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 . If status of the application as subject to 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 a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-8, 10-19, & 40-42 are pending in the application and are presently examined. Claims 1-19 were rejected in the 12/18/2025 office action. Applicant cancelled claim 9 and added new claims 40-42.
Response to Amendment / Arguments
The amendment filed 3/17/2026, in response to the 12/18/2025 office action, has been entered. Applicant’s claim amendments overcame all 35 U.S.C. 102 and 35 U.S.C. 103 rejections; nevertheless, the claims remain rejected under 35 U.S.C. 103 due to additional prior art.
Claim Interpretation
Claim 1 recites an “annealing treatment”. Claim 1 doesn’t further define “annealing treatment”. The specification doesn’t provide a special definition for “annealing treatment”.
A dictionary definition of “anneal” is “to heat (glass, metals, etc.) and then cool, sometimes slowly”1. For present examination, without further definition in the claim, “annealing treatment” means to heat then cool.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
The claims are in bold font, the prior art is in parentheses.
Claims 1-4, 13-19, & 40-42 are rejected under 35 U.S.C. 103 as being unpatentable over US20200295352A1 (Oh) in view of US20130212879A1 (Ogino).
Oh teaches the following claim 1 limitations:
A composite (paragraphs 20 & 32: silicon particles & silicon dioxide particles) for an electrode for an electrochemical device (paragraph 32: secondary battery comprising an electrode), comprising:
nanoparticles (paragraphs 20 & 32: silicon particles & silicon dioxide particles have nanometer diameters) of an active material (paragraph 32), said nanoparticles being surface refined by a post-synthetic annealing treatment (paragraphs 36-37: third step heating then fourth step cooling)…
conformal graphene coating on each surface of said surface-refined nanoparticles (Paragraph 41: The sixth step is forming a carbon-containing coating layer on the silicon oxide composite. Paragraph 27: The carbon-containing coating layer comprises graphene)
Claim 1 also states that the nanoparticles are surface refined “to remove or minimize surface impurities comprising lithium carbonate and/or lithium hydroxide on surfaces of said nanoparticles”. MPEP § 2113 provides the law for a recitation of how an article is made:
“‘[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.’ In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”
This recitation of how the article is made does not limit the scope of the claim for patent examination purposes, except to the extent that the process affects the product.
If lithium carbonate and/or lithium hydroxide were not present on Oh’s particles prior to annealing, then the final product would be the same as if they had been present, then were removed. It is the final product that is examined, because this is not a method of manufacture claim.
If lithium carbonate and/or lithium hydroxide were present on Oh’s particles, then they would have been removed or minimized, according to teachings of the present specification and claims. In this case, Oh fulfills the requirements of claim 1.
Claim 1 also states:
the conformal graphene coating yields a percolating, electrically conductive network between said surface-refined nanoparticles
Graphene is inherently electrically conductive, so presumably Oh’s graphene is electrically conductive. Also, Oh provides the carbon-containing coating layer for electrical conductivity (paragraphs 25-26).
Oh’s composite is the same as the claimed composite, as discussed above; therefore, presumably Oh’s graphene is porous, and thus percolating.
Ogino provides additional guidance. Ogino teaches porous graphene as a coating on a negative electrode active material for improved current flow (paragraphs 58 & 86). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Oh’s graphene to be porous, as taught by Ogino, for improved current flow.
With regard to claim 2, modified Oh teaches the limitations of claim 1 as described above. Oh fails to teach the following claim 2 limitation, which is taught by Ogino:
the active material comprises nickel-rich transition metal oxides, cobalt-rich transition metal oxides, and lithium-rich transition metal oxides (paragraph 103: LiNiPO4, LiCoPO4, & LiFePO4)
Ogino is directed to an electrode with suppressed deterioration and a reliable lithium secondary battery. It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Oh’s active material include to include LiNiPO4, LiCoPO4, & LiFePO4, as taught by Ogino, for an electrode with suppressed deterioration and a reliable lithium secondary battery.
