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 .
Response to Amendment
This is a final Office action in response to Applicant’s remarks and amendments filed on 12/29/2025. Claim 1 is amended. Claims 2 – 3 and 10 are canceled. Claims 1, 4 – 9, and 11 are pending in the current Office action.
The rejections set forth in the non-final Office action mailed 09/06/2025 are maintained, with the rejection of claim 1 rewritten below to address the amendment.
Response to Arguments
Applicant's arguments and affidavit filed 12/29/2025 have been fully considered but they are not persuasive.
Applicant argues that the data in present application demonstrates that there is no reasonable expectation of success in arriving at the claimed invention since one must be motivated to do more than merely vary all the parameters of try each of the numerous possible choices until one possible arrived at successful result. Specifically applicant argues that the data in Tables 1 and 2 illustrate that a negative electrode having both the claimed weight ratio and the claimed specific surface areas of each conductive material results in improved capacity rate over a negative electrode being outside either the weight ratio or the claimed specific surface area; and thus the combination of the claimed weight ratio and clamed specific surface areas of each conductive material is critical to achieve improved/superior capacity retention rate.
First, the examiner notes that the cited prior art Jo, as established in in the rejection previously and maintained below, explicitly teaches/suggests the following: (1) using three different conductive active materials and forming a conductive network by using multiple conductive materials (See Jo: [0027 – 0028]; (2) conducive material mixing ratios based on weight (See Jo: [0047 – 0048];[0061]) and reasons for controlling the mixing ratios that are based at least partially on the functions of the each conductive material (See Jo: [0041 – 0043];[0047 – 0048];[0060 – 0061]); and (3) overlapping/encompassing specific surface area ranges for two of the conductive materials and reasons for controlling the specific surface areas related to optimizing conductivity/cycle life characteristic. The examiner further notes that Abdelsalam, Sakashita, and Sano teach overlapping/encompassing specific surface area of conductive materials for negative electrodes and similar reasons for controlling the specific surface areas of such materials such as optimizing conductivity and capacity retention and/or forming a conducive network in the electrode. Therefore, as established in the rejection, when considered in together, the cited prior art still appears to render obvious the claimed invention by teaching overlapping and/or encompassing ranges and providing motivations for controlling said ranges that appear to correspond the reasons suggested by the applicant (See pg. 5 and Tables 1 – 2 of filed arguments) and the 35 U.S.C. 103 rejection made in view of Jo, Abdelsalam, Sano and Sakashita appears proper per MPEP 2123(I).
The examiner acknowledges that, in Tables 1 – 2, Examples 3 and 6, which have a negative electrode with a weight ratio within the claimed range, illustrate improved capacity retention over Examples 4 and 7 which have a negative electrode with the same specific surface areas but a weight ratio outside the claimed range {i.e. in Ex.4 the first conductive material weight is outside claimed range of 1 to 5 and in Ex. 7 the second conductive material weight is outside the claimed range of 95 to 120}; however, the examiner notes that the weight ratio, based on the examples, only appears critical when the specific surface areas of the first, second, and third conductive material are 520 m2/g, 60 m2/g, and 17 m2/g, respectfully, and as claim 1 allows for significantly broader surface area ranges than what is shown to provide applicant’s allegedly unexpected results, it is unclear that the claimed weight ratio would be critical across such broad surface area ranges {i.e. the claimed inventions appears incommensurate with the scope of the invention argued to provide unexpected results}.
Examiner further respectfully notes that the claimed specific surface area ranges are relatively broad, whereas applicant’s superior results appear to occur particularly at a first conductive material specific areas of 520 m2/g, a second conductive material specific surface area of 63 m2/g, and a third specific surfaces area of 17 m2/g. Similarly, the claimed weight ratio range is relatively broad, whereas applicant’s superior results appear to occur particularly at a weight ratio range of 0.3 : 9.7 to 11.2 : 3.5 to 5 {i.e. 3 : 97 to 112 : 35 to 50}.
Additionally, with respect to the specific surface areas of each conductive material and the weight ratio, the examiner notes that the weight ratio is only varied/tested alongside the best-performing specific surface area values {i.e. specific surface areas of the first, second, and third conductive material are 520 m2/g, 60 m2/g, and 17 m2/g, respectfully} and the specific surface area is only tested/varied alongside the best-performing weight ratio {i.e. 0.3:9.7:5}; thus it is unclear if weight ratio and specific surface areas of the conductive material are synergistic together.
