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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/24/25 has been entered.
Status of Claims
Applicant’s amendment and arguments, filed 12/24/2025, have been fully considered. Claim(s) 1 and 4 is/are amended; claim(s) 3, 5–16, and 20 stand(s) as originally or previously presented; claim(s) 17 and 18 remain(s) withdrawn; claim(s) 2 and 19 is/are canceled; and claim(s) 21 is/are added without entering new matter. Examiner affirms that the original disclosure provides adequate support for the amendment.
Upon considering said amendment and arguments, the previous 35 U.S.C. 103 rejection has/have been withdrawn. Applicant’s amendment necessitated the new grounds of rejection below.
Claim Rejections - 35 USC § 112
The text forming the basis for the rejection under 35 U.S.C. 112(b) may be found in a prior Office Action.
Claims 3 and 4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites “a mass percentage A of the carbon element … has a decreasing trend along a direction from the centroid of the carbon-silicon composite to the outer surface of the carbon-silicon composite; and a mass percentage content B of the silicon element … has an increasing trend along the direction from the centroid of the carbon-silicon composite to the outer surface” in lines 3–8. As parent claim 1 requires a B1/A1 (C/Si at surface) and A2/B2 (Si/C at center) of 0.8–0.9 and 1.05–1.1 (see lines 6–10 and 14–18), respectively, claim 3’s intended structure and scope are unclear because a Si content increasing toward the outer surface and C content decreasing toward the surface would seemingly violate claim 1’s inequalities. For example, if A1 were 0.85 and A2 were 0.9 (so that the C content would decrease toward the surface) while B2 were 0.85 (which would make A2/B2 = 1.05, the lower endpoint of the second inequality), such would make B1 = 0.68 to satisfy B1/A1 = 0.8 (the lower endpoint of the first inequality), yet claim 3 requires B1 to increase relative to B2.
Parent claim 1’s B1/A1 and A2/B2 are based on examples in instant Table 1. Further, per ¶ 0067, claim 3’s decreasing A (C) content and increasing B (Si) content occur in “some embodiments”, but such is exemplary and, thus, non-limiting to claim 1’s ranges. Thus, for this Office Action claim 3 will be interpreted to require mass percentages A and B of carbon and silicon, respectively, that satisfy parent claim 1’s ranges/distributions, which appears consistent with claim 1, the instant examples, and the broader specification.
Dependent claim 4 fails to remedy this deficiency and is rejected likewise. Appropriate correction is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 and 4 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 recites “a mass percentage A of the carbon element … has a decreasing trend along a direction from the centroid of the carbon-silicon composite to the outer surface of the carbon-silicon composite; and a mass percentage content B of the silicon element … has an increasing trend along the direction from the centroid of the carbon-silicon composite to the outer surface” in lines 3–8. As parent claim 1 already requires a B1/A1 (Si/C at surface) and A2/B2 (C/Si at center) of 0.8–0.9 and 1.05–1.1 (see lines 6–10 and 14–18), respectively, it is unclear that claim 3’s increasing/decreasing trends further limit claim 1 because such appear to violate claim 1’s inequalities (see 112(b) rejection above for further explanation and interpretation). Claim 4, in depending from claim 3 and failing to correct this deficiency, appears to not further limit claim 1 or 3 and is rejected likewise.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text forming the basis for the rejection under 35 U.S.C. 103 may be found in a prior Office Action.
Claim(s) 1, 3–5, 7, and 13–16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 20220293944 A1; EFD 03/11/21) (Park) in view of Ishida et al. (US 20120107693 A1) (Ishida).
Regarding claims 1 and 13–16, Park discloses an electrical device (EV, ¶ 0003), battery pack (¶ 0003), and battery module (necessarily via battery pack of ¶ 0003, as pack is a collection of modules) all comprising a secondary battery (¶ 0003, 0009) comprising a negative electrode active material (¶ 0009) including a carbon-silicon composite (Si-carbon particles, e.g., ¶ 0012) comprising a carbon-based particle having a carbon skeleton (base porous carbon particles, e.g., ¶ 0012); and a silicon nanoparticle attached to the carbon skeleton of the carbon-based particle (Si inside pores and/or on surface, e.g., ¶ 0012 and ¶ 0032; see, e.g., ¶ 0026 to note Si is nanoparticulate).
Park, as noted above, discloses that the Si may be inside the carbon particle’s pores and/or on the surface (¶ 0032) but, in being unconcerned with the specific distribution of Si and C throughout the composite, fails to explicitly disclose the recited B1/A1 in the peripheral area and A2/B2 in the central area.
