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 .
Response to Amendment
The Amendment filed on 2/2/2026 has been entered. Claims 2 and 5 are cancelled. Claims 1, 3, 6, 8, and 10-17 remain pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 and dependent claims 3, 6, 8, 10, 11, and 14-17 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.
Claim 1 recites the limitation “a weight ratio of the first element to the second element is in a range of 1:4 to 1:3”, and the limitation “the material includes: 50 wt% to 90 wt% of the amorphous carbon, 5 wt% to 20 wt% of the first element, and 5 wt% to 40 wt% of the second element, wherein all the wt% is based on 100 wt% of the material”. However, if the lowest amount of the first element in the material is 5 wt% of the first element, and the weight ratio of the first element to the second element is 1:4 to 1:3, then the lowest amount of the second element included in the material would have to be 15 wt% (i.e., =5 wt% * 3), and not the claimed 5 wt%. Similarly, if the highest amount of the first element in the material is 20 wt%, then the highest amount of the second element included in the material would have to be 80 wt% (i.e., = 20 wt% * 4), and not the claimed 40 wt%. The end points of the weight ratio range of the first element to the second element and the end points of weight percentage ranges of the first element and second element cannot be simultaneously met, thus rendering the claim indefinite.
Claims 3, 6, 8, 10, 11, and 14-17 are rejected as being dependent upon a rejected base claim.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, 6, 8, 10, 11, and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (JPH 10308207, referring to previously provided translation thereof, hereinafter "Tanaka") in view of Lee et al. (US 2010/0243964, hereinafter "Lee"), Yashiro et al. (US 2019/0260065, hereinafter "Yashiro"), and Yang et al. (KR 20060087003, referring to Examiner-provided translation thereof, hereinafter "Yang").
Regarding claim 1, Tanaka teaches a material for a negative electrode (“negative electrode active material layer”) comprising a mixture of carbon and an alloy powder including metals that undergo an alloying reaction with lithium (“first element”) and metals that do not undergo an alloying reaction with lithium (“second element”) [0010, “a mixture of a carbon material powder and an alloy powder made of metals that undergo an alloying reaction with lithium and metals that do not undergo such an alloying reaction is used for the negative electrode”]. Tanaka further teaches that the metal that undergoes alloying with lithium can be silver (Ag), and that the metal that does not undergo an alloying reaction may be nickel (Ni) or copper (Cu) [0013]. Tanaka teaches that the ratio of the alloy containing the alloying and non-alloying metals to the carbon material is preferably 5% to 50% by weight, which is equivalent to the ratio of carbon material to the alloy being 50% to 95% by weight, which encompasses the recited range of amorphous carbon in an amount of 50 wt% to 90 wt% based on 100% of the material [0015]. Tanaka also teaches that the ratio of the metal that undergoes an alloying reaction with lithium to a metal that does not undergo an alloying reaction with lithium is preferably 50% to 90% by weight [0015]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
Tanaka does not specifically teach the carbon material being amorphous carbon, the average particle size (D50) of the non-alloying metal being in a range of 150 nm to 1,000 nm, or the weight ratio of the alloying metal to the non-alloying metal being in a range of 1:4 to 1:3.