Thus, in light of the above discussion, applicant’s arguments regarding the criticality/unexpected results of the combination of the claimed weight ratios and specific surface areas are unpersuasive and the pending case of obviousness appears to remains proper.
Further, assuming arguendo, that the claimed specific surface area ranges and weight ratio range were critical to achieving the allegedly unexpected/superior results, the examiner respectfully reiterates that data is incommensurate with the scope of claim 1 for at least the following reason: The results stem form incorporating the negative electrode into a lithium secondary battery (See instant specification: [00127 – 00130]). As MPEP 716.02(d) requires unexpected results to be commensurate with the claimed scope, applicant’s argument is further unpersuasive and Examiner maintains that Jo in view of Abdelsalam, Sano and Sakashita properly establishes prima facie obviousness.
Claim Rejections - 35 USC § 103
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(s) 1, 4 – 5, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Jo (US PG Pub. 2013/0248772A1) in view of Abdelsalam (US PG Pub. 2015/0004488 A1), Sano (US PG Pub. 2008/0090149 A1) and Sakashita (JP2009035598A). {Examiner Note: all prior art was previously cited in previous Office action mailed 09/06/2025}.
Regarding Claim 1 and 4, Jo discloses a negative electrode (Fig. 2, 210; [0063]) comprising: a conductive material for the negative electrode (Fig. 1; [0046];[0070 – 0073]).
Jo teaches using, as the negative electrode active material, materials such as graphite, silicon-based active materials, or any material having a layered crystal structure capable of reversibly intercalating lithium ions between layers ([0064 – 0066]). Jo further discloses examples where the active material is graphite ([0085]).
Jo does not explicitly disclose an embodiment wherein the active material for the negative electrode is a silicon-based active material.
However, since Jo already teaches the option of using silicon-based materials as the negative electrode, and silicon-based anode active materials are known to have higher capacities than graphite materials (Abdelsalam: [0004]), it would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to select a silicon-based active material for the negative electrode, with a reasonable expectation of success in selecting a high capacity active material suitable for the negative electrode.
Jo also teaches including, in addition to active material and conductive material, a binder within their negative electrode composition ([0064]). In examples 1 – 4, Jo discloses using binders such as styrene-butadiene rubber (SBR)/carboxymethyl cellulose (CMC), which are known aqueous binder materials.
Jo does not specifically disclose a silicon-based negative electrode with an aqueous based binder in a single embodiment.
Abdelsalam teaches for a negative electrode with a silicon-based active material and carbon conductive additives using binder materials such as polyimide, polyacrylic acid (PAA) and alkali metal salts thereof, polyvinylalchol (PVA), polyvinylidene fluoride (PVDF) and sodium carboxymethylcellulose (Na-CMC) or rubber based binders such as SBR ([0062];[0066];[0137 – 0138]). One with ordinary skill in the art would recognize that the binders taught by Abdelsalam are aqueous binder materials.
Since Jo already teaches examples using aqueous binders, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to select, as the binder of modified Jo’s negative electrode, an aqueous binder, as taught by Abdelsalam, with a reasonable expectation of success in selecting a binder suitable for the negative electrode.
Jo further discloses wherein the conductive material for the negative electrode includes a first conductive material (first carbon nano conductive agent, Fig. 1, 110; [0046];[0053]), and wherein the first conductive material is at least one of a multi-walled carbon nanotube or a single-walled carbon nanotube ([0016];[0059]).
Jo discloses, for the first carbon nano conductive material, a surface area of 50 – 500 m2/g ([0053]), which overlaps the claimed first conductive material specific surface area range of 250 – 1000 m2/g, and further, 400 – 1000 m2/g (Claim 4). Jo teaches that the first carbon nano conductive agent reduces the electric resistance of the surface of the active material by being dispersed on the surface of the active material ([0042]). Jo further teaches that as the surface area of the conductive material increases, more conductive agent is dispersed and present on the surface of the active material which further reduces electrical resistance and ultimately allows for improved cycle life characteristics ([0054]).
It would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to utilize, as first carbon nano conductive agent, a carbon nano conductive agent with a specific surface area within the overlapping portion of Jo’s taught range and the claimed range for the first conductive material, in order to achieve the effect of reducing electrical resistance at the surface of the negative electrode active material.
