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 the Claims
This is a final office action in response to the applicant’s arguments and remarks filed on 02/03/2026. Claims 1-4, 8, 10, 12, 15-16, 20-21, 23-27, and 30 are pending in the current office action. Claims 20-21, 23-26 remain withdrawn as being drawn to a non-elected group. Claims 1-4, 8, 10, 12, 15-16, 27, and 30 are examined herein.
Status of the Rejection
All 35 U.S.C. § 112(b) rejections from the previous office action are withdrawn in view of the Applicant’s amendment.
All 35 U.S.C. § 103 rejections from the previous office action are withdrawn in view of the Applicant’s amendment.
New grounds of rejection under 35 U.S.C. § 103 are necessitated by the amendments.
The provisional non-statutory double patenting rejection is maintained in view of application 18715307 as outlined below. The provisional non-statutory double patenting rejection in view of application 18849352 is withdrawn in view of the amendments.
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.
Claims 1-4, 8, 10, 12, 15-16, 27, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (US 2021/0074995 A1) in view of Jang et al. (US 2019/0355985 A1), Umeno et al. (US 6,383,686 B1), and Kim et al. (KR 101832663 B1, machine translation).
Regarding claims 1, 27 and 30, Shin discloses negative electrode active material, and lithium secondary battery comprising the negative electrode active material, wherein the active material comprises a silicon-based-carbon composite having a core-shell structure (silicon oxide and carbon composite active material, negative electrode, and lithium secondary battery where the composite material is formed as a core-shell structure [abstract, Paras. 0001, 0068]), wherein the core comprises silicon, a silicon oxide compound, and magnesium silicate (the core portion includes a silicon oxide composite including Si, a silicon oxide represented by SiOx, and magnesium silicate containing Si and Mg [Para. 0039]), and the shell comprises at least two carbon layers comprising a first carbon layer and a second carbon layer (a carbon coating layer corresponding to a shell portion surrounding the core portion, wherein the carbon coating layer includes at least one selected from the group consisting of crystalline carbon, natural graphite, artificial graphite, graphene, kish graphite, graphitized carbon fibers, graphitized mesocarbon microbeads, and amorphous carbon [Para. 0045]; examiner notes that the scope of the coating layer including “at least one” includes the selection of more than one carbon material).
Shin is silent, however, on the plural carbon materials being formed as two distinct carbon layers and is also silent on the second carbon layer being formed of reduced graphene oxide.
Jang discloses a silicon-carbon composite electrode material for secondary batteries wherein plural carbon layers are present [abstract; Fig. 3]. Jang teaches wherein the inner carbon layer that covers the silicon active material is further coated with a reduced graphene oxide layer to form two distinct carbon layer surrounding the silicon core [Paras. 0097, 0081]. Jang teaches that forming the double layer carbon around the core material provides various benefits including high electrical conductivity and improved control of large volume changes during charging/discharging [Para. 0099]. Jang further teaches that the double carbon shell provides additional benefits including preventing electrode damage because during the charging/discharging the electrolyte does not come into direct contact with the silicon composite [Para. 0027].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the single carbon layer provided in the shell of the material disclosed by Shin to further include a reduced graphene oxide outer shell that covers the inner carbon layer because Jang teaches that such dual carbon shell structure provides various benefits including high electrical conductivity, improved control of large volume changes, and provides protection from damage due to the direct exposure of the electrolyte to the inner core structure [Paras. 0027, 0097-0099]. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (MPEP 2143(A)).
Shin and Jang are silent with regards to the carbon content and thus fail to expressly teach wherein the total content of carbon (C) in the first carbon layer and the second carbon layer is 5% by weight to 50% by weight based on the total weight of the silicon-based-carbon composite. It follows that Shin and Jang also fail to teach wherein the content of carbon (C) in the first carbon layer is 2% by weight to 30% by weight based on the total weight of the silicon-based-carbon composite, and the content of carbon (C) in the second carbon layer is 3% by weight to 20% by weight based on the total weight of the silicon-based-carbon composite.
