DETAILED ACTION
Response to Amendments
Applicant’s amendments and arguments have been entered. A reply to the Applicant’s remarks/arguments is presented after addressing the claims.
Any rejections and/or objections made in the previous Office Action and not repeated below, are hereby withdrawn in view of Applicant’s amendments or/and arguments.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. References cited in the current Office action can be found in a prior Office action. Reference not previously cited can be found per the attached PTO-892 for this Office action.
Status of Claims
Claims 1-20 are pending, wherein claims 1-2, 4, 9, 12-13, 15 and 20 are amended. Claims 1-20 are being examined on the merits in the current Office action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on Dec. 5, 2025 has been considered by the examiner.
Claim Objections
Claims 13-20 are objected to because of the following:
The preamble in claims 13-20 should be consistent with that in claim 12. That is, the “electrochemical apparatus” should read “electronic apparatus”.
Appropriate correction is required.
Specification
The disclosure is objected to because of the following:
Paragraph [0056] recites “lithium cobaltateare”. It is unknown which material it refers to. This is being interpreted as referring to lithium cobaltate during the examination. The amendments filed Jan. 16, 2026 to [0056] is NOT accepted since the word “cobaltateare” was not deleted. Appropriate correction is required.
The amendments to Tables 1 and 2 filed Jan. 16, 2026 are accepted.
Claim Rejections - 35 USC § 112
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.
Claims 1-20 are 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.
Claim 1 or claim 12 recites both an electrochemical apparatus and a process of using the electrochemical apparatus (e.g., “charging the electrochemical apparatus …”, etc.). However, a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 USC §112(b). See MPEP § 2173.05(p).
In claim 1 or claim 12, even if the claim recites a step of “first discharging …” and a step of “charging a battery …”, it is still unclear how a value of “a first capacity a” is obtained/measured/calculated.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The independent claim 1 or claim 12 does not fall within at least one of the four categories of patent eligible subject matter because the claim is directed to neither one of the four categories, but rather embraces or overlaps two different statutory classes of invention set forth in 35 USC §101 which is drafted so as to set forth the statutory classes of invention in the alternative only.
Claim Rejections - 35 USC § 103
Claims 1-9 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Konishiike et al. (US 20160133941 A1, hereafter Konishiike).
Regarding claims 1 and 7-8, Konishiike teaches an electrochemical apparatus (“secondary battery”, [0054]), comprising:
a positive electrode plate, a negative electrode plate, and a separator disposed between the positive electrode plate and the negative electrode plate ([0054] and Fig. 2),
wherein
the negative electrode plate comprises a negative electrode current collector (“11”, Fig. 2) and a negative electrode active substance layer (“12”) disposed on the negative electrode current collector, and the negative electrode active substance layer may comprise SiOv, where 0 < v ≤ 2 ([0035]), reading on the claimed silicon-oxygen compound represented by SiOx.
Konishiike further teaches that the negative electrode plate further comprises a lithium plate on the negative electrode active substance layer (“bonding a metallic lithium foil”, [0048]). Note that the recitation “calendered onto …” represents a process, but the patentability of a product does not depend on its method of production.
Konishiike is silent on the following limitation in relation to a characteristic or property of the electrochemical apparatus:
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However, since Konishiike teaches substantially the same negative electrode plate (i.e., a lithium plate on a negative electrode active material layer, e.g., [0045]-[0052], [0035]) as that disclosed in the instant invention (e.g., [0055]-[0056], PgPub), the claimed characteristic or property is necessarily present. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be necessarily present. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997). See MPEP § 2112.01.
Additionally, the Applicant is drawn attention to the following:
1) The characteristic or property as stated above results from an intended operation of the electrochemical apparatus comprising the negative electrode plate, however, “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969).
2) Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). See also MPEP §2114. The manner of operating the device does not differentiate an apparatus claim from the prior art. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In the instant case, Konishiike has already all the claimed structure limitations of the electrochemical apparatus.
3) The preamble of the instant invention in claim 1 is “an electrochemical apparatus”, and “a battery” in “than charging a battery” is different from “an electrochemical apparatus”. Thus, it is unclear whose “a first capacity a” it is being claimed.
Regarding claims 2-6, Konishiike teaches the electrochemical apparatus according to claim 2, and further, the claimed a, b, c and their relationships recited in these claims represent characteristics or properties of the electrochemical apparatus or the negative electrode plate and are expected to be present, because Konishiike teaches substantially the same negative electrode plate (See the rejection of claim 1) as well as the same position electrode ([0057]-[0058]) as that disclosed in the instant invention ([0055], PgPub). Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be necessarily present. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997). See MPEP § 2112.01.
Also see “Additionally, the Applicant is drawn attention to the following:” in the rejection of claim 1.
