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 .
Response to Amendment
The amendment filed on 16 April 2026 has been entered.
All previous claim objections and rejections are withdrawn due to Applicant’s amendment.
New objections and rejections follow.
Claim Objections
Claims 10-13 are objected to because they include incorrect status identifiers. In response to the restriction sent on 2 October 2025, Applicant elected clams 1-9, drawn to a negative electrode. This election was confirmed in the office action of 16 January 2026, and claims 10-13 were withdrawn from consideration. Accordingly, claims 10-13 are still treated as withdrawn.
Claim 9 is objected to because it includes redundant limitations. The current amendment to claim 1 adds the limitation “wherein the negative electrode active material has a structure in which the first silicon particles are uniformly dispersed using the carbon material as a matrix and the negative electrode active material further has a form in which the second silicon particles are partially adsorbed on a surface of the carbon material”. The same limitations are present in lines 1-4 of claim 9. The limitations should be deleted from claim 9.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 5, and 7-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Line 6 of claim 1 recites the limitation, “wherein the silicon material is a non-doped silicon (Si) particle,”. However, later limitations in lines 8, 9, and 13-15 of the claim refer to “first silicon particles” and “second silicon particles”, which are included in the silicon material. The relationship between the singular “particle” of line 6 and the later recited first and second silicon particles is unclear. Specifically, it is unclear how a singular particle can include plural particles. As a potential remedy, it is advised that the words “a” and “particle” be deleted from line 6 of claim 1.
The claim will be examined herein as though the limitation read “wherein the silicon material is non-doped silicon (Si),”
In addition, lines 8-10 of claim 1 recites the limitations, “wherein the silicon material includes at least one of first silicon particles having an average particle size (D50) ranging from 1 µm to 20 µm or second silicon particles having an average particle size (D50) ranging from 30 nm to 500 nm”, which presents the presence of both first and second silicon particles as optional. Lines 13-16 of claim 1 later recite, “wherein the negative electrode active material has a structure in which the first silicon particles are uniformly dispersed using the carbon material as a matrix and the negative electrode active material further has a form in which the second silicon particles are partially adsorbed on a surface of the carbon material”, which requires the presence of both first and second silicon particles. The presence of both first and second silicon particles cannot be simultaneously optional and required, therefore the claim is indefinite. For examination purposes, the presence of both first and second silicon particles meeting the limitations of line 13-16 of claim 1 are considered to be required.
Claims 2, 3, 5, and 7-9 depend from claim 1 and are therefore indefinite for the same reasons.
In addition, claim 5 recites the limitation, “wherein the negative electrode active material has a structure in which the first silicon particles or the second silicon particles are uniformly dispersed using the carbon material as a matrix”. However, claim 1 requires the first silicon particles to be uniformly dispersed using the carbon material as a matrix, so it is indefinite to subsequently present this limitation as optional.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Wei. (CN 101442124 B) Citations are made to the attached machine translation.
Regarding claim 1, Wei teaches a negative electrode for a lithium secondary battery (Abstract) comprising: a negative electrode current collector (i.e. “conductive substrate”; Para [0021]-[0022]); and a negative electrode mixture layer located on the negative electrode current collector and contains a negative electrode active material (Para [0010]-[0021]);
wherein the negative electrode active material includes a carbon material and a silicon material that includes non-doped Si particles (Para [0010]; graphite, micro and nano silicon powders would be understood to be non-doped);
wherein the average particle size of the carbon material is 1-5 µm, which is within the claimed range; wherein the silicon material includes first silicon particles having an average particle size within the claimed range (Para. [0013]; micron silicon powder having diameter of 1-10 µm, preferably 1-5 µm) and second silicon particles having an average particle size overlapping the claimed range. (Para 0013; nano silicon powder having diameter of 10-50 nm) 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);
wherein the negative electrode mixture layer contains 40 wt.% or less of Si based on the total weight of the negative electrode mixture layer. (e.g. Embodiment 4, Para [0050]; disclosed 28 g of Si within 80 g of total composite material obtained, which corresponds to 35 wt.%);
wherein the negative electrode active material has a structure in which the first silicon particles are uniformly dispersed using the carbon material as a matrix (e.g. Embodiment 4, Para [0050]; mixing, drying, sintering, and milling process is considered to provide uniform dispersion as claimed; the presence of 1 part silicon micro- and nano-particles to 2-5+ parts carbon microparticles and thermally cracked carbon as disclosed in para [0011] is considered to provide the silicon particles within a carbon matrix) and the negative electrode active material further has a form in which the second silicon particles are partially adsorbed on a surface of the carbon material. e.g. Embodiment 4, Para [0050]; mixing, drying, sintering, and milling process is considered to provide at least a portion of the nano silicon particles directly on the surface of the carbon material, which corresponds to the limitation)
Regarding claim 2, Wei discloses up to a 5:1 graphite to silicon powder weight ratio (Para [0011]), which would correspond to a Si wt.% below 20% when considering the additional components of the negative electrode mixture layer (i.e. thermal cracking carbon discussed in [0015]) 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)
Regarding claim 3, Wei discloses the carbon material including artificial graphite. (Para [0050])
Regarding claim 5, Wei discloses both the first and second silicon particles being uniformly dispersed using the carbon material as a matrix. (e.g. Embodiment 4, Para [0050]; mixing, drying, sintering, and milling process is considered to provide uniform dispersion as claimed; the presence of 1 part silicon micro- and nano-particles to 2-5+ parts carbon microparticles and thermally cracked carbon as disclosed in para [0011] is considered to provide the silicon particles within a carbon matrix)
Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Bohnke et al. (US 20160248081 A1) in view of Wei (CN 101442124 B).
