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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 16 March 2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Response to Amendment and Arguments
Applicant’s amendment does not distinguish from US2019/0334161A1(Lee).
Applicant’s arguments in light of the amendment have been fully considered but are not persuasive.
Applicant argues that Lee does not disclose the claimed ratio of silicon-based active material to the carbon-based active material. The examiner disagrees. Lee expressly discloses that the carbon negative material and the Si negative material can be mixed in a ratio of 50:50 to 99:1 ([0061]), i.e. the ratio of silicon based material to the carbon based material is 1:99 to 50:50, which encompasses the claimed range and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Applicant argues that Lee does not teach the instantly claimed Relation, and the instantly claimed method of determining the distribution of the silica based material in the negative electrode. The examiner maintains that the claims are directed to a negative electrode, not a method of determining the distribution of the silica based material. Lee teaches the same silica based material and carbon-based material in the similar ratio as the instantly claimed thus inherently satisfy the claimed Relation. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed Relation 1 with only the claimed ingredients.
Claim Rejections - 35 USC § 103
Claims 1 and 4-8 stand, and new claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Lee.
Lee teaches a rechargeable lithium battery comprises a negative electrode ([0025]), wherein the negative electrode comprises a negative active material, a binder and a conductive agent ([0005] and [0077]).
Lee teaches that the negative active material comprises a carbon negative active material including crystalline carbon and a Si negative material including Si, a Si-C composite, SiOx (0<x<2), a Si-alloy ([0060]-[0062)], which meets the claimed carbon and silicon-based active material, respectively; the binder includes acrylic resins([0080]); and the conductive material is included in an amount of 1 to 5 wt.% which includes a single-walled carbon nanotube ([0064] and [0077]), which meets the claimed conductive material and amount.
Lee further teaches the carbon negative material and the Si negative material can be mixed in a ratio of 50:50 to 99:1 ([0061]), i.e. the ratio of silicon based material to the carbon based material is 1:99 to 50:50, which encompasses the claimed range.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include carbon-based material and silicon-based material at the instantly claimed range since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding the claimed Relation 1, Lee teaches the carbon negative material and the Si negative material can be mixed in a ratio of 50:50 to 99:1 ([0061]), which is the same as the instantly disclosed(instant specification[0043]), and Lee teaches the same silicon based material and exemplifies the carbon negative material as artificial graphite ([0115] and [0062]), which is the same as instantly disclosed (instant Example 1), absent evidence to the contrary, one of ordinary skill in the art would have reasonable basis to expect that Lee’s negative electrode would naturally satisfy the claimed Relation 1 when measured using Versa 520 XRM equipment from Zeiss under similar conditions. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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, Randy Gulakowski can be reached at 571-2721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766