DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 14, 2026 has been entered.
Status of Claims
Claim 1 is amended. Claims 1-6 are being examined on the merits in this office action.
Remarks
Applicant’s amendments and arguments have been entered. A reply to the Applicant’s remarks/arguments is presented after addressing the claims.
Any rejections and/or objections made in the previous Office Action and not repeated below, are hereby withdrawn in view of Applicant’s amendments or/and arguments.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. References cited in the current Office action can be found in a prior Office action.
Specification
The amended Specification filed on May 1, 2026 is acknowledged but not accepted/entered because Applicant introduces new limitations in paragraphs [0019]-[0020] not disclosed in the specification as originally filed.
Appropriate action is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 is amended to add “or a silicon oxide phase” and “or the silicon oxide phase”. The added limitations are new matters.
Claim Rejections - 35 USC § 103
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (US 20180342757 A1, hereafter Choi).
Regarding claim 1, Choi teaches a non-aqueous electrolyte secondary (e.g, Examples 7-12) comprising:
a positive electrode, a negative electrode, and a non-aqueous electrolyte (e.g., [0188]-[0189]),
wherein the negative electrode comprises a negative electrode active substance containing a Si-containing material (e.g., “110” + ”120” in Fig. 2); and
the Si-containing material comprises a first Si-containing material (“110”) comprising a silicate phase (“113” in Fig. 2 may be a silicate, see [0041], [0043] and [0059]) and silicon particles (“111” in Fig. 2 may be silicon, see [0032] and [0059]) dispersed in the silicate phase (See Fig. 2, “110”), and a second Si-containing material (“120”) comprising a carbon phase (“122” in Fig. 2, and [0070]-[0071]) and silicon particles (“121” may be silicon, [0059]) dispersed in the carbon phase (See “120” in Fig. 2).
The limitation recited in the last paragraph represents a characteristic or property of the non-aqueous electrolyte secondary battery. Since Choi teaches substantially the same non-aqueous electrolyte secondary battery as claimed, as addressed above, the claimed characteristic or property is expected to be necessarily present. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997). See MPEP § 2112.01.
As to the newly added limitation with respect to the weight range, Choi further discloses in paragraph [0078] that the second Si-containing material contains 2-50 wt% of carbon phase based on 100 wt% of silicon particles of the second Si-containing material. A simple calculation gives rise to a percentage of about 67 wt% to about 98 wt% of silicon particles of the second Si-containing material based on a total mass of the second Si-containing material. The claimed range of 30-80 mass% overlaps that of about 67 wt% to about 98 wt%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 2, Choi teaches the non-aqueous electrolyte secondary battery according to claim 1, wherein a mass ratio of the second Si-containing material to the first Si-containing material is 0.25 to 4 ([0081]), lying inside the range of 0.2 to 20 as instantly claimed. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 3, Choi teaches the non-aqueous electrolyte secondary battery according to claim 1, wherein the Si-containing material has a content of 2% to 50% (calculated from 1:1 to 1:49) based on a total mass of the negative electrode active substance. The claimed range of 5% to 20% lies inside that of 2% to 50%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 4, Choi teaches the non-aqueous electrolyte secondary battery according to claim 1, wherein the carbon phase of the second Si-containing material may be amorphous carbon (i.e., free of crystalline carbon). See [0070-[0071].
Regarding claim 5, Choi teaches the non-aqueous electrolyte secondary battery according to claim 1, wherein the silicate phase of the first Si-containing material comprises an alkali metal element and/or an alkaline earth metal element (See [0041], [0043]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Choi, as applied to claim 1 above, and further in view of Uchiyama et al. (US 20200350591 A1, hereafter Uchiyama).
Regarding claim 6, Choi teaches the non-aqueous electrolyte secondary battery according to claim 1, wherein the silicate phase of the first Si-containing material comprises lithium silicate ([0041], [0043]). Although Choi does not disclose a specific formula of lithium silicate, a silicate represented by, for example, Li2SiO3 is known to be included as a negative electrode active material, as evidenced by Uchiyama ([0059]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have included Li2SiO3 taught by Uchiyama as a component in Choi’s negative electrode. Note that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP § 2144.07.
Response to Arguments
Applicant's arguments filed May 1, 2026 have been fully considered but they are not persuasive.
Applicant's arguments are based on the claims as amended. The amended claims have been addressed in the new rejections above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHONGQING WEI whose telephone number is (571)272-4809. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727
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