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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/27/2026 has been entered.
Response to Arguments
This Office Action is responsive to the arguments filed on 12/2/2025. Claims 1, 3-5, 7-14 are pending. Claims 9-13 are withdrawn from further consideration as being drawn to a non-elected invention, in accordance with 37 CFR 1.142(b). Claim 1 is amended. Applicant’s arguments have been considered. Claims 1, 3-5, 8, 14 are non-finally rejected for reasons below.
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, 3-5, 7, 8, 14 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 limitation “wherein the anode active material comprises a magnesium hydroxide on a surface” not supported by the disclosure as originally filed.
Table 3 of the instant Specification states:
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The Examiner notes that magnesium hydroxide does not exist in the final product.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 103
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, 3-5, 7, 8, 14 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2020/0274147).
Regarding claim 1, Lee discloses an anode active material for a lithium secondary battery comprising:
a silicon oxide which comprises a carbon coating layer formed on a surface thereof [0083], and is doped with magnesium [0081],
Regarding claim 1 limitation “to comprise a Mg-silicate phase”, the instant Specification states:
Herein, the mixing is not particularly limited, but a mixing device such as a tumbler mixer may be used, and the mixing may be performed under an inert atmosphere. After the mixing, doping is performed at 900°C to 1,000°C, such that magnesium doping may sufficiently performed. When the temperature during doping is less than 900°C, Mg-silicate phases resulted from magnesium as a doping element, are not stably formed, such that an increase in initial efficiency may be insignificant. When the temperature exceeds 1,000°C, there is a problem that the silicon crystal is increased larger than necessary to cause a decrease in the life-span characteristics. (emphasis added, pages 13-14)
Lee discloses that silicon oxide is mixed with metal powder magnesium, and heat treatment is performed at 900 to 1000 C [0049-0051]. Hence, Lee meets Applicant’s limitation of “Mg-silicate phase.”
Regarding claim 3, wherein a content of the doped magnesium is 7 to 17% by weight based on the total weight of the silicon oxide [0081].
Regarding claim 5, wherein the silicon oxide is SiOx (0 < x < 2) [0081].
Regarding claim 8, wherein the carbon of the coating layer comprises amorphous carbon, carbon nanofibers, carbon nanotubes, graphite, graphene, graphene oxide, reduced graphene oxide, or a mixture thereof [0083].
Regarding claim 1, wherein the silicon oxide has a silicon crystal average particle diameter of 20 nm or less, and regarding claim 7, wherein the silicon oxide has a silicon crystal average particle diameter of 0.1 nm to 20 nm, the instant Specification states:
In some embodiments, the coating of the coating layer may be formed by thermally treating the organic material on the surface of the silicon oxide by chemical vapor deposition (CVD) at 800°C to 1,000°C under an atmosphere of gas and/or vapor. At this time, when the process temperature is less than 800°C, crystallization of carbon on the surface of the silicon oxide may not be sufficiently performed. In addition, when the process temperature exceeds 1,000°C, the silicon crystal particle diameter of the silicon oxide is increased to 20 nm or more, and thereby life-span characteristics of the secondary battery may be reduced. (emphasis added) Page 12
The heat treatments of Lee are performed at 950 C and 850 C [0081, 0083]. Hence, Lee meets the limitations of claims 1 and 7.
Regarding claim 4, wherein a carbon content in the coating layer is 3 to 12% by weight based on the total weight of the silicon oxide, example 1 discloses 15 wt% [0081]. The linear conductive material may be present in an amount of 1 to 30, particularly 3 to 15 parts by weight based on 100 parts by weight of the doped silicon oxide. When the above range is satisfied, it is possible to establish sufficient electrical connection between adjacent particles and minimize side reactions with an electrolyte solution, thereby preventing the reduction in initial efficiency and life characteristics [0039]. The carbon-based binder may be present in an amount of 1 to 30, particularly 3 to 15 parts by weight based on 100 parts by weight of the doped silicon oxide. When the above range is satisfied, it is possible to give sufficient bondability and conductivity and prevent the initial efficiency reduction [0043]. It would have been obvious to one of ordinary skilled in the art at the time the invention was made to adjust the amount of carbon coating on the silicon oxide particles for the benefit of establishing sufficient electrical connection between adjacent particles and minimize side reactions with an electrolyte solution, thereby preventing the reduction in initial efficiency and life characteristics.
Regarding claim 1, Lee does not disclose wherein the anode active material comprises magnesium hydroxide on a surface, and a content of magnesium hydroxide remaining on the surface is less than 0.05% by weight based on a total weight of the silicon oxide, the Examiner notes that the instant Specification Table 3 discloses that magnesium hydroxide does not exist in the final product.
Considering the 112, 1st issue, and the minute proportion of the Applicant’s claimed amount of magnesium hydroxide, it is expected that Applicant’s silicon oxide particle “wherein the anode active material comprises magnesium hydroxide on a surface, and a content of magnesium hydroxide remaining on the surface is less than 0.05% by weight based on a total weight of the silicon oxide” would yield similar results as Lee’s silicon oxide particle that possesses no magnesium hydroxide.
It has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05. (emphasis added)
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Hence, Applicant’s “wherein the anode active material comprises magnesium hydroxide on a surface, and a content of magnesium hydroxide remaining on the surface is less than 0.05% by weight based on a total weight of the silicon oxide” would have been found obvious in light of Lee’s manganese-doped silicon oxide.
Regarding claim 14, Lee teaches a lithium secondary battery comprising:
a cathode; and
an anode which comprises the anode active material for a lithium secondary battery according to claim 1.
Response to Arguments
Arguments dated 3/27/2026 are addressed below:
Applicant’s arguments to Hirose are moot in view of the new grounds of rejection.
Regarding claim 1, Lee does not disclose wherein the anode active material comprises magnesium hydroxide on a surface, and a content of magnesium hydroxide remaining on the surface is less than 0.05% by weight based on a total weight of the silicon oxide, the Examiner notes that the instant Specification Table 3 discloses that magnesium hydroxide does not exist in the final product.
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Considering the 112, 1st issue, and the minute proportion of the Applicant’s claimed amount of magnesium hydroxide, it is expected that Applicant’s silicon oxide particle “wherein the anode active material comprises magnesium hydroxide on a surface, and a content of magnesium hydroxide remaining on the surface is less than 0.05% by weight based on a total weight of the silicon oxide” would yield similar results as Lee’s silicon oxide particle that possesses no magnesium hydroxide.
It has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05. (emphasis added)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CYNTHIA KYUNG SOO WALLS whose telephone number is (571)272-8699. The examiner can normally be reached on M-F until 5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Leong can be reached at 571-270-1292. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CYNTHIA K WALLS/ Primary Examiner, Art Unit 1751
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