A skilled artisan would have had a reasonable expectation of success in arriving at the particular claimed range for the first conductive material, rendered obvious by Jo, since it has already been utilized in the art, as taught by Sano, who demonstrated a first conductive agent having a specific surface area of 200 – 800 m2/g (corresponding to the claimed first conductive material) (Sano: Examples 1 and 2; [0032];[0083];[0093]) for similar reasons of electrical conductivity and capacity retention (Sano: [0032]).
Jo further teaches including an additional conductive agent, selected from natural graphite, artificial graphite, carbon black, acetylene black, ketjen black, carbon fiber, copper, nickel, aluminum, silver, polyphenylene derivatives, or combinations thereof ([0060]), which reads on the claimed second conductive material.
Jo is silent with respect to the second conductive material having a specific surface area of 55 m2/g – 70 m2/g.
Abdelsalam teaches a negative electrode with a silicon-based active material comprising a first elongated carbon nanostructure and second elongated carbon nanostructure where the first and second carbon nanostructures have different surface areas ([0114];[120 – 0122]). Abdelsalam further teaches including a third conductive additive (corresponding to the claimed second conductive additive), specifically carbon black additives, with a specific surface area larger than 50 m2/g ([0068];[0125]), which encompasses the claimed range of 55 m2/g – 70 m2/g. The elongated carbon nanostructures create conductive bridges in the electrode composition and the carbon black, which is able to be more highly dispersed, provides sufficient conductivity in any remaining areas of the electrode composition ([0145];[0185]). Overall, the combination of the elongated carbon nanostructures and carbon black provides conductivity improvements as well as improvements in cycle life ([0145];[0177 – 0178]).
It would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to utilize as the additional conductive additive, a carbon black material with a specific surface area larger than 50 m2/g, as taught by Abdelsalam, and particularly, a specific surface area within the claimed range of 55 m2/g to 70 m2/g, in order to achieve the effect of further improved conductivity and cycle life.
A skilled artisan would have had a reasonable expectation of success in arriving at the particular claimed range for the second conductive material, rendered obvious by Jo and Abdelsalam, since it has already been utilized in the art, as taught by Sakashita, who already demonstrated a carbon black material having a specific surface area of 30 – 90 m2/s (corresponding to the claimed second conductive material) for similar reasons of achieving improved conductivity within an electrode (Sakashita: [0009];[0011]).
In addition to the first carbon nano conductive agent and the additional conductive agent, Jo further teaches including a second carbon nano conductive agent with a relatively smaller specific surface area ([0053]), which reads on the claimed third conductive material. The specific surface area of the second carbon nano conductive agent is less than approximately 150 m2/g ([0053]), which encompasses the claimed third conductive material specific surface area range of 15 m2/g – 20 m2/g. Jo teaches that the second carbon nano conductive agent forms networks of electrical conduction between the active materials and bonds to the active materials to inhibit binding strength deterioration due to shrinkage or expansion of electrode and to improve the high-rate discharge and cycle life characteristics of the battery ([0042]).
It would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention to utilize, as the second carbon nano conductive agent, a carbon nano conductive agent with a specific surface within the encompassed portion of Jo’s taught range and, in particular, the claimed range for the third conductive material, in order to achieve the desired effect of inhibiting binding strength deterioration and improving high-rate discharge and cycle life characteristics of the battery.
A skilled artisan would have had a reasonable expectation of success in arriving at the particular claimed range for the third conductive material, rendered obvious by Jo, since it has already been utilized in the art, as taught by Sano, who already demonstrated a first conductive agent having a specific surface area of 200 – 800 m2/g and a second conductive agent (corresponding to the claimed third conductive material) having a smaller specific surface area of, for example, 13 m2/g or 50 m2/g (Sano: Examples 1,2, and 3; [0032];[0083];[0093 – 0094]) for similar reasons of electrical conductivity and capacity retention (Sano: [0032]). Abdelsalam also demonstrated a similar conductive additive composition with a first elongated carbon nanostructure (corresponding to the claimed third conductive material) having a specific surface area of 10 – 20 m2/g and a second elongated nanostructure with a relatively larger specific surface area (Abdelsalam: [0114];[121 – 0122]) for similar reasons of forming conductive networks and improving electrode binding strength (Abdelsalam: [0145]).
