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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 18, 2025 has been entered.
Response to Amendment
Applicant’s amendment filed July 18, 2025 has been entered. Claim 1 has been amended to further narrow the range disclosed in the previously presented claim 1. Claims 1-10 remain pending and have been examined on their merits in this office action.
Response to Arguments
Applicant’s arguments filed July 18, 2025 have been fully considered. Applicant argues a) the claimed range of is critical to improving discharge capacity and/or initial efficiency as disclosed in the December 6 Amendment and Declaration and b) the claimed negative electrode is characterized by simultaneously exhibiting improvement in both the initial efficiency and capacity of the battery by mixing SiOx and Lia1Tib1O4, which are in suitable sizes, in an appropriate ratio, as the negative electrode active materials, and that Yoon does not contemplate improving discharge capacity and initial efficiency by controlling a/b to be 0.82 or more and less than or equal to 1.22. Applicant further argues the Examiner’s position that the claimed a/b ratio would have been obvious merely because there are weight of components in Yoon that include values that would fall within the claimed range has been found to be insufficient to establish prima facie obviousness and the mere proximity of the a/b values in the Examples of Yoon are also insufficient to establish prima facie obviousness.
Regarding argument A, Applicant’s affidavit from December 6 and arguments filed July 18, 2025 has been fully considered. Applicant’s arguments filed July 18, 2025 disclose the claimed range of is critical to improving discharge capacity and/or initial efficiency, as Applicant discloses the Comparative Examples 2 and 4 with a/b values below the claimed range exhibited inferior discharge capacity, but not necessarily initial efficiency, and Comparative Example 3 with an a/b value above the claimed range exhibited inferior initial efficiency, but not necessarily discharge capacity. Therefore, it is unclear how the Comparative Examples demonstrate criticality as a/b values below and above the claimed range both achieve Applicant’s solution to improve discharge capacity or initial efficiency.
Regarding argument B, Yoon discloses a range of values for the weight percentages of the silicon particles and titanium-containing oxide, wherein the value of “a” ranges from 0.1 to 50 and “b” ranges from 1 to 20; therefore, the a/b ratio ranges from 0.005 (0.1/20) to 50 (50/1). The range of a/b of 0.005 (0.1/20) to 50 (50/1) as taught by Yoon overlaps with the recited range, a “prima facie” case of obviousness exists (see MPEP 2144.05(l)). Yoon also teaches the negative electrode active material produced with the values of weight percentages provides a high-density negative active material with high output (see e.g., paragraph [0131]). Further, a secondary reference provided in the new grounds of rejection below, Kazuyo, teaches a negative electrode material comprises a composite particle having silicon particles and a matrix containing a lithium titanate compound, wherein the weight ratio of the silicon particles to the lithium titanate compound is 5:95 to 60:40 (see e.g., paragraph [0011]) with good capacity retention during charge/discharge cycles and excellent initial efficiency (see e.g., paragraph [0013]). Kazuyo teaches if there are more silicon particles than this, the volume expansion and contraction of the silicon particles during charging and discharging will increase, reducing the effect of lithium titanate in suppressing the volume expansion and contraction of the composite particles, thus worsening the capacity retention rate due to factors such as reduced adhesion to the current collector (see e.g., paragraph [0031]). Further, Kazuyo teaches if the number of silicon particles is any lower, the effect of silicon particles in improving the negative electrode capacity tends to decrease (see e.g., paragraph [0031]). Kazuyo teaches a preferable weight ratio of silicon particles to the lithium titanate compound is 10:90 to 50:50 (a/b range from 0.11 to 1) (see e.g., paragraph [0031]).
Therefore, Applicant’s argument has been fully considered but is not found persuasive as the disclosed range taught by Yoon overlaps with the claimed range, Yoon does consider capacity retention of the negative electrode (see e.g., Table 1), and further, a secondary reference of Kazuyo teaches a narrower range overlapping with the claimed ranges, wherein the specific range is chosen to optimize the capacity retention rate and initial efficiency.
