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
1. Applicant’s amendments with respect to claims filed on 12/01/2025 have been entered. Claims 1-5, 7, 9, and 11 remain pending in this application and are currently under consideration for patentability under 37 CFR 1.104. Claims 6, 8, and 10 have been cancelled.
The amendments and remarks filed are sufficient to cure the previous 35 USC 112 rejections set forth in the Non-Final office action mailed on 09/08/2025.
Claim Rejections - 35 USC § 112
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.
2. Claims 1-5, 7, 9, and 11 are 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 1, the recitation “the silicon-based active substance includes SiO doped with Li in an amount of 10wt% or more with respect to an amount of SiO” in claim 1, lines 16-17 lacks proper support in the specification because according to Page 5, lines 17-18 of applicant’s arguments filed on 12/01/2025, support for this amendment is found on Page 23, line 4, and Table 1 of the instant specification, however, page 24, line 4 describes SiO doped with Li in an amount of 10wt% to SiO and gives no indication in the instant specification where SiO can be doped with more than 10wt% of Li.
Further regarding claim 1, the recitation “the carbon-based active substance includes carbon nanotubes” in claim 1, line 18 lacks proper support in the specification because according to Page 5, lines 17-18 of applicant’s arguments filed on 12/01/2025, support for this amendment is found on Page 23, line 4, and Table 1 of the instant specification, however Table 1 does not describe carbon nanotubes as the carbon-based active substance but instead describes it as a conductive material. Further, paragraph [0010] of the instant published specification discloses wherein the negative electrode active material layer includes a negative electrode active substance, then later in [0014] discloses the negative electrode active material layer further includes carbon nanotubes suggesting the carbon nanotubes are not even part of the negative electrode active substance much less the carbon-based active substance. Further in [0035] the mass percent range described in claim 1 is described as being tied to the CNT used as a conductive agent, not as a carbon-based active substance.
Regarding claim(s) 2-5, 7, 9, and 11, the claim(s) is/are rejected as they depend from, and therefore incorporate the claimed subject matter from claims rejected under this statute.
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.
3. Claim(s) 1-5, 7, 9, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kondo (Pub. No. US 20230411624 A1) in view of Matsubara et al. (Pub. No. US 20220393151 A1).
Regarding claim 1, Kondo teaches a negative electrode (negative electrode, see [0023]) for nonaqueous electrolyte secondary batteries (see [0066] where the negative electrode is used in a nonaqueous electrolyte secondary battery) comprising: a negative electrode active substance layer (active material layer, see [0030], see [0023] where the negative electrode has an active material layer) that includes a negative electrode active substance (active material/fibrous carbon, see [0030], the Examiner would like to note that although the fibrous carbon is not described as a negative electrode active material, [0035] shows a negative active material is a material capable of absorbing and releasing lithium ions, and further as evidenced by [0081] of *Kobayashi, fibrous carbon is capable of intercalating and deintercalating lithium ions, therefore it is the Examiner’s position the fibrous carbon would act as an active material and be part of the active substance taught by Kondo); and a binder (binder and polysaccharide polymer, see [0030], the examiner is considering the binder as both the binder and polysaccharide polymer), wherein the negative electrode active substance (active material, see [0030]) includes a silicon-based active substance (silicon-based active material, see [0041]) that contains SiOx wherein, x is a number satisfying 0.5≤x≤1.6 (SiO.sub.x, 0.8≤x≤1.2, see [0041]), and a carbon-based active substance (carbon material/fibrous carbon, see [0042], see [0030]), the binder (binder and polysaccharide polymer, see [0030]) contains a poly(meth)acrylic acid (polymers of acrylic acid or methacrylic acid, see [0053], see [0096] example is Polyacrylic acid), a metal salt of poly(meth)acrylic acid (polymer of sodium acrylate, see [0053]), an alkyl ester of poly(meth)acrylic acid (polymers of ethyl methacrylate, see [0053]), or a mixture of multiple compounds selected from these compounds, and a content of the binder (binder and polysaccharide polymer, see [0030]) relative to a total solid content of the negative electrode active substance layer (active material layer, see [0030]) is 2% by mass or more to less than 10% by mass (2.5% by mass or more and 5% by mass or less, see [0062] where it is a percent of active material layer), the carbon-based active substance (carbon material/fibrous carbon, see [0042], see [0030]) includes carbon nanotubes (carbon nanotubes, see [0045] where the fibrous carbon is carbon nanotubes), and a content of the carbon nanotubes (carbon nanotubes, see [0045] where the fibrous carbon is carbon nanotubes, see [0096] shows a specific example where the fibrous carbon is single-walled carbon nanotubes) relative to the total solid content of the negative electrode active substance layer (active material layer, see [0030]) is 0.10% by mass or more to 1% by mass or less (0.02% by mass or more and 1% by mass or less, see [0051], further see [0096] where the fibrous carbon is present as single-walled carbon nanotubes in 0.05% by mass), but fails to teach wherein a content of the silicon-based active substance relative to a total solid content of the negative electrode active substance layer is more than 10% by mass to less than 80% by mass, the silicon-based active substance includes SiO doped with Li in an amount of 10wt% or more with respect to an amount of SiO.
