DETAILED ACTION
This office action is in response to communication filed on 7/1/2026.
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
Applicant’s amendments with respect to claims filed on 7/1/2026 has been entered. Claims 1-15 remain pending in this application and are currently under consideration for patentability under 37 CFR 1.104. Claim 15 has been withdrawn from consideration.
The amendments and remarks filed on 7/1/2026 are sufficient to cure the previous claim objections set forth in the Non-Final office action mailed on 4/1/2026.
Terminal Disclaimer
The terminal disclaimer filed on 7/20/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of application numbers US 18/037031, 18/038390 and 18/034650 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
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.
Claims 1-2, 5 and 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Yashiro et al. (US 20200373609 A1) in view of Wee et al. (US 20110223480 A1, provided on the IDS filed 5/22/2024).
Regarding claim 1, Yashiro et al. teaches an all-solid lithium secondary battery (1, Fig. 2), comprising (see claim 1):
a positive electrode active material layer (12, Fig. 2);
a negative electrode active material layer (22, Fig. 2); and
a solid electrolyte layer (30, Fig. 2) disposed between the positive electrode active material layer (12, Fig. 2) and the negative electrode active material layer (22, Fig. 2),
wherein the negative electrode active material layer (22, Fig. 2) comprises a carbon structure (amorphous carbon/carbon black, [0066]) and silver nanoparticles (Ag particle, [0065]; see claim 21).
Yashiro et al. does not teach silver nanoparticles;
wherein the carbon structure comprises at least one hollow-type particle, and the hollow-type particle comprises a hollow and a carbonaceous shell surrounding the hollow.
Wee et al. teaches an electrode (claim 20) comprises:
silver nanoparticles (AgNP, [0097]; see Fig. 3a-3c and 4b-4d);
at least one hollow-type particle (single-wall carbon nanotubes (SWCNT), see [0040]), and the hollow-type particle comprises a hollow (hollow cylindrical, [0040]) and a carbonaceous shell (wall of SWCNT, [0040]) surrounding the hollow (hollow cylindrical, [0040]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to substitute the amorphous carbon/carbon black and Ag particle used in the negative electrode active material layer taught by Yashiro et al. with the SWCNT that comprises a hollow cylindrical and a wall of SWCNT surrounding the hollow and the AgNP as taught by Wee et al., because the use of carbon nanotubes as electrode material can provide a high electrical conductivity together with provide good mechanical and thermal properties (see Wee et al. [0041]) and the presence of AgNP can help in reducing the inter-tube contact resistance of the CNT and leading to a decrease in the overall internal resistance of the device, which is important in improving the power density (see Wee et al. [0112]).
Regarding claim 2, Yashiro et al. in view of Wee et al. teaches wherein the silver nanoparticles (AgNP, [0097]; see Wee et al. Fig. 3a-3c and 4b-4d) are disposed on a surface of the carbon structure (CNT in Wee et al. Fig. 3a-3c).
Regarding claim 5, Yashiro et al. in view of Wee et al. teaches wherein the hollow-type particle (SWCNT, Wee et al. [0040]) has an average particle diameter of 5 nm to 100 nm (about 5-7 nm, see Wee et al. Fig. 4d).
Regarding claim 7, Yashiro et al. in view of Wee et al. teaches wherein the carbon structure (single-wall carbon nanotubes (SWCNT), see Wee et al. [0040]) has a secondary particle shape (CNT/Ag-CNT network, Wee et al. Fig. 4(b), [0014]) in which a plurality of hollow-type particles (single-wall carbon nanotubes (SWCNT), see Wee et al. [0040]) are bonded to each other (inter-tube junction, see Wee et al. Fig. 4(b), 12(b)).
Regarding claim 8, Yashiro et al. in view of Wee et al. teaches wherein the carbon structure ( SWCNT, Wee et al. [0040]) is included in the negative electrode active material layer (22, Yashiro Fig. 2).
Yashiro et al. in view of Wee et al. does not teach the carbon structure is in an amount of 50 wt % to 98 wt %.
Yashiro et al. teaches the carbon structure (carbon black, CB, see Ex 11 in Table 1, page 9) is in an amount of 50 wt % to 98 wt % (80 wt%, see Ex 11 in Table 1, page 9).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the amount (wt%) of SWCNT taught by Yashiro et al. in view of Wee et al. to be 80 wt% taught by Yashiro et al. to exhibit higher discharge capacity (see Yashiro et al. [0115]).