Yang teaches analogous art of a negative electrode active material comprising a composite metal compound formed of a metal alloyed with lithium (“first element”) and a metal not alloyed with lithium (“second element”), attached to a surface of carbon particles [pg. 4, “the invention relates to a negative electrode active material for a lithium secondary battery having excellent charge /discharge efficiency and lifespan characteristics, wherein a composite metal compound formed of a metal alloyed with lithium and a metal not alloyed with lithium is attached to the surface of graphite particles”]. Yang teaches that the carbon particles may be formed of one or more types of carbon materials, such as amorphous carbon [pgs. 8-9, “The graphite particles (20) above are a material capable of reversibly absorbing and releasing lithium, and may be a compound capable of reversibly intercalating or deintercalating lithium ions. For example, it is formed by mixing one or more types of carbon materials including natural graphite, artificial graphite, and amorphous carbon”]. Yang teaches that in the composite metal compound, the metal alloyed with lithium/alloyed metal and the metal not alloyed with lithium/non-alloyed metal are in a weight ratio of 20%:80% to 80%:20%, or 1:4 to 4:1, which overlaps the recited range [pg. 10, “The above alloyed metal compound (12) is formed by including 20 to 80% of the total weight of the composite metal or composite metal compound. Accordingly, the above non-alloyed metal compound (14) comprises 20 to 80% of the total weight of the above composite metal compound”]. Yang also teaches that the negative electrode active material preferably includes the composite metal compound in an amount of 5 to 50% based on a total weight of the negative electrode active material, which would mean that amount of the carbon particles is in a range of 50 to 95% by weight [pg. 11, “The above composite metal compound (10) is formed by including 3 to 70% of the total weight of the negative electrode active material, and preferably 5 to 50%”]. When the negative electrode material includes 95% by weight of the carbon particles, the lowest amount of alloyed metal that may be included is 1% by weight, and the lowest amount of non-alloyed metal that may be included is 1% by weight. When the negative electrode material includes 50% by weight of the carbon particles, the highest amount of alloyed metal that may be included is 40% by weight, and the highest amount of non-alloyed metal that may be included is 40% by weight. Therefore, the ranges for the amount by weight of the alloyed metal and the non-alloyed metal overlap the recited range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
Yang teaches that when the weight of the alloyed metal is less than 20% based on a total weight of the composite metal compound, only a small increase in energy density of the negative electrode active material is achieved, and when the weight of the alloyed metal is greater than 80%, the lifespan characteristics of the negative electrode active material are degraded [pg. 10, “If the weight …”]. Yang also teaches that when the content of the composite metal compound compared to the carbon particles is too high, the charge/discharge efficiency and cycle characteristics of the negative electrode active material deteriorate, and when the content of the composite metal compound compared to the carbon particles is too high, the energy density of the negative electrode active material decreases [pg. 11, “If the content of the above composite metal compound exceeds …”].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the negative electrode material taught by Tanaka to include the alloyed metal and non-alloyed metal in an amount and weight ratio within the ranges disclosed by Yang, in order to prevent degradation of the lifespan characteristics, charge/discharge efficiency, cycle characteristics, and energy density of the negative electrode active material. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [see MPEP 2144.05(II)(A)].
Yashiro teaches analogous art of a negative electrode active material layer which may include silver, platinum, palladium, gold, and various elements belonging to the fourth period and groups 3-11 of the periodic table [0026]. Yashiro also teaches that the negative electrode active material layer may include amorphous carbon [0027].
Yashiro teaches that when the negative electrode active material layer includes amorphous carbon, a battery including the negative electrode active material layer may have improved characteristics [0138, “For example, the negative electrode active material layer 32 may include a combination of amorphous carbon and at least one of … When the negative electrode active material layer includes these materials, the all-solid-state secondary battery may have further improved characteristics”].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the negative electrode material taught by Tanaka to include amorphous carbon as the carbon material as taught by Yashiro, in order to improve the characteristics of a battery including the negative electrode.
Lee teaches analogous art of a composite material comprising a first material that is capable of being alloyed with lithium, a second material that is incapable of being alloyed with lithium, and a third material that has a higher electrical conductivity than the second material [0008]. Lee teaches that the composite material may be used for an anode active material [0061, “he composite according to the present invention, prepared by the above described method, may be used as an electrode active material for a secondary battery, especially as an anode active material”]. Lee teaches that the third material is preferably a metal such as iron, nickel, or cobalt, which are incapable of being alloyed with lithium [0042, “examples of the third material may include metals, such as iron (Fe), nickel (Ni), cobalt (Co), or the like, which are incapable of being alloyed with lithium”]. Lee teaches that the average particle diameter of the third material is preferably 10 to 1000 nm, which overlaps the recited range [0043]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
Lee discloses that when the particle diameter of the third material is within the above range, a more effective electrical conducting path is formed and volume expansion of the active material is inhibited [0043].