Jo further teaches a mixing ratio, by weight, of the of the first carbon nano conductive agent {i.e. claimed first conductive material} to the second carbon nano conductive agent {i.e. claimed third conductive material} of 1:0.2 to 1:5 ([0047]), and a mixing ratio, by weight, of the first and second carbon nano conductive agents and additional conductive agent {i.e. claimed second conductive material} of 1:1 to 1:10 ([0061]). Therefore, while modified Jo does not explicitly disclose a weight ratio of first conductive material to second conductive material to third conductive material of 1 to 3 : 95 to 120 : 30 to 70, one with ordinary skill in the art would appreciate that the mixing ratios taught by Jo would necessarily provide conductive material mixtures having a weight ratio of first, second, and third conductive material that overlaps or at least encompasses the claimed range.
Jo further teaches that when the mixing ratio for the first and second carbon nano conductive agents is smaller than 1:0.2, the high-rate discharge, cycle-life characteristics, and binding strength of the electrode are lowered and when the mixing ratio is larger than 1:5, Jo teaches that the high-rate discharge, cycle-life characteristics, and binding strength of the electrode are not further increased ([0048]). The first and second carbon nano conductive agent to additional conductive agent mixing ratio range taught by Jo ultimately allows for the optimization of the high-rate discharge, cycle-life characteristics, and binding strength, which, as established above, are all effects of the different conductive materials present in the conductive mixture of the electrode (Jo: [0042];[0047];[0053 – 0054]; Abdelsalam: [0154];[0177 – 0178]).
It obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to control the amounts of the first, second, and third conductive material to be within the claimed range in order to optimize the effects of the different conductive agents (i.e. the high-rate discharge, cycle-life characteristics, and binding strength of the electrode), with a reasonable expectation of success and without undue experimentation [MPEP 2144.05(II)].
Regarding Claim 5, modified Jo discloses all limitations as set forth above. Modified Jo includes a silicon-based active material as the negative electrode active material (Jo: [0065]).
Modified Jo is silent with respect to the average particle diameter (D50) of the silicon-based active material being 1 to 20 µm.
Sakashita teaches a silicon-containing negative electrode active material and further teaches setting the average particle size of the active material to 0.1 – 100 µm and further preferably to 4 – 60 µm ([0060]0. Sakashita’ s taught range prevents deterioration of the active material ([0060]). When the size of the active material is smaller 0.1 µm, the increased surface area of the active material is taught to require an increased amount of electrolyte ([0061]). When the size is larger than 100 µm, the stress caused by the varying weight of the active material across the electrode body cannot be dispersed sufficiently ([0061]).
It would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to control the particle size of modified Jo’s active material to be within the range taught by Sakashita, which overlaps the claimed range, with a reasonable expectation of success in obtaining a silicon-based active material with a size that prevents deterioration of the active material.
Since Sakashita further teaches a preference for active material particle sizes within the range of 4 – 60 µm, specific selection of active material particle sizes within the claimed range would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the surface area and weight of the active material with a reasonable expectation of success and without undue experimentation [MPEP 2144.05(II)].
Regarding Claim 9, modified Jo discloses all limitations as set forth above. Jo teaches including the first and second carbon nano conductive agents in an amount of less than 10 wt % based on the total weight of the electrode ([0070 – 0071]). Jo further teaches including the additional conductive agent in an amount of less than 10 wt % based on the total weight of the electrode ([0071]). Therefore, Jo implicitly teaches including the active material and binder in an amount of more than 80 wt % based on a total weight of the electrode. Furthermore, as established above, the binder included in modified Jo’s electrode composition is an aqueous binder.
Jo does not explicitly disclose wherein the silicon-based active material, the conductive material for negative electrode, and the aqueous binder are included in a weight ratio of 60 to 70 : 10 to 20 : 15 to 25.
Abdelsalam teaches a composite silicon negative electrode including multiple conductive carbon additives where the active material is included in an amount of 50 – 80 wt % and the conductive additives, including elongated carbon nanostructures and carbon black, are included in an amount of at least 3 – 15 wt % ([0011];[0144]). Abdelsalam further teaches, to provide cohesion between the active material particles and current collector, including binder in an amount of 5 – 30 wt % ([0137 – 0139]).
Since both Jo and Abdelsalam teach overlapping amounts of active material, conductive material, and binder, it would have been obvious to one with ordinary skill in the art to include the active material, conductive material, and binder within the amount taught by Abdelsalam, and further within the claimed ranges, to optimize the effects of the active material and carbon conductive materials {i.e. electrode performance} and the effects of binder {i.e. sufficient binding of the electrode materials to the collector}, with a reasonable expectation of success and without undue experimentation [MPEP 2144.05(II)].