However, Kondo teaches a content of the silicon-based active substance (silicon-based active material, see [0041]) relative to a total solid content of the negative electrode active substance layer (active material layer, see [0030]) is more than 10% by mass to less than 80% by mass (3% by mass or more and 50% by mass or less, see [0041] where it is based on total active material layer).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Kondo such that the amount of silicon-based active material stays within the claimed range of more than 10% by mass and less or equal to 50% by mass as a prima facie case of obviousness exists “in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art” (MPEP 2144.05.I) and Kondo teaches it is known in the art to do so. Further Kondo teaches modifications can be made (see [0091] of Kondo).
Further, in a similar field of endeavor Matsubara teaches the silicon-based active substance (negative electrode active material, see [0038]) includes SiO (SiO (x=1), see [0040] where the silicon compound before doping is SiO (x=1)) doped with Li (Lithium, see [0042], see [0115] gives a specific example of SiO doped with lithium) in an amount of 10wt% or more (0.5% to 17.6%, see [0045] where the alkali metal is 0.5-15% by weight of total weight of the silicon oxide powder A, to find weight percent based on amount of SiO it is (%Li)*(total weight)/(1-%Li)*(total weight) = (%Li)/(1-%Li) = (0.005/0.995) = 0.005*100 = 0.5%, and (0.15/0.85) = 0.176*100 = 17.6%) with respect to an amount of SiO (amount of SiO (x=1) in first silicon oxide powder A, see [0040] where the silicon compound before doping is SiO (x=1), see [0045] where the weight % of alkali metal is based on total of the first silicon oxide powder A).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Kondo such that the silicon-based active material includes SiO doped with Li at 0.5% to 17.6% by weight of SiO doped as taught by Matsubara to achieve high initial efficiency and improved discharge capacity (see [0009] of Matsubara). Further it would have been obvious to modify the weight percent of Li to be within the claimed range of at 10%-17.6% as Matsubara teaches doping quantity of lithium is a result effective variable initial efficiency, discharge capacity, and cycle characteristics (see [0023] of Matsubara). Further Kondo teaches modifications can be made (see [0091] of Kondo).
*Additional Evidence Provided by Kobayashi et al. (Pub. No. US 20180272456 A1), see [0081] fibrous carbon materials can intercalate and deintercalate lithium ions.
Regarding claim 2, Kondo in view of Matsubara teaches wherein the carbon-based active substance (carbon material/fibrous carbon, see [0042], see [0030]) includes natural black lead (graphite, see [0042]), artificial black lead (graphite, see [0042], see [0036] graphite can be natural or artificial), hard carbon, soft carbon, or a mixture of multiple active substances selected from these active substances.
Regarding claim 3, Kondo in view of Matsubara teaches wherein the content of the binder (binder and polysaccharide polymer, see [0030]) relative to the total solid content of the negative electrode active substance layer (active material layer, see [0030]) is 2.5% by mass or more to 8% by mass or less (2.5% by mass or more and 5% by mass or less, see [0062] where it is a percent of active material layer) but fails to teach wherein the content of the silicon-based active substance relative to the total solid content of the negative electrode active substance layer (active material layer, see [0030]) is 15% by mass or more to 60% by mass or less (3% by mass or more and 50% by mass or less, see [0041] where it is based on total active material layer).
However, Kondo teaches wherein the content of the silicon-based active substance (silicon-based active material, see [0041]) relative to the total solid content of the negative electrode active substance layer is 15% by mass or more to 60% by mass or less.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Kondo in view of Matsubara such that the amount of silicon-based active material stays within the claimed range of 15% by mass or more and less or equal to 40% by mass as a prima facie case of obviousness exists “in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art” (MPEP 2144.05.I) and Kondo teaches it is known in the art to do so. Further Kondo in view of Matsubara teaches modifications can be made (see [0091] of Kondo).
Regarding claim 4, Kondo in view of Matsubara teaches wherein the content of the binder (binder and polysaccharide polymer, see [0030]) relative to the total solid content of the negative electrode active substance layer (active material layer, see [0030]) is 2.5% by mass or more to 6% by mass or less (2.5% by mass or more and 5% by mass or less, see [0062] where it is a percent of active material layer) but fails to teach wherein the content of the silicon-based active substance relative to the total solid content of the negative electrode active substance layer is 15% by mass or more to 40% by mass or less.