Ishida, in teaching an analogous silicon-carbon negative active material (Abstract), teaches forming a Si concentration gradient from the center to the surface (¶ 0016), where a concentration of Si at the surface is ≥ the concentration of Si in the center (¶ 0035), where the surface is within 20% of the particle’s diameter from the surface (¶ 0028) and, thus, corresponds to the instant peripheral area, i.e., within r/2. Ishida specifically teaches that A ≥ B, where A is a C/Si mole ratio at the center, and B is a C/Si mole ratio at the surface (¶ 0035–0037), teaching an A of, e.g., 0.5–1.7 and a B of, e.g., 0.03–0.9 (¶ 0038).
Thus, Ishida’s A corresponds to the instant A2/B2 at the center, and the inverse of Ishida’s B corresponds to the instant B1/A1 at the surface and, therefore, corresponds to 1.11 ≤ Si/C ≤ 33.33. Considering Si and C’s molar masses of 28.085 g/mol and 12.011 g/mol, respectively, such appears to yield a mass-based B1/A1 of 2.60~77.94 and a mass-based A2/B2 of 0.22~0.73. Ishida broadly teaches that, with A ≥ B, the expansion ratio at the center is lower than at the surface while Li intercalates into the active material, preventing particle warping during (dis)charge (¶ 0039).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to distribute Park’s Si and C as suggested by Ishida with the reasonable expectation of lowering the expansion ratio at the center during Li intercalation to prevent particle warping during (dis)charge, as taught by Ishida.
In incorporating the B1/A1 of 2.60~77.94 and A2/B2 of 0.22~0.73, even if not overlapping the recited ranges (note that these ratios are not in terms of the entire composite’s mass), modified Park’s ranges appear reasonably close to the recited 0.8–0.9 and 1.05–1.11, respectively. Importantly, as the instant ranges appear to lack criticality (see Response to Arguments below), the skilled artisan would have reasonably expected Park/Ishida’s ranges, in being relatively close to the instant ranges, to yield substantially similar results as the instant ranges, particularly as the ratio may be A ≥ B and, thus, equal (MPEP 2144.05 (I)).
More importantly, however, Ishida’s embodiments of “A” and “B” of 0.5–1.7 and 0.03–0.9, respectively, appear exemplary and, thus, non-limiting as long as A ≥ B for proper (discharge) (see MPEP 2123). More broadly, then, Park discloses that the carbon base particle’s pores also aid in controlling Si’s volume expansion (¶ 0032), while Si provides high capacity (¶ 0006). The skilled artisan, therefore, would recognize that a compromise necessarily exists between controlling volume expansion (from C and its pores) and ensuring high capacity (from Si) at both the center and surface of Park’s composite particle. To balance these effects, then, while conforming to Ishida’s teachings of distributing the positive Si gradient from center to surface to prevent active-material warping during (dis)charge, it would have been obvious to arrive at the instant B1/A1 and A2/B2 by routinely optimizing the Si and C contents throughout the composite, as suggested by Ishida and Park, absent additional evidence proving Ishida’s values would necessarily fall outside the recited ranges or demonstrating the instant ranges’ criticality.
Regarding claim 3, in light of the above 112(b) and 112(d) issues, modified Park discloses the negative electrode active material according to claim 1, wherein a mass percentage A of the carbon element in the carbon-silicon composite relative to the total mass of the carbon-silicon composite has a decreasing trend along a direction from a centroid of the carbon-silicon composite to the outer surface (necessarily by increasing relative Si content in Si-C composite toward surface and, thus, reducing relative carbon content toward surface, as implied from Ishida’s Si gradient and reflected in mostly lower B-value—and, thus, lower carbon content based on B’s being a C/Si ratio); and a mass percentage content B of silicon element of the carbon-silicon composite relative to the total mass of the carbon-silicon composite has an increasing trend along the direction from the centroid of the carbon-silicon composite to the outer surface of the carbon-silicon composite (via Ishida’s increasing Si gradient).
Regarding claim 4, modified Park discloses the negative electrode active material according to claim 3.
