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 .
Information Disclosure Statement
The information disclosure statements filed 22 January 2026 fail to comply with the provisions of 37 CFR 1.98(a)(4) because they lack the appropriate size fee assertion. They been placed in the application file, but the information referred to therein has not been considered as to the merits.
Status of Claims
Claims 20, 29, and 30 are amended. Claims 22-23, 26-28, and 30 stand withdrawn. Claims 20-21, 24-25 and 29 as filed 22 January 2026, are examined herein. No new matter is included.
Response to Arguments
The objection to claim 29 is withdrawn.
Regarding the rejection under 35 USC 103, Applicant argues that the cited references do not provide a motivation to combine references to create a step of “forming a first mixture by mixing a particle comprising silicon, lithium fluoride, and lithium carbonate” Further Applicant argues that there is no reason to mix Li2CO3 and Si particles with graphene or graphene oxide. This argument is moot in light of newly cited references.
Holding of Abeyance of the rejection for non-statutory double patenting is denied. In an effort to promote compact prosecution, the Examiner will consider this instance as a bona fide response, however, continued incomplete responses from applicant may be held as non-responsive. See MPEP 804 I-B-1: A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
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) 20 and 24-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cho (US 20180269483 A1) in view of Pan (US 20190115617 A1) and Hirose (US 20160233484 A1) with evidentiary support from Koizumi (US 20110012049 A1).
Regarding claim 20, Cho teaches a method for manufacturing a negative electrode active material ([0040] prelithiated anode materials), the method comprising:
forming a first mixture by mixing a particle comprising silicon, ……., and lithium carbonate; ([0093] “providing a silicon core particle comprising … a silicon alloy, … nanosilicon……, silicon suboxide…” “and milling the silicon core particle with one or more lithium additives, optionally selected from the group consisting of …. lithium carbonate.” ) Examiner notes that milling the silicon and the lithium additive(s) creates a mixture.
heating the first mixture, ([0094] heat treatment in combination with grinding or milling; [0088] heat treatment at “a temperature at the melting point or up to 100 ˚C over the melting point of the lithium additive”.
Koizumi provides evidence at [0058] that the melting points of lithium carbonate and lithium fluoride are 730 ˚C and 851 ˚C, respectively. In light of this teaching of Koizumi, a person of ordinary skill would expect the heat treatment of a lithium carbonate-containing mixture of Cho to be in the range of 730 ˚C to 951 ˚C. Therefore it would have been obvious to one having ordinary skill in the art to have selected the overlapping portion of the range with a reasonable expectation of success regarding the heating step of Cho.
Cho teaches at [0118] heating for 4 hours, which falls within the claimed range of 1 hour to 60 hours.
Cho teaches at [0181] milling is carried out in an argon atmosphere (e.g. rare gas), thus rendering obvious heating of the first mixture in an argon atmosphere.
Cho does not explicitly teach the mixture comprising lithium fluoride.
Pan, in the field of (abstract) a surface-stabilized anode active material, discloses at [0041] the use lithium salts dispersed in a protecting polymer layer, those salts including lithium carbonate and lithium fluoride. Table 1 example SiNW-2, which is prelithiated with LiF. Table 1 states that the prelithiated sample completed 1435 charge and discharge cycles, as compared to 1025 cycles for the same material not prelithiated.
A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to include LIF as an additional lithium additive for the first mixture of Cho, based on the test results of Pan, with a reasonable expectation of successfully creating a battery with increased cycle life.
Further motivation for the addition of LiF is provided by Hirose, in the field of (abstract) silicon-based negative anode material. Hirose discloses at [0132] that the inclusion of a lithium carbonate in the bulk of an Si particle improves stability, and that [0133-0134] that a fluorine compound, for example LiF, dramatically improves the storage property of the powder.
Regarding claim 24, Cho in view of Pan and Hirose teaches all of the limitations as set forth above. Cho teaches at [0094] that heat treatment does not alter the crystal structure of the silicon core particle. Examiner notes that the presence of polycrystalline silicon does not exclude the presence of amorphous silicon.
Hirose discloses (Table 5) X-ray diffraction data for Si active material particles. As the crystallite size is reduced to zero (e.g. amorphous), the capacity retention increases from 82.1% to 86.7%.
A person of ordinary skill in the art would have been motivated to replace the polycrystalline particles of modified Cho with the amorphous material of Hirose, with a reasonable expectation of achieving higher capacity retention ratio and higher initial efficiency.
Regarding claim 25, Cho in view of Pan and Hirose teaches all of the limitations as set forth above. Cho teaches at [0094] that heat treatment does not alter the crystal structure of the silicon core particle, but does not explicitly teach that the silicon core particle is a polycrystalline material.
Hirose discloses (Table 5) X-ray diffraction data for Si active material particles, showing crystalline particles. As the crystallite size is reduced the capacity retention increases.
