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
Claims 1-2, 4-6, 8-15, and 17-19 are pending. The amendment filed April 30, 2026 has been entered but does not place the application in condition for allowance. The amendments to claims 1 and 14 overcome the prior art rejection over Yoshikawa to the original claims. The cancellations of claims 7 and 20 overcome the original 112(b) rejections to the original claims.
New rejections follow.
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.
Claims 1-2, 4-6, 8-15, and 17-19 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.
Claim 1 recites “wherein an amount of the cyclic ether in the negative active material is 0.003 gram to 0.3 gram per 1 gram of silicon in the negative active material layer.” The instant specification does not provide support for the limitation “amount of cyclic ether in the negative active material” in the amount claimed of 0.003 gram to 0.3 gram per 1 gram of silicon, which is a narrower scope compared to the supported phrase of “content of the cyclic ether corresponding to 1 gram of silicon in the negative active material” (instant spec: [0059], [0084], [0096]).
Claims 2, 4-6, 8-13 depend on claim 1 and therefore also fail to comply with the written description requirement.
Claim 14 recites “wherein an amount of the cyclic ether in the negative active material is 0.003 gram to 0.3 gram per 1 gram of silicon in the negative active material layer.” The instant specification does not provide support for the limitation “amount of cyclic ether in the negative active material” in the amount claimed of 0.003 gram to 0.3 gram per 1 gram of silicon, which is a narrower scope compared to the supported phrase of “content of the cyclic ether corresponding to 1 gram of silicon in the negative active material” (instant spec: [0059], [0084], [0096]).
Claims 15, 17-19 depend on claim 14 and therefore also fail to comply with the written description requirement.
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 1-2, 4-6, 8-10, 12, 14-15, 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Abe et al (US 9966632 B2, published 2018-05-08) in view of Furuya et al (JP2019216080A, published 2019-12-19, machine translation included).
Support is provided by evidentiary references “Ethylene carbonate” ChemSpider, 2026 (previously cited in the Office Action of 5 Feb 2026), “Vinylene carbonate” Millipore Sigma, 2026, “Fluoroethylene carbonate” Millipore Sigma, 2026, “Dimethyl carbonate” Millipore Sigma, 2026, and “Ethyl methyl carbonate” Millipore Sigma, 2026, “4-Ethynyl-1,3-dioxolan-2-one” ChemSpider, 2026.
Regarding claim 1, Abe teaches an electrochemical device (an energy storage device such as a lithium secondary battery; Col 1: lines 13-15), comprising: a positive electrode, a negative electrode, a separator, and an electrolytic solution (Col 1: lines 31-36; Col 23: lines 59-62); wherein
The negative electrode comprises a negative active material layer, the negative active material layer comprises a silicon material (Col 35: lines 20-30 teach a negative electrode sheet, i.e. a negative active material layer, comprising of silicon, which is a silicon material; Col 22: lines 36-45 also teach silicon and silicon compounds as known materials for a negative active material),
The electrolytic solution comprises fluorocarbonate and cyclic ether,
(Col 17: lines 19-38, 48-52 teach the electrolytic solution can comprise of a fluorocarbonate such as 4-fluoro-1,3-dioxolan-2-one (FEC) or cis-4,5-difluoro-1,3-dioxolan-2-one (DFEC) and Table 5 Examples II-7 and II-13 also disclose examples of electrolytic solution with FEC; the Abstract teaches the electrolytic solution includes 1,3-dioxane which is a cyclic ether)
and, based on a total weight of the electrolytic solution, a weight percent of the fluorocarbonate is A %, and a weight percent of the cyclic ether is B %, wherein B/A is 0.005 to 0.5,
(Table 5 Examples II-7 and II-13 teach a suitable nonaqueous electrolytic solution that has a volume composition of the nonaqueous solvent as 24/1/5/60/10 EC/VC/FEC/DMC/MEC or EC/EEC/FEC/DMC/MEC, 1% by mass of 1,3-dioxane in the solution, and 1.15 M LiPF6 salt, which according to the mass densities provided by evidentiary references ChemSpider and Millipore Sigma, would correspond to a weight percent of about 5.5% FEC (A %) and 1% 1,3-dioxane (B %). These examples use artificial graphite as the negative active material (Col 32: lines 48-54). However, Abe also teaches use of silicon as a suitable negative active material (Col 35: lines 20-30). A skilled artisan would have found it prima facie obvious to have substituted silicon for artificial graphite with the capabilities of the combination yielding predictable results. Correspondingly, B/A is 1/5.5 or 0.18, which is within the claimed range.)
wherein an amount of the cyclic ether in the negative active material layer is 0.003 gram to 0.3 gram per 1 gram of silicon in the negative active material layer,
(Col 4: lines 47-67; Col 5: lines 1-14 teach 1,3-dioxane, the cyclic ether, forms a surface film on the negative electrode, and discloses “When the content [of 1,3-dioxane] is 5% by mass or less, there is less concern that a surface film is excessively formed on the electrode, thereby causing worsening of high-temperature cycle characteristics, and when it is 0.001% by mass or more, a surface film is sufficiently formed, thereby increasing an effect for improving high-temperature cycle characteristics” (Col 5: lines 3-9), indicating an optimal amount of a 1,3-dioxane derived surface film. A skilled artisan would have thus recognized the amount of 1,3-dioxane, i.e., the amount of cyclic ether, in the negative active material as a result-effective variable. Accordingly, they would have found it obvious to have optimized the amount of 1,3-dioxane in the negative active material layer to yield the claimed amount of the cyclic ether in the negative active material layer per 1 gram of silicon provided in the negative active material layer.)
