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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/06/2026 has been entered.
Response to Amendment
The amendment filed on 07/06/2026 has been entered. Claims 3 and 7 are amended and Claims 3-7 and 23 are pending.
Claim Rejections - 35 USC § 112
Claims 4-5 were rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In the instant case, applicant amended claims 4-5 to remove lithium from the list of possible compounds and since independent claim 3 from which claims 4-5 depends already requires lithium fluoride and lithium carbonate as the second and third materials, claims 4-5 will be examined as if they require an additional compound from the lists as second and third materials in addition to the materials of independent claim 3. It is noted the 35 U.S.C. 112(d) is withdrawn.
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.
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 3, 6-7 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 20140065488 A1), hereinafter "Lee". Lee et al. is analogous prior art to the claimed invention because it pertains to the same field of endeavor, namely negative electrode active materials.
In regard to Claims 3 and 6, Lee et al. discloses a method for manufacturing a negative electrode active material, the method comprising the steps of forming a first mixture by mixing a first material, a second material comprising halogen, and a third material comprising oxygen and carbon; and heating the first mixture (Lee, Abstract, Examples). Lee et al. also discloses wherein the first material comprises graphite (Lee, [0010]), wherein the additional materials comprise a lithium compound which comprises at least one selected from lithium fluoride and lithium carbonate and may reasonably include both (Lee, [0021]) based on properties of the materials and design incentives known to the skilled artisan. Lee et al. further discloses wherein the heating is performed in a reduction atmosphere including nitrogen, argon, hydrogen, or a mixed gas thereof, or under vacuum. (Lee, [0057]).
While Lee does not explicitly disclose the molar ratio of the first material to the second material it is possible to calculate the molar ratio of the carbon (graphite) to the lithium compound (which may reasonably include LiF (Lee, [0021])) using a specific example in Lee et al. wherein 0.025 parts of the lithium compound to 1 part by weight of the carbon is provided and known molar mass is used (65.99 g/mol of lithium compound, 12.011 Carbon) which finds a molar ratio of 1:0.00455 wherein b=.00455 (Lee, Example 3), which anticipates the claimed range.
Next, Lee et al. discloses after heat treatment the lithium compound decomposes and is present in the particle surface in the form of lithium oxide (Li.sub.2O), lithium fluoride (LiF), and lithium carbonate (Li.sub.2CO.sub.3) (Lee, [0063]) and a specific example wherein a region comprising oxygen is detected on a particle surface of the negative electrode active material (Lee, [0103, 0111]). While Lee et al. is silent as to the EDX analysis, Lee discloses XRD analysis and the presence of the species on the surface of the particles due to the lithium compounds decomposition, which would necessarily also be detectable under EDX analysis as well.
Lastly, While Lee disclose a lithium compound mixed with the carbon material wherein the lithium compound may be provided with a second and third material of lithium fluoride and lithium carbonate (Lee, [0021]) and that the combination may be included in an amount of about 0.1 to about 50 parts by weight based on 100 parts by weight of the spherically shaped natural graphite particles (Lee, [0022]), it is silent as to the molar ratio between the two or more compounds when combined as the lithium compound. However, the skilled artisan of Lee would have to provide the compounds in some measured amount and an obvious ratio to try would be a 50:50 molar mix of LiF and Li2CO3, which falls within the claimed range and converts to a wt% of about 25wt% LiF and 75wt% Li2CO3 as this amounts to nothing more than a result effective variable to be optimized by the skilled artisan which can be achieved without undue experimentation with a reasonable expectation of success.
In regard to Claim 7, Lee et al. discloses the method for manufacturing a negative electrode active material according to claim 3. Lee et al. also discloses specific examples where the heating is performed for 1 hour in a rare gas atmosphere (Lee, Examples 4-7) and wherein the heating is performed at a temperature range of 500 to 2500°C (Lee, [0056]), which overlaps the claimed range. It is also noted that the mixture of LiF and Li2CO3 in an obvious to try molar ratio of 50:50, under these conditions would reasonably undergo a eutectic reaction as disclosed in the current application (Original Specification, [0115]) and as the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) See MPEP 2112.01. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the current invention to have selected the overlapping portion of the ranges disclosed by the reference, as overlapping ranges have been held to be a prima facie case of obvious. 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.