Therefore, it would have been obvious to a person having ordinary skill in the art to have modified the non-alloying metal taught by Tanaka to have an average particle diameter within the range disclosed by Lee, in order to form a more effective electrical conducting path and inhibit volume expansion.
Further regarding claim 3, modified Tanaka teaches the material including amorphous carbon as described in the rejection of instant claim 1.
Yashiro further teaches that the amorphous carbon in the negative electrode active material layer may be carbon black [0139, “In the negative electrode active material layer 32, the amorphous carbon may be a carbon black”].
As described in the rejection of instant claim 1, Yashiro teaches that when the negative electrode active material layer includes amorphous carbon, a battery including the negative electrode active material layer may have improved characteristics [0138]. Since carbon black is an amorphous carbon, carbon black must similarly improve battery characteristics.
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the negative electrode material taught by modified Tanaka to include carbon black as the carbon material as taught by Yashiro, in order to improve the characteristics of a battery including the negative electrode.
Further regarding claim 6, modified Tanaka teaches the material of claim 1, as described in the rejection of instant claim 1.
As described in the rejection of claim 1 above, Yang discloses that the negative electrode active material preferably includes the composite metal compound in an amount of 5 to 50% based on a total weight of the negative electrode active material, which would mean that amount of the carbon particles is in a range of 50 to 95% by weight [pg. 11], and that that in the composite metal compound, the metal alloyed with lithium/alloyed metal and the metal not alloyed with lithium/non-alloyed metal are in a weight ratio of 20%:80% to 80%:20% [pg. 10]. These ranges overlap the recited range for a content of the non-alloying metal based on 100 parts by weight of the amorphous carbon. For example, when the negative electrode active material comprises 60% by weight of the carbon particles, and the ratio of alloyed metal to non-alloyed metal is 25%:75%, the amount by weight of the non-alloyed metal is 30%, which would be 50 parts by weight of the non-alloyed metal based on 100 parts by weight of the carbon particles. When the negative electrode active material comprises 80% by weight of the carbon particles, and the ratio of alloyed metal to non-alloyed metal is 25%:75%, the amount by weight of the non-alloyed metal is 15%, which would be 19 parts by weight of the non-alloyed metal based on 100 parts by weight of the carbon particles. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
As discussed in the rejection of claim 1 above, Yang teaches that when the weight of the alloyed metal is less than 20% based on a total weight of the composite metal compound, only a small increase in energy density of the negative electrode active material is achieved, and when the weight of the alloyed metal is greater than 80%, the lifespan characteristics of the negative electrode active material are degraded [pg. 10]. Yang also teaches that when the content of the composite metal compound compared to the carbon particles is too high, the charge/discharge efficiency and cycle characteristics of the negative electrode active material deteriorate, and when the content of the composite metal compound compared to the carbon particles is too high, the energy density of the negative electrode active material decreases [pg. 11].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the negative electrode material taught by modified Tanaka to include the non-alloyed metal and carbon material in an amount and weight ratio within the ranges disclosed by Yang, in order to prevent degradation of the lifespan characteristics, charge/discharge efficiency, cycle characteristics, and energy density of the negative electrode active material. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [see MPEP 2144.05(II)(A)].
Further regarding claim 8, modified Tanaka teaches the material of claim 1, as described in the rejection of instant claim 1.
