DETAILED ACTION
Status of Claims
Claims 1-2 have been amended. Claims 1-6 are pending and 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Any rejections and/or objections made in the previous Office Action and not repeated below, are hereby withdrawn in view of Applicant’s amendments or/and arguments.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 title of the invention is acknowledged and accepted.
The amended paragraph [0020] of the specification filed Jan. 26, 2026 is acknowledged and not accepted because the amended description renders the scope of the invention unascertainable. Specifically, the “Si-containing material” have two different compositions:
1) “a Si-containing material having a … structure in which fine silicon particles are … in an amorphous silicate phase”; and
2) “The Si-containing material is represented by a general formula SiOx (0.5 ≤ x ≤ 1.6)”.
In 1), the composition of Si-containing material is Si and silicate; in 2), the composition of Si-containing material is SiOx.
It is confusing as to what the real composition of “Si-containing material” is. The specification is not self-consistent.
Appropriate action is required.
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.
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 Jan. 26, 2026 have been fully considered but they are not persuasive.
1) Applicant argues:
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In response, this argument is not persuasive because Choi does teach the subject matter mentioned in the argument, as explained below:
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2) Applicant’s arguments with respect to claims 2-6 are based on the alleged deficiency of the rejection of claim 1. Since the rejection of independent claim 1 is not improper, as addressed above, the arguments regarding the rejections of dependent claims 2-6 are not persuasive.
3) In response to the following argument,
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it is noted that since Choi teaches substantially the same non-aqueous electrolyte secondary battery as claimed, the claimed characteristic or property is expected to be necessarily present. 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. See the rejection of claim 1 above.
Conclusion
THIS ACTION IS MADE FINAL. 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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (571)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727