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 .
Claim Status
Applicant’s arguments submitted on January 29th, 2026 have been entered into the file.
Currently claims 1-2, 4-6 are amended and claim 3 is cancelled, resulting in claims 1-2, 4-20 pending for examination.
Response to Amendment
The amendments filed January 29th, 202 have been received.
The claim amendments have overcome the objection to claim 4 previously set forth in the Non-Final Rejection mailed July 29th, 2025.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 2 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 2, the instant claim recites “wherein the microsilicon comprised in the electrode active material particles is in the form of SiO.” However, the instant disclosure supports the active material particles comprise one or more of silicon oxide and microsilicon (Paragraph 0036). Therefore, the instant disclosure provides support for silicon oxide in the electrode active material particles as separate from the microsilicon. Thus, the scope of the claim as amended is not supported by the originally filed disclosure. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 2, the instant claim recites “wherein the microsilicon comprised in the electrode active material particles is in the form of SiO.” However, it is unclear to the examiner how microsilicon can be in the form of silicon oxide, as microsilicon is understood in the art to be a purely silicon material. For the purposes of examiner, silicon oxide is understood to meet the claimed limitations if at least some portion of the silicon in the compound is of micron size. Appropriate correction is required.
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.
Claims 1-2, 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Dong (U.S. Patent Publication No. 20220393226 A1) in view of Man (Korean Patent Publication No. 20200083808 A1), Song (Non-Patent Literature “Effects of the Aspect Ratio of the Conductive Agent on the Kinetic Properties of Lithium Ion Batteries”), Dang (Non-Patent Literature “Lithium Substituted Poly(acrylic acid) as a Mechanically Robust Binder for Low-Cost Silicon Microparticle Electrodes”), and Byrd (Non-Patent Literature “Asymmetric Membranes Containing Micron-Size Silicon for High Performance Lithium Ion Battery Anode”), as evidenced by the OED definition of “network”.
Regarding claim 1, Dong teaches an electrode comprising a polymeric additive (polymer binder) and a plurality of electrode active material particles (Paragraphs 0081) wherein the active material particles comprise silicon (Paragraph 0081, 0095).
Dong discloses a polymer blend comprising polyimide and a more elastic polymer (Paragraph 0137) including styrene-butadiene rubber or polyacrylic acid (lithiated polyacrylic acid) (Paragraph 0140) to improve electrochemical performance of the electrode (Paragraph 0137). Thus, Dong teaches a polymeric additive comprising at least one of styrene-butadiene rubber or polyacrylic acid.
Dong teaches the incorporation of carbon into the active material comprising silicon for stabilization and increased electrical conductivity (Paragraph 0095). Dong further teaches the carbon additives for improved cycling of negative electrodes to be carbon nanotubes (Paragraph 0144).
Dong does not teach the electrode comprising a network of carbon elements defining void spaces within the network, wherein a plurality of electrode active material particles are disposed in the void spaces within the network.
However, Man teaches a negative electrode active material for a lithium secondary battery (Paragraph 0001) comprising a three-dimensional network structure made up of a plurality of carbon nanotube particles (Figure 2, Element 3) intertwined with one another and the silicon particles (Figure 2, Element 5) located in the space (void) (Figure 2, Element 3) inside the carbon nanotube network structure (Paragraph 0007). Man teaches dispersing the silicon particles between the carbon nanotube particles provides a buffering space which provides a buffer during the large volume expansion of silicon particles during charge and discharge in order to maintain electrical contact of the silicon particles (Paragraphs 0036 and 0038).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrode material comprising silicon particles and carbon nanotubes of Dong to incorporate the teachings of Man in which the silicon particles are located in the voids of a network of carbon nanotubes. Doing so would advantageously result in the maintained electrical contact of silicon particles as they undergo volume expansion during charging and discharging, as recognized by Man.
Dong does not explicitly teach the polymer additive of the electrode active material particles disposed in the void spaces of the network.
