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 .
Response to Amendment
The amendments filed on 10/28/2025 has been entered. Claim 10 is newly added 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 1-4, an 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Jing Wu et al. (Poly-dopamine coated graphite oxide/silicon composite as anode of lithium ion batteries, Powder Technology 311 (2017) 200–205), hereinafter “Jing Wu” in view of Zhou et al. (N-doped carbon layer derived from polydopamine to improve the electrochemical performance of spray-dried Si/graphite composite anode material for lithium ion batteries, Journal of Alloys and Compounds 689 130-137), hereinafter “Zhou”. Jing Wu and Zhou et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely negative electrode materials.
In regard to Claim 1, Jing Wu et al. discloses a negative active material for a rechargeable lithium battery, the negative active material comprising a core including a silicon-carbon composite (Jing Wu, Si-Graphite composite, Abstract), where the carbon (Graphite) acts as both volume change buffer and conductive support (Jing Wu, Si-Graphite composite, Abstract) with the silicon-carbon composite being an agglomerated product of a crystalline carbon (reduced graphene oxide) and nano silicon particles (Jing Wu, 3. Results and discussion). Jing Wu et al. also discloses a coating layer on a surface of the core, the coating layer including catecholamine (Jing Wu, Title: Poly-dopamine coated graphite oxide/silicon composite as anode of lithium ion batteries) wherein the PDA coating is derived from a catecholamine (dopamine) thus the coating includes catechol (and amine) functional groups characteristic of polydopamine and consistent with the description of a coating including catecholamine in the current application (Original Specification, [0027, 0050]).
While Jing Wu et al. discloses a silicon and graphite (carbon) core, it is silent as to an additional amorphous carbon in the core. Zhou et al. discloses a silicon and graphite (carbon) core which is an agglomerated product of a crystalline carbon and silicon particles (Zhou, 3.1. Morphology and structure) and an amorphous carbon is then added and heat treated to form the core, which is identical to the composition and method in the original specification (Original Specification, Example 1). Further, Zhou et al. also discloses the amorphous carbon is combined with the graphite as a buffer matrix (Zhou, Introduction), and has the benefit of protecting the graphite structure during the dopamine polymerization process (Zhou, Pg 132). 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 an amorphous carbon to the graphite and silicon composite core as taught in Zhou et al. to the graphite and silicon composite core disclosed in Jing Wu et al. as doing so would give the skilled artisan the reasonable expectation of achieving the benefits of strengthening the buffer matrix and protecting the graphite structure during the dopamine polymerization process and as doing so would amount to nothing more than the use of known technique to improve similar devices (methods, or products) in the same way.
In regard to Claim 2, Jing Wu in view of Zhou et al. discloses the negative active material for a rechargeable lithium battery as claimed in claim 1, wherein the catecholamine includes dopamine (Jing Wu, Title: Poly-dopamine coated graphite oxide/silicon composite as anode of lithium ion batteries) wherein the PDA coating is derived from a catecholamine (dopamine) thus the coating includes catechol (and amine) functional groups characteristic of polydopamine and consistent with the description of a coating including catecholamine in the current application (Original Specification, [0027, 0050]).
In regard to Claims 3-4, Jing Wu in view of Zhou et al. discloses the negative active material for a rechargeable lithium battery as claimed in claim 1. Jing Wu et al. also discloses wherein a thickness of the coating layer is about 8 nm (3. Results and discussion), which anticipates the claimed range.
In regard to Claim 7, Jing Wu in view of Zhou et al. discloses the negative active material for a rechargeable lithium battery as claimed in claim 1. While Jing Wu is silent as to amorphous carbon in the core, Zhou et al. discloses wherein the amorphous carbon in the core is between portions of the agglomerated product or on a surface of the agglomerated product (Zhou, Page 132). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention when providing amorphous carbon in the core as taught in Zhou et al. to provide it between portions of the agglomerated product or on a surface of the agglomerated product as doing so would give the skilled artisan the reasonable expectation of achieving the benefits of the amorphous carbon in the core as taught in Zhou and as doing so would amount to nothing more than choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
In regard to Claim 8, Jing Wu in view of Zhou et al. discloses the negative active material as claimed in claim 1. Jing Wu in view of Zhou et al. also discloses a rechargeable lithium battery, comprising a negative electrode including the negative active material as claimed in claim 1 and a positive electrode including a positive active material; and a non-aqueous electrolyte (Jing Wu, Pg 203), (Zhou, 2.4. Electrochemical characterization).