With regard to claim 3, modified Oh teaches the limitations of claims 1-2 as described above. Oh fails to teach the following claim 3 limitation, which is taught by Ogino:
the nickel-rich transition metal oxides comprise nickel-rich lithium oxides, nickel-rich sodium oxides, or nickel-rich magnesium oxides (paragraph 102: LiNiO2 or paragraph 103: LiNiPO4)
With regard to claim 4, modified Oh teaches the limitations of claims 1-3 as described above. Oh fails to teach the following claim 4 limitation, which is taught by Ogino:
the nickel-rich lithium oxides comprise… LiNiO2 (paragraph 102: LiNiO2)
With regard to claims 13 & 19, modified Oh teaches the limitations of claim 1 as described above. Oh also teaches the following limitations of claims 13 & 19:
Claim 13
An electrode for an electrochemical device, comprising: said composite of claim 1. (paragraph 27)
Claim 19
An electrochemical device, comprising the electrode of claim 13. (paragraph 27)
With regard to claims 14-18, modified Oh teaches the limitations of claims 1 & 13 as described above. Claims 14-18 recite:
Claim 14
the electrode has superlative performance including high rate capability, low impedance, high volumetric energy and power densities, and long cycle life, compared with a control electrode that comprises nanoparticles of the active material without surface refining and/or conformal graphene coating
Claim 15
the electrode has electrode polarization during activation lower than that of the control electrode
Claim 16
the electrode has initial capacity and rate capability better than that of the control electrode
Claim 17
the electrode has electrochemical reversibility better than that of the control electrode
Claim 18
the electrode has cell impedance substantially lower than that of the control electrode
Oh fails to explicitly describe these properties. Modified Oh, however, teaches the claimed electrode, so presumably modified Oh’s electrode would also have these properties.
With regard to claims 40-42, modified Oh teaches the limitations of claim 1 as described above. Claims 40-42 recite:
Claim 40
said nanoparticles being surface refined such that said surface-refined nanoparticles have XPS (X-Ray photoelectron spectroscopy) C 1s and O 1s spectra with the intensity of the carbonate peaks decreased dramatically, compared to that of said nanoparticles before the surface refining
Claim 41
said nanoparticles being surface refined such that said surface-refined nanoparticles have XPS (X-Ray photoelectron spectroscopy) O 1s spectrum with an increase in the peak intensity assigned to lattice transition metal-oxygen bonds at 529.8 eV, compared to that of said nanoparticles before the surface refining
Claim 42
said nanoparticles being surface refined such that said surface-refined nanoparticles have lower electrode polarization during activation, compared to that of said nanoparticles before the surface refining
Claims 40-42 are types of product-by-process claims, comparing the end product to a starting product. MPEP § 2113 provides the law for a recitation of how an article is made:
“‘[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.’ In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”
The initial composite, and how it arrived at the final composite, are not considered for patentability.
Regarding claims 40-41, Oh and Ogino don’t teach carbonate in the composite. There are two options:
OPTION 1: Before annealing, Oh and Ogino did not have carbonate impurities (claim 40) or transition metal-oxygen bonds from impurities (claim 41). In this case, the claim requirements are satisfied because there would be no such impurities in the composition after annealing: “determination of patentability is based on the product itself” (MPEP § 2113).
OPTION 2: Before annealing, Oh and Ogino did have carbonate impurities (claim 40) or transition metal-oxygen bonds from impurities (claim 41). In this case, these impurities would have been reduced, because Oh and Ogino teach the presently-claimed method for achieving this.
Regarding claim 42, the present specification teaches that lithium carbonate and hydroxide contamination cause high electrode polarization (page 2, lines 23-26). Thus, removal of these carbonates and hydroxides lower electrode polarization. Claim 42, like claims 40-41, fall under OPTION 1 or OPTION 2 discussed above.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US20200295352A1 (Oh) in view of US20130212879A1 (Ogino), as applied to claims 1-4, and further in view of US20190157681A1 (Ho). Ogino fails to teach the following claim 5 limitation, which is taught by Ho:
the nickel-rich lithium oxides are doped with elements including Al, B, Zr, Nb, Fe, Cr, Cu, Mo, W, and/or V (paragraph 47: the cathode active material is doped with Al)
Ho teaches an active material for increased productivity and reduced manufacturing cost of lithium-ion batteries (abstract; paragraph 46). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Oh’s active material to include an Al dopant, as taught by Ho, as part of lithium-ion battery increased productivity and reduced manufacturing cost.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over US20200295352A1 (Oh) in view of US20130212879A1 (Ogino), as applied to claim 1, and further in view of US20110121240A1 (Amine).
With regard to claim 6, modified Oh teaches the limitations of claim 1 as described above. Oh fails to teach the following claim 6 limitation, which is taught by Ogino:
the post-synthetic annealing treatment is performed by annealing at a temperature in a range of about 150-350°C… for about 0.5-2 hours to effectively refine the surfaces of said nanoparticles (paragraph 77: heated 200-400 oC for 1-2 hours)
Ogino is directed to an electrode with suppressed deterioration and a reliable lithium secondary battery. It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Oh’s active material include to be heated 200-400 oC for 1-2 hours, as taught by Ogino, for an electrode with suppressed deterioration and a reliable lithium secondary battery.