Regarding claim 1, Bohnke teaches a negative electrode for a lithium secondary battery prepared from composite material for a negative electrode mixture comprising of silicon particles (a silicon material) ground together with carbon fibers and mixed with graphitic carbon particles (a carbon material) ([0025] -[0030]), which are negative electrode active materials ([0006]-[0007]), and spreading it on a negative electrode current collector ([0031]), thus forming a negative electrode mixture layer on the negative electrode current collector. Bohnke also teaches the average particle size of the graphitic carbon (carbon material) can range from 5 µm to 60 µm ([0049]), which overlaps with the claimed range. 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) Furthermore, Bohnke discloses the silicon material includes particles where the average size is less than or equal to 4 µm, preferably less than or equal to 300 nm, and in particular less than or equal to 150 nm ([0055]) The silicon disclosed by Bohnke would be understood to be undoped, as there is no suggestion of doping. (e.g. Para [0055]-[0059])
Bohnke teaches in Table 2 ([118]) a composition of the negative electrode mixture layer containing 96% of the composite material, which can have 0.1 to 15 wt.% silicon ([0059]), including a specific example of 5% silicon shown in Table 1 ([0104]), resulting in a range of about 0.1 to about 14 wt.% silicon in the negative electrode mixture layer, and which overlaps with the claimed range of 40 wt.% or less of silicon (Si) based on a total weight of the negative electrode mixture layer. 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)
The silicon particle sizes of Bohnke overlap with the claimed range of particle size for the first silicon particles or the second silicon particles, but Bohnke does not explicitly teach the silicon material comprising both first silicon particles having average size from 1-20 µm and second silicon particles having an average size of 30-500 nm.
Wei teaches a negative electrode material that overcomes issues of poor cycle performance and discharge capacity (Para 0009) by providing a composite material including graphite with microparticles of silicon between 1-10 µm diameter and nano silicon powder of 10-50 nm diameter. (Para 0010-0015)
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the negative electrode material of Bohnke by selecting silicon particles of 1-10 µm diameter and particles of 10-50 nm diameter as the silicon material, as taught by Wei, in order to improve cycle performance and discharge capacity. (Para 0009) 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);
Bohnke further teaches that the grinding of the carbon fibers with the silicon leads to more homogeneous dispersion of these two compounds in the graphitic carbon matrix ([0134]), thereby teaching the graphitic carbon (carbon material) is a matrix and also that the silicon particles (i.e. both the first and second silicon particles of Bohnke as modified by Wei) are uniformly dispersed in the carbon material. In addition, based on the disclosed homogeneous dispersion of silicon within the carbon matrix and location of the silicon particles physically on the graphite surface as apparent in Bohnke’s Figure 2, it is considered that the silicon particles (including the second silicon particles of Bohnke as modified by Wei) are at least partially adsorbed on a surface of the carbon material.
Regarding claim 2, Bohnke teaches the negative electrode of claim 1, and as pointed out previously in addressing claim 1, Bohnke teaches wherein the negative electrode mixture layer contains Si in an amount of about 0.1 to about 14 wt.% silicon in the negative electrode mixture layer, which overlaps with the claimed range. 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)
Regarding claim 3, Bohnke teaches the negative electrode of claim 1, and further teaches the carbon material may be selected from a synthetic graphitic carbon or natural one ([0046]), thereby reading on the claimed species of natural graphite and artificial graphite.