However, Kondo teaches wherein the content of the silicon-based active substance (silicon-based active material, see [0041]) relative to the total solid content of the negative electrode active substance layer (active material layer, see [0030]) is 15% by mass to less than 40% by mass (3% by mass or more and 50% by mass or less, see [0041] where it is based on total active material layer).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Kondo in view of Matsubara such that the amount of silicon-based active material stays within the claimed range of 15% by mass or more and less or equal to 40% by mass as a prima facie case of obviousness exists “in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art” (MPEP 2144.05.I) and Kondo teaches it is known in the art to do so. Further Kondo in view of Matsubara teaches modifications can be made (see [0091] of Kondo).
Regarding claim 5, Kondo in view of Matsubara teaches wherein the content of the binder (binder and polysaccharide polymer, see [0030]) relative to the total solid content of the negative electrode active substance layer (active material layer, see [0030]) is 2.5% by mass or more to 3.8% by mass or less (2.5% by mass or more and 5% by mass or less, see [0062] where it is a percent of active material layer, this encompasses the claimed range, further see [0096] with a specific example negative electrode with binder and polymer content equal to 3.3% which falls within the claimed range) but fails to teach wherein the content of the silicon-based active substance relative to the total solid content of the negative electrode active substance layer is 15% by mass or more to 20% by mass or less.
However, Kondo teaches wherein the content of the silicon-based active substance (silicon-based active material, see [0041]) relative to the total solid content of the negative electrode active substance layer (active material layer, see [0030]) is 15% by mass or more to 20% by mass or less mass (5% by mass or more and 20% by mass or less, see [0041] where it is based on total active material layer).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Kondo in view of Matsubara such that the amount of silicon-based active material stays within the claimed range of 15% by mass or more and less or equal to 20% by mass as a prima facie case of obviousness exists “in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art” (MPEP 2144.05.I) and Kondo teaches it is known in the art to do so. Further Kondo in view of Matsubara teaches modifications can be made (see [0091] of Kondo).
Regarding claim 7, Kondo in view of Matsubara teaches wherein the carbon nanotubes (carbon nanotubes, see [0045] where the fibrous carbon is carbon nanotubes, see [0096] shows a specific example where the fibrous carbon is single-walled carbon nanotubes) are single-walled carbon nanotubes (single-walled carbon nanotubes, see [0096]).
Regarding claim 9, Kondo in view of Matsubara teaches wherein the binder (binder and polysaccharide polymer, see [0030]) further includes carboxymethyl cellulose (CMC, see [0058], see [0096] with a specific example containing CMC) or a metal salt of carboxymethyl cellulose (alkali metal salt or ammonium salt, see [0058]).
Regarding claim 11, Kondo in view of Matsubara teaches a nonaqueous electrolyte secondary battery (nonaqueous electrolyte secondary battery, see [0066]) the negative electrode (negative electrode, see [0023]) for nonaqueous electrolyte secondary batteries (see [0066] where the negative electrode is used in nonaqueous electrolyte secondary battery) according to claim 1 (see rejection and modification of claim 1 above); a positive electrode (positive electrode, see [0066]) for nonaqueous electrolyte secondary batteries (see [0066] where the positive electrode is used in a nonaqueous electrolyte secondary battery); a separator (separator, see [0066]); and a nonaqueous electrolyte (nonaqueous electrolyte, see [0066]).
Response to Arguments
4. Applicant's arguments filed 12/01/2025 have been fully considered but they are not persuasive.
Regarding applicant’s argument that Kondo fails to teach SiO doped with lithium in an amount of 10wt% or more, this argument is rendered moot as the rejection does not rely on the combination of references previously applied.
In response to applicant's argument that the SiO doped with Li in an amount of 10wt% or more and the carbon-based active substance includes carbon nanotubes in a content of 0.10% by mass or more to 1% by mass or less provides the unexpected result of improvement of capacity maintenance ratio of the nonaqueous electrolyte secondary battery, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Further regarding applicants’ arguments that the examples provided in Tables 1 and 2 provide evidence of SiO doped with Li in an amount of 10wt% or more and the carbon-based active substance includes carbon nanotubes in a content of 0.10% by mass or more to 1% by mass or less providing the unexpected result of improvement of capacity maintenance ratio. The Examiner respectfully disagrees as the examples provided in Tables 1 and 2 do not disclose SiO doped with Li at 10wt% or more, but instead specifically discloses SiO doped with Li in 10wt% exactly as seen in [0061] of instant published specification. Further, the examples in Tables 1 and 2 do not disclose carbon nanotubes as a component of the carbon-based active substance, but rather as a conductive material as seen in [0068] of the instant published specification.
Conclusion
5. 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.
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/DOUGLAS C MARROQUIN/Examiner, Art Unit 1723 /TIFFANY LEGETTE/Supervisory Patent Examiner, Art Unit 1723