As described in the rejection of claim 1 above, Yang discloses that the negative electrode active material preferably includes the composite metal compound in an amount of 5 to 50% based on a total weight of the negative electrode active material, which would mean that amount of the carbon particles is in a range of 50 to 95% by weight [pg. 11], and that that in the composite metal compound, the metal alloyed with lithium/alloyed metal and the metal not alloyed with lithium/non-alloyed metal are in a weight ratio of 20%:80% to 80%:20% [pg. 10]. These ranges overlap recited ranges of the weight ratios of instant claim 8. For example, when the negative electrode active material comprises 55% by weight of the carbon particles, and the ratio of alloyed metal to non-alloyed metal is 20%:80%, the amount by weight of the alloyed metal is 9% and the amount by weight of the non-alloyed metal is 36%. Therefore, the weight ratio of carbon particles to the alloyed metal is 6.1:1, the weight ratio of carbon particles to non-alloyed metal is 1.5:1, and the weight ratio of alloyed metal to non-alloyed metal is 1:4. In addition, when the negative electrode active material comprises 60% by weight of the carbon particles, and the ratio of alloyed metal to non-alloyed metal is 25%:75%, the amount by weight of the alloyed metal is 10% and the amount by weight of the non-alloyed metal is 30%. Therefore, the weight ratio of carbon particles to the alloyed metal is 6:1, the weight ratio of carbon particles to non-alloyed metal is 2:1, and the weight ratio of alloyed metal to non-alloyed metal is 1:3. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
As discussed in the rejection of claim 1 above, Yang teaches that when the weight of the alloyed metal is less than 20% based on a total weight of the composite metal compound, only a small increase in energy density of the negative electrode active material is achieved, and when the weight of the alloyed metal is greater than 80%, the lifespan characteristics of the negative electrode active material are degraded [pg. 10]. Yang also teaches that when the content of the composite metal compound compared to the carbon particles is too high, the charge/discharge efficiency and cycle characteristics of the negative electrode active material deteriorate, and when the content of the composite metal compound compared to the carbon particles is too high, the energy density of the negative electrode active material decreases [pg. 11].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the negative electrode material taught by modified Tanaka to include the alloyed metal, non-alloyed metal, and carbon material in a weight ratio within the ranges disclosed by Yang, in order to prevent degradation of the lifespan characteristics, charge/discharge efficiency, cycle characteristics, and energy density of the negative electrode active material. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [see MPEP 2144.05(II)(A)].
Further regarding claim 10, modified Tanaka teaches the material in the negative electrode as claimed in claim 1, described in the rejection for instant claim 1. Modified Tanaka also teaches a negative electrode layer and a positive electrode layer in a battery [0031, “the positive electrode 1 and the negative electrode 2 are spirally wound with the separator 5 interposed therebetween to form an electrode plate assembly”]. Tanaka is silent regarding an all-solid state rechargeable battery with a solid electrolyte.
Yashiro teaches an all-solid-state rechargeable battery [0132, “a capacity of the all-solid-state secondary battery”], comprising a solid electrolyte layer [0128, “The negative electrode active material layer 32 may be placed between the negative electrode current collector 31 and the solid electrolyte layer”].
Yashiro discloses that all-solid-state secondary batteries which include a solid electrolyte, have increased safety compared to secondary batteries which use a liquid electrolyte [0003, “An all-solid-state secondary battery including a solid electrolyte, and which does not include a liquid electrolyte, has increased safety compared to a lithium-ion secondary battery using a non-aqueous liquid electrolyte”]. Yashiro also discloses that all-solid-state secondary batteries can be manufactured to be lighter or smaller, and have longer lifespans [0003, “The all-solid-state secondary battery may also be manufactured to have a lighter weight or a smaller size with a longer lifespan”].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the rechargeable battery taught by modified Tanaka to be an all-solid-state rechargeable battery with a solid electrolyte, as taught by Yashiro, in order to improve the safety, reduce the size and weight, and increase the lifespan of the battery.
Further regarding claim 11, modified Tanaka teaches the all-solid-sate rechargeable battery as claimed in claim 10, described in the rejection for instant claim 10. Tanaka is silent regarding the initial charging capacity of the positive electrode layer (a) and negative electrode layer (b).
