0015). Alternatively, even if carbon nanotubes (CNTs) are used in both the core and coating layers, the prior art appears to recognize that CNTs with different sizes and shapes (aspect ratio, diameters, BET surface area, etc.) are recognized as functionally equivalent to using identical CNTs.
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 App. ‘105 to use first and second conductive materials meeting the claimed limitations as taught by Iwasaki, as these are conventional conductive materials used in both cores and shells, Iwasaki teaches distinct materials having known, art recognized different sizes and shapes for the two conductive materials, and Iwasaki provides motivation for such use, as discussed above.
Regarding claim 2, the first conductive material in the granule core taught by the prior art read on the claimed diameters (claim 1 and Iwasaki, Paragraphs 0033 – 0036).
Regarding claim 3, the Examiner takes Official Notice that the claimed aspect ratios and BET surface areas are conventional in the art. Specifically, 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 and BET surface areas of the first conductive material through routine experimentation, especially given the teaching in art regarding the desire to control carbon (conductive) additives to meet the claimed ranges (see pertinent art cited below teaching the ranges in BET surface areas and aspect ratios for support of the Examiner’s position of Official Notice). 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).
Regarding claims 4 and 5, the Examiner notes that using CNTs having different aspect ratios and/or BET surface areas and/or diameters meeting the claimed limitations would be obvious given the teachings above rendering obvious the claimed diameters (Iwasaki citations above), aspect ratios (see pertinent prior art cited below), and BET surface areas (ibid).
Regarding claim 6, App. ‘105 meets the claimed limitations as set forth above.
Regarding claim 7, as noted above, the Examiner deems that Iwasaki provides guidance that a wide range of materials can be used for conductive agents and a nanofiber would still provide the same benefits as the CNTs given their similar aspect ratios, etc.
Regarding claim 8, App. ‘105 meets the claimed limitations (claim 6).
Regarding claim 9, App. ‘105 meets the claimed limitations (claim 1).
Regarding claim 10, App. ‘105 meets the claimed limitations (claim 4).
Regarding claim 11, App. ‘105 meets the claimed limitations (claim 12).
Regarding claim 12, 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 amount of second conductive material through routine experimentation, especially given the teaching in Iwasaki regarding the desire to control the amount of conductive agent in the coating layer to encompassing/overlapping ranges (at least Paragraph 0040). 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).
Regarding claim 13, App. ‘105 meets the claimed limitations (claim 8).
Regarding claim 14, 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 relative amounts of the first and second conductive material through routine experimentation, especially given the teaching in Iwasaki regarding the desire to control the amount of conductive agent in the core and coating layer (at least Paragraphs 0040 and 0056). 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).
Regarding claim 15, the limitation “applied to the core by a mechanofusion method” is a product-by-process limitation and is not further limiting in so far as the structure of the product is concerned. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim 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.” [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). In the instant case, regardless of how the coating is applied, the final structure is substantially identical as a ‘core-shell’ structure.
Regarding claim 16, App. ‘105 meets the claimed limitations (claim 13).
Regarding claim 17, the added limitations of ‘as a unit cell’ is nominal, at best, and does not further limit the structure of a ‘battery module’, which conventionally includes one or more battery unit cells. I.e. App. ‘105 is taken to necessarily meet this limitation as it discloses a battery; i.e. a “unit cell” that can be part of the nominally claimed “battery module”.
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). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, App. ‘434 claims an electrode for an all-solid-state battery, the electrode comprising granules (claim 1 – granular powder layer), wherein the granules comprise: a core containing an active material, a first conductive material, and a binder (claims 1 and 10); and a coating layer containing a solid electrolyte (claim 10), and disposed in contact with an outside of the core (necessarily given it is a coated layer).
App. ‘434 fails to disclose wherein the coating layer on the particles in either of the two granular powder layers comprises a second conductive material having different sizes or shapes from the first conductive material.
However, Iwasaki discloses a similar granule-type layer (Title; Abstract; Figures) wherein the core of the granules includes a conductive material that is either a nanofiber, particle or spherical powder (Paragraph 0056: carbon black or carbon nanofibers), while the coating layer includes carbon nanotubes (Title; Abstract; and at least Paragraphs 0033 – 0036). These necessarily have different sizes and/or shapes and allows for thin coating layers and improved electrode performance (at least Paragraphs 0012 – 0015). Alternatively, even if carbon nanotubes (CNTs) are used in both the core and coating layers, the prior art appears to recognize that CNTs with different sizes and shapes (aspect ratio, diameters, BET surface area, etc.) are recognized as functionally equivalent to using identical CNTs.
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 App. ‘434 to use first and second conductive materials meeting the claimed limitations for the granule particles in either granular-powder layer as taught by Iwasaki, as these are conventional conductive materials used in both cores and shells, Iwasaki teaches distinct materials having known, art recognized different sizes and shapes for the two conductive materials, and Iwasaki provides motivation for such use, as discussed above.
