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 Claims
Claims 1-3, 5-9 are rejected.
Claim 4 is canceled.
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, 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (WO 2019151813 A1, “Shin”, English equivalent US 20210074995 A1 used herein for citation purposes) in view of Yang et al. (CN 107946561 A, “Yang”, machine translation used herein for citation purposes) and Son et al. (US 20170062804 A1, “Son”).
Regarding claim 1, Shin discloses a negative electrode, comprising: a current collector; and a negative electrode active material layer on at least one surface of the current collector (see abstract “anode” & see [0026] “neg. electrode active material layer positioned on at least one surface of the current collector”), wherein the negative electrode active material layer comprises: 1) a negative electrode active material comprising Mg-containing silicon oxide particles as a core and a graphene coating layer surrounding a surface of the core (see abstract “silicon oxide composite” & “Mg”, “a silicon oxide composite comprising i) Si, ii) a silicon oxide represented by SiOx (0<x≤2), and iii) a magnesium silicate containing Si and Mg” & [0043] “neg. electrode active material includes a silicon oxide composite corresponding to a core part and a carbon coating layer corresponding to a shell part covering part or all of the outside of the core part”; see [0045] “carbon coating layer corresponding to a shell portion include” “graphene”), 2) a conductive material comprising carbon nanotubes (see [0071] “conductive material” & “carbon nanotube”) and 3) a binder (see [0068] “a binder on a negative electrode current collector”). Regarding the limitation wherein an amount of the graphene coating layer is 0.5 wt% to 10 wt% based on a total weight of the negative electrode active material, Shin discloses in [0051] “content of the carbon coating layer in the neg. electrode active material according to the present disclosure may be 2.5-10 parts by weight” which lies within the claimed range.
Regarding the limitation a conductive material comprising single-walled carbon nanotubes (SWCNTs), Shin does not explicitly disclose.
Yang teaches “single-wall carbon nano tube” (see abstract) & describes “the single-wall carbon nano-tube” & describes reduces the used amount of the conductive agent used & “this reduction in conductive agent used directly increases the content of active materials, thereby improving energy density” (see [0011]).
Shin and Yang are analogous to the current invention because they are related to the same field of endeavor namely conductive materials (see abstract).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate SWCNT, as suggested by Yang (see [0011]) into the negative electrode of Shin because Yang suggests doing so greatly reduces the amount used of the conductive agent and “directly improve[s] content of active substance, so as to improve the energy density” as suggested by Yang (see [0011]).
Regarding the limitations wherein a graphene present in the graphene coating layer has a D/G band intensity ratio of 0.8 to 1.5, and wherein the D/G band intensity ratio of the graphene is an average value of a ratio of a maximum peak intensity of D band at 1360 ± 50 cm-1 based on a maximum peak intensity of G band at 1580 ± 50 cm-1, as determined by Raman spectroscopy of the graphene, Shin does not explicitly disclose, however, Shin does disclose peak intensity of the neg. electrode active material (see FIG. 1) and peak intensity is a property of the material.
Son teaches wherein the D/G band intensity ratio of the graphene is an average value of a ratio of a maximum peak intensity of D band at 1360 ± 50 cm-1 (see [0199] describes “peak at 1350 cm-1 is a peak referred to “D-mode””) based on a maximum peak intensity of G band at 1580±50 cm-1, as determined by Raman spectroscopy of the graphene (see [0199] “peak at 1580 cm-1 is a peak referred to as “G-mode”” & “graphene had peaks” & “Raman analysis” & “Spectra instrument”).
Regarding the limitation wherein a graphene present in the graphene coating layer has a D/G band intensity ratio of 0.8 to 1.5, Son teaches a range of 1.1 to about 2 (see [0069]).
Son teaches a range of 1.1 to about 2, which overlaps with the claimed range of 0.8 to 1.5. MPEP 2144.05 I states that 'In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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)'.
Shin and Son are analogous to the current invention because they are related to the same field of endeavor, namely graphene layer (see abstract).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Son to include band intensity ratio of 1.1 to about 2, as suggested by Son (see [0069]), peak intensity of D band at 1350 cm-1 as suggested by Son (see [0199]) and G band peak intensity at 1580 cm-1 as suggested by Son (see [0199]) into the negative electrode of Shin because doing so describes D/G intensity ratio obtained from analyzing Raman Spectrum of graphene as suggested by Son (see FIG. 8A, [0069]) and a skilled artisan would find obvious that peak intensity is a property of the graphene material that can be obtained from spectral analysis as suggested by Son.
