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 .
CARBON ADDITIVES FOR DIRECT COATING OF SILICON-DOMINANT ANODES
Examiner: Adam Arciero SN: 17/180,425 Art Unit: 1727 November 8, 2025
DETAILED ACTION
Applicant’s response filed on July 23, 2025 has been received. Claims 1, 3-6 and 8-13 are currently pending. Claims 1 and 6 have been amended. Claims 12-13 are newly added.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Specification
The objection to the specification is maintained.
The use of the term Super-P, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Interpretation
Claim 1 recites an intended use for a composition. The courts have held that “if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"). See MPEP 2111.02.
Claim Objections
Amended claims 1 and 6 recite, “graphite particles having an largest dimension…” which appears to be a typographical error and should read “graphite having a largest dimension…”
Claim Rejections - 35 USC § 112
The claim rejections under 35 USC 112(a) on claims 1, 3-6 and 8-11 are withdrawn because Applicant’s arguments are persuasive.
The claim rejections under 35 USC 112(b) on claims 1, 3-6 and 8-11 are withdrawn because Applicant’s arguments are maintained.
Claims 1, 3-6 and 8-11 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 “about” in claims 1 and 6 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to what sizes of dimensions fall within the claimed scope.
Claim Rejections - 35 USC § 103
The claim rejections under 35 USC 103(a) as being unpatentable over Huang and Aramata on claims 1 and 3 are withdrawn because Applicant has amended the independent claim.
The claim rejections under 35 USC 103(a) as being unpatentable over Huang, Aramata and Sano on claims 4-5 are withdrawn because Applicant has amended the independent claim.
The claim rejections under 35 USC 103(a) as being unpatentable over Huang, Aramata and Huang on claims 6 and 8-9 are withdrawn because Applicant has amended the independent claim.
The claim rejections under 35 USC 103(a) as being unpatentable over Huang, Aramata, Huang and Sano on claims 10-11 are withdrawn because Applicant has amended the independent claim.
Claim(s) 1, 3, 6, 8-9 and 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (US 2012/0219852 A1; herein referred to as Huang ‘852; as found in IDS dated 06/24/2022) in view of Aramata et al. (US 2006/0003227 A1), Huang et al. (US 2007/0099084 A1; herein referred to as Huang ‘084) and Fukui et al. (US 2007/0054190 A1).
As to Claims 1, 3, 6 and 12-13, Huang ‘852 discloses an anode composition and method of making; comprising forming a mixture of a silicon active material in an amount of 80-98 wt%; a carbon additive mixture comprising about 3-7 wt%; and a carbon binder comprising an amount of 5-30 wt%; and an amount of a carbon-based binder from 1-15 wt% (paragraphs [0011]-[0015]). The relative amounts of the anode composition of Huang are intrinsically configured for the claimed pyrolysis and enabling forming directly coated anodes by use of the composition in a slurry for coating on a collector given that the structure and materials of the prior art the present invention are the same. See MPEP 2112. Huang ‘852 does not specifically disclose the claimed average largest dimension of the silicon particles or the claimed pyrolysis step, or the claimed size of the silicon particles or graphite particles.
However, Aramata teaches of anode active material comprising silicon particles with an average particle size of 100 nm to 20 microns, which falls within the claimed range (paragraphs [0002 and 0031]). Aramata further teaches wherein the particle size is a result-effective variable, wherein if the average particle size is less than 50 nm the silicon particles may be difficult to handle and if the average particle size is more than 50 microns, the silicon particles may penetrate through the negative electrode film (paragraph [0031]). The courts have held that in the case where the ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, see MPEP 2144.05, I. The courts have further held that a particular parameter must first be recognized as a result-effective variable before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, see MPEP 2144.05, II, B. At the time of the invention, it would have been obvious to one of ordinary skill in the art to optimize the average particle size of the silicon particles to be within the claimed range because Aramata teaches that a workable silicon particle that won’t penetrate the negative electrode film can be provided and a battery with improved cycle performance can be provided (paragraphs [0009 and 0031]).
However, Huang ‘084 teaches a method of making an anode material composition comprising carbon and silicon wherein the material undergoes a low-temperature pyrolysis of about 600 ºC (Abstract and paragraph [0019]). At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the method of making the material of Huang ‘852 with the claimed low-temperature pyrolysis because Huang ‘084 teaches that an active material capable of reversibly alloying with lithium is provided (Abstract). In addition, it is the position of the Office that the carbon-based binder and/or the carbon-based additive converts, at least partially, into non-graphite carbon, given that the materials used and the method of making in the prior arts and the claimed invention are the same, see MPEP 2112.
However, Fukui teaches of a negative electrode for a lithium secondary battery, wherein the negative electrode comprises graphite having an average particle size (reads on largest dimension) of 2.5-15 microns (Abstract). Fukui further recognizes the particle size of graphite in a negative electrode as a result-effective variable wherein if the size of the graphite is too small, the contact between the active material particles and the conductive agent cannot be maintained and if the particle size is too large, the battery cannot attain high energy density (paragraph [0039]). The courts have held that in the case where the ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, see MPEP 2144.05, I. The courts have further held that a particular parameter must first be recognized as a result-effective variable before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, see MPEP 2144.05, II, B. At the time of the invention, it would have been obvious to one of ordinary skill in the art to optimize the average particle size of the graphite particles to be within the claimed range because Fukui teaches that a battery with high energy density and good charge-discharge characteristics is provided (paragraph [0039]).
As to Claim 8, Huang ‘852 discloses forming the anode composition directly to a current collector (paragraph [0009]).
As to Claim 9, the anode active material made by the method of modified Huang and the presently claimed invention comprise the same materials, structure and method of making and therefore the anode active material of modified Huang will intrinsically comprise the claimed yield of silicon after pyrolysis, see MPEP 2112.
As to Claim 12, it is noted that claim 12 is a product-by-process claim. The courts have held that “even 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113, I.
Claim(s) 4-5 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (US 2012/0219852 A1; Huang ‘852; as found in IDS dated 06/24/2022) in view of Aramata et al. (US 2006/0003227 A1), Huang et al. (US 2007/0099084 A1; herein referred to as Huang ‘084) and Fukui et al. (US 2007/0054190 A1) as applied to claims 1, 3, 6, 8-9 and 12-13 above and in further view of Sano et al. (US 2008/0090149 A1).
As to Claims 4-5 and 10-11, modified Huang does not specifically disclose the claimed conductive-additives or binder.
However, Sano teaches of a silicon bases anode active material, comprising PAA as a carbon-based binder and ECP as a carbon-based additive (Abstract and paragraphs [0066 and 0093]). At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the composition of Huang to comprise PAA and ECP as the carbon-based binder and carbon-based additive, respectively, because Sano teaches that the charge/discharge characteristics of the active material can be improved and a battery with high capacity and excellent cycle characteristics can be achieved (paragraph [0131]).
Response to Arguments
Applicant’s arguments with respect to claim(s) 6 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed July 23, 2025 have been fully considered but they are not persuasive.
Applicant’s principle arguments are:
a) The terms ECP, ECP600 and SLP do not appear to be trademarks (specification objection).
b) Pg. 9 of the Remarks states that claims 1 and 6 have been amened to remove the word “about” to overcome the 112(b) rejections (claims 1 and 6).
In response to Applicant’s arguments, please consider the following remarks:
a) The objection to the specification removed those terms from the objection in the Office action mailed on 12/30/2024. The objection to the term Super-P stands.
b) The claims have not been amended to remove the indefinite terms “about”.
Conclusion
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.
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/ADAM A ARCIERO/ Primary Examiner, Art Unit 1727