Regarding claim 9, Yashiro et al. in view of Wee et al. teaches wherein the silver nanoparticles have an average particle diameter of 1 nm to 100 nm (1, 4, 7, 13 nm, see Wee et al. Table 4, page 10).
Regarding claim 10, Yashiro et al. in view of Wee et al. teaches wherein, in the negative electrode active material layer (22, Yashiro Fig. 2),
the silver nanoparticles (AgNP, [0097]; see Wee et al. Fig. 3a-3c and 4b-4d) are included.
Yashiro et al. in view of Wee et al. does not teach the silver nanoparticles are in an amount of 1 wt % to 40 wt % based on a total weight of the carbon structure and the silver nanoparticles.
Yashiro et al. teaches the silver nanoparticles (Ag, see Ex 11 in Table 1, page 9) are in an amount of 1 wt % to 40 wt % (20 wt%, see Ex 11 in Table 1, page 9) based on a total weight of the carbon structure and the silver nanoparticles.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the amount (wt%) of AgNP taught by Yashiro et al. in view of Wee et al. to be 20 wt% taught by Yashiro et al. to exhibit higher discharge capacity (see Yashiro et al. [0115]) and to keep the amount of Ag included in the negative active material layer about 10 wt % or more because when the amount of Ag included in the negative active material layer decreases, the amount of Ag remaining during discharge also decreases, and can be insufficient to inhibit formation of pores (see Yashiro et al. [0059]).
Regarding claim 11, Yashiro et al. in view of Wee et al. does not teach wherein a weight ratio of the carbon structure to the silver nanoparticles is in a range of 99:1 to 60:40 .
Yashiro et al. teaches wherein a weight ratio of the carbon structure to the silver nanoparticles is in a range of 99:1 to 60:40 (80:20, see Ex 11 in Table 1, page 9).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the weight ratio of the SWCNT to the AgNP taught by Yashiro et al. in view of Wee et al. to be 80:20 as taught by Yashiro et al. to exhibit higher discharge capacity (see Yashiro et al. [0115]).
Regarding claim 12, Yashiro et al. in view of Wee et al. teaches wherein the negative electrode active material layer (22, Yashiro Fig. 2) further comprises a negative electrode binder (binder, Yashiro [0068]).
Regarding claim 13, Yashiro et al. in view of Wee et al. teaches wherein the negative electrode active material layer (22, Yashiro Fig. 2) has a thickness of 1 μm to 100 μm (1 μm to about 20 μm, Yashiro [0070]).
Regarding claim 14, Yashiro et al. in view of Wee. et al. teaches further comprising:
a negative electrode collector (21, Yashiro Fig. 2); and
a metal layer (23, Yashiro Fig. 2) disposed between the negative electrode active material layer (22, Yashiro Fig. 2) and the negative electrode collector (21, Yashiro Fig. 2) in a charged state (overcharged state, see Yashiro claim 11),
wherein the metal layer comprises lithium (see Yashiro claim 11).
Claims 3-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Yashiro et al. (US 20200373609 A1) in view of Wee et al. (US 20110223480 A1, provided on the IDS filed 5/22/2024), further in view of Shimizu et al. (US 20200339421 A1).
Regarding claim 3, Yashiro et al. in view of Wee et al. is silent wherein the carbonaceous shell has a thickness of 1 nm to 15 nm.
Shimizu et al. teaches wherein the carbonaceous shell (shell, see Examiner’s Annotated Fig. 6) has a thickness of 1 nm to 15 nm (3-4 nm, see Examiner’s Annotated Fig. 6).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to substitute the SWCNT taught by Yashiro et al. in view of Wee et al. with the MWCNT that shell has a thickness of 3-4 nm as taught by Shimizu et al., because the MWCNT is excellent in thermal stability and conductivity when the diameter of the outermost wall of MWCNT is 3 nm or more (see Shimizu et al. [0050]).
Regarding claim 4, Yashiro et al. in view of Wee et al. is silent wherein the carbon structure has a specific surface area of 10 m2/g to 300 m2/g.
