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 Arguments
Applicant’s arguments, see p. 13, filed June 26, 2026, with respect to the rejection(s) of claim(s) 1-7 and 9 under 35 USC 102 and 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Xie et al. ("Electrochemical performances of Si-coated MCMB as anode material in lithium-ion cells," Materials Chemistry and Physics 88(2-3), pp. 295-299, December 2004).
Applicant contends that the silicon concentration in the anode layer of Xie is uniform because the particles are coated before forming the layer (pp. 12-13). However, coating the surfaces of the particles will necessarily result in a higher concentration at the layer surface. See the rejection of claim 1 below.
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claim(s) 1-3, 6, 7, 9, and 16 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Xie et al. ("Electrochemical performances of Si-coated MCMB as anode material in lithium-ion cells," Materials Chemistry and Physics 88(2-3), pp. 295-299, December 2004) as evidenced by Münder et al. (“Investigation of different oxidation processes for porous Si by XPS”, Journal of Luminescence 57(1-6), pp. 223-226, November 1993) and "SEM-EDS Depth of Information" (retrieved from https://xpslibrary.com/sem-eds-information-depth/ on January 15, 2026, hereinafter referred to as "SEM-EDS").
Regarding claim 1, Xie teaches an anode for a lithium secondary battery comprising a current collector (copper foil), a single-layered carbon-particle-based (MCMB) active material layer on the current collector, and a silicon coating on the surface of the particles (Xie 2. Experimental). The particles comprise 0.05 at% Si as measured by EDX (Xie 3. Results and discussion).
Xie does not teach that the composition comprises 3-25 at% as measured by XPS. However, the coating is limited to the surface (Xie Abstract), and EDX measures to a depth approximately 30-500 times deeper than XPS (see figure in SEM-EDS), so the surface composition measured by XPS would include ~1.5-25 at% Si, which overlaps the range of the instant claim. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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).
Alternatively, Xie teaches that treatment time (and therefore the amount of Si deposited) should be optimized to improve capacity and cycling stability (Xie 4. Conclusions). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to determine the optimum treatment time and corresponding silicon content, including values within the range of the instant claim.
Xie does not teach the claimed XPS spectrum. Si particles are known to oxidize when exposed to the atmosphere (Münder 3. Results and Discussion), causing the XPS spectrum to move with additional peaks (from ~100 eV to ~103 eV; Münder Fig. 1 and Table 1). As Xie does not require protecting the anode from the atmosphere, the surface will necessarily oxidize over time during exposure with the accompanying change in XPS spectrum, including to values within the range of the instant claim. Si is known to have a peak around 100 eV, and Si-O is known to have peaks around 103 eV (Münder Fig. 1 and Table 1), each of which falls within the ranges of the instant claim.
The silicon of Xie is confined to the surface of the particles, with a very low bulk concentration (Xie 3. Results and discussion). As the surface of the active material layer consists entirely of the surfaces of the particles, the average silicon concentration in the interior of the active material layer (i.e. the bulk concentration) is necessarily lower than the concentration at the surface. See the figure below for clarification.
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Regarding claim 2, modified Xie does not teach that the composition comprises 3-11 at% as measured by XPS. However, the coating is limited to the surface (Xie Abstract), and EDX measures to a depth approximately 30-500 times deeper than XPS (see figure in SEM-EDS), so the surface composition measured by XPS would include ~1.5-25 at% Si, which overlaps the range of the instant claim. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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).
Alternatively, Xie teaches that treatment time (and therefore the amount of Si deposited) should be optimized to improve capacity and cycling stability (Xie 4. Conclusions). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to determine the optimum treatment time and corresponding silicon content, including values within the range of the instant claim.
Regarding claim 3, the electrodes of modified Xie are formed by drying a low-binder slurry of the carbon particles (Xie 2. Experimental), which will necessarily form a porous carbon scaffold.
Regarding claim 6, the electrodes of modified Xie are formed by drying a low-binder slurry of the carbon particles (Xie 2. Experimental), which will necessarily result in the carbon particles stacked on top of each other so that their surfaces are in contact.
Regarding claim 7, the Si coating is discontinuous, consisting at least partially of scattered particles (Xie 3. Results and discussion).
Regarding claim 9, Münder teaches that the lithium-ion batteries are typically made by assembling the anode with a lithium metal oxide cathode. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use any conventional cathode, including a lithium metal cathode.
Regarding claim 16, Xie does not teach the claimed XPS spectrum. Si particles are known to oxidize when exposed to the atmosphere (Münder 3. Results and Discussion), causing the XPS spectrum to move with additional peaks (from ~100 eV to ~103 eV; Münder Fig. 1 and Table 1). As Xie does not require protecting the anode from the atmosphere, the surface will necessarily oxidize over time during exposure with the accompanying change in XPS spectrum, including to values within the range of the instant claim.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xie as evidenced by Münder and SEM-EDS as applied to claim 1 above, and further in view of Deng et al. ("Electrochemical performance of graphite anode with various electrode compressibilities for long-life Li-ion battery," Applied Physics A 121, pp. 123-129, August 2015).
Regarding claim 4, modified Xie teaches that the carbon-based active material particles comprise artificial graphite (mesocarbon microbeads; Xie 3. Results and discussion). Modified Xie does not teach the use of natural graphite. Deng teaches that mixtures of natural graphite and MCMBs demonstrate improved performance relative to either material alone (Deng Abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add natural graphite particles to the synthetic graphite particles of modified Xie to improve performance.
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 JAMES A CORNO JR whose telephone number is (571)270-0745. The examiner can normally be reached M-F 9:00 am - 5:00 pm.
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/J.A.C/ Examiner, Art Unit 1722
/NIKI BAKHTIARI/ Supervisory Patent Examiner, Art Unit 1722
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