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 .
Status of Claims
Claims 1-4, 6-15, 17 and 18 are currently pending.
Claims 1 and 12 have been amended.
Claims 5 and 16 have been canceled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/31/2025 has been entered.
Status of Rejections Pending since the Office Action of 2 October 2025
After further consideration, the 103 rejections over Mason in view of Zhang are maintained in view of Applicant’s argument and amendment. The rejections have been modified to address the newly added limitation.
Rejections of claims 5 and 16 are moot because claims 5 and 16 have been canceled.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 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 considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-3, 8-9 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Mason et al, US10424786B1 (referencing US 20200373561 A1 for citation) and Zhang et al, CN 110729460 A (English translation provided for citation).
Regarding Claim 1, Mason teaches an electrode comprising a particulate material, corresponding to the active layer of the claim, in contact with a current collector [Mason, 0290], wherein the particulate material comprises a porous carbon frame work and a plurality of nanoscale domains of elemental silicon within the pores [Mason, 0024], wherein the porous carbon framework may be either hard or soft carbon framework [Mason, 0067], and the particulate material, comprising the porous carbon framework, may be formed into a slurry [Mason, 0293], that may be formed into a freestanding film or mat [Mason, 0294]. Mason further teaches that thickness of the active layer is 10 µm to 1 mm [0291] overlapping with the claimed 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. 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).
However, Mason is silent to teach on the porous hard carbon framework containing a lithium metal.
Zhang teaches a nano-silicon composite lithium-supplementing negative electrode material for lithium ion batteries, wherein the composite material includes fibrous graphene, nano-silicon and metallic lithium particles deposited inside and on the surface of the graphene [Zhang, 0012].
Zhang and Mason are considered analogous arts in the area of batteries and power storage devices, specifically regarding negative electrodes and their materials.
Therefore, it would have been obvious to a person with ordinary skill in the art, before the effective filing date of the instant application, to modify the material of Mason to include the metallic lithium inside the porous hard carbon framework because such modification would result in a material with decreased dead lithium caused by separation of surface carbon during the battery cycle, and increase lithium supplementation during the battery cycle, and overall improve the initial efficiency, capacity retention, and long-cycle performance of the lithium-ion battery [Zhang, 0039].
Regarding Claim 2, modified Mason teaches the negative electrode plate according to claim 1, wherein the particulate material of the invention, the porous carbon frame work and a plurality of nanoscale domains of elemental silicon, may constitute from 0.5 to 80 wt% of the total dry weight of the electroactive materials composition [Mason, 0280].
Regarding Claim 3, modified Mason teaches the negative electrode plate according to claim 1, but is silent to teach on the total volume of the porous hard carbon framework to a total volume of the silicon nanoparticles being 5:1 to 100:1.
While modified Mason does not explicitly teaches the ratio of the total volume of the porous hard carbon frame work to a total volume of the silicon nanoparticles being 5:1 to 100:1, modified Mason does teach the weight ratio, in v/v, of silicon to the porous carbon framework, to be 43% v/v to 83% v/v [Mason, 0038] and Zhang teaches the mass ratio of the nano-silicon composite, the mass of the graphene, nano-silicon particles and metallic lithium particles to be 1:0.1-5:0.1-0.3 [Zhang, 0013], indicating the ratio of graphene, corresponding to the porous hard carbon framework to the nano-silicon particles to be 1:0.1-5. The minimum ratio of silicon in the porous carbon framework is correlated to the total micropore and mesopore volume [Mason, 0077], to ensure the porous carbon frameworks have higher mesopore fractions are occupied by silicon to a higher extent, to improve the volumetric capacity of the particulate material, this also reduces the about of silicon surface area exposed to the electrolyte and will limit undesirable SEI formation [Mason, 0078], therefore, it can be assumed the total volume of the porous hard carbon framework to a total volume of the silicon nanoparticles is 5:1 to 100:1. There is a finite number of identified predictable solutions for the ratio of the total volume of the porous hard carbon to the silicon nanoparticles, such that the ratio is between 5:1 to 100:1, or that is not. Therefore, absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected from the finite number of identified, predictable solutions disclosed above, wherein the ratio of the total volume of the porous hard carbon to the silicon nanoparticles is between 5:1 to 100:1, and one of ordinary skill in the art would have a reasonable expectation of success in doing so, see MPEP 2143 (E).
Regarding Claim 8, modified Mason teaches the negative electrode plate according to claim 1, wherein the current collector can be made of materials including copper, aluminum, stainless steel, nickel, titanium and sintered carbon [Mason, 0291].
