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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11/29/2022 and 02/12/2026, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Terminal Disclaimer
The terminal disclaimer filed on 02/10/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of copending Application No. 18/059,758 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Amendment
The amendment filed on 02/10/2026 has been entered. Claim 1 is amended, Claim 11 is canceled and Claims 1-10 are pending.
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.
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 1-6, 8-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (KR20190044397A - US 20200411843 A1 Referenced for Citations), hereinafter "Song". Song et al. is analogous prior art to the claimed invention because it pertains to the same field of endeavor, namely solid state negative electrode materials.
In regard to Claim 1, Song et al. discloses a negative electrode active material comprising: a graphite particle having a void (pore) inside and a first solid electrolyte wherein the void has a void size of 100 nm or more and 300 nm or less (Song, Abstract), and wherein the graphite particle has a median size of 5-20 μm (Song, [0054]), which anticipates the claimed ranges.
Song et al. also discloses that the skilled artisan can tune the void size to either allow or restrict the infiltration of the solid electrolyte into the pores depending on the disclosed embodiment and the desired outcome (Song, [0049]). In fact, Song discloses a specific example of an anode comprising graphite particles with open voids with void size within the claimed range that are then dipped in a solution of PEO-LiTFSI solid electrolyte precursor and a solvent, wherein the solvent is then removed and the mixture dried to crystalize the solid electrolyte precursor and form the negative active material (Song, Example 1), which is substantially similar to the method used to infiltrate the solid electrolyte into the voids of the graphite particles in the original specification (Original Specification, [0098-0103]). Further, Song demonstrates the graphite particles with open pores retain the solid electrolyte (Song, [0042-0043], Figure 2). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide the porous graphite which has at least some portion of the voids filled with the solid electrolyte as doing so is but one such embodiment of Song and as doing so would amount to nothing more than a variation of it for use in the same field based on design incentives or other market forces, as the variations are predictable to one of ordinary skill in the art.
In regard to Claim 2, Song et al. discloses the negative electrode active material according to claim 1. Song et al. also discloses wherein the graphite particle has a plurality of voids inside and the graphite particle has an average void size, determined by a mercury intrusion method, of 100 nm or more and 300 nm or less (Song, Abstract, [0051]), which anticipates the claimed range.
In regard to Claims 3-4, Song et al. discloses the negative electrode active material according to claim 1. Song et al. also discloses wherein the graphite particle is an aggregate of a plurality of primary particles including graphite and wherein the plurality of primary particles have a shape of a plate or a flake (scaly), and the plurality of primary particles are laid one upon another in the graphite particle (Song, [0090-0091]).
In regard to Claims 5-6, Song et al. discloses the negative electrode active material according to claim 1. Song et al. also discloses a preferred list of solid electrolytes including Li2S-P2S5-LiI that includes lithium, phosphorus, sulfur, and halogen and falls within Formula (1) (Song, Paragraph [0069]).
In regard to Claim 8, Song et al. discloses the negative electrode active material according to claim 1. Song et al. also discloses that the skilled artisan can tune the void size to either allow or restrict the infiltration of the solid electrolyte into the pores depending on the embodiment and the desired outcome and further, that the void size of the void is in a range of 500nm or less (Song, [0049]), which overlaps the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obvious. 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). See MPEP § 2144.05.
In regard to Claim 9, Song et al. discloses the negative electrode active material according to claim 1. The original specification describes the "second" solid electrolyte as merely residual amounts of the "first" solid electrolyte that are not in the voids and are naturally formed on the surface of the graphite at a 10% rate or less simply by performing the method outlined in the original specification, which is described as graphite particles with voids dipped in a solution of solid electrolyte precursor and solvent wherein the solvent is then removed and the mixture dried to crystalize the solid electrolyte precursor in the voids and inherently, partially on the surface and thus form the negative active material of the invention (Original Specification, [0098-0103]). Song et al. describes a method wherein graphite particles formed from an aggregate with particle size and pore size falling within the claimed ranges are dipped in a solution of solid electrolyte precursor matching the composition of Formula (1) and a solvent wherein the solvent is then removed and the mixture dried to crystalize the solid electrolyte precursor in the voids (Song, Example 1), which is substantially similar to the method disclosed in the original specification that forms a coating rate of 10% or less.
Further, the original specification discloses the negative electrode active material does not need to include the second electrolyte and that the first and second solid electrolyte may be the same (Original Specification, [0085, 0087]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a graphite particle formed by the method disclosed in Song et al. as doing so would give the skilled artisan the reasonable expectation of achieving the 10% or less surface coating on the graphite particle and as doing so would amount to nothing more than the use of a known technique to improve similar devices (methods, or products) in the same way.
In regard to Claim 11, Song et al. discloses the negative electrode active material according to claim 1. Song et al. also discloses wherein the graphite particle has a median size of 5-20 μm (Song, [0054]), which anticipates the claimed range.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (KR20190044397A - US 20200411843 A1 Referenced for Citations), hereinafter "Song" as applied to Claim 1 above, in view of Umeki et al. (JP 6683363 B2 - Machine Translation), hereinafter "Umeki". Song and Umeki et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely solid state negative electrode materials.
In regard to Claim 7, Song et al. discloses the negative electrode active material according to claim 1. Song et al. also discloses the solid electrolyte is not particularly limited and discloses a Li2S-P2S5-LiI precursor (Song, [0069]), which by definition could form an argyrodite crystal structure. However, Song fails to explicitly disclose wherein the first solid electrolyte has an argyrodite crystal structure.
Umeki et al. discloses a beneficial solid electrolyte that achieves high ionic conductivity comprising an argyrodite crystal structure (Umeki, [3-4]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a solid electrolyte comprising an argyrodite crystal structure as taught in Umeki et al. in the battery of Song et al. as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Umeki et al. and as doing so would amount to nothing more than a simple substitution of one known element for another to obtain predictable results.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (KR20190044397A - US 20200411843 A1 Referenced for Citations), hereinafter "Song" as applied to Claim 1 above, in view of Ahn et al. (WO 2019226020 A1 - Machine Translation), hereinafter "Ahn". Song and Ahn et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely solid state negative electrode materials.
In regard to Claim 10, Song et al. discloses the negative electrode active material according to claim 1. While Song et al.is silent as to the wt% of the graphite or solid electrolyte Ahn et al. discloses a graphite active material containing voids filled with solid electrolyte wherein the mass ratio of solid electrolyte to graphite of 3.15 mass% to 102 mass% (Ahn, Abstract, [18]), which overlaps the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obvious. 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). See MPEP § 2144.05.
Response to Arguments
Applicant's arguments filed 02/10/2026 have been fully considered but they are not persuasive. In response to applicant's argument that the invention of Song does not intend to produce a graphite particle which has some portion of the voids infiltrated with a solid electrolyte, the rejection has been changed from a 35 U.S.C 102 (a)(1) rejection to a 35 U.S.C. 103 rejection above which demonstrates in at least one embodiment (Song, [0042-0043], Figure 2), how at least some portion of the voids in the graphite would be infiltrated with the solid electrolyte regardless of intention. Further, it is noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
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 KENNETH MAX OTERO whose telephone number is (571)272-2559. The examiner can normally be reached M-F Generally 7:30-430.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Buie-Hatcher can be reached at (571) 270-3879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.M.O./Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/Supervisory Patent Examiner, Art Unit 1725
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