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 Amendments
The present Action is the first actions on the merits of the RCE filed for case 17/683806 on 04/25/2025.
The status of claims filed on 04/25/2025 are as follows:
Claim 1 is amended by applicant.
Claims 2-10 are original.
Claims 11-12 were previously withdrawn by Applicant 10/05/2024 in response to a restriction requirement and remain withdrawn.
Claims 1-10 were fully considered as amended.
The rejection of claims 1-7 and 9-10 under 35 USC § 103 as obvious over Jang, US 2020/0212426 A1, in view of Horikawa et al., US 2020/0388840 A1, is maintained.
The rejection of claim 8 under 35 USC § 103 as obvious over Jang, US 2020/0212426 A1, in view of Horikawa et al., US 2020/0388840 A1, as applied to claim 1, and further in view of Braun et al., CN 104471752 A, is maintained.
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 1-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Jang, US 2020/0212426 A1 (hereinafter “Jang”) in view of Horikawa et al., US 2020/0388840 A1 (hereinafter “Horikawa”). Jang qualifies as prior art under 35 USC § 102(a)(2) with its effectively filed date of 2 January 2019. Horikawa qualifies as prior art under 35 USC § 102(a)(1) with its prior publication date of 10 December 2020.
Regarding claim 1, Jang discloses an anode active material for a secondary (i.e., rechargeable) battery [title, abstract], said battery comprising:
a core particle (“anode active material (e.g. graphite or Si particles),” ¶ 0003, 0007-0013; “anode particulate,” ¶ 0016-0017; cf. Figs. 3(A)-3(C));
a polymer coating formed on the surface of the core particle (¶ 0021, 0029);
conductive particles formed on the polymer coating (“secondary active particles fully embraced by a polymer coating,” ¶ 0034), said conductive particles having an average particle diameter greater than a thickness of the polymer coating (Example Embodiment 5 and ¶ 0037, 0126, 0139-0140); wherein
the polymer coating includes at least one selected from polyvinylidene fluoride (PVDF), polyacrylonitrile, polyvinyl alcohol, polyacrylamide, polymethyl methacrylate, and polyvinylchloride (i.e., the polymer comprises a carbon precursor material…such as PE, PVC [polyvinylchloride], and PET) [¶ 0029]
Jang is, however, silent regarding the disposition of the conductive particles in an island pattern. However, in the same field of endeavor, Horikawa discloses an electrode active material (i.e., electrode material) [¶ 0020] formed from a base particle (i.e., electrode active substance particle 12) [¶ 0042] coated at least partially with conductive particles (i.e., coating 14 containing a Ti-containing compound) [Id.] arranged in an island pattern (i.e., present in the form of islands (that is to say, scattered)) [¶ 0042; see Fig. 1] on the surface of the substrate particle. Jang and Horikawa are analogous art because both are drawn to electrode active materials comprising substrate particles coated with conductive particles. Therefore, it would have been obvious to a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to provide the conductive particles of Jang in an island pattern to achieve the predictable result of a particle coated with conductive particles in an island suitable for use as an active material for a secondary battery. The skilled artisan would have been motivated to do this because the island pattern is attributed to improvements in low-temperature output characteristics, high-temperature cycle characteristics, and durability against high voltage, as suggested by Horikawa [¶ 0043]. The skilled artisan would further expect the aforementioned benefits to apply equally to an anode active material due to the electrochemical reversibility of secondary cells.
Regarding claim 2, modified Jang discloses all limitations of claim 1. Jang further discloses:
the core particle comprises a graphite-based active material, an amorphous carbon-based material, a silicon-based active material, or a mixture of two or more therefrom (“graphite or Si particles,” ¶ 0003).
Regarding claim 3, modified Jang discloses all limitations of claim 1. Jang further discloses:
the core particle comprises artificial graphite (“artificial (or synthetic) graphite,” ¶ 0003, 0019, 0021).
Regarding claim 4, modified Jang discloses all limitations of claim 1. Jang further discloses:
the thickness of the polymer coating is in a range from 1 nm to 100 nm (“the coating layer thickness is preferably in the range from 1 nm to 20 μm,” ¶ 0037)
The claimed range of 1-100 nm overlaps the prior art range of 1 nm to 20 µm. A prima facie case of obviousness exists where ranges overlap (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)) or are merely close (Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)). See MPEP § 2144.05(I).
Regarding claim 5, modified Jang discloses all limitations of claim 1. Jang further discloses:
the average particle diameter of the conductive particles is in a range from 30 nm to 1 µm (“particles include powder, flakes, beads, pellets, spheres, wires, fibers, filaments, discs, ribbons, or rods, having a diameter or thickness from 2 nm to 20 μm,” ¶ 0044)
The claimed range of 30 nm to 1 µm is contained entirely within the prior art range of 2 nm to 20 µm. A prima facie case of obviousness exists where ranges overlap (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)) or are merely close (Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)). See MPEP § 2144.05(I).
Regarding claim 6, modified Jang discloses all limitations of claim 1. Jang further depicts:
at least some of the conductive particles are inserted into the polymer coating and protrude to an outside from a surface of the polymer coating (Fig. 3A-3C).