However, Dang discloses poly(acrylic acid) as a polymeric binder to enhance the mechanical integrity of silicon electrodes (Abstract). Dang teaches the poly(acrylic acid) binder to have high elasticity and strong adhesion with silicon, as seen in Figure 1D of Dang. Dang teaches that strong adhesion between the polymeric binder and silicon electrode secures the electronic conductivity between Si particles whereas weak adhesion of the polymeric binder and silicon leads to poor electronic conductivity (Page 10946, Columns 1-2; Paragraph 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the silicon particles disposed in the void spaces of the carbon nanotube network of Dong in view of Man to incorporate the teachings of Dang in which the polymeric binder is strongly adhered to the surface of the silicon particles. Doing so would advantageously result in improved conductivity, as recognized by Dang. With strong adhesion between the polymeric binder and the silicon particles according to the modification, the polymeric additive of Dong is adhered to the surface of the silicon particles according to Dang and thus may be considered to also be disposed in the void spaces of the carbon nanotube network taught by Dong in view of Man, meeting the instant claimed limitation.
Dong discloses that the carbon nanofibers of the invention are high aspect ratio fibers (Paragraph 0147), thus the carbon nanotubes of Dong are considered to be high aspect ratio carbon elements, meeting the instant claimed limitation.
In the alternative, Song discloses the effect of aspect ratio of a conductive agent such as carbon nanotubes on its kinetic properties in lithium ion batteries. Song teaches the aspect ratio influencing the diffusion of lithium ions (Abstract), and showed through a series of experiments the carbon nanotubes with a high aspect ratio exhibited superior rate capability and stable performance in lithium-ion batteries (Page 40886, Column 1, Paragraph 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the carbon nanotubes of Dong in view of Man to incorporate the teachings of Song in which the aspect ratio is high. Doing so would advantageously result in superior rate capability and stable performance of carbon nanotubes in batteries, as recognized by Song.
Dong does not teach the silicon comprised in the electrode active material is microsilicon.
However, Byrd discloses a micron-size Si anode (microsilicon) for use in a lithium ion battery (Abstract). Byrd teaches that small dimensions of Si materials can promote a high rate performance of lithium-ion diffusion, and further that the use of microsilicon with greater tapped density is more economically profitable than the use of nanosilicon materials in battery anodes (Page 46, Column 2, Paragraph 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the silicon material of Dong to incorporate the teachings of Byrd in which the silicon is microsilicon. Doing so would advantageously result in lower fabrication costs of a silicon anode with higher tapped density and improved lithium ion diffusion, as recognized by Byrd.
Regarding claim 2, modified Dong teaches the electrode as discussed above with respect to claim 1, wherein the microsilicon comprised in the electrode active material particles is in the form of SiO (Paragraph 0094).
Regarding claim 4, modified Dong teaches the electrode as discussed above with respect to claim 1, wherein microsilicon is comprised in the electrode active material.
Dong does not explicitly teach the microsilicon comprised in the electrode active material is greater than fifty percent of the active layer by weight.
Dong teaches the active material comprises from about 45 wt% to about 100 wt% of the silicon-based active material (Paragraph 0066). According to the modification to incorporate the teachings of Byrd as discussed above, the silicon active material of Dong was modified to be microsilicon.
Thus, the range of microsilicon present in the electrode active material of Dong substantially overlaps the claimed ranges of microsilicon present in the electrode active material in the instant claim. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Dong because overlapping ranges have been held to establish prima facie obviousness.
Regarding claim 5, Dong teaches the electrode as discussed above with respect to claim 1, wherein microsilicon is comprised in the electrode active material.
Dong does not explicitly teach the microsilicon comprised in the electrode active material is at least eighty percent of the active layer by weight.
As discussed above, Dong teaches the active material comprises from about 45 wt% to about 100 wt% of the silicon-based active material (Paragraph 0066). According to the modification to incorporate the teachings of Byrd as discussed above, the silicon active material of Dong was modified to be microsilicon.
