DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . If status of the application as subject to 35 U.S.C. 102 and 103 is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/14/2025 has been entered.
Status of Claims
Claims 1-8 & 10-15 are pending in the application. Claims 8 and 11-15 are withdrawn. Claims 1-7 and 9-10 were rejected in the office action mailed 9/16/2025. Applicant cancelled claim 9. Claims 1-7 and 10 are presently examined.
Response to Amendment / Arguments
The amendment filed 11/14/25, in response to the office action mailed 9/16/2025, has been entered.
Applicant’s claim 6 amendment overcame the objection.
Applicant's claim amendments overcame the 35 U.S.C. 102 and 35 U.S.C. 103 rejections; nevertheless, the claims remain rejected under 35 U.S.C. 102 and 35 U.S.C. 103 due to additional prior art.
Applicant’s arguments, regarding the priority claim, have been fully considered but they are not persuasive.
Applicant filed KR1020190171448 on 12/20/2019, then PCT/KR2020/018192 on 12/11/2020. The PCT priority claim to the KR application is proper because it was within 12 months. The due date for filing foreign patent applications, claiming priority to both KR1020190171448 and PCT/KR2020/018192, was 7/20/2022 (31 months after filing KR1020190171448).
Applicant then filed US17787101 on 8/11/2022, more than 31 months after filing KR1020190171448. US17787101 cannot claim priority back to KR1020190171448 because US17787101 was filed more than 31 months after filing KR1020190171448.
Applicant’s effective filing date / earliest priority date is thus the PCT filing date: 12/11/2020.
Priority
Acknowledgment is made of applicant's claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) based upon an application (KR1020190171448) filed in Korea on 12/20/2019. The claim for priority cannot be based on this application because the subsequent USA nonprovisional application was filed more than 31 months thereafter.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The claims are in bold font, the prior art is in parentheses.
Claims 1-2 & 10 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US20150372292A1 (Yokoi).
With regard to claim 1, Yokoi teaches the following claim limitations:
A method of manufacturing a negative active material (paragraphs 58-59) for lithium secondary battery (abstract), comprising:
coating a negative active material precursor containing Si with crude tar (paragraphs 27 & 58-59: coal tar coating layer on Si/SiOx base particles)
Regarding the claim limitation for “crude tar”, the present specification states that “The crude tar refers to coal tar” (page 8, line 3). Yokoi teaches coal tar (paragraph 59).
Claim 1 also recites:
the crude tar contains a low molecular weight component that can be removed by a distillation process in an amount of 20 wt% or less
Yokoi fails to describe the volatile / low molecular weight components in the coal tar. Coal tar, however, has various of such volatiles, which can be removed at an amount of ≤ 20 wt%, depending on the temperature and duration of distillation1,2.
Yokoi also teaches the following claim 1 limitations:
annealing an obtained coating product (paragraph 66: heat-treated at 900° C)…
a content of the crude tar is 2 wt% to 20 wt% with respect to 100 wt% of the negative active material precursor (paragraph 59: coal tar is 5 mass % of the negative electrode active material)
With regard to claim 2, Yokoi teaches the limitations of claim 1 as noted above. Claim 2 recites:
the low molecular weight component has a weight average molecular weight (Mw) of 78 to 128
Yokoi fails to explicitly recite the coal tar chemical composition. Claim 2, however, is merely reciting a molecular weight range of typical crude tar / coal tar composition. Coal tar includes phenol1, which has a molecular weight of 96.
With regard to claim 10, Yokoi teaches the limitations of claim 1 as noted above. Yokoi also teaches the following claim 10 limitation:
the negative active material precursor containing the Si is Si, Si-C composite, Si oxide or combination thereof (paragraphs 27 & 58: Si/SiOx particles)
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The claims are in bold font, the prior art is in parentheses.
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over US20150372292A1 (Yokoi).
With regard to claim 3, Yokoi teaches the limitations of claim 1 as described above. Claim 3 recites:
in the step of the coating the negative active material precursor containing Si with the crude tar, a coating solution prepared by adding the crude tar to a solvent, at a concentration of 50 wt% to 70 wt%, is used
Yokoi teaches 25 wt% coal tar in tetrahydrofuran solvent (paragraph 59). Yokoi’s 25 wt% is outside of the claimed 50-70 wt% range. Increased coal tar concentration would make mixing more difficult, but would reduce drying cost. It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, to adjust the coal tar concentration in the solvent to balance ease of mixing with drying cost.
With regard to claim 4, modified Yokoi teaches the limitations of claims 1 & 3 as described above. Yokoi also teaches the following claim 4 limitation:
the solvent is… tetrahydrofuran… (paragraph 59: tetrahydrofuran)
With regard to claim 5, Yokoi teaches the limitations of claim 1 as described above. Claim 5 recites:
the step of coating with the crude tar is performed by: mixing the negative active material precursor and crude tar, and stirring the mixture at a speed of 50rpm to 100rpm for 10 minutes to 60 minutes
Yokoi fails to teach mixing speed and time. Mixing rpm is commonly adjusted in manufacturing processes based on cost (increased rpm requires more expensive equipment), avoiding damaging the mixture (increased rpm can result damaging components in the mixture), and time (increased rpm reduces manufacturing time). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, to adjust the mixing rpm and time for a balance of cost, avoid damaging the mixture, and reducing mixing time.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over US20150372292A1 (Yokoi), with regard to claim 1, in view of US20190221835A1 (Imaji).
With regard to claim 6, Yokoi teaches the limitations of claim 1 as described above. Yokoi also teaches the following claim 6 limitation:
the step of annealing the obtained coating product is carried out at 800°C to 950°C (paragraph 66: heat-treated at 900° C)
Yokoi fails to teach the following claim 6 limitation, which is taught by Imaji:
the step of annealing the obtained coating product is carried out… for 0.5 hours to 2 hours (paragraph 131: one hour)
Imaji is directed to a method of manufacturing a negative active material (paragraphs 46-49), with high specific capacity (abstract), for a lithium secondary battery (title & paragraph 1). Imaji describes coating silicon with coal tar (paragraphs 47 & 55), then heating / firing this coated silicon (paragraphs 49 & 67-68) at 1100° C for one hour (paragraph 131). Although Imaji teaches heating at 1100° C, instead of the 900° C taught by Yokoi, Imaji provides sufficient guidance for one of ordinary skill in the art to select heating time.
It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, to perform the following heating operation:
heat Yokoi’s coal tar coated Si/SiOx base particles at 900° C, as taught by Yokoi; and
heat Yokoi’s coal tar coated Si/SiOx base particles for one hour, for a negative active material with high specific capacity, as taught by Imaji.
With regard to claim 7, Yokoi teaches the limitations of claim 1 as described above. Yokoi also teaches the following claim 7 limitation:
the step of annealing the obtained coating product is performed by raising a temperature to a final temperature of 950 °C or less (paragraph 66: heat-treated at 900° C)
Yokoi fails to teach the following claim 7 limitation, which is taught by Imaji:
the step of annealing the obtained coating product is performed by raising a temperature… at a temperature increase speed of 2 °C / min to 10 °C / min (paragraph 131: 250° C/h = 4° C/min)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
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/R.G.W./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
1 https://www.atsdr.cdc.gov/toxprofiles/tp85-c4.pdf
2 https://www.ispatguru.com/coal-tar-and-its-distillation-processes/