Regarding claim 7, modified Jang discloses all limitations of claim 1. Jang further depicts:
at least some of the conductive particles penetrate the polymer coating to contact the core particle (Fig. 3A-3C).
Regarding claim 9, modified Jang discloses all limitations of claim 1. Jang further discloses:
the conductive particles comprise at least one selected from the group consisting of lithium titanate (LTO), Super P, carbon black, acetylene black, Ketjen black, carbon flake, activated carbon, graphene, carbon nanotube, carbon nanofiber and a metal fiber (“conductive filler (e.g., carbon black or carbon nanotube),” ¶ 0003).
Regarding claim 10, modified Jang discloses all limitations of claim 1. Jang further discloses a secondary battery (title, abstract) comprising:
a cathode (¶ 0057) comprising a lithium metal oxide (¶ 0024); and
an anode facing the cathode (¶ 0057)
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Jang, US 2020/0212426 A1 in view of Horikawa et al., US 2020/0388840 A1 as applied to claim 1 above, and further in view of Braun et al., CN 104471752 A (hereinafter “Braun”).
Regarding claim 8, modified Jang discloses all limitations of claim 1. Jang is silent regarding the molecular weight of the polymer coating. However, in the same field of endeavor, Braun discloses a composite particle for use in an anode active material comprising a core particle coated in a polymer (¶ 0018-0053), said polymer having a molecular weight in the range of 100,000 to 3,000,000 g mol-–1 (¶ 0041, 0044). This prior art range overlaps the claimed range of 50,000 or more or 500,000 or less. A prima facie case of obviousness exists where ranges overlap (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)) or are merely close (Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)). See MPEP § 2144.05(I).
Response to Arguments
Applicant's arguments filed 04/24/2025 have been fully considered but they are not persuasive for the reasons outlined below. Note that the use of “first,” “second,” and “third” in the subsequent responses parallel the Applicant’s use of these ordinals in the remarks.
First, Applicant alleges that the coating 14 of Horikawa is not conductive, asserting that “it is well-known that TiO2 (or TinO2n-1 compounds) are non-conductive” and provides a reference confirming that TiO2 has limited conductivity. The Examiner does not disagree that TiO2 has limited conductivity; however, Applicant’s generalization of the non-conductivity of TiO2 to all TinO2n-1 compounds is simply incorrect. Ti3O5, which is a complex of formula TinO2n-1 where n = 3, has been reported to furnish “relatively good electrical conductivity” [Mao et al., J. Mater. Sci. Mater. Electron. 2014, 25, 5153 (attached) at abstract]. Since this formula is clearly stated within Horikawa as desirable [¶ 0033], a skilled artisan would have recognized that the coating 14 of Horikawa can be conductive and therefore is analogous to both the conductive coating of Jang and the instant invention. The Examiner therefore disagrees with Applicant’s assertion that Horikawa “informs nothing” [Remarks filed 04/24/2025 at p. 9] on the conductive particles of Jang.
Second, the Applicant alleges that the carbonized polymer coating of Jang is not flexible because “carbonized materials are generally stiff” [Remarks filed 04/24/2025 at p. 10] and argues that a stiff polymer is contrary to the present invention, citing that “the polymers of the present invention…are selected to provide sufficient flexibility for securing the conductive particles, while suppressing swelling and expansion of the core particle” [Remarks filed 04/24/2025 at p. 10]. However, as set forth in MPEP § 2111.01 (II), claim limitations cannot be imported from the specification. As there is no claim language to exclude carbonized polymers nor to require flexibility of the polymer coating, the selection of the polymers for purposes of flexibility is immaterial to the rejection, and the polymer of Jang meets all limitations of the amended claim language filed 04/24/2025.
Third, the Applicant alleges that Jang teaches away from the present invention. The Examiner points out that a teaching away is not dispositive: “[a] known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use” [MPEP § 2145 (X) (D) (1), citing In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)]. The Court held that a teaching of inferiority does not per se render a claimed invention non-obvious if the disclosure is still useful for the inventor’s purpose [see MPEP § 2145 (X) (D) (1)]. In Example 5 of Jang, both the carbonized (“second experiment”) and non-carbonized (“first experiment”) devices are shown to perform acceptably as batteries. Although the non-carbonized version, which the Applicant alleges is analogous to the instant invention, is shown to be inferior at higher cycle counts, the prior art applied demonstrates that it is still suitable for use as a battery, the same intended use of the present invention. Therefore, the disclosure of Jang can still render obvious the claimed invention.
Applicant’s remarks in re the rejection of claim 8 do not contain any arguments beyond those previously addressed, and the rejection of claim 8 is therefore maintained as proper for the reasons set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeremiah E STEVENS, Ph.D., whose telephone number is (703)756-4651. The examiner can normally be reached Monday to Thursday 07:00 to 17:00 ET.
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/J.S./Examiner, Art Unit 1726
/BACH T DINH/Primary Examiner, Art Unit 1726 05/13/2025
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