Yashiro teaches an all-solid-state rechargeable battery wherein an initial charging capacity of the positive electrode layer and an initial charging capacity of the negative electrode layer satisfies the equation 0.002 < b/a < 0.5, where a is the is the initial charging capacity, in mAh, of the positive electrode layer and b is the initial charging capacity, in mAh, of the negative electrode layer [0134, “a ratio (also referred to as “capacity ratio”) of a charge capacity (in milliampere hours, mAh) of the negative electrode active material layer to a charge capacity (in mAh) of the positive electrode active material layer (i.e., the positive electrode layer) may satisfy the relationship of Equation 1: 0.002<b/a<0.5 wherein a is the charge capacity of the positive electrode active material layer and b is the charge capacity of the negative electrode active material layer”], which overlaps the claimed range of b/a in instant claim 10. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
Yashiro also discloses that outside of the lower end of the capacity ratio range, a lithium metal layer may not form in the negative electrode layer, thereby deteriorating the characteristics of the battery [0135]. Yashiro further discloses that even when the lithium metal layer does form, at lower capacity ratios the negative electrode active material layer may still not effectively function as a protective layer, and that may be more preferable to have a capacity ratio 0.005 or greater, or 0.01 or 0.02 or greater. Yashiro also teaches that when the capacity ratio is 0.5 or greater, formation of the lithium metal may be insufficient [0136].
Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the battery taught by modified Tanaka to have the capacity ratio b/a taught by Yashiro, in order to ensure that a sufficient lithium metal layer forms in the negative electrode material layer to protect the negative electrode material layer and prevent deterioration of the battery characteristics.
Further regarding claim 14, modified Tanaka teaches the material of claim 1, as described in the rejection of instant claim 1.
As described in the rejection of claim 1 above, Yang discloses that in the composite metal compound, the metal alloyed with lithium/alloyed metal and the metal not alloyed with lithium/non-alloyed metal are in a weight ratio of 20%:80% to 80%:20%, or 1:4 to 4:1, which encompasses the recited weight ratio [pg. 10]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
As discussed in the rejection of claim 1 above, Yang teaches that when the weight of the alloyed metal is less than 20% based on a total weight of the composite metal compound, only a small increase in energy density of the negative electrode active material is achieved, and when the weight of the alloyed metal is greater than 80%, the lifespan characteristics of the negative electrode active material are degraded [pg. 10].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the negative electrode material taught by modified Tanaka to include the alloyed metal and non-alloyed metal within the weight ratio range disclosed by Yang, in order to prevent degradation of the lifespan characteristics of the negative electrode active material. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [see MPEP 2144.05(II)(A)].
Further regarding claim 15, modified Tanaka teaches the material of claim 1, as described in the rejection of instant claim 1.
As described in the rejection of claim 1 above, Yang discloses that the negative electrode active material preferably includes the composite metal compound in an amount of 5 to 50% based on a total weight of the negative electrode active material, which would mean that amount of the carbon particles is in a range of 50 to 95% by weight [pg. 11], and that that in the composite metal compound, the metal alloyed with lithium/alloyed metal and the metal not alloyed with lithium/non-alloyed metal are in a weight ratio of 20%:80% to 80%:20% [pg. 10]. These ranges overlap the recited ranges of the weight ratios of instant claim 15. For example, when the negative electrode active material comprises 55% by weight of the carbon particles, and the ratio of alloyed metal to non-alloyed metal is 20%:80%, the amount by weight of the non-alloyed metal is 36%. Therefore, the weight ratio of carbon particles to non-alloyed metal is 1.5:1. In addition, when the negative electrode active material comprises 60% by weight of the carbon particles, and the ratio of alloyed metal to non-alloyed metal is 25%:75%, the amount by weight of the non-alloyed metal is 30%. Therefore, the weight ratio of carbon particles to non-alloyed metal is 2:1. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
As discussed in the rejection of claim 1 above, Yang teaches that when the weight of the alloyed metal is less than 20% based on a total weight of the composite metal compound, only a small increase in energy density of the negative electrode active material is achieved, and when the weight of the alloyed metal is greater than 80%, the lifespan characteristics of the negative electrode active material are degraded [pg. 10]. Yang also teaches that when the content of the composite metal compound compared to the carbon particles is too high, the charge/discharge efficiency and cycle characteristics of the negative electrode active material deteriorate, and when the content of the composite metal compound compared to the carbon particles is too high, the energy density of the negative electrode active material decreases [pg. 11].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the negative electrode material taught by modified Tanaka to include the non-alloyed metal and carbon material in a weight ratio within the ranges disclosed by Yang, in order to prevent degradation of the lifespan characteristics, charge/discharge efficiency, cycle characteristics, and energy density of the negative electrode active material. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [see MPEP 2144.05(II)(A)].