Regarding claim 9, Konishiike teaches the electrochemical apparatus according to claim 1, wherein the negative electrode active substance in the negative electrode active substance layer can be 100% of silicon (e.g., [0083]). The 100% is close to 94.8% of the range as claimed. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough. See MPEP § 2144.05 (I).
Regarding claims 12 and 18-19, Konishiike teaches an electronic apparatus (“secondary battery”, [0054]), comprising an electrochemical apparatus (“secondary battery”, [0054]), the electrochemical apparatus, comprising:
a positive electrode plate, a negative electrode plate, and a separator disposed between the positive electrode plate and the negative electrode plate ([0054] and Fig. 2),
wherein
the negative electrode plate comprises a negative electrode current collector (“11”, Fig. 2) and a negative electrode active substance layer (“12”) disposed on the negative electrode current collector, and the negative electrode active substance layer may comprise SiOv, where 0 < v ≤ 2 ([0035]), reading on the claimed silicon-oxygen compound represented by SiOx.
Konishiike further teaches that the negative electrode plate further comprises a lithium plate on the negative electrode active substance layer (“bonding a metallic lithium foil”, [0048]). Note that the recitation “calendered onto …” represents a process, but the patentability of a product does not depend on its method of production.
Konishiike is silent on the following limitation in relation to a characteristic or property of the electronic apparatus:
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However, since Konishiike teaches substantially the same negative electrode plate (i.e., a lithium plate on a negative electrode active material layer, e.g., [0045]-[0052], [0035]) as that disclosed in the instant invention (e.g., [0055]-[0056], PgPub), the claimed characteristic or property is necessarily present. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be necessarily present. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997). See MPEP § 2112.01.
Additionally, the Applicant is drawn attention to the following:
1) The characteristic or property as stated above results from an intended operation of the electronic apparatus comprising the negative electrode plate, however, “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969).
2) Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). See also MPEP §2114. The manner of operating the device does not differentiate an apparatus claim from the prior art. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In the instant case, Konishiike has already all the claimed structure limitations of the electronic apparatus.
3) The preamble of the instant invention in claim 1 is “an electronic apparatus”, and “a battery” in “than charging a battery” is different from “an electronic apparatus”. Thus, it is unclear whose “a first capacity a” it is being claimed.
Regarding claims 13-17, Konishiike teaches the electrochemical apparatus according to claim 12, and further, the claimed a, b, c and their relationships recited in these claims represent characteristics or properties of the electrochemical apparatus or the negative electrode plate and are expected to be present, because Konishiike teaches substantially the same negative electrode plate (See the rejection of claim 1) as well as the same position electrode ([0057]-[0058]) as that disclosed in the instant invention ([0055], PgPub). Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be necessarily present. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997). See MPEP § 2112.01.
Also see “Additionally, the Applicant is drawn attention to the following:” in the rejection of claim 12.
Regarding claim 20, Konishiike teaches the electrochemical apparatus according to claim 12, wherein the negative electrode active substance in the negative electrode active substance layer can be 100% of silicon (e.g., [0083]). The 100% is close to 94.8% of the range as claimed. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough. See MPEP § 2144.05 (I).
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Konishiike, as applied to claim 1 above, and further in view of Kashiwagi et al. (US 20080102370 A1, hereafter Kashiwagi).
Regarding claims 10-11, Konishiike teaches the electrochemical apparatus according to claim 10, but is silent on a conductive layer as claimed.
In the same field of endeavor, Kashiwagi discloses that a conductive layer (“14” in Figs. and [0042]) is disposed between a current collector (“11”) and an active material layer (“12”) to improve adhesiveness ([0042]).
It would have been obvious to one of ordinary skill in the art to have incorporated the teachings of Kashiwagi into Konishiike such that a conductive layer is disposed between the negative electrode current collector and the negative electrode active substance layer of Kashiwagi in order to improve the adhesiveness between the said two. Kashiwagi further teaches the conductive layer may comprise a conductive agent, such as carbon black, and a binder ([0043], [0035]-[0036]).
Response to Arguments
Applicant's arguments filed Jan. 16, 2026 have been fully considered but they are not persuasive.
Applicant's arguments are based on the claims as amended. The amended claims have been addressed in the new rejections above. In addition:
1) Applicant argued about Konishiike’s process to prepare the negative electrode (e.g., vapor-phase deposition, calendaring, etc.), but did not point out the structure difference between the instant invention and Konishiike. Again, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
2) Applicant also argued about the “unique capacity relationships”. However, the “relationships” are at least based on many unresolved issues presented above in the above 112(b) and the rejection of claim 1 or claim 12, and therefore are not persuasive.
3) Applicant also argued about “unexpected results”. However, the evidence must compare the claimed invention to the closest prior art. Applicants compared their own results in the arguments.
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 ZHONGQING WEI whose telephone number is (571)272-4809. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727