The range of microsilicon present in the electrode active material of Dong substantially overlaps the claimed ranges of microsilicon present in the electrode active material in the instant claim. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Dong because overlapping ranges have been held to establish prima facie obviousness.
Claims 6-7 rejected under 35 U.S.C. 103 as being unpatentable over Dong in view of Byrd, Man, Song, and Dang as applied to claims 1-2, 4-5 above, as evidenced by the OED definition of “mesh”.
Regarding claims 6 and 7, modified Dong teaches the electrode as discussed above with respect to claim 1, wherein the network of high aspect ratio carbon elements comprises a mesh of carbon nanotubes. As discussed above, the modification of Dong by Man resulted in a three-dimensional network structure made up of a plurality of carbon nanotube particles intertwined with one another and the microsilicon particles located in the space (voids) inside the carbon nanotube network structure (Paragraph 0007). The OED definition of mesh is “any of the open spaces or interstices between the threads or cords of a net”. As the network of Dong in view of Man describes a network of open spaces resulting from the intertwining of carbon nanotubes, the network of carbon elements if considered to comprise a mesh of carbon nanotubes, meeting the limitations of the instant claim.
As the taught in the modification of Dong by Man, the mesh of carbon nanotubes comprises an overlapping structure of carbon nanotubes (Figure 2) with spaces (Figure 2, Element 6) which act as a buffering space for the large volume expansion of microsilicon particles that occurs during charging and discharging (0034). The overlapping structure of the network carbon nanotubes which define void spaces for microsilicon active materials particles to be disposed within provides the same electrode structure as the instant claim, therefore there is reasonable basis to conclude at least some of the mesh of carbon nanotubes maintains electrical connection among at least a subset of the carbon nanotubes comprised in the mesh during expansion of the microsilicon that occurs during charging and discharging of the battery.
In the event that it is established the prior art lacks a reasonable basis to make such a conclusion, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make at least a subset of the carbon nanotubes maintain electrical connection during the expansion of microsilicon in order to contribute to the overall conductivity of the nanotube mesh as well as provide the continuous buffering for the expansion of microsilicon, according to the teachings of Man. The ordinary artisan would find it obvious to maintain the structure of overlapping carbon nanotubes in order to maintain the buffer space provided by the carbon nanotube network to support the expansion of microsilicon which occurs during charging and discharging of the battery.
Claims 8-11, 13, 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Dong in view of Byrd, Man, Song, and Dang as applied to claims 1-2, 4-5 above, further in view of Kim (Non-Patent Literature “Three-dimensional SWCNT and MWCNT hybrid networks for extremely high-loading and high rate cathode materials”), as evidenced by the OED definition of “mesh”.
Regarding claim 8, modified Dong teaches the electrode as discussed above with respect to claim 1, wherein the network of high aspect ratio carbon elements comprises carbon nanotubes.
Dong acknowledges that carbon nanotubes may be single wall or multiwall carbon nanotubes, and both are suitable for use as a material in an electrode (Paragraph 0147).
Dong does not teach the carbon nanotubes of the electrode comprising a first set of carbon nanotubes, wherein the first set of carbon nanotubes comprise a plurality of first carbon nanotubes or a plurality of bundles of first carbon nanotubes; and a second set of carbon nanotubes, wherein: the second set of carbon nanotubes comprise a plurality of second carbon nanotubes or a plurality of bundles of second carbon nanotubes; and the second set of carbon nanotubes has one or more properties different from the first set of carbon nanotubes.
However, Kim discloses an electrode comprising a hybrid 3D network of multi-wall carbon nanotubes (MWCNT) and single-wall carbon nanotubes (SWCNT) assembly (Page 17413, Column 1, Paragraph 2). Kim teaches the MWCNTs aggregating at the grain boundaries of the electrode active material particles, while the SWCNT adsorb onto the surface of the particles due to their length and flexibility (Page 17414, Column 1, Paragraph 1). Kim teaches the addition of SWCNTs stable 3D network structure formed by the MWCNTs increases the electron conductivity, energy density, C-rate and cyclability of lithium batteries (Page 17419, Column 1, Paragraph 1).