Regarding Claim 9, modified Mason teaches the negative electrode plate according to claim 1, wherein the particulate material of the invention, the porous carbon frame work and a plurality of nanoscale domains of elemental silicon, may constitute from 0.5 to 80 wt% of the total dry weight of the electroactive materials composition [Mason, 0280].
Regarding Claim 12, modified Mason teaches it is widely known to use rechargeable metal-ion batteries in portable electrode devices, such as telephones, laptops and applications in electric or hybrid vehicles [Mason, 0003], wherein the rechargeable metal-ion battery of the invention is preferably a lithium ion-battery [Mason, 0296] comprising an anode with the electrode comprising a particulate material, corresponding to the active layer of the claim, in contact with a current collector [Mason, 0290], wherein the particulate material comprises a porous carbon frame work and a plurality of nanoscale domains of elemental silicon within the pores [Mason, 0024], wherein the porous carbon framework may be either hard or soft carbon framework [Mason, 0067], and the particulate material, comprising the porous carbon framework, may be formed into a slurry [Mason, 0293], that may be formed into a freestanding film or mat [Mason, 0294]. Mason further teaches that thickness of the active layer is 10 µm to 1 mm [0291] overlapping with the claimed 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. 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).
However, Mason is silent to teach on the porous hard carbon framework containing a lithium metal.
Zhang teaches a nano-silicon composite lithium-supplementing negative electrode material for lithium ion batteries, wherein the composite material includes fibrous graphene, nano-silicon and metallic lithium particles deposited inside and on the surface of the graphene [Zhang, 0012].
Zhang and Mason are considered analogous arts in the area of batteries and power storage devices, specifically regarding negative electrodes and their materials.
Therefore, it would have been obvious to a person with ordinary skill in the art, before the effective filing date of the instant application, to modify the material of Mason to include the metallic lithium inside the porous hard carbon framework because such modification would result in a material with decreased dead lithium caused by separation of surface carbon during the battery cycle, and increase lithium supplementation during the battery cycle, and overall improve the initial efficiency, capacity retention, and long-cycle performance of the lithium-ion battery [Zhang, 0039].
Regarding Claim 13, modified Mason teaches the negative electrode plate according to claim 12, wherein the particulate material of the invention, the porous carbon frame work and a plurality of nanoscale domains of elemental silicon, may constitute from 0.5 to 80 wt% of the total dry weight of the electroactive materials composition [Mason, 0280].
Regarding Claim 14, modified Mason teaches the negative electrode plate according to claim 12, but is silent to teach on the total volume of the porous hard carbon framework to a total volume of the silicon nanoparticles being 5:1 to 100:1.
While modified Mason does not explicitly teaches the ratio of the total volume of the porous hard carbon frame work to a total volume of the silicon nanoparticles being 5:1 to 100:1, modified Mason does teach the weight ratio, in v/v, of silicon to the porous carbon framework, to be 43% v/v to 83% v/v [Mason, 0038] and Zhang teaches the mass ratio of the nano-silicon composite, the mass of the graphene, nano-silicon particles and metallic lithium particles to be 1:0.1-5:0.1-0.3 [Zhang, 0013], indicating the ratio of graphene, corresponding to the porous hard carbon framework to the nano-silicon particles to be 1:0.1-5. The minimum ratio of silicon in the porous carbon framework is correlated to the total micropore and mesopore volume [Mason, 0077], to ensure the porous carbon frameworks have higher mesopore fractions are occupied by silicon to a higher extent, to improve the volumetric capacity of the particulate material, this also reduces the about of silicon surface area exposed to the electrolyte and will limit undesirable SEI formation [Mason, 0078], therefore, it can be assumed the total volume of the porous hard carbon framework to a total volume of the silicon nanoparticles is 5:1 to 100:1. There is a finite number of identified predictable solutions for the ratio of the total volume of the porous hard carbon to the silicon nanoparticles, such that the ratio is between 5:1 to 100:1, or that is not. Therefore, absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected from the finite number of identified, predictable solutions disclosed above, wherein the ratio of the total volume of the porous hard carbon to the silicon nanoparticles is between 5:1 to 100:1, and one of ordinary skill in the art would have a reasonable expectation of success in doing so, see MPEP 2143 (E).
Claims 4, 6, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Mason et al, US10424786B1 (referencing US 20200373561 A1 for citation) and Zhang et al, CN 110729460 A (English translation provided for citation) as applied to claim 1 above, in further view of Wang et al, CN 106898753 A (already on the record).
Regarding claim 4, modified Mason teaches on the negative electrode plate according to claim 1, but is silent to teach on the content of the lithium metal in the active material layer being 0.001 to 3 mg/cm2.