Regarding claim 2, 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 diameter and shape of the of the first conductive material in the core through routine experimentation, especially given the knowledge in the art on corresponding diameters for carbon black (see pertinent art cited and applied below, as well as IDS art cited by Applicants for the range of sizes for various types of particular or nanofiber carbon black). 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).
Regarding claim 3, the Examiner takes Official Notice that the claimed aspect ratios and BET surface areas are conventional in the art. Specifically, 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 and BET surface areas of the first conductive material through routine experimentation, especially given the teaching in art regarding the desire to control carbon (conductive) additives to meet the claimed ranges (see pertinent art cited below teaching the ranges in BET surface areas and aspect ratios for support of the Examiner’s position of Official Notice). 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).
Regarding claims 4 and 5, the Examiner notes that using CNTs having different aspect ratios and/or BET surface areas and/or diameters meeting the claimed limitations would be obvious given the teachings above rendering obvious the claimed diameters (Iwasaki citations above), aspect ratios (see pertinent prior art cited below), and BET surface areas (ibid).
Regarding claim 6, App. ‘434 meets the claimed limitations (claim 5).
Regarding claim 7, as noted above, the Examiner deems that Iwasaki provides guidance that a wide range of materials can be used for conductive agents and a nanofiber would still provide the same benefits as the CNTs given their similar aspect ratios, etc.
Regarding claim 8, App. ‘434 meets the claimed limitations (claim 7).
Regarding claim 9, App. ‘434 meets the claimed limitations (claim 11).
Regarding claim 10, 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 diameter and shape of the granules through routine experimentation, especially given the knowledge in the art on corresponding diameters for spherical granules (see Iwasaki, Figures and Paragraph 0046 and art cited and applied below). 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).
Regarding claim 11, 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 amount of the electrolyte through routine experimentation, especially given the knowledge in the art on these composition values (see Iwasaki, at least Paragraphs 0055, 0068 and 0069). 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).
Regarding claim 12, 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 amount of second conductive material through routine experimentation, especially given the teaching in Iwasaki regarding the desire to control the amount of conductive agent in the coating layer to encompassing/overlapping ranges (at least Paragraph 0040). 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).
Regarding claim 13, 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 amounts of each component through routine experimentation, especially given the knowledge in the art on these composition values (see Iwasaki, Paragraphs 0047 and 0064 and pertinent prior art cited and applied below). 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).
Regarding claim 14, 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 relative amounts of the first and second conductive material through routine experimentation, especially given the teaching in Iwasaki regarding the desire to control the amount of conductive agent in the core and coating layer (at least Paragraphs 0040 and 0056). 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).
Regarding claim 15, the limitation “applied to the core by a mechanofusion method” is a product-by-process limitation and is not further limiting in so far as the structure of the product is concerned. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim 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.” [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). In the instant case, regardless of how the coating is applied, the final structure is substantially identical as a ‘core-shell’ structure.
Regarding claim 16, App. ‘434 meets the claimed limitations (claim 14).
Regarding claim 17, the added limitations of ‘as a unit cell’ is nominal, at best, and does not further limit the structure of a ‘battery module’, which conventionally includes one or more battery unit cells. I.e. App. ‘434 is taken to necessarily meet this limitation as it discloses a battery; i.e. a “unit cell” that can be part of the nominally claimed “battery module”.
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.
The factual inquiries 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
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).
Regarding claim 1, Iwasaki discloses an electrode for an all-solid state battery (Title; Abstract) comprising granules, wherein the granules comprise an active material (Title; Abstract; Figures and Paragraph 0043 – 0046), an electrically conductive material (Paragraph 0056), and a binder (Paragraph 0056), and a coating layer containing a solid electrolyte (Title; Abstract; Figures) and a second conductive material (Paragraphs 0033 – 0036 – Carbon Nanotubes, CNTs).
Iwasaki fails to explicitly disclose adding a first conductive material having a different size and/or shape than the CNTs.
However, Iwasaki teaches that one may optionally add particulate carbon black or carbon nanofibers (as opposed to CNTs) to the core for additional conductive aid (Paragraph 0056).
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 include carbon nanotubes in the coating layer and a particulate or nanofiber carbon material in the core, as such a structure is clearly envisioned by Iwasaki and these two conductive aid materials would clearly possess different sizes and/or shapes as CNTs are distinct from powder materials like carbon black or carbon nanofibers.
At the very least, there is a recognition that using conductive aids with the same or different sizes and/or shapes is functionally equivalent. Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. 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 claim 2, 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 diameter and shape of the of the first conductive material in the core through routine experimentation, especially given the knowledge in the art on corresponding diameters for carbon black (see pertinent art cited below, as well as IDS art cited by Applicants for the range of sizes for various types of particular or nanofiber carbon black). 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). Regarding claim 3, the Examiner takes Official Notice that the claimed aspect ratios and BET surface areas are conventional in the art. Specifically, 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 and BET surface areas of the first conductive material through routine experimentation, especially given the teaching in art regarding the desire to control carbon (conductive) additives to meet the claimed ranges (see pertinent art cited below teaching the ranges in BET surface areas and aspect ratios for support of the Examiner’s position of Official Notice). 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).
