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 .
Election/Restrictions
Newly submitted claims 13-15 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons. A restriction requirement under 35 U.S.C. 121 and 372 was made with respect to Group I to Group IV in the office action dated 18 June 2025. Applicant elected Group I, claims 1, 4, and 7-9, drawn to an electrode containing silicon and a graphene compound. Claim 12 was subsequently added to this group.
Newly added Group V, claims 13-15 is drawn to an electrode containing silicon and a graphene compound, where the graphene comprises a vacancy formed in a 7-membered ring, and is fluorine-terminated.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Group I and Group V lack unity of invention because even though the inventions of these groups require the technical feature of an electrode comprising: a particle containing silicon; and a graphene compound, wherein at least part of a surface of the particle is terminated by a functional group containing oxygen, wherein the graphene compound clings to the particle, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Oguni (US 20120308894 A1) and Lee (US 20200194787 A1).
Oguni discloses an electrode (abstract: negative electrode) comprising a particle containing silicon; ([0055] silicon is used as an alloy-based negative electrode material); a graphene compound, ([0017] an alloy based negative electrode material particle … covered with a carbon film including … 1 to 50 graphene layers.) At [0021] Oguni discloses “Needless to say, the graphene net is also in contact with a current collector, thereby binding the current collector and the alloy-based negative electrode material particles. In that case, electricity can also be conducted between the current collector and the alloy.” Because electricity can be conducted from the current collector to the graphene net to the alloy-based negative electrode material particles, the graphene is therefore determined to cling to the active material, meeting the instant claim limitation.
Oguni does not explicitly disclose wherein at least part of a surface of the particle is terminated by a functional group containing oxygen and wherein the graphene compound is graphene comprising at least one carbon atom terminated by a hydrogen atom and at least one a carbon atom terminated by a fluorine atom.
Lee discloses (abstract) an anode material of nano-silicon where the nano-silicon is adsorbed on the multi-layer graphene. At [0011] Lee discloses “Nano - silicon or silicon suboxide (SiO2) is bonded to the multilayer graphene by using the hydroxyl groups to make the multilayer - graphene become a carrier. At [0049] Lee discloses that combining multi-layer graphene with SiOx slows down the volume expansion effect and cracking of Si which are caused by the charging and discharging cycles.
A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to select the hydroxyl bonded nano-silicon or silicon suboxide for the alloy-based negative electrode material particles of Oguni, with a reasonable expectation of achieving the desirable result of slowing down the volume expansion effect and cracking of Si.
The invention of Group I has received an action on the merits for the originally presented invention, therefore this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 13-16 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Status of Claims
Claims 1 and 4 are newly amended. Claims 13-16 are newly added. Claims 2-3, 5-6, 10-11, and 13-16 stand withdrawn. Claims 1, 4, 7-9, 12, and 16 are examined herein. No new matter is included.
Information Disclosure Statement
The information disclosure statement filed 5 September 2025 fails to comply with the provisions of 37 CFR 1.98(a)(4) because it lacks the appropriate size fee assertion. It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
Response to Arguments
Regarding the rejection under 35 USC 103, Applicant argues that Oguni does not teach or suggest graphene comprising at least one carbon atom terminated by a hydrogen atom and a carbon atom terminated by a fluorine atom. This argument is moot in light of a newly cited reference, Zhang.
The provisional non-statutory double patenting rejection is withdrawn in light of Applicant’s claim amendments.
Claim Interpretation
Claim 1 includes the limitation “graphene comprising at least one carbon atom terminated by a hydrogen atom and at least one carbon atom terminated by a fluorine atom in a two-dimensional structure formed with six-membered rings of carbon " Examiner notes that the instant specification does not provide a special definition for "terminating". Absent a special definition, Examiner determines that the broadest reasonable interpretation of this limitation includes at least one hydrogen atom bonded to a graphene sheet and at least one fluorine atom bonded to a graphene sheet.
Claim Objections
Claim 16 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 7. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4, 7-9 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oguni (US 20120308894 A1) in view of Lee (US 20200194787 A1) and Zhang (US 20180241074 A1).
Regarding claim 1, Oguni discloses an electrode (abstract: negative electrode) comprising:
a particle containing silicon; ([0055] silicon is used as an alloy-based negative electrode material.)
a graphene compound, ([0017] an alloy based negative electrode material particle … covered with a carbon film including … 1 to 50 graphene layers.)
Regarding the limitation “wherein the graphene compound clings to the particle”, the meaning of “clings” is clarified at [0023-0025] of the instant specification. (emphasis added)
[0023] The material having a sheet-like shape preferably clings to the active material. The phrase “the material having a sheet-like shape clings to the active material” indicates that the material having a sheet-like shape is placed so as to cover part of the active material or stick to the surface of the active material, for example. The material having a sheet-like shape and the surface of the active material preferably have an area in which they are in surface contact with each other. Alternatively, the material having a sheet-like shape preferably covers part of the active material to make a surface contact.
[0024] In addition, the phrase “the material having a sheet-like shape clings to the active material” indicates that the material having a sheet-like shape preferably overlaps at least part of the active material. The shape of a graphene compound preferably conforms to at least part of the shape of the active material. The shape of the active material indicates, for example, unevenness of a single active material particle or unevenness formed by a plurality of active material particles. In addition, the material having a sheet-like shape preferably surrounds at least part of the active material.
[0025] The phrase “the material having a sheet-like shape clings to an object” indicates, for example, that the material having a sheet-like shape is placed so as to cover part of an object or so as to stick to the surface of an object. The material having a sheet-like shape and the surface of the object preferably have an area in which they are in surface contact with each other. Alternatively, the material having a sheet-like shape preferably covers part of the object to make a surface contact.
