DETAILED ACTION
Status of Claims
Claims 1-2, 4-6, 8 and 11-27 are pending, wherein claim 1 is amended and claims 16-23 were previously withdrawn. Claims 1-2, 4-6, 8, 11-15 and 24-27 are being examined on the merits in this office action.
Remarks
Applicant’s amendments and arguments have been entered. A reply to the Applicant’s remarks/arguments is presented after addressing the claims.
Any rejections and/or objections made in the previous Office Action and not repeated below, are hereby withdrawn in view of Applicant’s amendments or/and arguments.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. References cited in the current Office action can be found in a prior Office action. Reference not previously cited can be found per the attached PTO-892 for this Office action.
Claim Interpretations
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The instant invention (including paragraph [0154] pointed at by the Applicant) does not clearly define the term “silicon complex oxide” as recited in claim 1, thus an ordinary meaning of the term is applied during the examination.
The term “silicon complex oxide” in the limitation “silicon-silicon complex oxide” in claim 1 has the following ordinary meaning:
A silicon complex oxide can refer to various materials, including silica (silicon dioxide, SiO₂), which is a simple oxide but a complex material with different structures like quartz and opal. More broadly, it can mean intricate compounds of silicon and oxygen that differ from simple silica, such as the silicate minerals that form the Earth's crust. It can also refer to complex functional oxide nanomaterials that are integrated with silicon, offering unique properties like high-temperature superconductivity for advanced electronic devices. (google: “silicon complex oxide”).
Claim Rejections - 35 USC § 103
Claims 1-2, 4-6, 8, 11-15 and 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Oh et al. (US 20180269475 A1, hereafter Oh) in view of Ay et al. (US 20200006759 A1, hereafter Ay) and Oh et al. (US 20200295352 A1, hereafter Oh-II).
Regarding claim 1, Oh teaches a silicon-silicon complex oxide-carbon composite having a core-shell structure, wherein the core comprises silicon, a silicon oxide compound, and magnesium silicate (See, at least, [0017]-[0019]) and the shell comprises a carbon layer (“cladding the surface with a carbon material”, [0017]). The said magnesium silicate includes MgSiO3 and Mg2SiO4 ([0017]-[0019]).
Oh is silent as to the claimed span value according to the Equation 1 being in the range of 0.6 to 1.1.
Ay, however, discloses a similar core-shell structure used for a negative electrode, wherein the core-shell composite particles have a scan value in the range of 0.4 to 2.5 based on (D90-D10)/D50 ([0083]). This inventive design of the core-shell composite brings about many advantageous effects, such as improved electrochemical behavior, high volumetric capacities, improved cycling stability, greatly reduced SEI in lithium-ion batteries, and advantageous mechanical properties (e.g., [0109], [0112]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have incorporated the teachings of Ay into Oh such that the silicon-silicon complex oxide-carbon composite particles of Oh satisfy a span value of 0.4 to 2.5 based on (D90-D10)/D50 in order to achieve benefits stated above. As a result, the claimed range of 0.6 to 1.1 overlaps or lies inside that of 0.4 to 2.5. 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).
Oh in view of Ay further teaches the composite may have a D50 of 7.66 µm and a D90 of 11.52 µm in Ex. 1d (Table 1, Ay). However, one of ordinary skill in the art would readily appreciate that the D50 being 7.66 µm and D90 being 11.52 µm do not have to be limited in Ex. 1d because (D90-D10)/D50 is adjustable from 0.4 to 2.5. When D90 is 11.52 µm, D50 is 7.66 µm and (D90-D10)/D50 is from 0.4 to 2.5, the D10 would be less than 8.5 µm (i.e., from (D90-D50×2.5) to (D90-D50×0.4): 11.52-7.66×2.5=-7.63 to 11.52-7.66×0.4=8.5). As a result, the claimed D10 range of 2.0 µm to 3.5 µm overlaps or lies inside the prior art’s D10 range of less than 8.5 µm. 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). The upper limit of D90 as claimed, 10.0 µm, is close to 11.52 µm of D90 of Ay. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. The claimed range and prior art range does not overlap but are close enough that one skilled in the art would have expected them to have the same properties. See MPEP § 2144.05 (I).
Also note that changing particle sizes involve merely ordinary capabilities of one skilled in the art and one can readily arrive at the claimed limitations. In the absence of unexpected results or evidence that the claimed range is critical, the ranges as claimed are not patentably distinguishable from the prior arts.
Oh in view of Ay teaches the silicon-silicon complex oxide-carbon composite, but is silent as to the claimed number ratio of oxygen atoms to silicon atoms (O/Si).
Oh-II discloses a similar composite, wherein the composite has a number ratio of O/Si being in the range of 0.5 to 2 ([0024]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have employed a composite having a number ratio of O/Si being in the range of 0.5 to 2, as taught by Oh-II, since the use of known technique to improve similar devices (method, or products) in the same way is prima facie obvious (MPEP § 2143). The claimed range of 0.45 to 1.2 overlaps that of 0.5 to 2. 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).