In regard to Claim 23, Lee et al. discloses the method for manufacturing a negative electrode active material according to claim 3. The skilled artisans of Lee et al. must provide the lithium compound in a specific weight ratio with the graphite in order to achieve the desired results and Lee et al. discloses that the lithium compound which may include both lithium carbonate and lithium fluoride is provided in a range of 0.1-50 parts by weight per 100 parts by weight of the graphite first material (Lee, [0066]), which overlaps the claimed range and amounts to nothing more than a result effective variable to be optimized by the skilled artisan. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the current invention to have selected the overlapping portion of the ranges disclosed by the reference, as overlapping ranges have been held to be a prima facie case of obvious. 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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 20140065488 A1), hereinafter "Lee" as applied to Claim 1 above in view of Wu et al. (KCl-Modified Graphite as High Performance Anode Material for Lithium-Ion Batteries with Excellent Rate Performance, J. Phys. Chem. C 2017, 121, 13052−13058), hereinafter “Wu”. Lee and Wu et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely negative electrode active materials.
In regard to Claim 4, Lee et al. discloses the method for manufacturing a negative electrode active material according to claim 3. While Lee et al discloses combining a graphite material with a compound which may include lithium fluoride (Lee, [0021]), it is silent as to the compound comprising other fluorides or chlorides.
Wu et al discloses a beneficial negative electrode active material comprising mixing a first material (graphite) with a potassium chloride which has the advantage of the rate capability of the graphite modified by potassium is enhanced significantly to 269.7 mAh g−1 at 1 C after 200 cycles which effectively solves the main problem to limit the application of the graphite anode for Li-ion batteries in the field of hybrid vehicles (Wu, Abstract). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a potassium chloride with the graphite material as taught in Wu as or with the lithium fluoride in Lee et al. as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Wu and as doing so would amount to nothing more than the use of known material to improve similar devices (methods, or products) in the same way.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 20140065488 A1), hereinafter "Lee" as applied to Claim 1 above in view of Komaba et al. (Alkali carbonate-coated graphite electrode for lithium-ion batteries, CARBON46 (2008) 1184–1193), hereinafter “Komaba”. Lee and Komaba et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely negative electrode active materials.
In regard to Claim 5, Lee et al. discloses the method for manufacturing a negative electrode active material according to claim 3. While Lee et al discloses combining a graphite material with a compound which may include lithium carbonate (Lee, [0021]), it is silent as to the compound comprising other carbonates.
Komaba et al. disclose a beneficial negative electrode active material comprising mixing a first material (graphite) with a carbonate, to include Li, Na and K carbonates which have the advantage of suppressing the irreversible reaction at the initial cycle, improving the rate capability and the reversible discharge capacities increased with adequate capacity retention (Komaba, Abstract). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a sodium or potassium carbonate with the graphite material as taught in Komaba as or with the lithium carbonate in Lee et al. as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Komaba and as doing so would amount to nothing more than the use of known material to improve similar devices (methods, or products) in the same way.
Response to Arguments
Applicant’s arguments with respect to claim 3 have been considered but are not persuasive. While the XRD analysis of Lee detects lithium carbonate (Lee Fig11) as noted in applicant arguments’ and not lithium fluoride as claimed in independent claim 3, Lee separately discloses “When the graphite modified particle obtained through the ultrasonic wave treatment is heat-treated as aforementioned, the lithium compound is decomposed and forms lithium oxide (Li.sub.2O), lithium fluoride (LiF), and lithium carbonate (Li.sub.2CO.sub.3), and external and internal surfaces of the spherically shaped natural graphite particle are further modified into a graphite modified composite particle” (Lee, [0063]) which would also necessarily be detectable with other methods such as EDX analysis. Further, the amendments to Claims 3 and 7 are addressed in the 35 U.S.C 103 rejection above.
Lastly, it is acknowledged that Applicant requests that the double patenting rejection be held in abeyance. However, the double patenting rejection will be withdrawn if and when the requirements are met.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 3 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of copending Application No. 18/004,700 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 3 and 7 of the current application disclose the mixing of identical materials, according to the same method, at the same temperature and duration, under the same atmospheric conditions, to form the same final product as is disclosed in claim 20 of the reference application, with the exception of the simple substitution of silicon for carbon. Both silicon and carbon are standard classes of negative electrode active materials in lithium ion battery technology and would amount to nothing more than an obvious variation to one of ordinary skill in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH MAX OTERO whose telephone number is (571)272-2559. The examiner can normally be reached M-F Generally 7:30-430.
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/K.M.O./Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/Supervisory Patent Examiner, Art Unit 1725
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