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 .
Response to Amendment
Applicant’s amendment filed 05/15/2026 has been entered. Claims 1 and 3-10 are currently pending. Claims 9-10 are new. Claim 1 is amended. Support for the new and amended claims is found in paragraphs 0036-0041 of the examined specification.
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.
Claims 1, 3-4, and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Moon et al. (US 20190233294 A1).
Regarding claim 1, Moon discloses a negative active material for a rechargeable lithium battery (paragraphs 0066, 0225), the negative active material comprising: a composite of porous silicon and amorphous carbon (paragraph 0066, figures 1-2), the composite of porous silicon and amorphous carbon having macropores with a size of 50 nm or more (paragraph 0134, 30-300 nm, substantially overlapping the claimed range), and a porosity of 15 % to 40 % (paragraph 0072, 5 to 60%, overlapping the claimed range), wherein: the amount of amorphous carbon is greater than 40 wt% to 50 wt%, based on a total 100 wt% of the negative active material (paragraph 0164, 3 to 60 parts by weight, overlapping the claimed range), and the porous silicon has a porosity of 5% to 50% (paragraph 0134, 5% to 30%, within 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See also MPEP 2144.05.
Regarding claim 3, Moon discloses the limitations of claim 1. Moon further discloses that the porosity of the composite of porous silicon and amorphous carbon is 20 % to 40 % (paragraph 0072, 5 to 60%, overlapping 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See also MPEP 2144.05.
Regarding claim 4, Moon discloses the limitations of claim 1. Moon further discloses that the macropores have a size of 50 nm to 300 nm (paragraph 0134, 30 nm to 300 nm, substantially overlapping the claimed range).
Regarding claim 6, Moon discloses the limitations of claim 1. Moon further discloses that the composite of porous silicon and amorphous carbon is a heat-treated composite (paragraphs 0025, 0139, 0153).
Regarding claim 7, Moon discloses the limitations of claim 1. Moon further discloses a rechargeable lithium battery (paragraph 0254, figure 15), comprising: a negative electrode including the negative active material (paragraphs 0066, 0225); a positive electrode including a positive active material; and a non-aqueous electrolyte (paragraph 0254).
Regarding claim 8, Moon discloses the limitations of claim 1. Moon further discloses that the porous silicon has macropores with a size of about 50 nm or more (paragraph 0134, 30 nm to 300 nm, substantially overlapping the claimed range).
Regarding claims 9-10, Moon discloses the limitations of claim 1. Claims 9-10 are considered product-by-process claims. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). In this case, Moon discloses the negative active material of claim 1, comprising porous silicon particles (paragraphs 0066, 0134). Therefore, Moon discloses the positively recited structure of the claimed product.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Moon et al. (US 20190233294 A1) in view of Shin (US 20200280062A1).
Regarding claim 5, Moon discloses the limitations of claim 1. Moon is silent regarding that an amount of the porous silicon is 50 wt% to 60 wt%, based on a total of 100 wt% of the negative active material.
Shin discloses a composite negative active material including amorphous carbon and silicon particles (Shin paragraph 0010). Shin further discloses that the silicon particles are included in an amount of 30 wt% to 60 wt% based on a total weight of the negative e active material composite (Shin paragraph 0052), overlapping the claimed range. The reference teaches that when the silicon particles are included within the above-described ranges, battery capacity may be improved (Shin paragraph 0052). Shin and Moon are analogous because they both disclose silicon-carbon negative active materials.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the active material disclosed by Yoo to include the silicon particles in the amount disclosed by Shin. Doing so would improve battery capacity.
Response to Arguments
Applicant's arguments filed 05/15/2026 have been fully considered but they are not persuasive.
Applicant argues that Moon fails to teach a negative active material including porous silicon with the claimed porosity. Applicant asserts that “porous silicon” indicates a particular form of elemental silicon. However, Moon explicitly discloses porous silicon particles with a porosity within the range of the claimed configuration. Therefore, one of ordinary skill in the art would acknowledge that Moon does disclose porous silicon particles with a substantially similar pore size and porosity to those of the claimed configuration (see claims 1 and 8 rejections). Further, The Patent and Trademark Office ("PTO") determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004). See also MPEP 2111. There is no definition in disclosure to exclude the porous silicon of Moon from meeting the claimed configuration. Therefore, one of ordinary skill in the art would acknowledge the porous silicon of Moon as meeting the claimed limitations under their broadest reasonable interpretation.
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.
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/B.T.L./Examiner, Art Unit 1727
/Maria Laios/Primary Examiner, Art Unit 1727