Further regarding claim 16, modified Tanaka teaches the material of claim 1, as described in the rejection of instant claim 1.
As described in the rejection of claim 1 above, Yang discloses that the negative electrode active material preferably includes the composite metal compound in an amount of 5 to 50% based on a total weight of the negative electrode active material, which would mean that amount of the carbon particles is in a range of 50 to 95% by weight [pg. 11], and that that in the composite metal compound, the metal alloyed with lithium/alloyed metal and the metal not alloyed with lithium/non-alloyed metal are in a weight ratio of 20%:80% to 80%:20% [pg. 10]. These ranges encompass the recited weight ratio of instant claim 16. For example, when the negative electrode active material comprises 60% by weight of the carbon particles, and the ratio of alloyed metal to non-alloyed metal is 25%:75%, the amount by weight of the non-alloyed metal is 30%. Therefore, the weight ratio of carbon particles to non-alloyed metal is 2:1. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
As discussed in the rejection of claim 1 above, Yang teaches that when the weight of the alloyed metal is less than 20% based on a total weight of the composite metal compound, only a small increase in energy density of the negative electrode active material is achieved, and when the weight of the alloyed metal is greater than 80%, the lifespan characteristics of the negative electrode active material are degraded [pg. 10]. Yang also teaches that when the content of the composite metal compound compared to the carbon particles is too high, the charge/discharge efficiency and cycle characteristics of the negative electrode active material deteriorate, and when the content of the composite metal compound compared to the carbon particles is too high, the energy density of the negative electrode active material decreases [pg. 11].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the negative electrode material taught by modified Tanaka to include the non-alloyed metal and carbon material in a weight ratio within the ranges disclosed by Yang, in order to prevent degradation of the lifespan characteristics, charge/discharge efficiency, cycle characteristics, and energy density of the negative electrode active material. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [see MPEP 2144.05(II)(A)].
Further regarding claim 17, modified Tanaka teaches the material of claim 1, as described in the rejection of instant claim 1.
As described in the rejection of claim 1 above, Yang discloses that the negative electrode active material preferably includes the composite metal compound in an amount of 5 to 50% based on a total weight of the negative electrode active material, which would mean that amount of the carbon particles is in a range of 50 to 95% by weight [pg. 11], and that that in the composite metal compound, the metal alloyed with lithium/alloyed metal and the metal not alloyed with lithium/non-alloyed metal are in a weight ratio of 20%:80% to 80%:20% [pg. 10]. These ranges encompass the recited weight ratios of instant claim 17. For example, when the negative electrode active material comprises 60% by weight of the carbon particles, and the ratio of alloyed metal to non-alloyed metal is 25%:75%, the amount by weight of the alloyed metal is 10% and the amount by weight of the non-alloyed metal is 30%. Therefore, the weight ratio of carbon particles to the alloyed metal is 6:1, the weight ratio of carbon particles to non-alloyed metal is 2:1, and the weight ratio of alloyed metal to non-alloyed metal is 1:3. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
As discussed in the rejection of claim 1 above, Yang teaches that when the weight of the alloyed metal is less than 20% based on a total weight of the composite metal compound, only a small increase in energy density of the negative electrode active material is achieved, and when the weight of the alloyed metal is greater than 80%, the lifespan characteristics of the negative electrode active material are degraded [pg. 10]. Yang also teaches that when the content of the composite metal compound compared to the carbon particles is too high, the charge/discharge efficiency and cycle characteristics of the negative electrode active material deteriorate, and when the content of the composite metal compound compared to the carbon particles is too high, the energy density of the negative electrode active material decreases [pg. 11].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the negative electrode material taught by modified Tanaka to include the alloyed metal, non-alloyed metal, and carbon material in a weight ratio within the ranges disclosed by Yang, in order to prevent degradation of the lifespan characteristics, charge/discharge efficiency, cycle characteristics, and energy density of the negative electrode active material. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [see MPEP 2144.05(II)(A)].