Regarding claim 5, Bohnke teaches the negative electrode of claim 1, and Bohnke further teaches that the grinding of the carbon fibers with the silicon leads to more homogeneous dispersion of these two compounds in the graphitic carbon matrix ([0134]), thereby teaching the graphitic carbon (carbon material) is a matrix and also that the silicon (i.e. including both first and second silicon particles) is uniformly dispersed in the carbon material.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Bohnke et al (US 20160248081 A1) and Wei (CN 101442124 B) as applied to claims 1-3 and 5 above and further in view of Kim et al (US 20200243848 A1).
Regarding claim 7, modified Bohnke teaches the negative electrode of claim 1. Bohnke teaches the negative electrode active material includes carbon fibers ([0025] -[0030]), and further teaches that the category of carbon fibers includes carbon nanotubes ([0016]) and that the carbon fibers have a diameter less than or equal to 150 nm ([0063]). Bohnke teaches that the carbon fibers are used as a potential solution to address loss of charge capacity as the charge-discharge cycles proceed ([0015]). Bohnke does not explicitly state that the diameter is a D50 value nor teaches the explicit selection of carbon nanotubes as a species.
However, in the same field of endeavor, Kim teaches use of fibrous carbon nanotubes as a conductive material for a negative electrode active material (layer 40) consisting of silicon material and artificial graphite ([0038], [0040] lines 7-12; Fig. 2) and discloses that the carbon nanotubes can have an average diameter of 10-120 nm ([0046]), which overlaps with the claimed range. 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) Kim further teaches that when the average diameter of carbon nanotubes satisfies the range, it retains conductivity between silicon-based materials and improves cycle characteristics of a lithium secondary battery ([0047]-[0048]), which corresponds to the batteries taught by Bohnke. They also teach carbon nanotubes provide unique properties of electrical conductivity such ([0045]) that when carbon nanotubes are positioned sufficiently throughout the surface of the silicon-based active material in a line contact mode as opposed to a spot contact mode such as with a spherical conductive material as carbon black ([0037]-[0038], [0041]), a conductive path throughout the silicon-based active material can be retained stably, which inhibits degradation of discharge capacity over repeating charge/discharge cycles ([0041]). One of ordinary skill in the art at the time of filing would have found it obvious to modify Bohnke’s negative electrode to use carbon nanotubes as the carbon fibers as taught by Kim because it is a suitable option and for the benefit of retaining a conductive path throughout the silicon-based active material within the negative electrode active layer of Bohnke. Thus, the carbon nanotubes read on the carbon body of the limitation of claim 7.
Regarding claims 8 and 9, the combination above teaches the negative electrode of claim 7, wherein modified Bohnke teaches the negative electrode active material has a structure in which the silicon particles (i.e. first silicon particles of 1-10 µm diameter as taught by Wei) are uniformly dispersed using the graphitic carbon particles (i.e. the carbon material) as a matrix ([0134]). When using the carbon nanotubes as taught by Kim within the negative electrode mixture layer, the binding ability of the negative electrode material is improved and carbon nanotubes sufficiently form a conductive network between silicon particles (Kim: [0059]), wherein the silicon particles correspond to the first silicon particles in modified Bohnke. As previously pointed out, Kim teaches that when carbon nanotubes are positioned sufficiently throughout the surface of the silicon-based active material in a line contact mode as opposed to a spot contact mode such as with a spherical conductive material as carbon black ([0037]-[0038], [0041]), a conductive path throughout the silicon-based active material can be retained stably, which inhibits degradation of discharge capacity over repeating charge/discharge cycles ([0041]). If a conductive network exists between the first silicon particles based on a conductive path formed by carbon nanotubes, and forms a line contact with the surface of the silicon-based particle, then inherently the carbon nanotubes (carbon body) are attached to the first silicon particles and must be partially or entirely adsorbed on a surface of the first silicon particle.
As to the limitations recited in claim 9, “wherein the negative electrode active material has a structure in which the first silicon particles are uniformly dispersed using the carbon material as a matrix, the negative electrode active material has a form in which the second silicon particles are partially adsorbed on the surface of the carbon material”, these limitations were addressed above in addressing claim 1.
Response to Arguments
Applicant’s arguments with respect to the previous rejections, which relied upon the Lee reference (KR 20190047196A), 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.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Barton, whose telephone number is (571) 272-1307. The examiner can normally be reached on M-F 9:30 AM – 6:00 PM.
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/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 14 August 2026
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