Ogino’s 200-400 oC range overlaps the claimed 150-350 oC range. MPEP 2144.05 (II)(A) provides the law for this issue:
“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)”
Given that Ogino’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the temperature range in claim 6 is an obvious variant of Ogino’s range.
Ogino teaches the process, so presumably the result of “effectively refine the surfaces of said nanoparticles” will occur.
Oh & Ogino fail to teach the following claim 6 limitation, which is taught by Amine:
the post-synthetic annealing treatment is performed… in an oxidizing environment (paragraph 31)
Amine teaches a graphene-coated electroactive material (abstract) which can be heated at 250-450 oC in an oxidizing atmosphere (paragraph 13). Amine’s objective is to “prepare carbon-coated electroactive materials that avoid the high temperature, pressure, and manufacturing extremes” of other methods (paragraph 27). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for modified Oh’s heat treatment to have been performed in an oxidizing atmosphere, as taught by Amine, to “prepare carbon-coated electroactive materials that avoid the high temperature, pressure, and manufacturing extremes” of other methods (paragraph 27).
With regard to claim 7, modified Oh teaches the limitations of claims 1 & 6 as described above. Claim 7 recites:
the post-synthetic annealing treatment does not produce any measurable changes to a bulk structure of said nanoparticles
Modified Oh teaches the claim 6 process; therefore, presumably the result of claim 7 would also be achieved by modified Oh.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US20200295352A1 (Oh) in view of US20130212879A1 (Ogino), as applied to claim 1, and further in view of US20190288260A1 (Delaporte). Oh fails to teach the following claim 8 limitation, which is taught by Delaporte:
the graphene comprises solution-exfoliated graphene (paragraphs 40 & 45: solution-exfoliated graphene on electrochemically active cathode material)
Delaporte is directed to decreasing time, manufacturing cost, toxic solvents, temperature, and pressure of Li-ion battery electrode preparation (paragraph 6). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Oh’s active material to have been coated with solution-exfoliated graphene, as taught by Delaporte, as part of Li-ion battery electrode preparation for decreased time, manufacturing cost, toxic solvents, temperature, and pressure.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US20200295352A1 (Oh) in view of US20130212879A1 (Ogino), as applied to claim 1, and further in view of US20160156021A1 (Aihara). Oh fails to teach the following claim 10 limitation, which is taught by Aihara:
The composite of claim 1, further comprising amorphous carbon with sp2-carbon content. (Paragraph 68; figure 2: “first coating layer 102 may be on a surface of the positive active material particle 101”. Paragraph 71; figure 2: “the first coating layer 102… including carbon… has an amorphous structure in which carbon atoms bonded to each other by sp3 hybrid orbitals… and carbon atoms bonded to each other by sp2 hybrid orbitals”.)
Aihara is directed to an electrode with active material particles for a lithium ion secondary battery having improved discharge capacity and load characteristics” (paragraphs 6 & 9). A first coating layer 102 on the active material particles 101 includes an amorphous carbon structure with carbon atoms bonded to each other by sp2 hybrid orbitals (paragraphs 68 & 71).
It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for modified Oh’s active material to include amorphous carbon with carbon atoms bonded to each other by sp2 hybrid orbitals, as taught by Aihara, as part of a lithium ion secondary battery having improved discharge capacity and load characteristics.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over US20200295352A1 (Oh) in view of US20130212879A1 (Ogino) and US20160156021A1 (Aihara), as applied to claims 1 & 10, and further in view of US20180254517A1 (Hersam). Ogino fails to teach the following limitations of claims 11-12, which are taught by Hersam:
Claim 11
the amorphous carbon is an annealation product of ethyl cellulose (paragraph 34)
Claim 12
The composite of claim 11, being formed by annealing a mixture of said nanoparticles, said graphene (see discussion under claim 1), and ethyl cellulose at a temperature for a period of time to decompose the ethyl cellulose (paragraph 34), thereby resulting in said composite having said annealation product of the ethyl cellulose (paragraph 34).
Hersam is directed to cathode composite materials for improved cycling, calendar life, packing density, and volumetric energy density (paragraphs 4-5). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for modified Oh’s positive electrode active material to include amorphous carbon, which is an annealation product of ethyl cellulose, as taught by Hersam, for improved cycling, calendar life, packing density, and volumetric energy density.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at 303-297-4684.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.G.W./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
1 https://www.collinsdictionary.com/us/dictionary/english/anneal#google_vignette
Prosecution Insights