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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/15/2026 has been entered.
Response to Amendment
The amendments filed 05/15/2026 have been entered and do overcome the 103 as previously set forth in Final office action mailed 01/16/2026.
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.
Claims 1-3, and 5-8, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over (US-20200212439-A1) hereinafter referred to as ‘Zeng ’ in view of (US-20140030599-A1) hereinafter referred to as ‘Lee
Regarding Claim 1,
Zeng teaches a negative electrode comprising: a negative electrode active material layer comprising: a conductive agent comprising single-walled carbon nanotubes (Zeng, “Preferably, the carbon material is one or more selected from a group consisting of graphite, soft carbon, hard carbon, meso-carbon micro bead, carbon fibre and carbon nanotube.”, see [0056]), and a negative electrode active material comprising: a first active material comprising SiOx particles (0<x<2) having a D50 of 0.1 μm to 0.6 μm. (Zeng, “Preferably, the particle diameter Dv50 of the second silicon oxide is 0.4 μm˜4.0 μm. ”, see [0037]) (The examiner notes the Zeng’s second particle is mapped to the instant’s first particle) and a specific surface area in a range of 1 m2/g to 7 m2/g (Zeng, “Preferably, the surface area of the second silicon oxide specific is 4.6 m2/g˜12.5 m2/g. ”, see [0042]), and a second active material comprising SiOy particles (0<y<2) having a D50 of 3 μm to 8 μm (Zeng, “Preferably, the particle diameter Dv50 of the first silicon oxide is 3.0 μm˜15.0 μm”, see [0036]) wherein a weight ratio of the SiOx particles to the SiOy particles is in a range of 1:2 to 1:100 (Zeng, “Preferably, a weight ratio of the first silicon oxide to the second silicon oxide is (60%˜90%):(40%˜10%); more preferably, the weight ratio of the first silicon oxide to the second silicon oxide is (75%˜90%):(25%˜10%).”, see [0045])(The examiner notes the contents are switched so the ratios would be 1:7.5 to 1:3.6).
The examiner takes note of the fact that the prior art range 0.4 μm˜4.0 μm, 4.6 m2/g˜12.5 m2/g, 3.0 μm˜15.0 μm, broadly overlaps the claimed range o0.1 μm. to 0.6 μm, 1 m2/g to 7 m2/g, and 3 μm to 8 μm Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Zeng does not teach a specific surface area of the first particle is in a range of 9 m2/g to 20 m2/g.
Lee teaches and a specific surface area of the first particle is in a range of 9 m2/g to 20 m2/g(Lee, “The porous silicon oxide-based composite has a Brunauer, Emmett, and Teller (BET) specific surface area of 2-100 m2/g.”, see [0018])(see also Table 1)(Lee, “The particle size of the electrode active material may range from several tens of nm to several tens of μm, preferably 100 nm-50 μm.”, see [0021]).
The examiner takes note of the fact that the prior art range 2-100 m2/g, broadly overlaps the claimed range 9 m2/g to 20 m2/g Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Lee teaches that porous silicon has a high surface area and can improve the cycling of the cell (Lee, “It is an object of the present invention to provide an electrode active material comprising porous silicon oxide-based composite for a secondary battery, which can improve the initial charge/discharge efficiency ”, see [0011])
Zeng and Lee are analogous as they are both of the same field of silicon battery 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 surface area of the first particle through using a porous silicon, which has a higher surface are and can improv the cycling performance of the cell.
