DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 Jan. 7, 2026 has been entered.
Status of Claims
Claims 1-2, 4-6, and 8-27 are pending, wherein claim 1 is amended and claims 16-23 are withdrawn. Claims 1-2, 4-6, 8-15 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Any rejections and/or objections made in the previous Office Action and not repeated below, are hereby withdrawn in view of Applicant’s amendments or/and arguments.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.
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, 13-15 and 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (US 20180342757 A1, hereafter Choi) in view of Ay et al. (US 20200006759 A1, hereafter Ay) and Oh et al. (US 20200295352 A1, hereafter Oh)
Regarding claim 1, Choi teaches a silicon-silicon complex oxide-carbon composite having a core-shell structure (See, at least, Fig. 1), wherein the core comprises silicon, a silicon oxide compound, and magnesium silicate ([0031]-[0034], [0041]-[0043]) and the shell comprises a carbon layer ([0046]: “first surface layer 112 may contain carbon”).
Choi 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 Choi such that the silicon-silicon complex oxide-carbon composite particles of Choi 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).
Choi 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 D90 of 11.52 µm reads on the D90 range as claimed. 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). 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.
Choi 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 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, 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).
Regarding claims 2 and 4, Choi in view of Ay and Oh 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, Choi in view of Ay and Oh teaches the silicon-silicon complex oxide-carbon composite of claim 1, wherein the silicon is in an amorphous form (See, at least, claim 6 of Choi).
Regarding claim 6, Choi in view of Ay and Oh teaches the silicon-silicon complex oxide-carbon composite of claim 1, and further teaches the weight of magnesium silicate in the composite can be adjusted between 1% to 50 wt% ([0045], Choi). The adjustment of magnesium silicate would necessarily cause the content of silicon to change. Thus, one of ordinary skill in the art would have readily arrived at the claimed content of silicon by adjusting the content of magnesium silicate through routine experimentations.
Regarding claim 8, Choi in view of Ay and Oh teaches the silicon-silicon complex oxide-carbon composite of claim 1, wherein the silicon oxide compound is SiOx, wherein 0<x<2 ([0032], Choi).
Regarding claim 9, Choi in view of Ay and Oh teaches the silicon-silicon complex oxide-carbon composite of claim 1, wherein the content of magnesium (Mg) in the silicon-silicon complex oxide-carbon composite is 0.34% to 17% (calculation based on 1-50% wt% in [0045] and Mg2SiO4 in [0042] of Choi) by weight based on the total weight of the silicon-silicon complex oxide-carbon composite ([0045], Choi).
Regarding claim 10, Choi in view of Ay and Oh teaches the silicon-silicon complex oxide-carbon composite of claim 1, and the instantly claimed limitations represent properties or characteristics of the magnesium silicate. Since Choi in view of Ay teaches the magnesium silicate as claimed, the claimed properties or characteristics are necessarily present. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01.
Regarding claim 11, Choi in view of Ay and Oh teaches the silicon-silicon complex oxide-carbon composite of claim 1, wherein the carbon layer comprises graphene (0047], Choi).
Regarding claim 12, Choi in view of Ay and Oh teaches the silicon-silicon complex oxide-carbon composite of claim 11, and Oh 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 included graphite, as taught by Oh, in the carbon layer of Choi in order to obtain a sufficient conductivity ([0025]). 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, Choi in view of Ay and Oh teaches the silicon-silicon complex oxide-carbon composite of claim 1, wherein the content of carbon (C) in the carbon layer is about 1.33% to 49.0% by weight (calculation based on teachings in [0054], Choi) based on the total weight of the silicon-silicon complex oxide-carbon composite. The instantly claimed range of 2% to 30% overlaps or lies inside that of 1.33% to 49.0%. 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, Choi in view of Ay and Oh teaches the silicon-silicon complex oxide-carbon composite of claim 1, wherein the carbon layer has a thickness of 20 nm to 100 nm ([0054], Choi). The instantly claimed range of 1 nm to 300 nm overlaps of 20 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, Choi in view of Ay and Oh teaches the silicon-silicon complex oxide-carbon composite of claim 1, wherein the silicon-silicon complex oxide-carbon composite has a specific surface area of about 0.5 to 30 m2/g ([0040], Choi). Furthermore, Choi discloses that the porosity of the core of the composite is adjustable between 5% to 90% ([0038]), and therefore one of ordinary skill in the art would readily appreciate the adjustment of the porosity will accordingly lead to an adjustment of specific gravity of the composite because the pore volume varies per mass when the porosity varies. Thus, one of ordinary skill in the art would readily arrive at varied specific gravities including the instantly claimed values by adjusting the porosity as disclosed by Choi.
Regarding claims 24-27, Choi in view of Ay and Oh 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. The negative electrode material may further comprise a carbon-based negative electrode material in addition to the silicon-silicon complex oxide-carbon composite, wherein the latter may be in an amount of 9.58% (calculation based on [0199]) by weight based on the total weight of the negative electrode active material. See [0127], [0133], [0135] and [0199] of Choi.
Response to Arguments
Applicant's arguments filed on Jan. 7, 2026 have been fully considered but they are not persuasive.
1) 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 to demonstrate the “criticality”. In other words, there is no evidence to demonstrate that it is the span value, rather than other variables such as D90, D50 or D10 that cause the change of properties.
2) Applicant argues that “Choi does not disclose the claimed span value”. In response to applicant's arguments against the references individually (herein the Choi reference), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, it is the combination of Choi and Ay, rather than a single reference, that teaches the claimed span value.
3) Applicant’s argument that “the teachings of Ay are inapplicable to Choi’s entirely different particles” is not persuasive, because Ay teaches a similar composite to that as claimed in composition and structure. Note that the rejections are based on 103 prima facie case of obviousness rather than 102 anticipation. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
4) Applicant’s following argument is not persuasive because the argument is not commensurate with the scope of the claims.
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5) As to the argument with respect to D10, please see the above rejection.
6) In response to Applicant’s argument that “Oh merely discloses a broad range of ratios … Oh does not teach or suggest the criticality of the claimed range”, it is noted that the Oh reference does not have to teach “the criticality of the claimed range”. The combination of Choi with Oh has already taught the claimed range of O/Si under 103 prima facie case of obviousness.
Applicant keeps arguing about benefits or advantages of the claimed O/Si ratio. However, it is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice.” De Blauwe, 736 F.2d at 705, 222 USPQ at 196. Here, the conclusory statement in the specification does not suffice.
Conclusion
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/ZHONGQING WEI/
ZHOGNQING WEI, Ph.D.Primary Examiner, Art Unit 1727