Though modified Park fails to explicitly articulate the total mass percentages A and B of carbon and Si, respectively, and, thus, the recited 1 ≤ A/B ≤ 3, as established in claim 1, Park discloses that the carbon base particle’s pores also aid in controlling Si’s volume expansion (¶ 0032), while Si provides high capacity (¶ 0006). The skilled artisan, then, would recognize that a compromise necessarily exists between controlling volume expansion (from C and its pores) and ensuring high capacity (from Si) throughout Park’s composite particle. To balance these effects, then, it would have been obvious to arrive at A/B by routinely optimizing the total ratio of C:Si (MPEP 2144.05 (II)).
Regarding claim 5, modified Park discloses the negative electrode active material according to claim 1, wherein the carbon-based particle includes, e.g., graphite (Park, ¶ 0035).
Regarding claim 7, modified Park discloses the negative electrode active material, wherein a particle size D of the silicon nanoparticle is ≤ 7 nm (crystallite size in Park, ¶ 0026), satisfying ≤ 10 nm.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 20220293944 A1) (Park) in view of Ishida et al. (US 20120107693 A1) (Ishida), as applied to claim 1, further in view of Kim (US 20190355971 A1).
Regarding claim 6, modified Park discloses the negative electrode active material according to claim 1, wherein the carbon skeleton is a porous carbon skeleton (Park, e.g., ¶ 0012 or 0032), and the silicon nanoparticle is located in a pore and/or surface of the porous carbon skeleton (Park, ¶ 0032).
Park further discloses a pore size of 0.1 to preferably less than 10 nm (¶ 0033, 0034), disclosing that an excessively large size may insufficiently reduce the difference in volume expansion ratios of carbon and silicon during (dis)charge (¶ 0033). The skilled artisan, meanwhile, would appreciate that the pores must necessarily be large enough to accommodate the Si for such volume-expansion control. To balance these effects, then, it would have been obvious arrive at the instant range by routinely optimizing the pore size, including within 1–10 nm (MPEP 2144.05 (II)).
Although Park, as discussed above, underscores the importance of controlling the pore size, Park is silent to pore content and, thus, fails to explicitly disclose a porosity of 40–70% in the porous carbon skeleton.
One skilled in the art, however, would recognize that a certain degree of porosity within the porous carbon must necessarily exist to accommodate the Si, while making the skeleton too porous would necessarily reduce active-material content and, thus, capacity. To balance these effects, then, it would have been obvious arrive at the instant range by routinely optimizing the porosity (MPEP 2144.05 (II)).
Nonetheless, Kim, in teaching an analogous negative active material (Abstract) including a porous carbon core with Si particles inside the pores (e.g., ¶ 0035), teaches that the composite’s porosity may be 2–50 vol% (¶ 0037).
It would have been obvious to one of ordinary skill in the art, before the claimed invention's effective filing date, that Park's porous carbon composite must necessarily be incorporated with some porosity, and, as demonstrated by Kim, the skilled artisan would find it obvious to employ a porosity of 2–50%. Moreover, again, to balance capacity with Si accommodation, it would have been obvious to arrive at the instant range by routinely optimizing the porosity, including within 40–50% (MPEP 2144.05 (II)).
Claim(s) 8–10 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 20220293944 A1) (Park) in view of Ishida et al. (US 20120107693 A1) (Ishida), as applied to claim 1, further in view of Sakshaug et al. (US 20170170477 A1) (Sakshaug).
Regarding claims 8–10 and 20, modified Park discloses the negative electrode active material according to claim 1.
Park further desires suitable ion conductivity within the anode (e.g., ¶ 0086) as well as improved capacity (¶ 0008) but fails to explicitly articulate a conductive polymer layer comprising at least one from the recited group coated with the carbon-silicon composite.
Sakshaug teaches an analogous Si-C composite for electrodes (Abstract), where the composite may be surface-treated to improve electrochemical characteristics such as capacity and stability, embodying an ionically conductive polymer coating of, e.g., polyaniline at a thickness of e.g., 1–50 nm (¶ 0273, 0274, 0280).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to coat Park’s composite with an ionically conductive polymer such as polyaniline at a thickness of e.g., 1–50 nm (satisfying ≤ 3.5 μm) with the reasonable expectation of improving ion conductivity and other electrochemical characteristics, as suggested by Sakshaug.
Claim(s) 11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 20220293944 A1) (Park) in view of Ishida et al. (US 20120107693 A1) (Ishida), as applied to claim 1, further in view of Gigler et al. (US 20190393493 A1) (Gigler).
Regarding claims 11 and 12, modified Park discloses the negative electrode active material according to claim 1 but, in being unconcerned with the material’s particle-distribution characteristics, is silent to a Dv50 of 5–11 μm and a (Dv90–Dv10)/Dv50 ≤ 1.4, as well as a BET surface area of ≤ 4 m2/g.
