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 . If status of the application as subject to 35 U.S.C. 102 and 103 is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-2 and 13-17 were rejected in the office action mailed 5/2/2025. Applicant added new claims 18-19. Claims 1-2 and 13-19 are pending in the application and are presently examined.
Response to Amendment / Arguments
The amendment filed 8/1/2025, in response to the office action mailed 5/2/2025, has been entered. Applicant’s claim amendments overcame the objection, the 35 U.S.C. 112(b) rejection, and the 35 U.S.C. 103 rejections. Nevertheless, the claims remain rejected under 35 U.S.C. 103 due to additional prior art. Specifically, the prior primary reference, US20180151873A1 (Matsuno), is replaced by a new primary reference, US20190027779A1 (Sasagawa).
The following claim limitation (summarized) remains from the prior office action: wt% flaky graphite x BET = 30 to 100. Although the primary reference is replaced, this claim limitation is still rejected over Matsuno and Iijima, like before. In the agenda for the 7/25/2025 interview, page 2, Applicant argued that Iijima’s flaky graphite is different from Matsuno’s flaky graphite because Iijima’s flaky graphite is pulverized.
Examiner agrees that Iijima’s flaky graphite is pulverized. Iijima teaches that the flaky graphite is pulverized to achieve 20 m2/g BET (column 8, lines 50-57).
One of ordinary skill in the art would have learned pulverization from Iijima to achieve the desired BET value. Pulverization of Matsuno’s flaky graphite, to achieve 20 m2/g BET, as taught by Iijima, would not affect the wt% flaky graphite. Matsuno’s flaky graphite would be 2 wt% before and after pulverization. Matsuno and Iijima still combine to achieve the claim limitation of 30 to 100 (wt% m2/g).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The claims are in bold font and the prior art is in parentheses.
Claims 1-2, 13-16, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over US20190027779A1 (Sasagawa) in view of US20180151873A1 (Matsuno) and US6344235B1 (Iijima), together “modified Sasagawa”.
With regard to claim 1, Sasagawa teaches the following claim limitations:
A negative electrode for a lithium secondary battery (title), comprising a negative electrode collector and a negative electrode active material layer disposed on the negative electrode collector (abstract), wherein the negative electrode active material layer comprises:
a negative electrode active material comprising a spherical natural graphite and a silicon oxide (SiOX, 0<x<2) composite containing magnesium (Mg) (paragraph 43: natural or synthetic graphite may be used; paragraph 89: spherical synthetic graphite mixed with SiOx as the negative electrode active material; paragraph 51: negative electrode active material can include Mg);
a line-type conductive agent comprising carbon nanotubes (CNTs) (paragraph 66)…
wherein a weight ratio of the silicon oxide composite and the spherical natural graphite is in a range of 1:99 to 50:50 (paragraph 43: natural or synthetic graphite may be used; paragraph 89: 1:99 ratio of spherical synthetic graphite to SiOx),
wherein an amount of the line-type first conductive agent is in a range of 0.5 wt% to 1.7 wt% based on a total weight of the negative electrode active material layer (paragraphs 66-67: 0.5 to 5% by mass), and
Regarding the final limitation above, Sasagawa’s 0.5 to 5% wt% range overlaps the claimed 0.5 to 1.7 wt% range. MPEP 2144.05 (II)(A) provides the law for this issue:
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”.
Given that Sasagawa’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, this range in claim 1 is an obvious variant of Sasagawa’s range.
Sasagawa, however, fails to teach the following claim 1 limitation, which is taught by Matsuno and Iijima:
a flaky graphite-based conductive agent…
a product of an amount (wt%) of the flaky graphite-based conductive agent based on the total weight of the negative electrode active material layer and a Brunauer-Emmett-Teller (BET) specific surface area (m2/g) of the flaky graphite-based conductive agent has a value of 30 to 100 (wt% m2/g)
Matsuno is directed to a battery with increased capacity and improved cycle performance (paragraph 27). Matsuno teaches 2 wt% flaky graphite in a negative electrode active material layer (paragraphs 136 & 189). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Sasagawa’s negative electrode active material layer to include 2 wt% flaky graphite, as taught by Matsuno, as part of a battery with increased capacity and improved cycle performance.