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 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:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. 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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Yoon et al. (Published U.S. Patent Application US 20150333315 A1), hereinafter referred to as Yoon, in view of Kazuyo et al. (JP 2015079727 A) and Mizuno (Published U.S. Patent Application US 20180013136 A1).
Regarding claim 1, Yoon teaches a negative electrode (“a negative electrode”) (see e.g., Abstract). Yoon teaches a negative electrode active material layer (“a negative electrode active material layer”) disposed on at least one side of the current collector (“wherein the negative electrode active material layer comprises a negative electrode active material”), wherein the negative electrode active material layer includes metal nanoparticles, a carbon-based material, and a titanium-containing oxide (see e.g., paragraph [0006]). Yoon teaches the metal nanoparticles may be oxides such as SiOx (0 <x <2)) (“wherein the negative electrode active material comprises SiOX, wherein 0.5<x<1.8”) (see e.g., paragraph [0016]). Yoon teaches the titanium-containing oxide may include a lithium titanium oxide represented by Formula 1: LixTiyMzOn wherein, in Formula 1, 1≤x≤4, 1≤y≤5, 0≤z≤3, and 3≤n≤12, and M is at least one element selected from the group of Li (see e.g., paragraph [0007]); the lithium titanium oxide overlaps with Applicant’s formula when 1≤x≤1.4, 1.6≤y≤2.2, z = 0, and n = 4, meeting the claim limitation of “Lia1Tib1O4, wherein 0.8≤a1≤1.4, 1.6≤b1≤2.2.”
Yoon teaches an amount of the titanium-containing oxide may be in a range of from about 1 wt % to about 20 wt % of a total weight of the negative active material layer (see e.g., paragraph [0014]) and an amount of the metal nanoparticle may be from about 0.1 wt % to about 50 wt % of a total weight of the negative active material layer (see e.g., paragraph [0018]); using Yoon’s ranges, a is 0.1 to 50 and b is 1 to 20, and, therefore, the ratio a/b ranges from 0.005 (0.1/20) to 50 (50/1) with a possible a/b ratio of 1 is taught by Yoon includes where a is 10 wt % and b is 10 wt% and Examples 1 and 2 provided by Yoon have an a/b of 0.7 (6.65/9.5)).
It has been held in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” and because the weight ratios of Yoon overlap with the recited range, a “prima facie” case of obviousness exists (see MPEP 2144.05(l)).
Further, Kazuyo teaches a negative electrode material for lithium-ion secondary batteries (see e.g., Abstract). Kazuyo teaches the negative electrode material comprises a composite particle having silicon particles and a matrix containing a lithium titanate compound, wherein the weight ratio of the silicon particles to the lithium titanate compound is 5:95 to 60:40 (see e.g., paragraph [0011]). Kazuyo teaches if there are more silicon particles than this, the volume expansion and contraction of the silicon particles during charging and discharging will increase, reducing the effect of lithium titanate in suppressing the volume expansion and contraction of the composite particles, thus worsening the capacity retention rate due to factors such as reduced adhesion to the current collector (see e.g., paragraph [0031]). Further, Kazuyo teaches if the number of silicon particles is any lower, the effect of silicon particles in improving the negative electrode capacity tends to decrease (see e.g., paragraph [0031]). Therefore, Kazuyo teaches a preferable weight ratio of silicon particles to the lithium titanate compound is 10:90 to 50:50 (a/b range from 0.11 to 1) (see e.g., paragraph [0031]).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected a weight ratio of the silicon oxide to the titanium-containing oxide of Yoon to be within a weight ratio of silicon to lithium titanate of 10:90 to 50:50, as taught by Kazuyo, in order to optimize the properties of the negative electrode as if there are more silicon particles than this, the volume expansion and contraction of the silicon particles during charging and discharging will increase, reducing the effect of lithium titanate in suppressing the volume expansion and contraction of the composite particles, thus worsening the capacity retention rate due to factors such as reduced adhesion to the current collector, and if the number of silicon particles is any lower, the effect of silicon particles in improving the negative electrode capacity tends to decrease (see e.g., paragraph [0031]).