Abe is silent regarding a unit reaction area of the negative active material layer C which is a product of (i) a weight per unit area of the negative active material layer and (ii) a Brunauer-Emmett-Teller (BET) specific surface area of the negative active material layer, the BET specific surface area being measured for the negative active material layer including additives. Abe is also silent regarding the parameter (A+B)/C.
However, Abe teaches a density of the part except for the collector of the negative electrode is generally 1.1 g/cm3 – 2 g/cm3 (Col 23: lines 46-51).
In the same field of endeavor, Furuya teaches that setting the film thickness of the negative electrode active material layer 12 to 20 – 80 µm improves the energy density and cycle characteristics of the lithium-ion battery (machine translation: [0047]). A skilled artisan would have found it obvious to have modified Abe’s device to use a negative electrode active material layer thickness of 20 - 80 µm as taught by Furuya given that it is a known configuration and provides the advantages of improving the energy density and cycle characteristics of the lithium-ion battery. Consequently, within the combination of prior art, the product of the film thickness of the negative electrode active material layer (Abe: 1.1 g/cm3 – 2 g/cm3) and its density (Furuya: 20 – 80 µm) results in a calculated range of weight per unit area (g/cm2) of about 0.002 to 0.016 g/cm2.
Furuya also teaches a BET specific surface area of the negative electrode active material layer SC, i.e. a negative active material layer according to machine translation [0015], with a BET specific surface area ranging from 2 -5 m2/g ([0036], [0041], [0085]). The negative active material layer includes additives such as a conductive additive ([0015]). Furuya teaches their invention suppresses the expansion and contraction of the negative electrode during charging and discharging in a lithium-ion secondary battery using a silicon-based negative electrode active material with high energy density, wherein the expansion and contraction behaviors are associated with a decrease in cycle durability ([0005]-[0006]). A skilled artisan would have found it obvious to have modified Abe’s device to provide a BET specific surface area of the negative active material layer Sc as taught by Furuya to take advantage of improved cycle durability due to reduced expansion and contraction of the negative electrode during charging and discharging of the battery.
The unit reaction area C is the product of a weight per unit area of the negative active material layer and a Brunauer-Emmett-Teller (BET) specific surface area of the negative active material layer, which accordingly would be a range of 0.004 to 0.08 m2/cm2. The parameter (A+B)/C calculated based on the taught quantities of A, B, and C according to the combination of prior art ranges from 6.5/0.08 to 6.5/0.004, or 81 to 1625, which overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); see MPEP 2144.05.
Additionally, regarding the additional limitations of claim 14, Abe teaches an electronic device (i.e., mobile telephone, notebook computer, power source for an electric vehicle, electric power storage; Col 1 lines 1-17) comprising an electrochemical device (an energy storage device such as a lithium secondary battery; Col 1: lines 13-15).
Regarding claims 2 and 15, the combination of prior art teaches the electrochemical device of claim 1 and the electronic device of claim 14. As pointed out previously in addressing the limitations of claim 1, Abe of the combination teaches (Table 5 Examples II-7 and II-13) a weight percent of 5.5% FEC (A%); and 1% 1,3-dioxane (B%), which are in the claimed ranges.
Regarding claims 4 and 17, the combination of prior art teaches the electrochemical device of claim 1 and the electronic device of claim 14, the combination of prior art teaches the device of claim 1. Abe further teaches the cyclic ether can be 1,3-dioxane, which is a compound represented by Formula I.
Regarding claims 5 and 18, the combination of prior art teaches the electrochemical device of claim 4 and the electronic device of claim 17. Abe further teaches the cyclic ether can be 1,3-dioxane, which corresponds to the following claimed structure:
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Regarding claims 6 and 19, the combination of prior art teaches the electrochemical device of claim 1 and the electronic device of claim 14. Abe further teaches the fluorocarbonate can be 4-fluoro-1,3-dioxolan-2-one, which is a synonym for fluoroethylene carbonate.