Umeno discloses a composite anode material that comprises a core shell active material including an inner core and carbon outer shell layer [abstract]. Umeno teaches that the carbon content of the anode material is 5 to 50% by weight [claim 1]. Umeno further teaches that when the amount of carbon in the anode is more than 50% the discharging capacity is reduced an fusion tends to occur between the particles and the conversion of primary particles of anode material into secondary particles becomes striking, requiring the anode material to be grounded after covering [Col. 5:25-40]. Umeno also teaches that carbon amount is required to be greater than 5% to 20%, depending upon the coating method, so that the particulate core is completely covered [Col. 5:40-65].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite structure disclosed by modified Shin such that the carbon content of the material is between 5% to 50% by weight because Umeno discloses that a carbon content within the range of 5-50% is necessary for full coverage and to ensure fusion does not occur between the particles that would require grounding [Col. 5:25-65]. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding the breakdown between the individual layers required by instant claim 6, It would have been obvious to one of ordinary skill in the art to adjust the carbon contents of the individual carbon layers in light of the prior art to achieve a desired total carbon content for the composite. The prior art identifies the relevant total carbon content (5-50%) and its predictable effects on performance. The prior art of Shin and Jang teach two distinct carbon layers that would have a total carbon content that would sum up to the 5-50% total carbon content. In such circumstances, the selection of particular numerical amounts for those variables (e.g., adjusting the two layer percentages so that their sum is 50 wt% carbon) is a matter of routine optimization and “obvious to try” — particularly where the prior art provides a finite number of predictable solutions and a reasonable expectation of success in achieving target composite properties by varying layer compositions [see MPEP § 2141(III)(E)].
Shin, Jang, and Umeno are further silent on the reduced graphene oxide comprising alkaline metals and thus fail to expressly teach wherein the reduced graphene oxide in the second carbon layer comprises at least one selected from the group consisting of lithium (Li), sodium (Na), and potassium (K) in an amount of 0.02% by weight to 5% by weight based on the total weight of carbon (C) in the second carbon layer.
Kim teaches a method for improving the three dimensional graphene structure of reduced graphene oxide for lithium ion battery active materials [abstract] wherein the graphene oxide is activated using an activator selected from KOH, NaOH, or LiOH wherein the activation process enhances the electrochemical properties including increases in surface area and volume per mass without deforming the morphology of the three-dimensional structure [Paras. 0085-0086].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the reduced graphene oxide taught by modified Shin to include an activator selected from NaOH, LiOH, or KOH in order to increase the surface area and volume per mass without deforming morphology of the structure [Paras. 0085-0086]. Regarding the ratio of alkaline metal to carbon, the selection of particular numerical amounts is a matter of routine optimization and “obvious to try” — particularly where the prior art provides a finite number of predictable solutions and a reasonable expectation of success in achieving target composite properties by varying layer compositions [see MPEP § 2141(III)(E)]. It would therefore be obvious to optimize the amount of Na/Li/K relative to the carbon/graphene material in order to optimize the surface area and volume per mass without deforming the morphology of the structure that is consistent with the teachings of Kim.
Regarding claim 2, Shin further discloses wherein the first carbon layer comprises at least one selected from the group consisting of amorphous carbon, crystalline carbon, carbon nanofibers, chemical vapor graphene, and carbon nanotubes (the carbon coating layer corresponding to a shell portion surrounding the core portion, wherein the carbon coating layer includes at least one of crystalline carbon, graphene, graphitized carbon fibers, and amorphous carbon [Para. 0045]).
Regarding claim 3, Shin as modified by Jang above further discloses wherein the first carbon layer and the second carbon layer are sequentially disposed on the core (Shin as modified by Jang in the rejection of claim 1 above teaches the inner carbon layer disclosed by Shin as being sequentially coated with the outer reduced graphene oxide layer taught by Jang, both of which surround the inner core; See the rejection of Claim 1 above).