Gigler, in teaching analogous composite carbon and silicon negative active materials (¶ 0001), teaches that the composite’s BET surface area is preferably ≤ 10 m2/g (¶ 0069) and exemplifies a composite Dv50 of 8.2 μm alongside a (Dv90–Dv10)/Dv50) of 0.9 (Ex. 1, ¶ 0139).
It would have been obvious to one of ordinary skill in the art, before the claimed invention's effective filing date, that Park's composite must necessarily be incorporated with some size and surface area, and, as demonstrated by Gigler, the skilled artisan would find it obvious to employ a BET surface area ≤ 10 m2/g, a Dv50 of 8.2 μm, and a (Dv90–Dv10)/Dv50) of 0.9 with a reasonable expectation of forming a successful composite material. Moreover, it would have been obvious to routinely select within the portion of Gigler’s surface area overlapping the recited ≤ 4 m2/g with a reasonable expectation of producing a successful composite (MPEP 2144.05 (I)).
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 20220293944 A1) (Park) in view of Sakshaug et al. (US 20170170477 A1) (Sakshaug) and Ishida et al. (US 20120107693 A1) (Ishida).
Regarding claim 21, Park discloses a negative electrode active material (¶ 0009) including a carbon-silicon composite (Si-carbon particles, e.g., ¶ 0012) comprising a carbon-based particle having a carbon skeleton (base porous carbon particles, e.g., ¶ 0012); and a silicon nanoparticle attached to the carbon skeleton of the carbon-based particle (Si inside pores and/or on surface, e.g., ¶ 0012 and ¶ 0032; see, e.g., ¶ 0026 to note Si is nanoparticulate).
Park further desires suitable ion conductivity within the anode (e.g., ¶ 0086) as well as improved capacity (¶ 0008) but fails to explicitly articulate a conductive polymer layer comprising at least one from the recited group coated with the carbon-silicon composite.
Sakshaug teaches an analogous Si-C composite for electrodes (Abstract), where the composite may be surface-treated to improve electrochemical characteristics such as capacity and stability, embodying an ionically conductive polymer coating of, e.g., polyaniline at a thickness of, e.g., 1 nm to 10 microns (¶ 0273, 0274).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to coat Park’s composite with an ionically conductive polymer such as polyaniline at a thickness of, e.g., 1 nm to 10 microns with the reasonable expectation of improving ion conductivity and other electrochemical characteristics, as suggested by Sakshaug.
This thickness overlaps the recited 2.5–3.3 μm such that the skilled artisan could have routinely selected within the overlap with a reasonable expectation of forming a successful coating with suitable thickness (MPEP 2144.05 (I)).
More importantly, though, the skilled artisan would reasonably recognize that the coating must be thick enough to sufficiently enhance ion conductivity (see also Sakshaug’s ¶ 0280, where the coating’s thickness can alter the composite’s performance and may be directly linked to the coating’s physical properties) but that Park’s bulk active material would necessarily account for the majority of ion (de)intercalation (implied at least in Park’s ¶ 0086), meaning making the coating too thick would necessarily increase the ion-diffusion distance into/out of the active material. To balance these effects, then, it would have been obvious to arrive at the recited range by routinely optimizing the coating’s thickness, including within the overlap (MPEP 2144.05 (II)).
Park, as noted above, discloses that the Si may be inside the carbon particle’s pores and/or on the surface (¶ 0032) but, in being unconcerned with the specific distribution of Si and C throughout the composite, fails to explicitly disclose the recited B1/A1 in the peripheral area and A2/B2 in the central area.
Ishida, in teaching an analogous silicon-carbon negative active material (Abstract), teaches forming a Si concentration gradient from the center to the surface (¶ 0016), where a concentration of Si at the surface is ≥ the concentration of Si in the center (¶ 0035), where the surface is within 20% of the particle’s diameter from the surface (¶ 0028) and, thus, corresponds to the instant peripheral area, i.e., within r/2. Ishida specifically teaches that A ≥ B, where A is a C/Si mole ratio at the center, and B is a C/Si mole ratio at the surface (¶ 0035–0037), teaching an A of, e.g., 0.5–1.7 and a B of, e.g., 0.03–0.9 (¶ 0038).