The MWCNTs of Kim are considered to be the first set of carbon nanotubes of the instant claim, as they are a plurality of carbon nanotubes. The SWCNTs of Kim are considered to be the second set of carbon nanotubes of the instant claim, as they are a plurality of carbon nanotubes. Kim teaches the length MWCNTs to be 500 nm and the length of the SWCNTs to be 5-10 µm, therefore the second set of carbon nanotubes has one property (length) different from the first set of carbon nanotubes, meeting the limitations of the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrode of Dong to incorporate the teachings of Kim in which the network of high aspect ratio carbon elements comprises a first and second set of carbon nanotubes, multi-wall carbon nanotubes and single wall carbon nanotubes, respectively. Doing so would advantageously result in increased electron conductivity, energy density, C-rate and cyclability of lithium batteries, as recognized by Kim.
Regarding claim 9, modified Dong teaches the electrode as discussed above with respect to claim 8, wherein the first set of carbon nanotubes comprises multi-wall nanotubes.
Regarding claim 10, modified Dong teaches the electrode as discussed above with respect to claim 8, wherein the second set of carbon nanotubes comprises single wall nanotubes.
Regarding claim 11, modified Dong teaches the electrode as discussed above with respect to claim 8, wherein the first set of carbon nanotubes comprises multi-wall carbon nanotubes; the second set of carbon nanotubes comprises single-wall carbon nanotubes.
Dong does not explicitly teach the ratio of an amount by weight of the first set of carbon nanotubes to the second set of carbon nanotubes is about 2:1.
However, Kim teaches the benefit of combining both MWCNT and SWCNT for an electrode material as increasing the electrical conductivity and accessibility during the charge-discharge reactions of a battery, resulting in high cyclability (Page 17414, Column 2, Paragraph 1). Kim teaches the MWCNT are used for the stabilization of the network structure while SWCNT are used to provide electron conductivity that the MWCNTs lack (Page 17414, Column 1, Paragraph 1) by forming robust electron conduction pathways (Page 17416, Column 2, Paragraph 1).
Absent unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of SWCNT and MWCNT forming the network structure of Dong in view of Kim since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. In the present invention, one would have been motivated to optimize the amount of SWCNT and MWCNT to provide the ratio of the first set of carbon nanotubes (MWCNT) to the second set of carbon nanotubes (SWCNT) at 2:1. For example, the ordinary artisan would recognize that the amount of SWCNT and MWCNT (and therefore the ratio of them) may be tuned to optimize the features which are desirable in the carbon nanotube network it is implemented in, striking a balance between stabilizing the electrode structure while maintaining a sufficient conductivity of the electrode.
Regarding claim 13, modified Dong teaches the electrode as discussed above with respect to claim 8.
Dong is silent regarding after being wetted with an electrolyte, an average thickness of the multi-wall carbon nanotubes increases less than 10%.
However it is reasonable to presume that the increase in the average thickness of the multi-wall carbon nanotubes after being wetted with electrolyte is inherent to Dong modified by Man, Song, and Kim. Support for said presumption is found in that modified Dong teaches the electrode comprising the following components and features, as discussed above:
Network of high aspect carbon elements which define void spaces in the network
The high aspect carbon elements comprise a mesh of single-wall (second set) and multi-wall (first set) carbon nanotubes, where the second set of carbon nanotubes has a different length than the single-wall carbon nanotubes
Active material particles of microsilicon and polymeric additive disposed in the void spaces of the network
Microsilicon present in at least eighty present of the electrode active material layer by weight
Dong in view of Man, Song, and Kim, as discussed above, teaches the same structural features and properties of the electrode as the instant invention. Therefore it is reasonable to conclude that the thickness of the multi-wall carbon nanotubes increasing less than 10% after being wetted with an electrolyte is inherent to Dong in view of Man, Song, and Kim.
Regarding claim 16, modified Dong teaches the electrode as discussed above with respect to claim 1, wherein the network of high aspect ratio carbon elements comprises carbon nanotubes.