Shimizu et al. teaches wherein the carbon structure (MWCNT, [0123]) has a specific surface area of 10 m2/g to 300 m2/g (278 m2/g, see Example 2, [0123]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to substitute the SWCNT taught by Yashiro et al. in view of Wee et al. with the MWCNT that has a specific surface area of 278 m2/g as taught by Shimizu et al. to have excellent thermal stability and chemical stability (see Shimizu et al. [0004]).
Regarding claim 6, Yashiro et al. in view of Wee et al. is silent wherein, in Raman spectrum measurement of the carbon structure, the carbon structure has an ID/IG of 0.1 to 1.5.
Shimizu et al. teaches wherein, in Raman spectrum measurement of the carbon structure (MWCNT, [0123]), the carbon structure has an ID/IG of 0.1 to 1.5 (1.11; G/D ratios of 0.9, see Example 2, [0123]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to substitute the SWCNT taught by Yashiro et al. in view of Wee et al. with the MWCNT that has an ID/IG of 1.11 as taught by Shimizu et al. to have excellent thermal stability and chemical stability (see Shimizu et al. [0004]).
Response to Arguments
Upon receipt of the Terminal Disclaimer filed on 7/20/2026, the double patenting rejections in the Office action mailed on 4/1/2026 have been withdrawn.
Applicant's arguments filed on 7/1/2026 have been fully considered but they are not persuasive. Regarding Wee, applicant states that Wee’s single-wall carbon nanotube (SWCNT) is structurally distinct from the “hollow-type particle” recited in claim 1 because Wee’s SWCNT is structurally different from “hollow-type particle” as illustrated in Fig. 3 of the specification.
Applicant further states that Wee’s SWCNT is not a nanoparticle and categorically different from nanoparticles based on Wee’s nanostructure material dimensional types classifications “zero dimensional (0D): nanoparticles; one dimensional (1D): nanotubes”.
In addition, applicant states that the cylindrical wall of a SWCNT is not a “carbonaceous shell surrounding the hollow”.
The Examiner respectfully disagrees. First, the Examiner agrees with applicant that Wee’s SWCNT is not the same type of particle as the particle 100 in Fig. 3 of the specification, which has a specific particle shape called “spherical particle”. However, “spherical particle” is not recited in claim 1. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims.
In contrast, claim 1 recites “at least one hollow-type particle”. SWCNT is recognized as one hollow particle in nanotechnology art. A particle is a small localized object which can be described by several physical or chemical properties, such as volume, density, or mass (see Wikipedia: <https://en.wikipedia.org/wiki/Particle>). The average particle size of SWCNTs is in the range of 6 nm to 10 nm (see Takeuchi US 20200384127 A1 [0027]). “Hollow” see “graphene sheet rolled up to form a hollow cylinder” (Wikipedia: <https://en.wikipedia.org/wiki/Carbon_nanotube>).
Second, “nanoparticle” is not recited in claim 1 therefore the argument regarding if Wee’s SWCNT is a nanoparticle is moot. Furthermore, carbon nanotube (SWCNT) can be either zero dimensional (0D) (nanoparticle) or one dimensional (1D) nanostructure (nanotube). When the length of SWCNT is in micro-meter range (most common type SWCNT), SWCNT has 1D nanostructure. However, when the length of SWCNTs is reduced to the same order of magnitude as its diameter (ca 1nm), SWCNT is achieving zero dimensional (0D) structure as a nanoparticle (see “Zero-Dimensional” Single-Walled Carbon Nanotubes, Angewandte Chemie International Edition, Volume52, Issue43, Pages 11308-11312; DOI:10.1002/anie.201305526).
Third, Examiner agrees with applicant that Wee’s carbonaceous shell (wall of SWCNT, [0040]) has a different shape of the spherical particle shell as 120 in Fig. 3 of instant application. However, “spherical particle shell” is not recited in claim 1. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. Therefore, for the aforementioned reasons, rejections under Wee stay (see rejection 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 NING CHEN whose telephone number is (571)272-1163. The examiner can normally be reached 9:30 AM - 4:30 PM.
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/NING CHEN/
Examiner, Art Unit 1723 /TIFFANY LEGETTE/Supervisory Patent Examiner, Art Unit 1723
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