Regarding claims 4 - 6, the Examiner notes that using CNTs having different aspect ratios and/or BET surface areas and/or diameters meeting the claimed limitations would be obvious given the teachings above rendering obvious the claimed diameters (Iwasaki citations above), aspect ratios (see pertinent prior art cited below), and BET surface areas (ibid). The Examiner takes Official Notice that the use of CNTs in the core of a granule is known in the art and, as such, is taken as functionally equivalent to the powders and nanofibers taught by Iwasaki for use in the core (see pertinent prior art to Maki cited below).
Regarding claim 7, as noted above, the Examiner deems that Iwasaki provides guidance that a wide range of materials can be used for conductive agents and a nanofiber would still provide the same benefits as the CNTs given their similar aspect ratios, etc.
Regarding claim 8, Iwasaki discloses the claimed active materials (Paragraphs 0043 – 0046).
Regarding claim 9, Iwasaki discloses sulfur solid electrolyte (Abstract and Paragraphs 0048 – 0055).
Regarding claim 10, 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 diameter and shape of the granules through routine experimentation, especially given the knowledge in the art on corresponding diameters for spherical granules (see Iwasaki, Figures and Paragraph 0046 and art cited below). 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).
Regarding claim 11, 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 amount of the electrolyte through routine experimentation, especially given the knowledge in the art on these composition values (see Iwasaki, at least Paragraphs 0055, 0068 and 0069). 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).
Regarding claim 12, 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 amount of second conductive material through routine experimentation, especially given the teaching in Iwasaki regarding the desire to control the amount of conductive agent in the coating layer to encompassing/overlapping ranges (at least Paragraph 0040). 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).
Regarding claim 13, 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 amounts of each component through routine experimentation, especially given the knowledge in the art on these composition values (see Iwasaki, Paragraphs 0047 and 0064 and pertinent prior art cited below). 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).
Regarding claim 14, 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 relative amounts of the first and second conductive material through routine experimentation, especially given the teaching in Iwasaki regarding the desire to control the amount of conductive agent in the core and coating layer (at least Paragraphs 0040 and 0056). 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).
Regarding claim 15, the limitation “applied to the core by a mechanofusion method” is a product-by-process limitation and is not further limiting in so far as the structure of the product is concerned. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim 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.” [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). In the instant case, regardless of how the coating is applied, the final structure is substantially identical as a ‘core-shell’ structure.
Regarding claim 16, Iwasaki discloses the claimed nominal apparatus/use limitations (see citations above).
Regarding claim 17, the added limitations of ‘as a unit cell’ is nominal, at best, and does not further limit the structure of a ‘battery module’, which conventionally includes one or more battery unit cells. I.e. Iwasaki is taken to necessarily meet this limitation as it discloses a battery; i.e. a “unit cell” that can be part of the nominally claimed “battery module”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Maki (U.S. Patent App. No. 2013/0295451 A1) discloses a similar granule electrode material/layer wherein CNTs are used in the core (Paragraph 0032), the granule size and shape are explicit (Paragraph 0025), and the amount of each component is given in acceptable ranges (Paragraphs 0026 – 0032).
Regarding properties of CNTs, BET surface areas of CNTs can vary widely, but high BET surface area CNTs are taught with encompassing/overlapping BET surface areas in at least Okuno et al. (U.S. Patent App. No. 2015/0287547 A1), Park et al. (U.S. Patent App. No. 2018/0090770 A1), and/or Nomura et al. (U.S. Patent App. No. 2024/0097147 A1). Porosity values are recognized as an important (cause-effective) variable for electrode layers and while exact ranges in porosity are not widely reported, at least Hellring et al. (U.S. Patent App. No. 2023/0361308 A1) disclose a similar (encompassed) porosity value as a known, desired magnitude. Lower ranges of BET surface area are taught by Kim et al. (U.S. Patent App. No. 2018/0198129 A1) (Paragraph 0048: 180 – 300 m2/g); Kang et al. (U.S. Patent App. No. 2018/0175439 A1) (Paragraph 0040: 30 – 120 m2/g, and aspect ratios of 5 – 50,000 in Paragraph 0032); Hellring et al. (U.S. Patent App. No. 2023/0361308 A1) (Paragraph 0022: 10 – 2000 m2/g); and Schweiss (U.S. Patent App. No. 2017/0222241 A1 (Paragraph 0049: various forms of conductive carbon with BET surface areas ranging from 30 – 260 m2/g).
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
February 7, 2026