Oh in view of Ay and Oh-II further teaches the content of magnesium (Mg) in the silicon-silicon complex oxide-carbon composite is in the range of 2% to 20% by weight based on the total weight of the silicon-silicon complex oxide-carbon composite ([0022], Oh). The range of 2% to 15% by weight as claimed “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
The limitations recited in the last paragraph of claim 1 represent characteristics or properties of the magnesium silicate as claimed. Since Oh as modified teaches the same magnesium silicate as claimed. The claimed characteristics or properties as claimed are necessarily present. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Notwithstanding this, Oh as modified does teach the XRD characteristics as recited in the last paragraph of claim 1 (See [0045] and Fig.3 of Oh).
Regarding claims 2 and 4, Oh in view of Ay and Oh-II teaches the silicon-silicon complex oxide-carbon composite of claim 1, wherein the composite may have a D50 of 7.66 µm, a D10 of 4.91 µm, and a D90/D10 of about 2.35 (i.e., 11.52/4.91). See Table 1 of Ay.
Regarding claim 5, Oh in view of Ay and Oh-II teaches the silicon-silicon complex oxide-carbon composite of claim 1, wherein the silicon is in a crystalline form having a crystallite size of 1 nm to 25 nm ([0018], Oh). The range of 2 nm to 20 nm as instantly claimed overlaps or lies inside the range of Oh. 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).
Regarding claim 6, Oh in view of Ay and Oh-II teaches the silicon-silicon complex oxide-carbon composite of claim 1, and further teaches the total silicon (Si) content in the core is about 30% to about 78% by weight based on the total weight of the silicon-silicon complex oxide-carbon composite (the calculation is based on Mg content, carbon content, and C/O ratio recited in the rejections of claim 1). The instantly claimed range of 30% to 80% by weight overlap the above 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).
Regarding claim 8, Oh in view of Ay and Oh-II teaches the silicon-silicon complex oxide-carbon composite of claim 1, wherein the silicon oxide compound is SiOx, wherein 0<x<2 ([0018], Oh).
Regarding claim 11, Oh in view of Ay and Oh-II teaches the silicon-silicon complex oxide-carbon composite of claim 1, wherein the carbon layer comprises graphene ([0025], Oh).
Regarding claim 12, Oh in view of Ay and Oh-II teaches the silicon-silicon complex oxide-carbon composite of claim 11, and Oh-II discloses a similar composite structure having a carbon layer containing graphene and graphite ([0027]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to further include graphite, as taught by Oh-II, in the carbon layer of Oh in order to obtain a sufficient conductivity ([0025], Oh-II). Note also that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP § 2144.07.
Regarding claim 13, Oh in view of Ay and Oh-II teaches the silicon-silicon complex oxide-carbon composite of claim 1, wherein the content of carbon (C) in the carbon layer is 1% to 20% by weight based on the total weight of the silicon-silicon complex oxide-carbon composite ([0023], Oh). The instantly claimed range of 2% to 30% overlaps that of 1% to 20%. 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).
Regarding claim 14, Oh in view of Ay and Oh-II teaches the silicon-silicon complex oxide-carbon composite of claim 1, wherein the carbon layer has a thickness of 5 nm to 100 nm ([0024], Oh). The instantly claimed range of 1 nm to 300 nm overlaps of 5 nm to 100 nm. 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).
Regarding claim 15, Oh in view of Ay and Oh-II teaches the silicon-silicon complex oxide-carbon composite of claim 1, wherein the silicon-silicon complex oxide-carbon composite has a specific gravity of 2.3 g/cm3 to 3.2 g/cm3 ([0026], Oh) and a specific surface area of 1 m2/g to 40 m2/g ([0028], Oh). The instantly claimed ranges overlap or lie inside the above range of Oh, respectively. 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).
Regarding claims 24-27, Oh in view of Ay and Oh-II teaches the silicon-silicon complex oxide-carbon composite of claim 1, and further teaches a lithium secondary battery comprising a negative electrode active material comprising the silicon-silicon complex oxide-carbon composite of claim 1 ([0039]-[0041], Oh). The negative electrode material may further comprise a carbon-based negative electrode material ([0040], Oh) in addition to the silicon-silicon complex oxide-carbon composite, wherein the latter may be in an amount of 73% by weight based on the total weight of the negative electrode active material ([0092], Oh).
Response to Arguments
Applicant's arguments filed on May 21, 2026 have been fully considered but they are not persuasive.
Applicant's arguments are based on the claims as amended. The amended claims have been addressed in the new rejections above. In addition:
Applicant’s arguments with respect to the alleged “criticality” of the claimed range of 0.6 to 1.1 are not persuasive, at least because the data in Table 1 of the instant invention does not show the span value, defined by (D90-D10)/D50, is the only variable that may affect the properties. In other words, there is no evidence to demonstrate that it is the span value, rather than other variables such as D90, D50, D10 or/and Dmax that causes the change of properties.
In the present Table 1, no clear trend can be observed for demonstrating the claimed range of 0.6 to 1.1 is critical. For example, the span value of C. Ex. 2Ex. 2, 0.91, which is outside the claimed range, does not show significant deterioration in properties. Also, there is no data that is outside the lower side of the claimed range.
Likewise, no clear trend can be observed for demonstrating the claimed range of D90, since other variables, such as D10, D50, Dmax, or/and Span value are also changing (not fixed).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHONGQING WEI whose telephone number is (571)272-4809. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727
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