Regarding claim 2, Shin discloses peak intensity of the neg. electrode active material (see FIG. 1), but does not explicitly disclose wherein the D/G band intensity ratio of graphene present in the graphene coating layer ranges from 0.8 to 1.4, however, a skilled artisan would recognize that D/G band intensity ratio is a property of the material.
Son teaches “D/G intensity ratio obtained from analyzing the Raman Spectrum of the graphene may be in 2 or less, for example a range of 1.1 to about 2” (see [0069]) & FIG. 8A describes D/G band intensity ratio.
Son teaches a range of 1.1 to about 2, which overlaps with the claimed range of 0.8 to 1.4. MPEP 2144.05 I states that 'In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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)'.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Son to include band intensity ratio of 1.1 to about 2, as suggested by Son (see [0069]), into the negative electrode of Shin because doing so describes D/G intensity ratio obtained from analyzing Raman Spectrum of graphene as suggested by Son (see FIG. 8A, [0069]) and a skilled artisan would find obvious that peak intensity is a property of the graphene material that can be obtained using spectral analysis as suggested by Son.
Regarding claim 3, Shin discloses the negative electrode of claim 1 and further discloses wherein the Mg-containing silicon oxide particles comprise 4 wt% to 15 wt% of Mg (see [0054] “Mg may be present in an amount of 4-16 wt%, particularly 4-10 wt%, based on 100 wt% of the silicon oxide composite. When Mg content satisfies the above-defined range, it is possible to improve efficiency while minimizing a decrease in capacity”). Shin discloses 4-10 wt% which lies within the claimed range.
Regarding claim 5, Shin discloses the negative electrode of claim 1, and discloses in [0071] “conductive material” & “carbon nanotube”, but Shin does not explicitly disclose wherein an amount of the single-walled carbon nanotube is 0.01 wt% to 0.06 wt% based on a total weight of the negative electrode active material layer.
Yang teaches “single-wall carbon nano tube” (see abstract) & describes “the single-wall carbon nano-tube” & describes reduces the used amount of the conductive agent used & “this reduction in conductive agent used directly increases the content of active materials, thereby improving energy density” (see [0011]).
Shin and Yang are analogous to the current invention because they are related to the same field of endeavor namely conductive materials (see abstract).
Yang teaches a range of 0.01-0.1, which overlaps with the claimed range of 0.01-0.06 wt%. MPEP 2144.05 I states that 'In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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)'.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate SWCNT, as suggested by Yang (see [0011]) into the negative electrode of Shin because Yang suggests doing so greatly reduces the amount used of the conductive agent and directly improve[s] content of active substance, so as to improve the energy density as suggested by Yang (see [0011]).
Regarding claim 6, Shin discloses the negative electrode of claim 1 and further discloses wherein the conductive material further comprises carbon black (see [0071] “conductive material” & “carbon black”).
Regarding claim 7, Shin discloses the negative electrode of claim 1 and further discloses wherein the negative electrode active material further comprises a carbonaceous active material (see abstract describes negative electrode active material & carbon coating layer & carbonaceous material).
Regarding claim 8, Shin discloses the negative electrode of claim 7 and further discloses wherein the carbonaceous active material comprises graphitizable carbon fibers (see [0045] “graphitized carbon fibers”).
Regarding claim 9, Shin discloses the negative electrode of claim 1 and further discloses a lithium secondary battery (see title).
Response to Arguments
Applicant’s arguments, see P5-P6, filed 12/29/2025, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 103 as being unpatentable over Son et al. (US 20170062804 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Shin et al. (WO 2019151813 A1, “Shin”, English equivalent US 20210074995 A1 used herein for citation purposes) in view of Yang et al. (CN 107946561 A, “Yang”, machine translation used herein for citation purposes) and Son et al. (US 20170062804 A1, “Son”).
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/020506 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 recites a substantially similar negative electrode material.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/020506 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 recites a substantially similar negative electrode composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 18/020506 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 recites a substantially similar negative electrode composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 7 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/020506 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 recites a substantially similar negative electrode composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of copending Application No. 18/020506 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 recites a substantially similar lithium secondary battery.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/S.A.A./Examiner, Art Unit 1725
/JAMES M ERWIN/Primary Examiner, Art Unit 1725 03/16/2026