A person of ordinary skill in the art would have been motivated to select the polycrystalline material of Hirose for the particles of modified Cho, with a reasonable expectation of achieving acceptable capacity retention ratio and initial efficiency.
Claim(s) 21 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cho (US 20180269483 A1) in view of Pan (US 20190115617 A1) and Hirose (US 20160233484 A1), with evidentiary support from Koizumi (US 20110012049 A1), as set forth in claim 20, in further view of Ogino (US 20140004412 A1) in view of Sun (US 20170222219 A1).
Regarding claims 21 and 29, the negative active material of claim 20 has been rendered obvious by Cho in view of Pan and Hirose. Cho further teaches a method for manufacturing a negative electrode active material layer, the method comprising:
[0123] the use of Cho’s particle with a binder and a conductive agent to create a negative electrode, where the binder and conductive additive are not particularly limited. At [0146-0147] Cho teaches a water-based slurry comprising the Si-based negative electrode material, a conductive additive, and a water-based polyamide-imide binder solution (e.g. a precursor of polyimide). This water-based slurry is equivalent to the “second mixture” of claim 21. The slurry is cast onto a copper foil, dried at room temperature for 3 hours, then heated to 110 ˚C under vacuum for 10 hours. (This renders obvious forming a first coating film by applying the … mixture to metal foil; forming a second coating film by drying the first coating film)
Cho does not explicitly teach:
the second mixture comprising a graphene compound,
forming a third mixture by mixing the second mixture, a precursor of polyimide, and a second solvent; and
wherein the heating of the second coating film is performed in a reduction atmosphere.
Ogino, in the field of (abstract) a negative electrode for a secondary battery, teaches at [0065] mixing graphene oxide (equivalent to “a graphene compound”), a negative electrode active material, and a binder. At [0021] the selection of negative electrode active materials includes silicon.
At [0070] the binder is a polyimide precursor, which is imidized in a later heating step. At [0071] Ogino contemplates that “there is no particular limitation on the sequence of adding graphene oxide, the particulate negative electrode active material, and the binder to the solvent. For example, the particulate negative electrode active material is added to and mixed with the solvent, graphene oxide is added thereto and mixed therewith, and then the binder is added thereto and mixed therewith. To adjust the viscosity of the mixture, the solvent may be additionally added in each of the mixing steps.” At [0048] Ogino discloses the use of graphene derived from graphene oxide as a conductive additive for a negative anode comprising [0054] silicon and [0055] polyimide. At [0057], the graphene has a function of holding the negative anode active material, therefore the amount of active material can be increased and the discharge capacity therefore increased.
A person of ordinary skill in the art would have been motivated to select the graphene oxide of Ogino as a conductive additive for the mixture of modified Cho, with a reasonable expectation of increasing discharge capacity.
In light of Ogino’s teaching that “there is no particular limitation on the sequence of adding graphene oxide, the particulate negative electrode active material, and the binder to the solvent” a person of ordinary skill in the art would understand that the mixing steps could be carried out in any order with a reasonable expectation of achieving a battery electrode having excellent charge-discharge cycle performance, therefore rendering obvious the claimed mixture two comprising active material and a graphene compound, followed by mixture three further comprising a precursor of polyimide.
Ogino at [0075] discloses the slurry is applied to the negative electrode current collector. At [0076] the slurry is heated to a temperature between 200 °C and 400 °C for 1-2 hours. “Through the heating step, the slurry is baked and thus the precursor of polyimide is imidized to be polyimide. At the same time, graphene oxide is reduced to form graphene.”
Ogino teaches that the graphene oxide is reduced, but does not explicitly teach the use of a reducing atmosphere.
Sun in the field of (abstract) high capacity anode materials, discloses at [0030-0031] the treatment of a silicon and graphene oxide composite material using H2/Ar mixed gas to thermally reduce graphene oxide to graphene, resulting in improved electrical conductivity.
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 H2/Ar mixed gas of Sun for the heat treatment atmosphere of the composite of Ogino, with a reasonable expectation of successfully improving the electrical conductivity of the negative active material layer, thus rendering obvious the instant claim limitation.
Regarding claim 29, Ogino at [0070-0071] renders obvious the reduction of graphene and imidization of polyimide through heating.
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 20 and 24-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-7 of copending Application No. 17/996697 (reference application, inventors Kuriki et. al.) Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application relates to a method for manufacturing a negative electrode active material, the material comprising a first material where the candidates include graphene (equivalent to “a material comprising carbon and oxygen” of the instant claim 20, a second material comprising halogen (LiF of the instant claim 20 is an example of a halogen compound), and heating the mixture in a reduction atmosphere. The dependent claims of the copending application also have limitations that are met by the instant dependent claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 9/14/2026
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