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 statement(s) (IDS) is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner and an initialed copy is attached.
Priority
Receipt is acknowledged of the certified copies of papers required by 37 CFR 1.55.
Citation Notation
The following citations are made for the convenience of the reader:
Citations to PG publications are made to paragraph number under the ¶ format. Citations to other publications made under the format “ col 1/2” or pp 1 are directed to column and line number or to a page - whichever is appropriate. It is noted that any reference to a figure or a table is also directed to any accompanying text in the specification or the document. Notwithstanding those citations, the reference(s) is (are) relied upon for the teachings as a whole.
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, 2 and 4-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 4-13 of copending Application No. 19489516 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications recites dispersions comprising similar carbon nanotubes having a similar BET surface area, a first dispersant, a second dispersant and overlapping loading ranges for the dispersants. Given that both references disclose overlapping ranges, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught loading ratios, including those presently claimed, to obtain a suitable composition. According to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the loading variables with the benefit gain of achieving enhanced dispersion and/or stability. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, 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.
Claim(s) 1 and 3-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rudhardt (US-20140212656-A1).
Claims 1 and 4-10: Rudhardt discloses a stable suspension and dispersion of carbon nanotubes comprising PVP, sodium lignin sulfonate and a dispersion medium (abs, ¶36-38, examples and Table 1 and 2 with accompanying text). The Rudhardt reference discloses the claimed invention with PVP and lignin sulfonate at various loading amounts but does not disclose the dispersion with the claimed dispersants and loading amounts with enough specificity to anticipate the claimed invention. Nevertheless, given that Rudhardt discloses PVP and lignin sulfonate at various loading amounts, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught dispersants and arrive at the loading amounts via routine optimization. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that many components are disclosed would not have made any of them, such as the PVP and sodium lignin sulfonate dispersants, less obvious. Here, Rudhardt discloses each of the claimed components and there is no evidence nor teaching that the selection and optimization of the claimed components to achieve an enhance dispersion and/or stability would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claim 3: Rudhardt discloses SWNTs (¶29-30).
Claim 11: Rudhardt discloses a water solvent (¶29-35).
Claim 12: Rudhardt discloses optimizing the viscosity at various levels such as 14.4 Pa.s – which is equivalent to 14400 cP (Tables 1 and 2 with accompanying text).
Claims 13 and 14: Rudhardt discloses the electrode slurry with electrode active material and the process of preparing the dispersion (¶29-35 and examples).
Claim(s) 1, 3-6 and 8-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bahnmuller (US-20090226684-A1).
Claims 1, 4-6 and 8-10: Bahnmuller discloses a stable suspension and dispersion of carbon nanotubes comprising PVP (the claimed first dispersant), sodium lignin sulfonate (the claimed second dispersant) and a dispersion medium (abs, ¶13-20, 35-37, examples). The Bahnmuller reference discloses the claimed invention with PVP and lignin sulfonate at various loading amounts but does not disclose the dispersion with the claimed dispersants and loading amounts with enough specificity to anticipate the claimed invention. Nevertheless, given that Bahnmuller discloses PVP and lignin sulfonate, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught dispersants and arrive at the loading amounts via routine optimization. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that many components are disclosed would not have made any of them, such as the PVP and lignin sulfonate dispersants, less obvious. Here, Bahnmuller discloses each of the claimed components and there is no evidence nor teaching that the selection and optimization of the claimed components to achieve an enhance dispersion and/or stability would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claim 3: Bahnmuller discloses SWNTs (¶12-20).
Claim 11: Bahnmuller discloses a water solvent (¶13-20, 35 and examples).
Claim 12: Bahnmuller discloses optimizing the viscosity at various levels such as 1k-200k cP with various preferred values (¶40).
Claims 13 and 14: Bahnmuller discloses the electrode slurry with electroactive material and the process of preparing the dispersion (examples).
Claim(s) 1, 3-6, 8-11, 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Swogger (US-20170226363-A1).
Claims 1, 4-6 and 8-10: Swogger discloses a stable suspension and dispersion of carbon nanotubes comprising PVP, lignin sulfonate and a dispersion medium (abs, ¶20, 61-63, examples and claims). The Swogger reference discloses the claimed invention with PVP and lignin sulfonate at various loading amounts but does not disclose the dispersion with the claimed dispersants and loading amounts with enough specificity to anticipate the claimed invention. Nevertheless, given that Swogger discloses PVP and lignin sulfonate, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught dispersants and arrive at the loading amounts via routine optimization. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that many components are disclosed would not have made any of them, such as the PVP and lignin sulfonate dispersants, less obvious. Here, Swogger discloses each of the claimed components and there is no evidence nor teaching that the selection and optimization of the claimed components to achieve an enhance dispersion and/or stability would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claim 3: Swogger discloses SWNTs (¶16, 105 and examples).
Claim 11: Swogger discloses a water solvent (¶24, 59 and examples).
Claims 13 and 14: Swogger discloses the electrode slurry with electroactive material and the process of preparing the dispersion (¶27, 74 and examples).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Swogger, Bahnmuller or Rudhardt as applied to claim 1 above, and further in view of Kim (cited in the IDS).
The Swogger, Bahnmuller or Rudhardt reference discloses the claimed invention but does not explicitly disclose the feature of the CNT having a BET greater than 800 m2/g. It is noted that the Swogger, Bahnmuller or Rudhardt reference discloses CNTs such as SWNTs and the claim(s) call(s) for CNTs such as SWNTs having a specific BET range. In an analogous art, the Kim reference discloses that a CNT dispersion with CNTs such as SWNTs having a BET greater than 800 m2/g, a dispersant and a water medium is well known in the art (abs, ¶ 28-33, 40-50, 54 and 65-73). In particular, Kim discloses that a BET greater than 800 m2/g is preferred “since the formation of a conductive network between silicon-based negative electrode active materials is excellent, an effect of improving cycle characteristics of a secondary battery may be obtained” (¶29). One of ordinary skill in the art would have recognized that applying the known component of Kim to the teachings of Swogger, Bahnmuller or Rudhardt would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of enhancing the conductive network and cyclability features. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution/implementation would be repugnant to a skilled artisan.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Swogger or Bahnmuller as applied to claim 6 above, and further in view of Liu NPL or Qing NPL (cited in the IDS).
The Swogger or Bahnmuller reference discloses the claimed invention but does not explicitly disclose the feature of the sodium/calcium lignosulfonate. It is noted that the Swogger or Bahnmuller reference discloses lignin sulfonate and the claim(s) call(s) for sodium/calcium lignosulfonate. In an analogous art, the Liu or Qing reference discloses that a CNT dispersion with CNTs dispersed by sodium lignosulfonate is well known in the art (Qing: abs & Liu: abs, sections 2 and 3). In particular, Liu or Qing discloses sodium lignosulfonate provides the benefit of enhanced dispersion and stability. One of ordinary skill in the art would have recognized that applying the known component of Liu or Qing to the teachings of Swogger or Bahnmuller would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of enhancing the dispersibility and stability. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution/implementation would be repugnant to a skilled artisan.
Conclusion
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764
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