Iijima is directed to a secondary cell with good charge and discharge characteristics (abstract). Iijima teaches flaky graphite with 20 m2/g BET (column 8, lines 50-57). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Sasagawa’s negative electrode active material layer to include 2 wt% flaky graphite with 20 m2/g BET, as taught by Iijima, for a secondary cell with good charge and discharge characteristics.
Matsuno’s 2 wt% flaky graphite (paragraphs 136 & 189) and Iijima’s 20 m2/g BET flaky graphite (column 8, lines 50-57) combine for a product: 2 wt% * 20 m2/g = 40 wt% m2/g, which is within the claimed range of 30 to 100 wt% m2/g.
With regard to claim 2, modified Sasagawa teaches the limitations of claim 1 as described above. Sasagawa also teaches the following claim 2 limitation:
the line-type conductive agent is included in an amount of 0.5 wt% to 1.5 wt% based on the total weight of the negative electrode active material layer (paragraphs 66-67: 0.5 to 5% by mass; see claim 1 discussion)
With regard to claim 13, modified Sasagawa teaches the limitations of claim 1 as described above. Sasagawa also teaches the following claim 13 limitation:
the negative electrode active material layer further comprises a thickener and a binder (paragraph 110: CMC; paragraph 58: binder)
The present specification teaches that the thickener can comprise CMC (paragraph 47).
With regard to claim 14, modified Sasagawa teaches the limitations of claim 1 as described above. Sasagawa fails to the following claim 14 limitation, which is taught by Matsuno:
the silicon oxide composite containing Mg comprises a carbon coating layer on a surface thereof (paragraphs 30 & 41)
Matsuno is directed to a battery with increased capacity and improved cycle performance (paragraph 27). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Sasagawa’s SiOx and Mg to be coated with carbon, as taught by Matsuno, as part of a battery with increased capacity and improved cycle performance.
With regard to claim 15, modified Sasagawa teaches the limitations of claim 1 as described above. Sasagawa also teaches the following claim 15 limitation:
A lithium secondary battery comprising the negative electrode for a lithium secondary battery of claim 1 (title & abstract)
With regard to claim 16, modified Sasagawa teaches the limitations of claim 1 as described above. Sasagawa also teaches the following claim 16 limitation:
the negative electrode active material further comprises graphite (paragraphs 66 & 68)
With regard to claim 18, modified Sasagawa teaches the limitations of claim 1 as described above. Sasagawa also teaches the following claim 18 limitation:
the flaky graphite-based conductive agent has a BET specific surface area of 3 m2/g to 40 m2/g (column 8, lines 50-57: 20 m2/g BET; see further discussion under claim 1)
With regard to claim 19, modified Sasagawa teaches the limitations of claim 1 as described above. Sasagawa also teaches the following claim 19 limitation:
the negative electrode active material comprises the flaky graphite-based conductive agent in an amount of 1.8 wt% to 5.8 wt% based on the total weight of the negative electrode active material layer (paragraphs 136 & 189: 2 wt% flaky graphite; see further discussion under claim 1)
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over US20190027779A1 (Sasagawa) in view of US20180151873A1 (Matsuno) and US6344235B1 (Iijima), as applied to claim 1, and further in view of EP3379611A1 (Oh).
Modified Sasagawa teaches the limitations of claim 1 as described above. Modified Sasagawa, however, fails to teach the following claim 17 limitation, which is taught by Oh:
the silicon oxide composite containing Mg comprises at least one silicate phase selected from the group consisting of Mg2SiO4 and MgSiO3 (abstract)
Oh is directed to battery negative electrode material, with silicon oxide, MgSiO3, and Mg2SiO4 for improved charge/discharge capacity and efficiency (paragraph 14). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Sasagawa’s negative electrode active material to include MgSiO3 and Mg2SiO4, as taught by Oh, for improved charge/discharge capacity and efficiency (abstract and paragraph 14).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
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/R.G.W./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721