Regarding claim 8, the combination of prior art teaches the device of claim 1. Abe of the combination teaches the silicon material (Abe: Col 35: lines 20-30) comprises of silicon and artificial graphite as active materials and a conductive agent, i.e. a silicon composite substrate. Abe is silent regarding a protection layer. Furuya of the combination teaches a binder that coats the negative electrode binding component containing a silicon-based negative electrode active material and a conductive additive for the negative electrode ([0007]), i.e. a silicon composite substrate, thus the binder coating forms a protection layer disposed on at least a part of a surface of the silicon composite substrate. Furuya teaches that their invention provides the advantages of suppressing the expansion and contraction of the negative electrode when using a silicon-based negative electrode active material during charging and discharging in a lithium-ion secondary battery negative electrode ([0010]). A skilled artisan would have found it obvious to have modified Abe’s electrochemical device to coat a binder as a protection layer on at least a part of a surface of the silicon composite substrate as taught by Furuya to obtain the advantages of suppressing expansion and contraction of the negative electrode of a battery using a silicon-based negative electrode active material to avoid potentially leading to a decrease in cycle durability (Furuya: [0005]).
Regarding claim 9, the combination above teaches the device of claim 8. Furuya of the combination teaches the binder, which forms the claimed protection layer, can be formed from materials such as polyethylene and polyvinylidene fluoride ([0031]); they are comprised of carbon, which is a claimed species.
Regarding claim 10, the combination above teaches the device of claim 8. Abe of the combination teaches the silicon material (Abe: Col 35: lines 20-30) comprises silicon (elemental substance) and artificial graphite and a conductive agent, i.e. a silicon composite substrate, and silicon is a claimed species.
Regarding claim 12, the combination above teaches the device of claim 8. Furuya of the combination teaches a binder coating, i.e. protection layer, thickness of 12 nm or more to keep the electrode expansion rate to a smaller value ([0127]), and Furuya further discloses that batteries with suppressed expansion and contraction of the active material exhibit high energy density while also having excellent cycle durability ([0126]). A skilled artisan would have found it obvious to have modified the modified electrochemical device of Abe to use a binder coating, i.e. protection layer, thickness of 12 nm or more as taught by Furuya to keep the electrode expansion rate to a smaller value to improve cycle durability. The taught thickness range overlaps with the claimed range and provides a prima facie case of obviousness exists; see MPEP 2144.05.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Abe et al (US 9966632 B2, published 2018-05-08) and Furuya et al (JP2019216080A, published 2019-12-19) as applied to claim 8, and further in view of Jeon et al (KR 101711985 B1, published 2017-03-06, cited previously in the office action of 5 Feb 2026).
Regarding claim 11, the combination above teaches the device of claim 8. Abe teaches that as negative electrode active materials for lithium secondary batteries, silicon and silicon compounds are suitable options (Col 22: lines 36-45). However, Abe does not explicitly specify a silicon oxide material.
In the same field of endeavor, Jeon teaches use of a first silicon oxide and a second silicon oxide SiOx as negative electrode active materials wherein 0.5 < x < 1.5 and teaches their invention enables a lithium secondary battery having excellent cycle life characteristics (p3 para 4-5). A skilled artisan would have found it obvious to have modified the modified electrochemical device of Abe to utilize silicon oxide within the silicon composite substrate as taught by Jeon to obtain the advantages of a lithium secondary battery having excellent cycle life characteristics.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Abe et al (US 9966632 B2, published 2018-05-08) and Furuya et al (JP2019216080A, published 2019-12-19) as applied to claim 1, and further in view of Ogata et al (US 20170077497 A1, published 2017-03-16, cited previously in the office action of 5 Feb 2026).
Regarding claim 13, the combination above teaches the electrochemical device of claim 1. Abe of the combination teaches negative active material layer comprises an electroconductive agent (Col 23: lines 37-40) but does not specify carbon nanotubes.
In the same field of endeavor, Ogata teaches particles of silicon composite active material that can have carbon nanotubes disposed on them ([0087], [0089], Fig. 2D), wherein the carbon nanotubes may have an average tube diameter of 5 nm to about 20 nm and a length of about 5 µm to about 30 µm. Ogata further teaches that within the taught diameter size range, the carbon nanotube may provide a sufficient mechanical strength, and that within the taught length size range, the carbon nanotube facilitates electron charge transfer into the particles of the silicon composite active material ([0090]). A skilled artisan would have found it obvious to modify modified Abe’s negative active material layer to utilize carbon nanotubes with the dimensions taught by Ogata for sufficient mechanical strength of the material and also to facilitate electron charge transfer into the particles of the silicon material within the negative active material layer. Ogata’s taught ranges for the diameter of the carbon nanotubes and the length of the carbon nanotubes overlaps with the claimed ranges. Overlapping ranges provide a prima facie case of obviousness; see MPEP 2144.05, I.
Response to Arguments
Applicant’s arguments with respect to the prior art rejections over Yoshikawa in view of Jeon have been considered as filed in the response of April 30, 2026 but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments regarding Ogata have been fully considered but they are not persuasive. Applicant argues that Ogata does not teach the amended independent-claim limitations including the parameter limitations for C, B/A, and the cyclic ether to silicon mass ratio. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/G.L.L./Examiner, Art Unit 1726
/BACH T DINH/Primary Examiner, Art Unit 1726 09/15/2026
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