Claims 5-6 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Jing Wu et al. (Poly-dopamine coated graphite oxide/silicon composite as anode of lithium ion batteries, Powder Technology 311 (2017) 200–205), hereinafter “Jing Wu” in view of Zhou et al. (N-
doped carbon layer derived from polydopamine to improve the electrochemical performance of spray-dried Si/graphite composite anode material for lithium ion batteries, Journal of Alloys and Compounds 689 (2016) 130-137), hereinafter “Zhou” as applied to claims 1 and 8 above, and further in view of Yang et al. (US 20190181450 A1), hereinafter “Yang”. Jing Wu, Zhou and Yang et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely negative electrode materials.
In regard to Claims 5 and 10, Jing Wu in view of Zhou et al. discloses the negative active material for a rechargeable lithium battery as claimed in claim 1. Jin Wu et al. discloses a polydopamine (PDA) coating (Jing Wu, Title), which by definition contains catechol/phenolic groups on an aromatic ring, i.e. at least one hydrogen of a benzene ring of the catecholamine is substituted with an anion of -OH (wherein the catechol motif comes from dopamine).
Zhou et al. also discloses a silicon composite core exposed to a Tris-HCL buffer solution containing dopamine hydrochloride (Zhou, 2.1-2.2), which would cause dopamine to bond with anions already present on the Si-graphite core, including SiOx surface species natively formed from silicon oxygen reaction and hydroxyl (-OH) groups formed during processing of the graphite and thus, would likely result in catecholamine being bonded with an anion of SO3-, CO2-, and OH- or a combination thereof. This is evidenced by the Si-OH present in Yang, which bonds with the polydopamine when the layer is formed and thus the catecholamine is bonded with an anion of OH-, which has the benefit of creating a stronger bond (Yang, Paragraph [0044]). 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 catecholamine layer that is bonded with an anion as disclosed in Yang as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Yang 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 6, Jin Wu in view of Zhou et al. discloses the negative active material for a rechargeable lithium battery as claimed in claim 1. While Jing Wu discloses a coating layer of catecholamine, it is silent as to its wt% based on a total of 100 wt% of the negative active material.
Yang et al. discloses a catecholamine in the form of polydopamine used in a wt% of 5-8 wt %
based on the weight of Si-based material (Yang, Paragraph [0045]) which can be used to calculate the
wt% based on a total of 100 wt% of the negative active material. Given the materials and wt% disclosed
in a specific example there is a calculated range of the catecholamine of about 3.85 wt% to about 6.02
wt% based on a total of 100 wt% of the negative active material (Yang, Example 1), 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, Jing Wu in view of Zhou et al. discloses the rechargeable lithium battery as claimed in claim 8. While both Jing Wu and Zhou et al. disclose crystalline carbon in the negative electrode, they fail to explicitly disclose wherein the negative electrode further includes additional crystalline carbon.
Yang et al. discloses a specific example where the silicon polydopamine composite is combined
with crystalline graphite to form the negative active material and the negative electrode further includes
flake graphite KS6L (additional crystalline carbon) and Super P (Yang, Example P1 anode) which has the
benefit of supporting high loading electrodes and increasing conductivity (Yang, Paragraphs [0185-
0186]). 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 additional crystalline carbon to the negative electrode, as
doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in
Yang et al. and as doing so would amount to nothing more than applying a known technique to a known
device (method, or product) ready for improvement to yield predictable results.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-2, 5 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 9-12, and 18 of copending Application No. 18/816514 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations in the original claims 1, 2, 5, and 8 including the Si-C composite core with crystalline and amorphous carbon as well as the dopamine and norepinephrine coating are disclosed in the reference claims 2, 9-12, and 18.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see pages 5-6 of 9, filed 10/28/2025, with respect to the rejection of claim 1 under 35 U.S.C. 102(a)(1) 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 with reference to Jing Wu et al. (Poly-dopamine coated graphite oxide/silicon composite as anode of lithium ion batteries, Powder Technology 311 (2017) 200–205) in view of Zhou et al. (N-doped carbon layer derived from polydopamine to improve the electrochemical performance of spray-dried Si/graphite composite anode material for lithium ion batteries, Journal of Alloys and Compounds 689 130-137) regarding the negative active material for a rechargeable lithium battery comprising a coating layer including catecholamine. Further, the double patenting rejection of record is maintained as the application is not in condition for allowance.
Conclusion
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/K.M.O./ Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/ Supervisory Patent Examiner, Art Unit 1725