Dong further teaches the active material of the electrode comprising graphite (Paragraph 0130). Dong does not explicitly teach the network of high aspect ratio carbon elements comprises the graphite particles.
However, as discussed above, Man teaches a carbon nanotube three-dimensional network structure made of a plurality of carbon nanotube particles intertwined with each other and silicon particles located in the space inside the carbon nanotube three-dimensional network structure (Paragraph 0007). Man further teaches a shell layer of the carbon nanotubes composite particles comprising graphene (graphite) (Paragraph 0007) (Figure 3, Element 8). As the graphite shell is in contact with the carbon nanotubes, it is considered to be comprised in the network of high aspect ratio carbon elements, meeting the limitations of the instant claim. Man teaches the graphite shell to provide additional structural support for buffering as silicon expands during charging and discharging, preventing detachment and maintaining electrical contact (Paragraph 0038).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention in the modification of Dong by Man above, to further modify the carbon nanotubes of Dong to incorporate the teachings of Man in which the network of high aspect carbon elements comprise graphite particles
Dong acknowledges that carbon nanotubes may be single wall or multiwall carbon nanotubes, and both are suitable for use as a material in an electrode (Paragraph 0147).
Dong does not teach the carbon nanotubes of the electrode comprising a first set of carbon nanotubes, wherein the first set of carbon nanotubes comprise a plurality of first carbon nanotubes or a plurality of bundles of first carbon nanotubes; and a second set of carbon nanotubes, wherein: the second set of carbon nanotubes comprise a plurality of second carbon nanotubes or a plurality of bundles of second carbon nanotubes; and the second set of carbon nanotubes has one or more properties different from the first set of carbon nanotubes.
However, Kim discloses an electrode comprising a hybrid 3D network of multi-wall carbon nanotubes (MWCNT) and single-wall carbon nanotubes (SWCNT) assembly (Page 17413, Column 1, Paragraph 2). Kim teaches the MWCNTs aggregating at the grain boundaries of the electrode active material particles, while the SWCNT adsorbed onto the surface of the particles due to their length and flexibility (Page 17414, Column 1, Paragraph 1). Kim teaches the addition of SWCNTs stable 3D network structure formed by the MWCNTs increases the electron conductivity, energy density, C-rate and cyclability of lithium batteries (Page 17419, Column 1, Paragraph 1).
The MWCNTs of Kim are considered to be the first set of carbon nanotubes of the instant claim, as they are a plurality of carbon nanotubes. The SWCNTs of Kim are considered to be the second set of carbon nanotubes of the instant claim, as they are a plurality of carbon nanotubes. Kim teaches the length MWCNTs to be 500 nm and the length of the SWCNTs to be 5-10 µm, therefore the second set of carbon nanotubes has one property (length) different from the first set of carbon nanotubes, meeting the limitations of the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrode of Dong to incorporate the teachings of Kim in which the network of high aspect ratio carbon elements comprises a first and second set of carbon nanotubes, multi-wall carbon nanotubes and single wall carbon nanotubes, respectively. Doing so would advantageously result in increased electron conductivity, energy density, C-rate and cyclability of lithium batteries, as recognized by Kim.
Regarding claim 17, modified Dong teaches the electrode as discussed above with respect to claim 16, wherein the network of high aspect ratio carbon elements comprises graphite (Paragraph 0130).
Dong does not explicitly teach that graphite is approximately 5% graphite by weight of the active layer.
Dong teaches the active material comprising from about 5 wt% to 65 wt% of graphite (Paragraph 0130).
Therefore, range of graphite in the electrode active material of Dong overlaps the claimed valve of graphite in the electrode active material in the instant claim. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have provided graphite at 5 wt% of the electrode active material as taught by Dong because overlapping ranges have been held to establish prima facie obviousness.
Regarding claim 18, modified Dong teaches the electrode as discussed above with respect to claim 16, wherein the first set of carbon nanotubes comprises multi-wall carbon nanotubes; the second set of carbon nanotubes comprises single-wall carbon nanotube.
