DETAILED ACTION
Status of Claims
The amendment filed 04/16/2026 has been entered. Claims 1-12 remain pending. Claim 12 is new.
Applicant’s arguments, see Remarks, with respect to the rejection(s) of claim(s) 1-11 under 35 USC 102 and 35 USC 103 over Kim et al. (US 2023/0246173) have been fully considered and are persuasive because Kim does not expressly teach an example with a carbon nanotube with a fiber length of 1.2-4 µm. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the same reference to Kim et al. (US 2023/0246173), and new references to Chiu et al. (US 2021/0104729) and Choi et al. (US 2021/015744).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2023/0246173).
Regarding claims 1 and 3, Kim teaches a silicon-carbon composite negative electrode active material comprising:
a silicon-carbon composite negative electrode active material;
artificial graphite;
a carbon nanotube structure; and
a water-based binder including SBR and CMC (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). An average length of 5 µm is viewed as significantly close to Applicant’s upper value of 4 µm.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the recited carbon nanotube length because a prima facie case of obviousness exists in the case 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. See Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Generally, differences in concentration or temperature (or length in this case) will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05(I).
Regarding claim 2, Kim teaches 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 4, Kim teaches the carbon nanotube structure has an average length of 5 µm (para 0120). An average length of 5 µm is viewed as significantly close to Applicant’s upper value of 2 µm or more (e.g., 3.9 µm). See MPEP 2144.05(I).
Regarding claim 5, Kim teaches the amount of carbon nanotubes included in the negative electrode active material layer is 0.1 wt.% (para 0133).
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%.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the recited concentration 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 7, Kim teaches SiOx (0 ≤ x < 2) and be may specifically SiO, i.e., x =1 (para 0031).
Regarding claims 8 and 9, Kim teaches the weight ratio of the silicon-carbon composite negative electrode active material to graphite is 15:85 (para 0133).
Regarding claim 10, Kim teaches the SiO having an average particle diameter of 6.6 µm (para 0130).
Regarding claim 11, Kim teaches 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.
Claims 1, 3, 4, 7, 8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. (US 2021/0104729).
Regarding claims 1 and 4, Chiu teaches a negative electrode material for a lithium-ion battery comprising:
negative electrode material (abstract);
a water-based binder (para 0010);
a carbon nanotube (para 0007).
The negative electrode material includes silicon nanomaterial (abstract; para 0015) and a graphite mixture (para 0019). The water-based binder may include CMC and SBR (para 0011). The diameter of the carbon nanotube is between 5-13 nm which overlaps Applicant’s claimed range of 0.5-6 nm, and the length of the carbon nanotube is between 3-5 µm which overlaps Applicant’s claimed range of 1.2-4 µm (para 0014).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the recited diameter and 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 3, Chiu teaches a diameter of the carbon nanotube is between 1 nm and 20 nm, which overlaps Applicant’s claimed range of 1-4 nm. See MPEP 2144.05.
Regarding claim 7, Chiu teaches SiOx, x is between 0 and 2 (para 0015).
Regarding claim 8, Chiu teaches about 4.8 wt.% silicon material (Example 7).
Regarding claim 11, Chiu teaches the lithium-ion battery includes a positive electrode, a negative electrode, a separator and an electrolyte (para 0003).
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (US 2021/015744).
Regarding claims 1, 3, 4, Choi teaches an anode including graphite and silicon-based material and lithium secondary battery comprising:
graphite and silicon-based material (abstract);
a water-based binder (para 0076); and
a carbon nanotube (abstract).
The silicon-based material may be a Si/C composite, SiOx (0 < x < 2), metal-doped SiOx, pure Si and Si-alloy (para 0049). The water-based binder may include CMC and SBR (para 0076; para 0099: Example 1). The carbon nanotube may have an average diameter of 0.1-20 nm, which overlaps Applicant’s claimed range of 0.5 to 6 nm and 1 to 4 nm, and an average length of 100 nm to 5 µm, which overlaps Applicant’s claimed range of 1.2-4 µm and 2 µm or more (para 0063).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the recited diameter and 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 claims 2 and 10, Choi teaches large-particle graphite D50 = 15 µm and silicon-based material SiOx D50 = 6 µm (para 0099: Example 1).
Regarding claims 5 and 6, Choi teaches 0.005 to 20 wt.% of the carbon nanotube, which overlaps Applicant’s claimed range of 0.005-0.1 mass% and 0.005-0.07 mass% (para 0066). See MPEP 2144.05.
Regarding claims 7 and 12, Choi teaches the silicon-based material may be a Si/C composite, SiOx (0 < x < 2), or metal-doped SiOx (para 0049); moreover, may further include a metal-silicate phase (para 0053).
Regarding claims 8 and 9, Choi teaches 88 parts large-particle graphite and 7 parts silicon-based material (para 0099: Example 1), which results in about 7.4 wt.%.
Regarding claim 11, Choi teaches lithium secondary battery may have a structure in which an electrode assembly including a cathode and a separator together with the anode is embedded in a battery case with an electrolyte (para 0083).
Response to Arguments
Applicant argues Kim fails to teach feature (1): a water-based binder including polyacrylate (PAA), carboxymethyl cellulose (CMC), and styrene-butadiene rubber (SBR). In response, Example 1 of Kim expressly teaches the negative active material was mixed with both SBR and CMC to prepare a negative electrode slurry (para 0133).
Applicant argues Kim fails to teach feature (2): the carbon nanotube has an average fiber diameter of 0.5 nm to 6 nm and an average fiber length of 1.2 µm to 4 µm. In response, the average fiber diameter is 1.5 nm and the average length of 5 µm (para 0120). While a length of 5 µm is outside of the claimed range, Kim allows for lengths less than 5 µm (e.g., 1-100 µm; para 0049) and an average value of 5 µm is viewed as significantly close to Applicant’s upper range of 4 µm. In this case, a value difference of 1 micron is not viewed as significant, contrary to the other.
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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/CARLOS BARCENA/Primary Examiner, Art Unit 1723
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