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 .
Claims 9-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/19/2026.
Applicant's election with traverse of Group II (claims 9-12) in the reply filed on 3/19/2026 is acknowledged. The traversal is on the ground(s) that there would not be a serious burden to the examiner and the PCT application had all the claims examined. This is not found persuasive because restriction is based on Unity of invention and thus serious burden is not a factor within the restriction. Furthermore, the fact that the PCT case examined the claims together does not mean there was an error within the examiner restriction. As the applicant has not pointed to an error within the examiners restriction the examiner maintains the restriction.
The requirement is still deemed proper and is therefore made FINAL.
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 1-3 and 5-8 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Oh (US 20220209228).
As to claims 1 and 5, Oh discloses a composite negative electrode active material ([0010], anode material, discussed throughout) comprising: silicon-containing oxide particles ([0010], [0039], discussed throughout); and a metal distributed on a surface, inside, or both on the surface and inside of the silicon-containing oxide particles ([0010], [0039], discussed throughout), wherein the composite negative electrode active material comprises one or more aggregates comprising one or more selected from silicon, oxygen and a metal therein ([0010], [0039], discussed throughout), wherein the metal comprises at least one selected from the group consisting of Li, Mg, and Al ([0010], [0039], discussed throughout).
Oh is silent to wherein an average value of aggregate diameters obtained by a method comprising the following steps (a) to (e) is 65 nm or less (5 nm to 65 nm for claim 5): (a) obtaining a square scanning electron microscope photograph by capturing the composite negative electrode active material under a scanning electron microscope; (b) selecting two sides different from each other in the scanning electron microscope photograph, selecting one point from each of the two selected sides, and obtaining a straight line connecting the two selected points from the two sides; (c) obtaining a gray profile graph of the straight line wherein a longitudinal axis represents a gray value and wherein a transverse axis represents a straight line distance using a digital image analysis program, and then calculating an average gray value; (d) obtaining a number of intersections between a reference line parallel to the transverse axis and the gray profile while having the average gray value in the gray profile graph of the straight line, and then defining a value calculated by the following Equation 1 as an aggregate diameter; and (e) obtaining an average value of the aggregate diameters by performing steps (a) to (d) 2 or more times; Aggregate diameter=length of straight line/(number of intersections between reference line and gray profile+1). [Equation 1].
However, this is a product by process limitation as the method of measuring the aggregate diameter is required to be performed within the product, the method does not change the final product and the aggregate diameter. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production (see MPEP 2113).
While Oh is silent to the aggregate diameters it would have been obvious to one of ordinary skill within the art at the time of the effective filling date of the invention to adjust the aggregate diameters as a mere change in size (see MPEP 2144.04). Additionally, it would have been obvious to one of ordinary skill within the art at the time of the effective filling date of the invention to adjust the aggregate diameters as a result effective variable as the smaller particles would be harder to work and obtain with while offering a higher surface area and gaps between to account for expansion (see MPEP 2144.05 II).
As to claim 2, Oh discloses wherein, the metal is present in an amount of 1 wt % to 20 wt % with respect to a sum of the weights of the silicon-containing oxide particles and the metal ([0095]-[0101]).
As to claim 3, Oh discloses wherein, the metal comprises Mg, and wherein the metal is present in an amount of 5 wt % to 15 wt % with respect to a sum of the weights of the silicon-containing oxide particles and the metal ([0095]-[0101]).
As to claim 6, Oh is silent to wherein, a standard deviation of the aggregate diameters obtained by step (e) is 10 nm or less. However it would have been obvious to one of ordinary skill within the art at the time of the effective filling date of the invention to minimize the standard deviation as much as possible to have a more uniform product and thus more consistent results.
As to claim 7, Oh discloses further comprising a carbon coating layer on a surface of the composite negative electrode active material ([0020] and [0021], discussed throughout).
As to claim 8, Oh discloses wherein, the silicon-containing oxide particles comprise a compound represented by the following Chemical Formula 1: SiOx (0<x<2). [Chemical Formula 1] ([0010], [0012], [0023], discussed throughout)
As to claim 13, Oh discloses a negative electrode comprising: a negative electrode current collector ([0128], [0141], discussed throughout); and a negative electrode active material layer present on at least one surface of the negative electrode current collector ([0128], [0141], discussed throughout), wherein the negative electrode active material layer comprises the composite negative electrode active material of claim 1 (seen above).
As to claim 14, Oh discloses wherein, the negative electrode active material layer further comprises a carbon-based active material ([0021], [0021], [0072], [0085], [0094], [0095], discussed throughout).
As to claim 15, Oh discloses a secondary battery ([0035], discussed throughout) comprising: the negative electrode of claim 13 (see above); a positive electrode ([0002], [0003], [0035], [0126]-[0129], discussed throughout); a separator interposed between the negative electrode and the positive electrode ([0002], [0003], [0035], [0126]-[0129], discussed throughout); and an electrolyte ([0002], [0003], [0035], [0126]-[0129], discussed throughout).
Claim 4 rejected under 35 U.S.C. 103 as being unpatentable over Oh (US 20220209228) as applied to claim 1, and further in view of Shin.
As to claim 4, Oh discloses wherein, the metal is present in an amount of 3 wt % to 12 wt % with respect to a sum of the weights of the silicon-containing oxide particles and the metal is Mg ([0095]-[0101]). Oh is silent to wherein the metal is Li. Shi discloses a negative electrode active material from lithium batteries ([0010]) wherein silicon oxide is doped with a metal ([0010]) wherein the metal is Li or Mg ([0010]). It would have been obvious to one of ordinary skill within the art at the time of the effective filling date of the invention to use Li in place of Mg as a mere simple substitution of one known element for another i.e. metal dopants of silicon oxide within negative electrode of lithium secondary batteries (see MPEP 2143 I).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN R OHARA whose telephone number is (571)272-0728. The examiner can normally be reached 7:30 AM-3:30 PM EST M-F.
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, Miriam Stagg can be reached at 571-270-5256. 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.
/BRIAN R OHARA/Examiner, Art Unit 1724
Prosecution Insights