Dong modified by Kim does not explicitly teach the network of high aspect ratio carbon elements is approximately 2% single-wall carbon nanotubes by weight.
However, Kim teaches the benefit of combining both MWCNT and SWCNT for an electrode material as increasing the electrical conductivity and accessibility during the charge-discharge reactions of a battery, resulting in high cyclability (Page 17414, Column 2, Paragraph 1). Kim teaches the MWCNT are used for the stabilization of the network structure while SWCNT are used to provide electron conductivity that the MWCNTs lack (Page 17414, Column 1, Paragraph 1) by forming robust electron conduction pathways (Page 17416, Column 2, Paragraph 1).
Absent unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of single wall carbon nanotubes forming the network structure of Dong in view of Kim since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. In the present invention, one would have been motivated to optimize the amount of SWCNT to provide the amount of single wall carbon nanotubes comprise 2% of the network of high aspect ratio carbon elements. For example, the ordinary artisan would recognize that the amount of SWCNT may be tuned to optimize the conductivity is desirable in the carbon nanotube network in which it is implemented in.
Regarding claim 19, modified Dong teaches the electrode as discussed above with respect to claim 16, wherein the first set of carbon nanotubes comprises multi-wall carbon nanotubes; the second set of carbon nanotubes comprises single-wall carbon nanotubes.
Dong modified by Kim does not explicitly teach the network of high aspect ratio carbon elements is approximately 0.5% single-wall carbon nanotubes by weight of the active layer.
However, Kim teaches the benefit of combining both MWCNT and SWCNT for an electrode material as increasing the electrical conductivity and accessibility during the charge-discharge reactions of a battery, resulting in high cyclability (Page 17414, Column 2, Paragraph 1). Kim teaches the MWCNT are used for the stabilization of the network structure while SWCNT are used to provide electron conductivity that the MWCNTs lack (Page 17414, Column 1, Paragraph 1) by forming robust electron conduction pathways (Page 17416, Column 2, Paragraph 1).
Absent unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of single wall carbon nanotubes forming the network structure of Dong in view of Kim since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. In the present invention, one would have been motivated to optimize the amount of SWCNT to provide the amount of single wall carbon nanotubes comprising 0.5% by weight of the active layer. For example, the ordinary artisan would recognize that the amount of SWCNT may be tuned to optimize the conductivity is desirable in the carbon nanotube network in which it is implemented in.
Regarding claim 20, modified Dong teaches the electrode as discussed above with respect to claim 16, wherein the first set of carbon nanotubes comprises multi-wall carbon nanotubes; the second set of carbon nanotubes comprises single-wall carbon nanotubes.
Dong modified by Kim does not explicitly teach the network of high aspect ratio carbon elements is less than or approximately equal to 2% single-wall carbon nanotubes by weight of the active layer.
However, Kim teaches the benefit of combining both MWCNT and SWCNT for an electrode material as increasing the electrical conductivity and accessibility during the charge-discharge reactions of a battery, resulting in high cyclability (Page 17414, Column 2, Paragraph 1). Kim teaches the MWCNT are used for the stabilization of the network structure while SWCNT are used to provide electron conductivity that the MWCNTs lack (Page 17414, Column 1, Paragraph 1) by forming robust electron conduction pathways (Page 17416, Column 2, Paragraph 1).
Absent unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of single wall carbon nanotubes forming the network structure of Dong in view of Kim since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. In the present invention, one would have been motivated to optimize the amount of SWCNT to provide the amount of single wall carbon nanotubes comprise less than or approximately equal to 2% by weight of the active layer. For example, the ordinary artisan would recognize that the amount of SWCNT may be tuned to optimize the conductivity is desirable in the carbon nanotube network in which it is implemented in.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Dong in view of Byrd, Man, Song, and Dang as applied to claims 1-2, 4-5 above, as evidenced by the OED definition of “mesh”.