Yoon, as modified by Kazuyo, does not explicitly teach the negative electrode wherein the Lia1Tib1O4 has an average particle diameter (D50) of 300 nm to 10 µm.
However, Mizuno teaches a negative electrode (see e.g., Abstract, negative electrode). Mizuno teaches the average primary particle size of LTO is preferably 1 μm or less (see e.g., paragraph [0038]), wherein “average particle size” refers to a particle size (also referred to as “50% volume average particle size” or “median size”) corresponding to a cumulative value of 50% in order from the smallest particle size in a volume particle size distribution which is obtained by using a laser diffraction scattering method (see e.g., paragraph [0039]). Mizuno teaches the particle size of LTO reduces the diffusion time of lithium ions in particles of LTO, increases the input and output speeds of lithium ions, and reduces the overvoltage of lithium ions during input and output, thus realizing high input and output characteristics (see e.g., paragraph [0038]).
Therefore, it would have been obvious before the effective filing date of the claimed invention that one of ordinary skill would modify the average particle diameter of the titanium-containing oxide of Yoon, as modified by Kazuyo, to be 1 μm or less, as taught by Mizuno, in order to reduce the diffusion time of lithium ions in particles of LTO, increase the input and output speeds of lithium ions, and reduce the overvoltage of lithium ions during input and output, thus realizing high input and output characteristics (see e.g., paragraph [0038]).
It has been held in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” and because the average particle size of Mizuno overlap with the recited range, a “prima facie” case of obviousness exists (see MPEP 2144.05(l)).
Regarding claim 2, Yoon, as modified by Kazuyo and Mizuno, teaches the instantly claimed invention of claim 1, as previously described.
Yoon teaches an amount of the titanium-containing oxide may be in a range of from about 1 wt % to about 20 wt % of a total weight of the negative active material layer (see e.g., paragraph [0014]) and an amount of the metal nanoparticle may be from about 0.1 wt % to about 50 wt % of a total weight of the negative active material layer (see e.g., paragraph [0018]); using Yoon’s ranges, a is 0.1 to 50 and b is 1 to 20, and, therefore, the ratio a/b ranges from 0.005 (0.1/20) to 50 (50/1) with a possible a/b ratio of 1 is taught by Yoon includes where a is 10 wt % and b is 10 wt% (“wherein a/b satisfies 0.9 < a/b < 1.1”).
It has been held in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” and because the ranges overlap with the recited range, a “prima facie” case of obviousness exists (see MPEP 2144.05(l)).
Regarding claim 3, Yoon, as modified by Kazuyo and Mizuno, teaches the instantly claimed invention of claim 1, as previously described.
Yoon, as modified by Kazuyo and Mizuno, does not explicitly teach the negative electrode wherein the SiOx, has an average particle diameter (D50) of 4 µm to 12 µm.
However, the average particle size of SiO is preferably 1 μm to 50 μm and more preferably 5 μm to 30 μm and may be, for example, 10 μm to 20 μm (see e.g., paragraph [0043]) in order to have an average particle size of the silicon oxide equal to or more than that of LTO (see e.g., paragraph [0043]) to realize the high input and output characteristics (see e.g., paragraph [0038]).
Therefore, it would have been obvious before the effective filing date of the claimed invention that one of ordinary skill would modify the average particle diameter of the silicon oxide of Yoon, as modified by Kazuyo, to be 1 μm to 50 μm, as taught by Mizuno, in order to have an average particle size of the silicon oxide equal to or more than that of LTO (see e.g., paragraph [0043]) to realize the high input and output characteristics (see e.g., paragraph [0038]).
It has been held in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” and because the ranges overlap with the recited range, a “prima facie” case of obviousness exists (see MPEP 2144.05(l)).
Regarding claim 4, Yoon, as modified by Kazuyo and Mizuno, teaches the instantly claimed invention of claim 1, as previously described.
