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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 29th, 2026 has been entered.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Korea on October 7th, 2021. It is noted, however, that applicant has not filed a certified copy of the KR 2021-0133339 application as required by 37 CFR 1.55. Status of Claims
Claims 1-11 are pending.
Claims 6-9 and 11 are withdrawn.
Claim 1 is amended.
Status of Amendment
The amendment filed on May 29th, 2026 has been fully considered but does not place the application in condition for allowance.
Status of Objections and Rejections Pending Since the Office Action of March 6th, 2026
The 103 rejection(s) of claim(s) 1-5 and 10 have been withdrawn in view of the Applicant's amendment.
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:
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 1-5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2023/0038741 A1, henceforth referred to as Kim '741) and further in view of Kim (US 2020/0243848 A1; henceforth referred to as Kim '848).
Regarding claim 1, Kim ‘741 teaches a negative electrode for a lithium battery comprising a current collector and a negative active material layer on the current collector [0133]. The negative active material layer comprises a carbon-based active material (the second carbon-based active material) and a silicon-based active material [0032]. The negative active material layer further comprises conductive material, including carbon nanotubes [0089]. Kim ‘741 teaches that the silicon-based active material should be used with a wt% in the range of 5% - 20% based on a total weight of the negative active material [0046]. Kim continues to teach that the second carbon-based active material should have a wt% between 79% - 94% based on the total weight of the negative active material [0070]. The Examiner notes that these weights are based on the total weight of the negative active material and not the total weight of the negative active material layer. However, Kim ‘741 teaches that anode active material should have a wt% between 90 – 98 wt% [0094] and the first carbon-based active material (the last component of Kim ‘741’s active material) may have a wt% as low as 0.1% [0062]. These facts indicate that the negative active material layer almost completely comprises the silicon-based active material and the second carbon-based active material. Therefore, for the sake of sustaining a rejection based on the overlap in mass compositional ranges between Kim ‘741 and the present claim, Kim ‘741’s wt%s will be interpreted as being based on the entire negative active material layer. As a result, Kim ‘741 teaches a range of mixing ratios of carbon-based active material and silicon-based active material that overlaps with the claimed range of 60:40 wt% - 97:3 wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). See MPEP 2144.05 (I).
Kim ‘741 fails to teach a specific surface area for the carbon nanotubes in the negative active material layer. Kim ‘848 is analogous art to Kim ‘741 because both discuss secondary batteries (Kim ‘741, title; Kim ‘848, title). Kim ‘848 teaches that carbon nanotubes with a specific surface area in the range of 100 – 1000 m2/g “efficiently form crosslinking between the silicon-based materials” in an active material layer [0051]. This overlaps with the claimed range of 600 – 1000 m2/g. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). See MPEP 2144.05 (I). Furthermore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to use carbon nanotubes with the specific surface area taught by Kim ‘848 in the negative active material layer of Kim ‘741 to ensure that the silicon-based active material particles are efficiently crosslinked together.
Kim ‘741, modified by Kim ‘848, teaches ranges of the properties of the variables in the claimed inequalities. “A” corresponds to the wt% of the silicon-based active material, “B” corresponds to the specific surface area of the silicon-based active material, “C” corresponds to the wt% of the carbon nanotubes, “D” corresponds to the specific surface area of the carbon nanotubes, and the quantity “E” that corresponds to A*B – {(C*D)/10} must have a value between 26 and 55. “D” must also be between 600 and 1000, inclusive. Below are a set of values for these equations that satisfy the claimed inequalities that fall within the ranges taught by Kim ‘741 and Kim ‘848.
“A” = 10%
“B” = 4 m2/g [0033]
“C” = 0.1%
“D” = 600 m2/g
“E” must be between 26 and 55; A*B – {(C*D)}/10 = 34, which is within that range.
Therefore, the ranges taught by Kim ‘741, modified by Kim ‘848, render the claimed inequalities obvious in view of the prior art.
Regarding claim 2, Kim ‘741 teaches that the silicon-based active material may be a silicon-carbon composite [0042].
Regarding claim 3, Kim ‘741 teaches that the specific surface area of the silicon-based active material may be in the range of 0.5 m2/g – 5 m2/g [0033], which overlaps with the claimed range of 1 m2/g – 20 m2/g. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). See MPEP 2144.05 (I).
Regarding claim 4, Kim ‘741 teaches that the total amount of negative active material in the negative active material layer may be between 90 wt% - 98 wt% [0094], which overlaps with the claimed range of 95 wt% - 99.99 wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). See MPEP 2144.05 (I).
Regarding claim 5, Kim ‘741 fails to teach a range of the amount of carbon nanotubes in the negative active material layer, but provides an example of a negative electrode that has carbon nanotubes with a wt% of 0.1% [0138]. Alternatively, Kim ‘848 teaches that wt% of carbon nanotubes used in a negative active material layer should be in the range of 0.1 – 2 wt% in order to “retain conductivity between the silicon-based active materials during the shrinking of the silicon-based active material and to improve the binding ability of the negative electrode active material” ([0052] and [0054]). This range overlaps with the claimed range of 0.01 wt% - 5 wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). See MPEP 2144.05 (I). Furthermore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to use carbon nanotubes with the wt% taught by Kim ‘848 to improve the binding ability of the negative active material.
Regarding claim 10, Kim ‘741, modified by Kim ‘848, teaches a secondary battery comprising the negative electrode of claim 1 [0133], a positive electrode [0135], and an electrolyte [0136].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5 and 10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kamo (US 2016/0240843 A1) teaches a negative active material layer comprising both a carbon-based active material [0068] and a silicon-based active material [0030] with mass compositional ranges that overlap with the newly amended limitation of “a mixing ratio of the carbon-based active material and the silicon-based active material is 60:40 wt% to 97:3 wt% ([0064] and [0135]). Kamo continues to teach a range of specific surface area of the silicon-based material that overlaps with the range recited in claim 2 [0131].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN K BLACKWELL-RUDASILL whose telephone number is (571)270-0563. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m.
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/R.B.R./Examiner, Art Unit 1722
/NIKI BAKHTIARI/Supervisory Patent Examiner, Art Unit 1722
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