Wang teaches a silicon-coated graphene metal lithium composite material that is particularly suitable as a negative electrode material [Wang, 0023], wherein the loading amount of lithium is 1 to 3 mg/cm2 [Wang, 0022].
Wang and Mason are considered analogous arts in the area of negative electrode active materials.
Therefore, it would have been obvious to a person with ordinary skill in the art, before the date
of the instant application, to modify Mason to include the loading amount of lithium taught by Wang because such modification would result in a material that inhibits the formation of dendrites and improves the coulombic efficiency of the cell [Wang, 0029].
Moreover, according to MPEP 2144.05, 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).
Regarding Claim 6, modified Mason teaches the negative electrode plate according to claim 1, but is silent to teach on the strength of the porous carbon framework not being lower than 200 GPa.
While modified Mason does not explicitly teach the strength of the porous carbon framework not being lower than 200 GPa, modified Mason does teach on a particulate material comprises a porous carbon frame work [Mason, 0024], wherein nano-silicon and metallic lithium particles are deposited inside and on the surface of [Zhang, 0012] material, as disclosed by the instant specification wherein the active layer includes a porous carbon framework including silicon nanoparticles and lithium metal located in the porous carbon framework [instant specification, 0007]. Modified Mason teaches the particulate material of the invention may constitute from 0.5 to 80 wt% of the total dry weight of the electroactive materials composition [Mason, 0280], corresponding to the range for volume sum of the porous carbon framework and the silicon nanoparticles as disclosed within the instant specification of 10% to 60% of a total volume of the active layer [instant specification, 0008].
Moreover, Wang teaches the ideal porous array material needs to have chemical stability and a certain mechanical strength [Wang, 0006], therefore, it would be obvious to optimize the strength of the porous carbon framework, such that is not lower than 200 GPa, to allow the material to achieve the most desirable and efficient properties so as to result in a material with sufficient strength to accommodate the volumetric expansion of the silicon without fracturing or degrading the porous carbon framework [Mason, 0048].
According to MPEP 2112.01, Part II, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Therefore, the porous carbon framework of modified Mason should have a strength of not lower than 200 GPA.
Regarding claim 10, modified Mason teaches on the negative electrode plate according to claim 1, wherein the loading amount of lithium is 1 to 3 mg/cm2 [Wang, 0022].
Moreover, according to MPEP 2144.05, 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).
Regarding claim 11, modified Mason teaches on the negative electrode plate according to claim 1, wherein the loading amount of lithium is 1 to 3 mg/cm2 [Wang, 0022].
Moreover, according to MPEP 2144.05, 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).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Mason et al, US10424786B1 (referencing US 20200373561 A1 for citation) and Zhang et al, CN 110729460 A (English translation provided for citation) as applied to claim 1 above, in further view of Wang et al, CN 109994739 A (already on the record), here by known as Wang’39 for clarification.
Regarding Claim 7, modified Mason teaches the negative electrode plate according to claim 1, but is silent to teach on the porosity of the porous carbon framework being 40% to 90%.
Wang’39 teaches the porosity of the first negative electrode structure, which corresponds to the porous carbon framework of the claim, is 30% to 98% [Wang’39, 0019].
Wang’39 and Mason are considered analogous arts in the area of negative electrode active materials.
Therefore, it would have been obvious to a person with ordinary skill in the art, before the date
of the instant application, to modify Mason to include the porosity taught by Wang’39 because such modification would result in a negative electrode plate that has a good energy density, is stable and less prone to damage during the cycle process [Wang’39, 0045].
Moreover, according to MPEP 2144.05, 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).
Claims 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Mason et al, US10424786B1 (referencing US 20200373561 A1 for citation) and Zhang et al, CN 110729460 A (English translation provided for citation) as applied to claim 12 above, in further view of Wang et al, CN 106898753 A (already on the record).
Regarding claim 15, modified Mason teaches on the negative electrode plate according to claim 12, but is silent to teach on the content of the lithium metal in the active material layer being 0.001 to 3 mg/cm2.
Wang teaches a silicon-coated graphene metal lithium composite material that is particularly suitable as a negative electrode material [Wang, 0023],wherein the loading amount of lithium is 1 to 3 mg/cm2 [Wang, 0022].
Wang and Mason are considered analogous arts in the area of negative electrode active materials.
Therefore, it would have been obvious to a person with ordinary skill in the art, before the date
of the instant application, to modify Mason to include the loading amount of lithium taught by Wang because such modification would result in a material that inhibits the formation of dendrites and improves the coulombic efficiency of the cell [Wang, 0029].
Moreover, according to MPEP 2144.05, 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).