The broadest reasonable interpretation of this limitation is therefore determined to include contact between the graphene compound and the particle. At [0021] Oguni discloses “Needless to say, the graphene net is also in contact with a current collector, thereby binding the current collector and the alloy-based negative electrode material particles. In that case, electricity can also be conducted between the current collector and the alloy.” Because electricity can be conducted from the current collector to the graphene net to the alloy-based negative electrode material particles, the graphene is therefore determined to cling to the active material, meeting the instant claim limitation.
Oguni does not disclose wherein at least part of a surface of the particle is terminated by a functional group containing oxygen and wherein the graphene compound is graphene comprising at least one carbon atom terminated by a hydrogen atom and at least one a carbon atom terminated by a fluorine atom.
Lee discloses (abstract) an anode material of nano-silicon where the nano-silicon is adsorbed on the multi-layer graphene. (Examiner notes that nano-silicon is a type of particle containing silicon.) At [0011] Lee discloses “Nano - silicon or silicon suboxide (SiO2) is bonded to the multilayer graphene by using the hydroxyl groups to make the multilayer - graphene become a carrier. (Examiner notes that a hydroxyl group is a functional group that contains oxygen.) At [0049] Lee discloses that combining multi-layer graphene with SiOx slows down the volume expansion effect and cracking of Si which are caused by the charging and discharging cycles.
A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to select the hydroxyl bonded nano-silicon or silicon suboxide for the alloy-based negative electrode material particles of Oguni, with a reasonable expectation of achieving the desirable result of slowing down the volume expansion effect and cracking of Si.
Lee does not disclose wherein the graphene compound is graphene comprising at least one carbon atom terminated by a hydrogen atom and at least one a carbon atom terminated by a fluorine atom.
Zhang, in the area of (abstract) lithium-ion battery anode material, discloses [0020] the addition of functionalized graphene, which can be hydroxylated or fluorinated, to anode active material to provide improved capacity. At [0028], the functionalized graphene may be one or more of hydroxylated and fluorinated.
A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to add fluorinated graphene to the hydroxyl bonded nano-silicon negative active material of modified Oguni, with a reasonable expectation of successfully improving negative active material capacity.
Oguni further discloses [0056] that a functional group (carbonyl, carboxyl, hydroxyl) may be bonded to the graphite oxide, and further discloses [0057] that the resulting graphene oxide is terminated by a functional group at the periphery.
A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to select the hydroxyl termination from the three known potential functional groups suggested by Oguni, with a reasonable expectation of creating a successful electrode, thus meeting the instant claim limitation.
Regarding the limitation that the graphene compound is a two- dimensional structure formed with a six-membered ring of carbon, Oguni teaches [0019] “the graphene net has a two-dimensional expansion,” thus meeting the instant claim limitation.
Regarding claim 4, Oguni in view of Lee and Zhang discloses all of the limitations as set forth above, and Oguni further discloses wherein the functional group is a hydroxyl group, an epoxy group, or a carboxyl group. (FIG. 9 disclosing epoxy, carboxy, and carbonyl functional groups and [0056] disclosing hydroxyl group, an epoxy group, or a carboxy group.)
Regarding claims 7 and 16, Oguni in view of Lee and Zhang discloses all of the limitations as set forth above, and Oguni further discloses a secondary battery (abstract: power storage device) comprising: the electrode (abstract: a negative electrode) according to claim 1, and an electrolyte. ([0073] and FIG. 5)
Regarding claim 8, Oguni in view of Lee and Zhang discloses all of the limitations as set forth above, and Oguni further discloses moving vehicle comprising the secondary battery according to claim 7. ([0091] “The power storage device of the present invention can be used in … electric vehicles.”)
Regarding claim 9, Oguni in view of Lee and Zhang discloses all of the limitations as set forth above, and Oguni further discloses electronic device comprising the secondary battery according to claim 7. ([0091] “The power storage device of the present invention can be used in … personal computers, mobile phones. [0092] “specific examples of electronic and electrical devices including the power storge device of the present invention are as follows: …”)
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Oguni (US 20120308894 A1) in view of Lee (US 20200194787 A1) and Zhang (US 20180241074 A1) as set forth in claim 1, above, and with evidentiary support provided by The American Heritage Dictionary, definition for “pouch”. (See the PTO-892 provided.)
Regarding claim 12, Oguni in view of Lee and Zhang discloses all of the limitations as set forth above. Oguni does not explicitly disclose “wherein the graphene compound has a pouch-like shape containing the particle.” There is no special definition of a pouch-like shape found in the specification. The American Heritage Dictionary provides multiple definitions of “pouch”, which include “something resembling a bag in shape” Therefore, absent a special definition, the broadest reasonable interpretation of “wherein the graphene compound has a pouch-like shape containing the particle” includes the graphene compound wrapped at least partly around the particle.
Oguni discloses (emphasis added) [0018] “Alternatively, the graphene nets are filled with the alloy-based negative electrode material particles” and [0019] “The graphene net has a two-dimensional expansion and also includes a depression or projection, so that the graphene net partly has a bag-like shape.” FIG. 1A of Oguni (provided below) shows a graphene net that appears to wrap about ¾ of the way around the alloy-based negative electrode material, thus meeting the instant claim limitation.
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A person of ordinary skill would understand that because the graphene net of modified Oguni is described as “bag-like” and “the graphene nets are filled with the alloy-based negative electrode material particles”, then therefore Oguni’s graphene net has a pouch-like shape, meeting the instant claim limitation.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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CLAIRE A. RUTISER
Examiner
Art Unit 1751
/C.A.R./Examiner, Art Unit 1751
/Haroon S. Sheikh/Primary Examiner, Art Unit 1751