Response to Arguments
Applicant's arguments filed 2/2/2026 have been fully considered but they are not persuasive.
In response to applicant’s arguments that Tanaka teaches away from the recited weight ratio of the alloying metal, or first element, to the non-alloying metal, or second element, due to the fact that Tanaka teaches the alloying metal in a larger proportion than recited [Remarks, pg. 7], it is noted that "a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit or otherwise discourage investigation into the invention claimed" UCB, Inc. v. Actavis Labs, UT, Inc., 65 F.4th 679, 692, 2023 USPQ2d 448 (Fed. Cir. 2023) [see MPEP 2145(X)(D)(1)]. A mere difference in the range recited and the range taught by Tanaka does not constitute a “teaching away”, since Tanaka does not criticize, discredit, or discourage the recited range. See also the following case law [MPEP 2144.05(III)(B)] (emphasis added):
Teaching away was not established in In re Geisler, 116 F.3d 1465, 1471, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997) (Applicant argued that the prior art taught away from use of a protective layer for a reflective article having a thickness within the claimed range of "50 to 100 Angstroms." Specifically, a patent to Zehender, which was relied upon to reject applicant’s claim, included a statement that the thickness of the protective layer "should be not less than about [100 Angstroms]." The court held that the patent did not teach away from the claimed invention. "Zehender suggests that there are benefits to be derived from keeping the protective layer as thin as possible, consistent with achieving adequate protection. A thinner coating reduces light absorption and minimizes manufacturing time and expense. Thus, while Zehender expresses a preference for a thicker protective layer of 200-300 Angstroms, at the same time it provides the motivation for one of ordinary skill in the art to focus on thickness levels at the bottom of Zehender’s ‘suitable’ range- about 100 Angstroms- and to explore thickness levels below that range. The statement in Zehender that ‘[i]n general, the thickness of the protective layer should be not less than about [100 Angstroms]’ falls far short of the kind of teaching that would discourage one of skill in the art from fabricating a protective layer of 100 Angstroms or less. [W]e are therefore ‘not convinced that there was a sufficient teaching away in the art to overcome [the] strong case of obviousness’ made out by Zehender.").
As described in the rejection of claim 1 above, it would have been obvious to a person having ordinary skill in the art to modify the negative electrode active material of Tanaka to include the alloying metal and non-alloying metal in a weight ratio within the range disclosed by Yang in order to prevent degradation of the lifespan characteristics, charge/discharge efficiency, cycle characteristics, and energy density of the negative electrode active material, and to discover an optimum range of the weight ratio through routine optimization. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [see MPEP 2144.05(II)(A)]. Tanaka’s teaching of a different weight ratio does not obviate the motivation to combine with Yang, because Tanaka does not criticize, discredit, or discourage the recited range.
Applicant additionally alleges that “the claimed specific combination of materials, ratios, and particle sizes demonstrates criticality and synergy” and that “the combination of Ag with Fe/Cu/Ti/Ni at the specified weight ratio (1:4-1:3) and particle size (150-1,000 nm) leads to an unexpected technical effect in controlling uniform lithium deposition at the interface of an all-solid-state battery [Remarks, pg. 7]. Applicant offers the Examples and Comparative Examples and the data in Table 1 of the instant application as evidence to support this allegation of unexpected results [Remarks, pg. 8]. It is respectfully submitted that there are multiple deficiencies with respect to Applicant’s allegation of unexpected results.