Regarding Claim 11, modified Jo discloses all limitations as set forth above. Jo further discloses a lithium secondary battery (Fig. 2; [0008];[0062-0063]) comprising a positive electrode (Fig. 2, 220; [0063]) and an electrolyte (Fig. 2, 230; [0068 – 0069]).
Claim(s) 6 – 7 are rejected under 35 U.S.C. 103 as being unpatentable over Jo (US PG Pub. 2013/0248772A1), Abdelsalam (US PG Pub. 2015/0004488 A1), Sano (US PG Pub. 2008/0090149 A1), and Sakashita (JP2009035598A), as applied to claim 1 above, and further in view of Son (US PG Pub. 20120070737 A1) {Examiner Note: all prior art was previously cited in previous Office action mailed 09/06/2025}.
Regarding Claims 6 and 7, modified Jo discloses all limitations as set forth above. Jo’s modified negative electrode includes an aqueous binder.
Modified Jo does not explicitly disclose wherein the aqueous binder comprises a copolymer including a polyvinyl alcohol-derived unit and an ionized-substituted acrylate derived unit (Claim 6) and wherein the polyvinyl alcohol-derived unit is represented by Formula 1, and the ionized-substituted acrylate derived unit is represented by Formula 2, wherein in Formula 2, M+ is at least one cation selected from the group consisting of Na+, Li+, and K+ (Claim 7).
Son teaches a binder composition including a crosslinked compound of polyacrylic acid substituted with alkali cations such as Li+, Na+, K+ NH4+, or a combination thereof, and polyvinyl alcohol for negative electrodes including silicon-based active materials ([0012 – 0014];[0016]). The binder composition improves the stability of the electrode and ultimately provides improved cycle-life characteristics ([0008];[0030];[0056]). In an example embodiment, Son specifically teaches using a binder composition of a cross-linked compound of Na+-substituted polyacrylic acid and polyvinyl alcohol in a Si-based negative electrode that further includes carbon black ([0083 – 0085];[0094]).
It would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to further modify Jo’s binder to include the cross-linked compound of Na+-substituted polyacrylic acid and polyvinyl alcohol, as taught and exemplified by Son, with a reasonable expectation of success in obtaining a suitable binder for modified Jo’s electrode and further achieving increased battery cycle-life characteristics.
One with ordinary skill in the art would recognize that the structure of modified Jo’s binder would read on the claimed structure because the Na+-substituted polyacrylic acid part of the crosslinked polymer would be a unit represented by Formula 2 where M is Na+ and the polyvinyl alcohol part of the crosslinked polymer would be a unit represented by Formula 1.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Jo (US PG Pub. 2013/0248772A1), Abdelsalam (US PG Pub. 2015/0004488 A1), Sano (US PG Pub. 2008/0090149 A1), Sakashita (JP2009035598A), and Son (US PG Pub. 20120070737 A1), as applied to claim 6 above, and further in view of Seki (US PG Pub. 2004/0110068 A1) {Examiner Note: all cited prior art was utilized in previous Office action mailed 09/06/2025}.
Regarding Claim 8, modified Jo discloses all limitations as set forth above. Modified Jo teaches including a binder within the negative electrode composition.
Modified Jo does not explicitly disclose wherein a weight average molecular weight (Mw) of the copolymer is 100,000 to 500,000.
Seki teaches, for negative electrodes of lithium secondary cells, including a weight average of molecular binder within the range of 1000 – 5,000,000 and most preferably within the range of 20,000 – 300,000 ([0139 – 0141]). Seki further teaches that as the molecular weight decreases, the mechanical strength of the electrode decreases and, as the molecular weight increases, the viscosity tends to increase and makes it harder to form the negative electrode material layer ([0141]). The binder materials taught by Seki include resin materials such as polyvinyl alcohol and polyacrylic acid and are further taught to include copolymers ([0140]).
It would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to control the molecular weight of modified Jo’s binder {i.e. copolymer Na+-substituted polyacrylic acid and polyvinyl alcohol} to be within the range taught by Seki, which overlaps the claimed range, with a reasonable expectation of success in obtaining a negative electrode material with a viscosity suitable for forming an active material layer and a negative electrode with sufficient mechanical strength.
It would have been further obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to control molecular weight of modified Jo’s binder to be within the claimed range of 100,000 to 500,000 to optimize the electrode material viscosity and the mechanical strength of the electrode, with a reasonable expectation of success and without undue experimentation [MPEP 2144.05(II)].
Conclusion
THIS ACTION IS MADE FINAL. 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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/A.Y.O./Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 3/23/2026