Regarding claim 12, modified Dong teaches the electrode as discussed above with respect to claim 8, wherein the network of high aspect ratio carbon elements comprises a mesh of carbon nanotubes. As discussed above, the modification of Dong by Man resulted in a three-dimensional network structure made up of a plurality of carbon nanotube particles intertwined with one another and the microsilicon particles located in the space (voids) inside the carbon nanotube network structure (Paragraph 0007). The OED definition of mesh is “any of the open spaces or interstices between the threads or cords of a net”. As the network of Dong in view of Man describes a network of open spaces resulting from the intertwining of carbon nanotubes, the network of carbon elements if considered to comprise a mesh of carbon nanotubes, meeting the limitations of the instant claim.
As the taught in the modification of Dong by Man, the mesh of carbon nanotubes comprises an overlapping structure of carbon nanotubes (Figure 2) with spaces (Figure 2, Element 6) which act as a buffering space for the large volume expansion of microsilicon particles that occurs during charging and discharging (0034). The overlapping structure of the network carbon nanotubes which define void spaces for microsilicon active materials particles to be disposed within provides the same electrode structure as the instant claim, therefore there is reasonable basis to conclude at least some of the mesh of carbon nanotubes maintains electrical connection among at least a subset of the carbon nanotubes comprised in the mesh during expansion of the microsilicon that occurs during charging and discharging of the battery.
In the event that it is established the prior art lacks a reasonable basis to make such a conclusion, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make at least a subset of the carbon nanotubes maintain electrical connection during the expansion of microsilicon in order to contribute to the overall conductivity of the nanotube mesh as well as provide the continuous buffering for the expansion of microsilicon, according to the teachings of Man. The ordinary artisan would find it obvious to maintain the structure of overlapping carbon nanotubes in order to maintain the buffer space provided by the carbon nanotube network to support the expansion of microsilicon which occurs during charging and discharging of the battery.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Dong in view of Byrd, Man, Song, Dang, and Kim as applied to claims 1-2, 4-5, 12-13, and 16-20 above, further in view of Ohata (U.S. Patent Publication No. 20040160156 A1).
Regarding claim 14, modified Dong teaches the electrode as discussed above with respect to claim 8.
Dong is silent as to the first average aspect ratio of the first set of carbon nanotubes is larger than a second average aspect ratio of the second set of carbon nanotubes.
It would be obvious to an ordinary artisan to select the aspect ratio of the first set of carbon nanotubes to be larger than the aspect ratio of the second set of carbon nanotubes, more specifically by tuning the length and the diameter of the first set of carbon nanotubes.
Ohata teaches the aspect ratio of carbon nanotubes in an electrode is desirably not less than 100 (Paragraph 0006). Further, Ohata teaches that when the aspect ratio of the carbon nanotubes is too small, the conductive paths of the electrode may not be formed while when the aspect ratio of the carbon nanotubes is too large the carbon nanotubes are unlikely to be sufficiently straightened.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the multi wall carbon nanotubes of the electrode of Dong to incorporate the teachings of Ohata in which the aspect ratio is not less than 100. Doing so would advantageously result in the establishment of conductive pathways and straight carbon nanotubes which form the network, as recognized by Ohata.
Further, absent unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the aspect ratio of the multi wall carbon nanotubes of Dong in view of Ohata since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. In the present invention, one would have been motivated to optimize the length and diameter of MWCNT to provide the aspect ratio of multi wall carbon nanotubes to be larger than the aspect ratio of the single wall carbon nanotubes. For example, the ordinary artisan would recognize that the length and diameter (and thus, the aspect ratio) of MWCNT may be tuned to optimize the conductive path formation and straightness of the carbon nanotube network in which it is implemented in.
In the alternative, an ordinary artisan would recognize for a network of high aspect ratio carbon element, more specifically multi-wall carbon nanotubes and single-wall carbon nanotubes as described above in the modification of Dong in view of Man, Song, and Kim, there are only three possible options for the aspect ratios of the first and second set of carbon nanotubes: the aspect ratios of the first and second sets of carbon nanotubes are equal, the aspect ratio of the first set of carbon nanotubes is larger than the aspect ratio of the second set of carbon nanotubes, or the aspect ratio of the second set of carbon nanotubes is larger than the aspect ratio of the first set of carbon nanotubes.