Thus, Ishida’s A corresponds to the instant A2/B2 at the center, and the inverse of Ishida’s B corresponds to the instant B1/A1 at the surface and, therefore, corresponds to 1.11 ≤ Si/C ≤ 33.33. Considering Si and C’s molar masses of 28.085 g/mol and 12.011 g/mol, respectively, such appears to yield a mass-based B1/A1 of 2.60~77.94 and a mass-based A2/B2 of 0.22~0.73. Ishida broadly teaches that, with A ≥ B, the expansion ratio at the center is lower than at the surface while Li intercalates into the active material, preventing particle warping during (dis)charge (¶ 0039).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to distribute Park’s Si and C as suggested by Ishida with the reasonable expectation of lowering the expansion ratio at the center during Li intercalation to prevent particle warping during (dis)charge, as taught by Ishida.
In incorporating the B1/A1 of 2.60~77.94 and A2/B2 of 0.22~0.73, even if not overlapping the recited ranges (note that these ratios are not in terms of the entire composite’s mass), modified Park’s ranges appear reasonably close to the recited 0.8–2.5 and 1.05–50, respectively. Importantly, as the instant ranges appear to lack criticality (see Response to Arguments below), the skilled artisan would have reasonably expected Park/Ishida’s ranges, in being relatively close to the instant ranges, to yield substantially similar results as the instant ranges, particularly as the ratio may be A ≥ B and, thus, equal (MPEP 2144.05 (I)).
More importantly, however, Ishida’s embodiments of “A” and “B” of 0.5–1.7 and 0.03–0.9, respectively, appear exemplary and, thus, non-limiting as long as A ≥ B for proper (discharge) (note no teachings against employing values outside these ranges as long as A ≥ B in Ishida’s ¶ 0039; see also MPEP 2123 (I) and (II)). More broadly, then, Park discloses that the carbon base particle’s pores also aid in controlling Si’s volume expansion (¶ 0032), while Si provides high capacity (¶ 0006). The skilled artisan, then, would recognize that a compromise necessarily exists between controlling volume expansion (from C and its pores) and ensuring high capacity (from Si) at both the center and surface of Park’s composite particle. To balance these effects, then, while conforming to Ishida’s teachings of distributing the positive Si gradient from center to surface to prevent active-material warping during (dis)charge, it would have been obvious to reach the recited ranges by routinely optimizing the instant B1/A1 and A2/B2 relative to the entire composite’s mass, as suggested by Ishida and Park, absent additional evidence proving Ishida’s entire teaching necessarily falls outside the recited ranges or demonstrating the instant ranges’ criticality.
Response to Arguments
Applicant’s arguments with respect to claims 1 and 21 have been fully considered but are unpersuasive.
Applicant argues that Ishida’s A ≥ B (C/Si in center versus on surface, respectively) violates the new B1/A1 of 0.8–0.9, i.e., a lower Si/C ratio on the surface than in the center. Applicant further argues that any case of obviousness based on Ishida’s A ≥ B is rebutted given that Ishida teaches away from the claimed range, and such modification would render Ishida unsatisfactory for its intended purpose.
Examiner first respectfully submits that it is unclear that Ishida teaches away from a distribution other than A ≥ B at the cited ¶ 0035—and, thus, from claim 1’s ranges—because Ishida merely teaches that, “In one embodiment … the concentration ratio … may be, on the surface, equal to or higher than at the center” (¶ 0035, emphasis added). Such is exemplary and, thus, appears to not discredit Ishida’s general teachings of the functions of C and Si. As Ishida does not actively discourage ranges slightly outside this distribution, it appears that Ishida does not teach away from such (MPEP 2123).
Second, Examiner respectfully disagrees that the proposed modification would render Ishida unsatisfactory for its intended purpose. Ishida is the teaching reference, and, as seen in the proposed modification, Ishida’s material would not be bodily incorporated into Park (see MPEP 2145 (III)). Thus, there appears to be no means of frustrating Ishida’s purpose. Rather, Ishida was merely used to demonstrate the general benefits of distributing roughly equal molar ratios of C and Si at the center and surface of the active material, which appear applicable to Park, who is clearly unconcerned with the specific distribution.
