DETAILED ACTION
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5, and 7-11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kim et al. (US 2023/0246173).
Regarding claims 1 and 3, Kim discloses a silicon-carbon composite negative electrode active material comprising:
a silicon-carbon composite negative electrode active material;
artificial graphite; and
a carbon nanotube structure (para 0133).
The carbon nanotube structure is composed of single-walled carbon nanotube units having an average diameter of 1.5 nm and an average length of 5 µm (para 0120).
Regarding claim 2, Kim discloses the artificial graphite has a D50 of 21 µm (para 0133) and the SiO having an average particle diameter of 6.6 µm (para 0130).
Regarding claim 5, Kim discloses the amount of carbon nanotubes included in the negative electrode active material layer is 0.1 wt.% (para 0133).
Regarding claim 7, Kim discloses SiOx (0 ≤ x < 2) and be may specifically SiO, i.e., x =1 (para 0031).
Regarding claims 8 and 9, Kim discloses the weight ratio of the silicon-carbon composite negative electrode active material to graphite is 15:85 (para 0133).
Regarding claim 10, Kim discloses the SiO having an average particle diameter of 6.6 µm (para 0130).
Regarding claim 11, Kim discloses a secondary battery may include a negative electrode, a positive electrode, a separator interposed between the positive electrode and the negative electrode, and an electrolyte; the negative electrode is the same as the negative electrode described above.
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.
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 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2023/0246173).
Regarding claim 4, Kim expressly teaches an average length of 5 µm (para 0120); however, the length of the carbon nanotube may be 1 µm to 100 µm, which overlaps Applicant’s claimed range of 2 µm to 4 µm.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the recited length because a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. 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). Furthermore, "[ A ] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP 2144.05.
Regarding claim 6, Kim expressly teaches carbon nanotubes used in an amount of 0.1 wt.%; however, the amount of carbon nanotubes that may be included may be more specifically 0.01 wt.% to 0.1 wt.% (para 0098), which overlaps Applicant’s claimed range of 0.005 mass% to 0.07 mass%. See MPEP 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Bae et al. (US 2022/0123289); Chiu et al. (US 2021/0104729); and Kim et al. (US 2022/0238886).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS BARCENA whose telephone number is (571)270-5780. The examiner can normally be reached Monday-Thursday 8-5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tong Guo can be reached at (571)272-3066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CARLOS BARCENA/Primary Examiner, Art Unit 1723