Yoon teaches an amount of the metal nanoparticle may be from about 0.1 wt % to about 50 wt % of a total weight of the negative active material layer (“wherein the SiOx, is present in an amount of 1 wt% to 28 wt% in the negative electrode active material layer”) (see e.g., paragraph [0018]).
It has been held in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” and because the ranges overlap with the recited range, a “prima facie” case of obviousness exists (see MPEP 2144.05(l)).
Regarding claim 5, Yoon, as modified by Kazuyo and Mizuno, teaches the instantly claimed invention of claim 1, as previously described.
Yoon teaches an amount of the titanium-containing oxide may be in a range of from about 1 wt % to about 20 wt % of a total weight of the negative active material layer (“wherein the Lia1Tib1O4 is present in an amount of 1 wt % to 58 wt % in the negative electrode active material layer”) (see e.g., paragraph [0014]).
It has been held in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” and because the ranges overlap with the recited range, a “prima facie” case of obviousness exists (see MPEP 2144.05(l)).
Regarding claim 6, Yoon, as modified by Kazuyo and Mizuno, teaches the instantly claimed invention of claim 1, as previously described.
Yoon teaches an amount of the titanium-containing oxide may be in a range of from about 1 wt % to about 20 wt % of a total weight of the negative active material layer (see e.g., paragraph [0014]) and an amount of the metal nanoparticle may be from about 0.1 wt % to about 50 wt % of a total weight of the negative active material layer (see e.g., paragraph [0018]); therefore, the possible range of of the SiOx and the Lia1Tib1O4 would 1.1 wt% to 70 wt%, meeting the claim limitation of “wherein, in the negative electrode active material, a total amount of the SiOx and the Lia1Tib1O4 is in a range of 2 wt % to 86 wt%.”
It has been held in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” and because the ranges overlap with the recited range, a “prima facie” case of obviousness exists (see MPEP 2144.05(l)).
Regarding claim 7, Yoon, as modified by Kazuyo and Mizuno, teaches the instantly claimed invention of claim 1, as previously described.
Yoon teaches the negative active material layer includes a metal nanoparticle, a carbonaceous material, and a titanium-containing oxide (“wherein the negative electrode active material further comprises a carbon-based negative electrode active material”) (see e.g., paragraph [0006]).
Regarding claim 8, Yoon, as modified by Kazuyo and Mizuno, teaches the instantly claimed invention of claim 7, as previously described.
Yoon teaches an amount of the carbonaceous material may be from about 50 wt % to about 90 wt % of the total weight of the negative active material layer (“wherein the carbon- based negative electrode active material is present in an amount of 10 wt% to 94 wt% in the negative electrode active material layer”) (see e.g., paragraph [0020]).
It has been held in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” and because the ranges overlap with the recited range, a “prima facie” case of obviousness exists (see MPEP 2144.05(l)).
Regarding claim 9, Yoon, as modified by Kazuyo and Mizuno, teaches the instantly claimed invention of claim 7, as previously described.
Yoon teaches the carbonaceous material, graphite, has an average particle diameter of 16 μm (“wherein the carbon- based negative electrode active material has an average particle diameter (D50) of 5 µm to 30 µm”) (see e.g., Example 1 and paragraph [0111]).
Regarding claim 10, Yoon, as modified by Kazuyo and Mizuno, teaches the instantly claimed invention of claim 1, as previously described.
Yoon teaches a lithium battery (“a secondary battery”) (see e.g., paragraph [0068]) comprising the negative electrode of claim 1, a positive electrode (“a positive electrode”) (see e.g., paragraph [0068]), a separator interposed between the positive electrode and the negative electrode (“a separator disposed between the positive electrode and the negative electrode”) (see e.g., paragraph [0068]), and an electrolyte (“an electrolyte”) (see e.g., paragraph [0068]).
Conclusion
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/KATHERINE N HIGGINS/Examiner, Art Unit 1728
/MATTHEW T MARTIN/Supervisory Patent Examiner, Art Unit 1728