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 .
Status of Claims
Claims 1-11 are pending.
Claims 6-9 and 11 have been withdrawn.
Claims 3-5 are amended.
Status of Amendment
The amendment filed on November 3rd, 2025 has been considered but does not place the application in condition for allowance.
Status of Objections and Rejections Pending Since the Office Action of July 30th, 2025
The objection to the abstract is withdrawn in view of the Applicant's amendment.
The 112(b) rejections of claims 3-5 are withdrawn in view of the Applicant's amendment.
The 103 rejections of claims 1-5 and 10 are maintained.
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.
Claim(s) 1-5 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao (CN 105576185 A) in view of Kim (US 2020/0243848 A1) and Mason (US 10,424,786 B1).
Regarding claims 1-5, Zhao teaches a negative electrode comprising a negative active material layer comprising a silicon-carbon composite active material (as required by claim 2; [00012]) and carbon nanotubes [00015]. Zhao continues to teach that the silicon-carbon composite is 80% to 99.5% by weight of the total negative active material layer [000013] which overlaps with the range of 95% to 99.99% recited within claim 4. Zhao continues to teach that the negative active material layer is comprised of carbon nanotubes with a weight percentage between 0% and 15% [00013], which overlaps with the range 0.01% - 5% recited within claim 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. 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).
Zhao is silent on the surface area of the carbon nanotubes. Kim is analogous art to Zho because both teach the usage of carbon nanotubes. Kim teaches that using carbon nanotubes with a surface area in the range of 100 m2/g to 1000 m2/g allows them to “efficiently form crosslinking between the silicon-based materials or between the silicon-based material and the current collector during the shrinking of the silicon-based material. Thus, it is possible to retain conductivity and to improve cycle characteristics of a lithium secondary battery” [0051]. Therefore, 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 Zhao’s carbon nanotubes with the dimensions taught by Kim in order to retain conductivity and improve cycle characteristics of a lithium battery. Furthermore, the range taught by Kim overlaps with the claimed range of 600 m2/g to 1000 m2/g, as described by the compound inequality designated as Equation 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. 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).
Zhao is also silent on the surface area of the silicon-carbon composite particle. Mason is analogous art to Zhao because both teach the usage of silicon-based materials in batteries. Mason teaches the usage of a silicon-carbon composite active material with a surface area in the range of 1 m2/g to 25 m2/g (column 16, lines 36 and 37). Mason continues to teach that having a surface area in this range “minimizes the formation of solid electrolyte interphase (SEI) layers at the surface of the composite particles” and to prevent an “unacceptably low charging rate and capacity” (column 16, lines 26-31). Therefore, 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 Zhao’s active material with the surface area taught by Mason to minimize SEI layers and to achieve acceptable charging rates and capacities of said active material. Furthermore, the range taught by Masson overlaps with the claimed range of 1 m2/g to 20 m2/g recited in claim 3. 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).
Further regarding claim 1, since the prior art teaches all of the ranges of the parameters recited in claim 1 – 5, it reasonably follows that their combined disclosures teach an overlapping range for Equation 1. 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). Therefore, 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 values of the parameters A, B, C, and D that satisfy the constraints of Equation 1 in order to achieve an improved performance of a negative active material layer comprising a silicon-based active material and carbon nanotubes.
Regarding claim 10, Zhao, modified by Kim and Mason, teach a rechargeable battery comprising the negative electrode of claim 1, a positive electrode, and an electrolyte (Example 1, [00078] – [00090]).
Response to Arguments
Applicant's arguments filed November 3rd, 2025 have been fully considered but they are not persuasive. The Applicant claims to present unexpected results as shown in their Examples 1-4 as shown in Tables 1 and 2 (included below for convenience).
PNG
media_image1.png
352
678
media_image1.png
Greyscale
PNG
media_image2.png
324
440
media_image2.png
Greyscale
The Applicant argues that the embodiments within Examples 1-4 are different than the embodiments of Zhao modified by Mason and Kim. The Examiner agrees; the mass percent of the silicon-carbon composite in Examples 1-4 have a weight percent of either 11% or 4%. This does not overlap with modified Zhao’s weight percent of 80% - 99.5%. The scope of claim 1, however, has an equation which allows for both of those active material mass percents. The results and validity of one possible embodiment of the claimed invention does not invalidate another embodiment that still satisfies the claimed language. For example, the following set of values are within the range taught by the combination of Zhao, Kim, and Mason and satisfy the conditions of Equations 1 and 2:
A = 95%
B = 3.5
C = 5
D = 610
E must be between 26 and 55; A*B – {(C*D)}/10 = 27.5, which is within that range.
D must be between 600 and 100, inclusive; 610 satisfies that inequality.
Furthermore, the Examples depicted in Table 1 are directed to SWCNT with a weight percent of 0.05%, but the scope of the claims is directed to any kind of carbon nanotube with a weight percent between 0.01 weight percent and 5 weight percent, not explicitly single-walled carbon nanotubes. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(D).
The Applicant continues to argue that the failures of Comparative Examples 4 and 5, despite satisfying the conditions of Equation 1, demonstrate unexpected results. However, Comparative Examples 4 and 5 fail to satisfy the conditions of Equation 2 (600 ≤ D ≤ 1000), so it would be expected that those examples fail.
Lastly, the Applicant argues that Zhao alone does not satisfy Equation 1 or Equation 2. In response to applicant's arguments against the references individually, 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).
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 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niki Bakhtiari can be reached at 571-272-3433. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.B.R./Examiner, Art Unit 1722
/NIKI BAKHTIARI/Supervisory Patent Examiner, Art Unit 1722