DETAILED ACTION
Claims 1, 4, 5, 7-10 and 12 are pending as amended on 2 September 2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant’s amendments to the claims and the remarks/arguments have been entered and fully considered.
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 proportion of SWCNT. The examiner disagrees. The examiner acknowledges that Lee discloses embodiments wherein the conductive material is included in an amount of 1 to 5 wt.% ( [0077]), however, Lee exemplifies 0.05wt% of SWCNT in a negative electrode([0115], [0124], [0127] and Examples 1-1, 3-1 and 4-1 ), which meets the claimed proportion.
Duplicate Claims
Applicant is advised that should claims 1 and 8 be found allowable, claims 7 and 12 will be objected to under 37 CFR 1.75 as being a substantial duplicate of claims 1 and 8, respectively. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 103
Claims 1, 4, 5, 7-10 and 12 stand 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], [0063] 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 includes SWCNT exemplified as 0.05 wt% of SWCNT in a negative electrode([0115], [0124], [0127] and Examples 1-1, 3-1 and 4-1 ), 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]), Lee further teaches the same silicon based material, exemplifies the carbon negative material as artificial graphite ([0115] and [0062]), which is the same as instantly disclosed (instant Example 1), and SWCNT as conductive material in the same proportion as claimed, which Applicant considers “crucial” in achieving the claimed Relation (Remarks, P8, 2nd paragraph, and P9, 2nd paragraph), 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.
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 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
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