Regarding Claim 2,
Modified Zeng teaches the negative electrode of claim 1, wherein the weight ratio of the SiOx particles to the SiOy particles is in a range of 1:10 to 1:20 (Zeng, “Preferably, a weight ratio of the first silicon oxide to the second silicon oxide is (60%˜90%):(40%˜10%); more preferably, the weight ratio of the first silicon oxide to the second silicon oxide is (75%˜90%):(25%˜10%).”, see [0045])(The examiner notes the contents are switched so the ratios would be 10:25, 90:75, etc)(Examiner notes table 1, the ratio is 5:95 which is 1:19)
Regarding Claim 3,
Modified Zeng teaches the negative electrode of claim 1, wherein a ratio of the D50 of the SiOx particles to the D50 of the SiOy particles is in a range of 1:5 to 1:40 (Zeng, “Preferably, the particle diameter Dv50 of the second silicon oxide is 0.4 μm˜4.0 μm. ”, see [0037]) (Zeng, “Preferably, the particle diameter Dv50 of the first silicon oxide is 3.0 μm˜15.0 μm”, see [0036])(The examiner notes this would be 1:3.75 to 1:7.5)
The examiner takes note of the fact that the prior art range 1:3.75 to 1:7.5 broadly overlaps the claimed range 1:5 to 1:40 Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Regarding Claim 5,
Modified Zeng teaches the negative electrode of claim 1, wherein the first active material further comprises a metal disposed on a surface, inside, or on the surface and the inside of the SiOx particle, and the metal comprises at least one selected from the group consisting of lithium (Li), magnesium (Mg), calcium (Ca), and aluminum (Al) (Zeng, “The coating preferably may be one or more selected from a group consisting of carbon material, metal and metallic oxide. … the metal preferably is one or more selected from a group consisting of Al, Ti, Fe, Ni, Cu, Zn, Ag, Sn and Mg; the metallic oxide preferably is one or more selected from a group consisting of the oxides in which the metal is selected from a group consisting of Al, Ti, Fe, Ni, Cu, Zn, Ag, Sn and Mg.”, see [0047-48]).
Regarding Claim 6,
Modified Zeng teaches the negative electrode of claim 5, wherein the metal is included in an amount of 0.1 wt% to 30 wt% in the first active material (Zeng, “Negative electrode active material (see table 1), Super P (conductive agent), carboxymethyl cellulose sodium solution (CMC, thickening agent), styrene-butadiene rubber (SBR, binder) according to a mass ratio of 80:10:5:5”, see [0085])(The examiner notes that the conductive agent here is carbon but the application also allows for metal as a conductive agent see [0047] and it would be obvious for one of ordinary skill to substitute the Super P for the metal see MPEP 2143 (I)(B)).
Regarding Claim 7,
Modified Zeng teaches the negative electrode of claim 1, wherein the second active material further comprises a metal disposed on a surface, inside, or on the surface and the inside of the SiOy particle, and the metal comprises at least one selected from the group consisting of Li, Mg, Ca, and Al (Zeng, “The coating preferably may be one or more selected from a group consisting of carbon material, metal and metallic oxide. … the metal preferably is one or more selected from a group consisting of Al, Ti, Fe, Ni, Cu, Zn, Ag, Sn and Mg; the metallic oxide preferably is one or more selected from a group consisting of the oxides in which the metal is selected from a group consisting of Al, Ti, Fe, Ni, Cu, Zn, Ag, Sn and Mg.”, see [0047-48]).
Regarding Claim 8,
Modified Zeng teaches the negative electrode of claim 7, wherein the metal is included in an amount of 0.1 wt% to 30 wt% in the second active material (Zeng, “Negative electrode active material (see table 1), Super P (conductive agent), carboxymethyl cellulose sodium solution (CMC, thickening agent), styrene-butadiene rubber (SBR, binder) according to a mass ratio of 80:10:5:5”, see [0085])(The examiner notes that the conductive agent here is carbon but the application also allows for metal as a conductive agent see [0047] and it would be obvious for one of ordinary skill to substitute the Super P for the metal see MPEP 2143 (I)(B)).