The first overarching issue is that whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." [MPEP 7160.02(d)] (Examiner emphasis). In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See also the following case law [MPEP 716.02(d)]:
In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium);
In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.); and
In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972) (Evidence of nonobviousness consisted of comparing a single composition within the broad scope of the claims with the prior art. The court did not find the evidence sufficient to rebut the prima facie case of obviousness because there was "no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition.")
The objective evidence offered to support the allegation of unexpected results are the experiments as summarized in Table 1. The objective evidence of Table 1 compared to the claims is summarized by the Examiner below:
Entity
Evidence (Table 1)
Claim
Carbon material
Carbon black
“amorphous carbon”
Second element
Iron, copper, or titanium
“iron, copper, titanium, or nickel”
Average particle size of the second element
65 nm to 75 nm, 800 nm, or 70 nm
“150 nm to 1,000 nm”
Weight percentages of the amorphous carbon, first element, and second element
60 wt%, 75 wt%, or 80 wt% of the amorphous carbon; 10 wt%, 12.5 wt%, or 13.3 wt% of the first element; 30 wt%, 12.5 wt%, or 6.7 wt% of the second element
“50 wt% to 90 wt% of the amorphous carbon, 5 wt% to 20 wt% of the first element, and 5 wt% to 40 wt% of the second element”
Weight ratio of the first element to the second element
1:3, 1:1, 1:0.5
“1:4 to 1:3”
Thus, as summarized above, the evidenced offered to support the allegation of unexpected results is not commensurate in scope with the claim in terms of at least the five components used in the method as outlined above. For example, in the case law of In re Grasselli cited above, the evidence of experiments limited to sodium were considered insufficient to rebut the prima facie case of obviousness because the claims were directed to catalysts containing an alkali metal (sodium being a species of the genus alkali metal of which there are only six alkali metals). Likewise, in terms of rebutting a prima facie case of obviousness on the basis of unexpected results, the single species of carbon black does not provide sufficient evidence for the claimed genus of “amorphous carbon”; the iron, copper, and titanium of the second element do not provide sufficient evidence for the claimed second element which may also be nickel.
As to the material including “50 wt% to 90 wt% of the amorphous carbon, 5 wt% to 20 wt% of the first element, and 5 wt% to 40 wt% of the second element”, the evidence offered to support only provides examples for three different points within each of those ranges. As noted in the case law of In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980), the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Thus the evidence offered does not support the ranges as claimed. For example, do the unexpected results occur at 50 wt% of amorphous carbon, 10 wt% of the first element, and 40 wt% of the second element, or at 90 wt% of amorphous carbon, 5 wt% of the first element, and 5 wt% of the second element? The answer is not clear as there is only three data points within the entire claimed ranges. Additionally, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Two points outside of the claimed ranges (Comparative Examples 1 and 6) are not “a sufficient number of tests” outside the claimed range to show criticality of the range.
Similarly, regarding “the weight ratio of the first element to the second element is in a range of 1:4 to 1:3”, the evidence offered to support does not provide sufficient evidence to see if the results occur over the entire claimed range, nor a sufficient number of tests inside and outside the claimed range. The Examples in Table 1 only provide data for one weight ratio within the claimed range (1:3), and the Comparative Examples only provide data for one weight ratio outside the claimed range (1:1).
Lastly, regarding “an average particle size (D50) of the second element is in a range of 150 nm to 1,000 nm”, the evidence offered to support does not provide sufficient evidence to see if the results occur over the entire claimed range, nor a sufficient number of tests inside and outside the claimed range. Notably, only two of the Examples provide data for a particle size of the second element within the claimed range (Examples 4-5, 800 nm), while Examples 1-3 and 6-9 all have a particle size of the second element outside the claimed range (< 150 nm). Furthermore, the evidence in Table 1 does not provide a sufficient number of tests outside the claimed range. For example, none of the Comparative Examples have a particle size of the second element greater than 1,000 nm, or between 80 nm and 150 nm.
As such, the examiner does not find the objective evidence offered to support the allegation of nonobviousness in terms of unexpected results commensurate in scope with the claims which the evidence is offered to support [MPEP 716.02(d)].
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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/M.F.O./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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