Regarding Claim 17, modified Mason teaches the negative electrode plate according to claim 12, but is silent to teach on the strength of the porous carbon framework not being lower than 200 GPa.
While modified Mason does not explicitly teach the strength of the porous carbon framework not being lower than 200 GPa, modified Mason does teach on a particulate material comprises a porous carbon frame work [Mason, 0024], wherein nano-silicon and metallic lithium particles are deposited inside and on the surface of [Zhang, 0012] material, as disclosed by the instant specification wherein the active layer includes a porous carbon framework including silicon nanoparticles and lithium metal located in the porous carbon framework [instant specification, 0007]. Modified Mason teaches the particulate material of the invention may constitute from 0.5 to 80 wt% of the total dry weight of the electroactive materials composition [Mason, 0280], corresponding to the range for volume sum of the porous carbon framework and the silicon nanoparticles as disclosed within the instant specification of 10% to 60% of a total volume of the active layer [instant specification, 0008].
Moreover, Wang teaches the ideal porous array material needs to have chemical stability and a certain mechanical strength [Wang, 0006], therefore, it would be obvious to optimize the strength of the porous carbon framework, such that is not lower than 200 GPa, to allow the material to achieve the most desirable and efficient properties so as to result in a material with sufficient strength to accommodate the volumetric expansion of the silicon without fracturing or degrading the porous carbon framework [Mason, 0048].
According to MPEP 2112.01, Part II, “Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Therefore, the porous carbon framework of modified Mason should have a strength of not lower than 200 GPA.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Mason et al, US10424786B1 (referencing US 20200373561 A1 for citation) and Zhang et al, CN 110729460 A (English translation provided for citation) as applied to claim 12 above, in further view of Wang et al, CN 109994739 A (already on the record), here by known as Wang’39 for clarification.
Regarding Claim 18, modified Mason teaches the negative electrode plate according to claim 12, but is silent to teach on the porosity of the porous carbon framework being 40% to 90%.
Wang’39 teaches the porosity of the first negative electrode structure, which corresponds to the porous carbon framework of the claim, is 30% to 98% [Wang’39, 0019].
Therefore, it would have been obvious to a person with ordinary skill in the art, before the date
of the instant application, to modify Mason to include the porosity taught by Wang’39 because such modification would result in a negative electrode plate that has a good energy density, is stable and less prone to damage during the cycle process [Wang’39, 0045].
Moreover, according to MPEP 2144.05, 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).
Response to Arguments
Applicant's arguments filed on 12/31/025 have been fully considered but they are not persuasive.
Applicant argues that the porous hard carbon framework as claimed is a film structure and structurally different from the porous structure of Mason which is formed inside each composite particles (see page 3 of Remarks).
The Examiner wishes to point out that the porous hard carbon framework of Mason is also applied as a film to a current collector [0291] and thusly reads on the claimed invention.
Applicant argues it would be difficult to combine Zhang and Mason with any reasonable expectation of success.
However, Mason teaches a porous carbon framework with a plurality of nanoscale elemental silicon within the pores [Mason, 0024] and comprising crystalline carbon or amorphous carbon, and may be either or hard carbon [Mason, 0067], wherein Zhang teaches a composite lithium-supplementing negative electrode including fibrous graphene, nano-silicon particles deposited inside and on the surface of the graphene and metallic lithium particles within and on the surface of graphene [Zhang, 0012], and by combine the teaching of the porous carbon framework with the elemental silicon of Mason and the metallic lithium particles within and on the surface of the graphene, which is used as a carrier [Zhang, 0039], as taught by Zhang, a lithium ion battery with an improved efficiency, capacity retention and long-cycle performance [Zhang, 0039], therefore, it would be obvious to modify Mason with Zhang.
Applicant argues Mason teaches there is no to very little silicon located on the external surface of the composite material.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., silicon being located on the external surface of the composite material) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim requires the silicon nanoparticle are located within the porous hard carbon framework, which as stated, Mason teaches preferably the silicon mass is in the composite particles is located substantially or entirely within the pores of the porous carbon framework, as required by the claim.
Applicant’s argument regarding Wang ‘793 with respect to its teaching to the thickness range is now moot, because the new rejection has relied on [0291] of Mason that teaches the thickness of the active layer is 10 µm to 1 mm [0291] overlapping with the claimed 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. 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).
Applicant argues the method of making between the method used in the claimed invention vs the method of making for the prior art.
However, Examiner would like to point out that the current claims are directed to the product, not the method of making, and the argument does not provide any evidence how the method of making disclosed in the instant invention would result in a structurally different end product from the product taught by modified Mason.
Conclusion
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/NIKI BAKHTIARI/Supervisory Patent Examiner, Art Unit 1722
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