Regarding Claim 13,
Modified Zeng teaches the negative electrode of claim 1, wherein the negative electrode active material further comprises a carbon-based active material (Zeng, “The coating preferably may be one or more selected from a group consisting of carbon material, metal and metallic oxide. … the metal preferably is one or more selected from a group consisting of Al, Ti, Fe, Ni, Cu, Zn, Ag, Sn and Mg; the metallic oxide preferably is one or more selected from a group consisting of the oxides in which the metal is selected from a group consisting of Al, Ti, Fe, Ni, Cu, Zn, Ag, Sn and Mg. ”, see [0047-48])(Zeng, “ the negative electrode film may further comprise other negative electrode active material, for example, the carbon material. ”, see [0060]).
Regarding Claim 14,
Modified Zeng teaches a secondary battery comprising the negative electrode of claim 1 (Zeng, “In a second aspect of the present disclosure, the present disclosure provides a battery, which comprises a negative electrode active material according to the first aspect of the present disclosure.”, see [0006]).
Regarding Claim 15,
Modified Zeng teaches the negative electrode of claim 1, wherein the weight ratio of the SiOx particles to the SiOy particles is in a range of 1:4 to 1:19 (Zeng, “Preferably, a weight ratio of the first silicon oxide to the second silicon oxide is (60%˜90%):(40%˜10%); more preferably, the weight ratio of the first silicon oxide to the second silicon oxide is (75%˜90%):(25%˜10%).”, see [0045])(The examiner notes that this is 1:3.6 to 1:7.5), and a ratio of the D50 of the SiOx particles to the D50 of the SiOy particles is in a range of 1:10 to 1:35 (Lee, “The particle size of the electrode active material may range from several tens of nm to several tens of μm, preferably 100 nm-50 μm.”, see [0021]) (Zeng, “Preferably, the particle diameter Dv50 of the second silicon oxide is 0.4 μm˜4.0 μm. ”, see [0037]) (The examiner notes this would be 0.4-4.0um : .100 um-50um, which is 1:0.25 to 1:13.5).
the examiner takes note of the fact that the prior art range 1:3.6 to 1:7.5 and 1:0.25 to 1:13.5 broadly overlaps the claimed range 1:4 to 1:19 and 1:10 to 1:35 Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over (US-20200212439-A1) hereinafter referred to as ‘Zeng ’ in view of (US-20140030599-A1) hereinafter referred to as ‘Lee’ in further view of (US-20200369522-A1) hereinafter referred to as ‘Finlayson’.
Regarding Claim 9,
Modified Zeng does not teach the negative electrode of claim 1, wherein the single-walled carbon nanotubes have an average length of 2 µm to 100 µm
Finalyson teaches the negative electrode of claim 1, wherein the single-walled carbon nanotubes have an average length of 2 µm to 100 µm (Finlayson, “the bundles may have an average length of at least …about 10 μm,”, see [0064])
Finlayson teaches that the addition of single walled carbon nanotubes can improve the performance of the cell (Finlayson, “These new nanotubes are useful in many applications, including binder material, electrolyte material, separator film material, and or composites for energy storage devices for the improvement of mechanical, electrical, and thermal properties.”, see[0048] ).
Zeng and Finlayson are analogous as they are both of the same field of silicon oxide electrochemical cells.
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 material as taught in Zeng to add the single walled carbon nanotubes as taught in Finlayson in order to improve the conductivity of the cell.
Regarding Claim 10,
Modified Zeng does not teach wherein the single-walled carbon nanotubes have an average length of 2 µm to 100 µm
Finalyson teaches wherein the single-walled carbon nanotubes have an average length of 2 µm to 100 µm (Finlayson, “the bundles may have an average length of at least …about 10 μm,”, see [0064])
Finlayson teaches that the addition of single walled carbon nanotubes can improve the performance of the cell (Finlayson, “These new nanotubes are useful in many applications, including binder material, electrolyte material, separator film material, and or composites for energy storage devices for the improvement of mechanical, electrical, and thermal properties.”, see[0048] ).
Zeng and Finlayson are analogous as they are both of the same field of silicon oxide electrochemical cells.