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select the aspect ratio of the first set of carbon nanotubes is larger than the aspect ratio of the second set of carbon nanotubes from the finite lists of possible combinations for the possible relationship between the aspect ratios of the first and second set of carbon nanotubes to arrive at the first set of carbon nanotubes having a larger aspect ratio than the second set of carbon nanotubes of the instant claim since the combination of components would have yielded predictable results as a battery electrode, absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
Regarding claim 15, modified Dong teaches the electrode as discussed above with respect to claim 8. As discussed above in the modification of Dong by Ohata, Ohata teaches the aspect ratio of carbon nanotubes in an electrode is desirably not less than 100 (at least 100 microns) (Paragraph 0006) in order to develop sufficient conductive pathways and straight carbon nanotubes (Paragraph 0020).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the multi wall carbon nanotubes of the electrode of Dong to incorporate the teachings of Ohata in which the aspect ratio is not less than 100. Doing so would advantageously result in the establishment of conductive pathways and straight carbon nanotubes which form the network, as recognized by Ohata.
Response to Arguments
Applicant argues in the remarks submitted on January 29th, 2026 that Dong does not teach or suggest the use of microsilicon as the active material particles of the electrode active layer, as Dong teaches away from using silicon as the active material particles of the electrode and favors using silicon oxide and variations of silicon and silicon oxide blends.
These arguments have been fully considered but are not found persuasive.
In response to applicant’s arguments, the Examiner submits that as written, the instant claim usings comprising language in the recitation of “the active materials comprise microsilicon.” Therefore, the teachings of Dong to use silicon/silicon oxide blends or composites, for example as recited in Paragraph 0095 and the example of the active material power in Paragraph 0228, recites an active material that comprises silicon, among other components to achieve suitable cycling stability. As the electrode active material composite of Dong comprises silicon, and the modification of Dong in view of Byrd resulted in the electrode active material comprising microsilicon, the claimed limitations are met. Further, contrary to applicant’s arguments, these “favored” blends of Dong include silicon, and thus do not teach away from silicon as an active material.
While Dong teaches the expansion of element silicon as argued by applicant, Dong further teaches the incorporation of carbon into the active material to further stabilize the silicon-based active material (Paragraph 0095). This teaching supported the modification of Doing by Man, where the network of carbon nanotube particles was incorporated into the electrode material of Dong, providing the additional carbon to stabilize the silicon as taught by Dong.
Applicant argues in the remarks submitted on January 29th, 2026 that Dong is silent as to the network structure of high aspect ratio carbon elements defining void spaces, instead teaching a homogenous powder mixture of electrode active material and carbon nanotubes. Applicant argues that the structure required by claim 1 is fundamentally a non-homogenous structure due to the network of carbon fibers and distinct void spaces. Thus, applicant argues that the homogenous structure disclosed by Dong teaches away from the claimed limitations and such a deficiency is not remedied by Man, as such a modification would destroy the foundational teaching of homogeneity of Dong rendering the teachings unsatisfactory for its intended purpose.
These arguments have been fully considered but are not found persuasive.
In response to applicant’s arguments, the Examiner submits that the teaching of homogeneity of Dong as argued by applicant in Paragraph 0228 of Dong is merely an example of the disclosure of Dong.
The invention of the prior art is not limited to or defined by only those embodiments disclosed in the Examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). Additionally, a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. In re Gurley, 27 F.3d 551,554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994).
Thus, the argument that the homogenous structure of Dong as a fundament teaching of Dong is misplaced, as a homogenous powder mixture is merely mentioned in an example of the disclosure of Dong. Thus, the arguments directed toward teaching away and the incorporation of the teachings of Man resulting in the modification being unsatisfactory for its intended purpose are not convincing.
Conclusion
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/O.A.J./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
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