Regarding claim 4, modified Shin discloses the limitations of claim 1 above. Jang further teaches wherein in the dual carbon layer structure that the inner carbon layer can have a thickness of 1nm to 5nm and the outer graphene oxide layer may have a thickness of 10 nm to 30 nm. It would have been obvious to have selected and utilized thicknesses within the disclosed ranges taught by Jang, including those amounts that overlap within the claimed range. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Regarding claim 8, modified Shin discloses the limitations of claim 1 including wherein the graphene oxide is reduced [Jang, Paras. 0084-0085].
Shin and Jang are silent on the specific content of oxygen in the reduced graphene oxide and thus fail to expressly teach wherein the content of oxygen (O) in the reduced graphene oxide in the second carbon layer is 0.01 % by weight to 20% by weight based on the total weight of the reduced graphene oxide.
However, Jang discloses wherein the heat-treatment is performed for 10 to 100 minutes such that the oxygen content of the reduced graphene oxide is optimized dependent upon the extent of the heat treatment [Para. 0085]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the oxygen content of the reduced graphene oxide with the predictable result of optimized anode electrode performance. The selection of particular oxygen content of the reduced graphene oxide is a matter of routine optimization and “obvious to try” — particularly where the prior art provides a finite number of predictable solutions and a reasonable expectation of success in achieving target composite properties by varying the oxygen content [see MPEP § 2141(III)(E)].
Regarding claim 10, modified Shin discloses the limitations of claim 1 as discussed previously. As to the specific surface area and electrical conductivity recited in instant claim 10, these properties are found to be an inherent characteristic of the carbon layer comprising all the claimed elements. Since the prior art does disclose a secondary carbon layer comprising reduced graphene oxide, which appears to be substantially the same component as that of the applicant, it is contended that the reduced graphene oxide from the prior art would yield the claimed specific surface area and electrical conductivity. Products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed property (i.e., specific surface area of 5-30 m2/g and an electrical conductivity of 100-3,000 S/cm), is necessarily present in the prior art material. 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 [see MPEP 2112].
Regarding claim 12, modified Shin discloses the limitations of claim 1 as outlined previously.
Shin and Jang are silent on the absorption bands of the reduced graphene oxide and thus fail to expressly teach wherein the reduced graphene oxide of the second carbon layer has I1,360/I1,580 of 0.1 to 2, which is an integrated intensity ratio for absorption bands of 1,360 cm-1 and 1,580 cm-1.
Kim teaches a method for improving the three dimensional graphene structure of reduced graphene oxide for lithium ion battery active materials [abstract]. Kim teaches that it is known to utilize reduced graphene oxide within lithium ion battery active materials wherein the ratio of the intensity of the 1330-1350 cm-1 bands to the intensity of the 150-1595 cm-1 bands is 1.05 to 1.3 [Paras. 0035-0038]. Kim further teaches that the reduced graphene oxide with this structure/properties has excellent electrical conductivity and excellent crystallinity [Para. 0038].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the reduced graphene oxide disclosed by modified Shin to utilize reduced graphene oxide with the intensity ratios discussed above because Kim teaches that such structure has beneficial properties including excellent crystallinity and excellent electrical conductivity and is therefore suitable for an electrode material for an energy storage device [Para. 0038].
Regarding claims 15-16, Shin further discloses wherein the magnesium silicate comprises at least one selected from MgSiO3 crystals and Mg2SiO4 crystals (the magnesium silicate is Mg2SiO4 and MgSiO3 [Paras. 0040-0041]), of instant claim 15, wherein, in an X-ray diffraction analysis of the magnesium silicate, the ratio IF/IE of an intensity (IF) of the X-ray diffraction peak corresponding to Mg2SiO4 crystals appearing in the range of 2θ = 22.3° to 23.3° to an intensity (IE) of the X-ray diffraction peak corresponding to MgSiO3 crystals appearing in the range of 2 θ = 30.5° to 31.5° is greater than 0 to 1, of instant claim 16 ([Para. 0041]; Note, for purposes of compact prosecution the term “greater than 0 to 1” is being interpreted as “greater than 0”, see the 35 U.S.C. § 112(b) rejection of claim 16 above).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Shin, Jang, Kim, and Umeno, as applied to claim 1 above, and further in view of Oh et al. (US 2018/0269475 A1) and Bendimerad et al. (US 2017/0117538 A1).