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 material as taught in Zeng to add the single walled carbon nanotubes as taught in Finlayson in order to improve the conductivity of the cell.
Regarding Claim 11,
Modified Zeng does not teach the negative electrode of claim 1, wherein the single-walled carbon nanotubes have a specific surface area of 500 m2/g to 1,500 m2/g
Finalyson teaches wherein the single-walled carbon nanotubes have a specific surface area of 500 m2/g to 1,500 m2/g (Finlayson, “The BET surface area of the nanotubes herein may vary depending upon the type of nanotubes, treatment methods, and desired applications. Typically, the single and double walled nanotubes treated with shear, oxidation, or both that are described herein usually have a BET surface area …of at least about 500 m2/g, or at least about 550 m2/g, or at least about 600 m2/g,”, see [0043]).
Finlayson teaches that the addition of single walled carbon nanotubes can improve the performance of the cell (Finlayson, “These new nanotubes are useful in many applications, including binder material, electrolyte material, separator film material, and or composites for energy storage devices for the improvement of mechanical, electrical, and thermal properties.”, see[0048] ).
Zeng and Finlayson are analogous as they are both of the same field of silicon oxide electrochemical cells.
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 material as taught in Zeng to add the single walled carbon nanotubes as taught in Finlayson in order to improve the conductivity of the cell.
Regarding Claim 12,
Modified Zeng does not teach the negative electrode of claim 1, wherein the single-walled carbon nanotubes are included in an amount of 0.001 wt% to 0.5 wt% in the negative electrode active material layer
Finlayson teaches the negative electrode of claim 1, wherein the single-walled carbon nanotubes are included in an amount of 0.001 wt% to 0.5 wt% in the negative electrode active material layer (Finlayson, “In some embodiments, the composition may comprise as much as 99% composite material and as little as about 0.025% carbon nanotubes by weight, t”, see [0068]).
Finlayson teaches that the addition of single walled carbon nanotubes can improve the performance of the cell (Finlayson, “These new nanotubes are useful in many applications, including binder material, electrolyte material, separator film material, and or composites for energy storage devices for the improvement of mechanical, electrical, and thermal properties.”, see[0048] ).
Zeng and Finlayson are analogous as they are both of the same field of silicon oxide electrochemical cells.
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 material as taught in Zeng to add the single walled carbon nanotubes as taught in Finlayson in order to improve the conductivity of the cell.
Response to Arguments
The applicants’ arguments filed 05/15/2026 have been fully considered but they are not persuasive.
On pg. 9, the applicant argues:
“Applicant respectfully submits that even when the teachings of Chun, Fukuoka, and Finlayson are combined, there is no teaching, suggestion, or motivation to create the specific inverse pairing where smaller particles have lower specific surface area and larger particles have higher specific surface area. The Examiner's reliance on overlapping ranges under MPEP 2144.05 is misplaced because the issue is not merely whether the individual ranges overlap, but rather whether the prior art teaches or suggests the specific inverse relationship between particle size and specific surface area. This inverse relationship runs counter to both conventional understanding (where smaller particles typically have higher surface areas) and Chun's own explicit teachings.”
The applicant finds the argument moot in view of the new rejection outlined above. The examiner notes that Zeng teaches two silicon dioxide system, with a larger and smaller particles. As it conventional, Zeng finds that that smaller particles have a larger surface area. However, Lee introduces porous silicon, which, despite having a larger particle size, would have a larger specific surface area than the smaller particles. The examiner contends that it would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to apply this porous high BET silicon to the system as taught in Zeng, in order to improve the cycling of the cell.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAMUS PATRICK MCNULTY whose telephone number is (703)756-1909. The examiner can normally be reached Monday- Friday 8:00am to 5pm.
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/S.P.M./Examiner, Art Unit 1752
/NICHOLAS A SMITH/Supervisory Primary Examiner, Art Unit 1752
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