Applicant further cites Ishida’s Comp. Ex. 4, with A of 0.2 and B of 0.95—and, thus, outside A ≥ B, where A is preferably 0.5–1.7, and B is preferably 0.03–0.9—as evidence that “A<B will render Ishida unsatisfactory”. Even treating this argument as that Ishida teaches away from A < B rather than rendering Ishida unsatisfactory, Examiner notes that an A of 0.2 and B of 0.95 is ~ 80% below and, thus, significantly outside Ishida’s A ≥ B. The skilled artisan would understand Ishida’s embodied ranges to be preferred in terms of capacity and cycle efficiency (Table 1), and although the artisan would recognize or envisage slight deviations from Ishida’s preferred ranges to achieve the desired balance of capacity (through Si) and volume-expansion control (through C), the artisan would still understand, based on Ishida’s comparative data, to not deviate significantly. One of ordinary skill is also one of ordinary creativity (MPEP 2141) and would have inferred the constructive measures from Ishida’s broader teachings to apply to Park to optimize the above factors, absent demonstrated criticality to the recited ranges.
Turning to such alleged criticality, the prima facie case of obviousness appears to remain proper for at least the following reasons:
It is unclear from the data that the instant B1/A1 and A2/B2 are unexpectedly superior. To the contrary, Tables 1 and 2’s Exs. 2–31 all include a B1/A1 outside 0.8–0.9, and Exs. 2–5, 7–10, 12, 13, 15–20, and 27–31 all feature an A2/B2 outside the recited 1.05–1.1, yet almost all these examples perform as well as or better than Ex. 1 (see Tables 8–11’s tests), with B1/A1 and A2/B2 within the respectively recited ranges (see MPEP 716.02(c) and (d)).
Based on the above lack of criticality, it is unclear that one skilled in the art would expect different performance from a B1/A1 of 0.8–0.9 or A2/B2 of 1.05–1.1 compared to Ishida’s broader ranges, particularly because Ishida allows an essentially equal molar ratio at the center and surface, similar to the above ranges (see MPEP 2144.05 (I)). Rather, similar to the instant application (see spec.’s ¶ 0061–0065), Ishida also distributes the C and Si so that the Si’s volume expansion is lower at the particle’s center to prevent Li-intercalation impedance for excellent initial (disc)charge efficiency and cycle life, as well as high energy density (¶ 0009, 0039). Such an effect, therefore, still appears expected based on the newly recited B1/A1 and A2/B2.
Even if the results were unexpectedly superior, Examiner respectfully observes that the results appear incommensurate with the independent claims at least as follows:
Claim 1/21 allows any total mass ratio (A/B) of Si/C, whereas Table 1 only supports 1.0–5.0; it is unclear that such results would occur for any total A/B.
Claim 1/21 allows any carbon-based particle with a carbon skeleton, whereas the results appear to be tailored to graphite, soft carbon, or hard carbon based on these material’s matrix-forming ability (specification’s ¶ 0070); it is unclear that such results would occur for any carbon-based particle with a carbon skeleton.
Claim 1/21 allows an uncoated particle, whereas the spec. envisages coating with a conductive layer to improve conductivity (¶ 0082–0084, exs. in Table 4); it is unclear if the results would occur without this coating.
Claim 1/21 allows any pore size, porosity, Si-nanoparticle size, surface area, and particle-size distribution, whereas Tables 4–7 only support specific values for each parameter; it is unclear that such results would occur for any value of each of the above parameters, particularly because such are all well known to affect electrolyte availability/reactivity with the active material and, thus, the instant results’ capacity retention.
Claim 1/21’s scope is to an active material, whereas the capacity results in Tables 8–11 stem from incorporating the active material into a negative electrode, which is incorporated into a lithium secondary battery alongside a positive electrode, separator, and electrolyte (specification, ¶ 0189–0194).
Further, the results relate to capacity retention, but the skilled artisan would recognize that other battery components would affect such. For example, claim 1/21 (or 13 to the battery) would allow any type of electrolyte, but the instant structure appears tailored to reduce side reactions with liquid electrolytes (i.e., purpose of the conductive coating in ¶ 0084, as known in art). It is unclear if such results would occur using any electrolyte.
Moreover, claim 1/21 (or 13) would allow any type of cathode active material, whereas the spec. envisages lithium metal oxides and phosphates (e.g., ¶ 00154), which are known to exhibit different capacities and redox potentials. It is unclear if such results would occur using, e.g., a sulfur cathode.
Claim 1/21 (or 13) would allow any concentration of components like active material, binder, and conductive aid in either electrode, which would affect capacity retention by dictating relative active-material content. It is unclear if substantially similar results would occur with, e.g., 70% negative active material as with 95% in the negative electrode.
Thus, per MPEP 716.02(d), this argument is further unpersuasive.
Regarding new claim 21, see the above new grounds of rejection.
Conclusion
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/J.S.M./Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 7/19/2026
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