Note: claim 10 is rejected over Shin in view of Jang as outlined above wherein the specific surface area and electrical conductivity are interpreted as intrinsic properties that are necessarily present. Claim 10 is further rejected above as obvious in view of Oh and Bendimerad that teach the specific values.
Regarding claim 10, modified Shin discloses the limitations of claim 1 as outlined previously.
Shin and Jang are silent with respect to the actual values of the specific surface area and electrical conductivity and thus fail to expressly teach wherein the second carbon layer has a specific surface area (Brunauer-Emmett-Teller; BET) of 5 m2/g to 30 m2/g and an electrical conductivity of 100 S/cm to 3,000 S/cm.
Oh discloses a silicon oxide composite material comprising a carbon film on the surface of the composite [abstract] wherein the composite material including the outer carbon layer has a specific surface area in the range of 1 to 40 m2/g [Para. 0028].
Bendimerad discloses a composite anode material comprising a core-shell structure with a silicon-based core and with a carbon shell wherein silicon core carbon shell nanoparticles comprise a conductivity of 10-100 S/cm [Para. 0046; Fig. 5B].
Given the teachings of Oh and Bendimerad, it would have been obvious to have selected and utilized a specific surface area and electrical conductivity within the disclosed range, including those amounts that overlap with the claimed range. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art [See MPEP 2144.05 (I)].
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 1-3, 8, 12, 15, and 27-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6-10, 13, and 13-17 of copending Application No. 18/715,307 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 1 is obvious by claims 1, 2, 6-7, 9, and 13 of ‘307 with overlapping ranges.
Instant claims 2-3 are anticipated by claim 2 of ‘307.
Instant claim 8 is obvious over claim 8 of ‘307 with overlapping ranges.
Instant claim 12 is anticipated by claim 10 of ‘307.
Instant claim 15 is obvious over claim 13 of ‘307 as MgSiO3 and Mg2SiO4 are examples of magnesium silicates.
Instant claims 27 and 30 are anticipated by claims 16-17 of ‘307.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see Remarks Pgs. 7-8, filed 02/03/2026, with respect to the 35 U.S.C. § 103 rejection have been fully considered and are not persuasive.
Applicant’s Argument #1
Applicant argues that Shin fails to disclose or suggest a shell structure in which two carbon layers are structurally separated and clearly distinguished from each other and does not disclose or suggest that the second carbon layer is formed of reduced graphene oxide.
Examiner’s Response #1
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). These features are taught by Jang as outlined in the obviousness rejection above.
Applicant’s Argument #2
Applicant argues that Jang does not disclose a core composition comprising silicon together with a silicon oxide compound and magnesium silicate.
Examiner's Response #2
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). These features are taught by Shin as outlined in the obviousness rejection above.
Applicant’s Argument #3
Applicant argues that Jang does not explicitly disclose or suggest the use of reduced graphene oxide as a carbon layer, let alone a dual-carbon-layer shell structure as claimed.
Examiner's Response #3
Examiner respectfully disagrees. Jang teaches wherein the inner carbon layer that covers the silicon active material is further coated with a graphene oxide layer to form two distinct carbon layer surrounding the silicon core where the graphene oxide layer is reduced (and thus would subsequently form a reduced graphene oxide) [Paras. 0097, 0081].
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.
Contact Information
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/JOSHUA L ALLEN/Supervisory Patent Examiner, Art Unit 1713
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