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 .
Election/Restrictions
Claims 6-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected groups, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/5/2026.
Applicant's election with traverse of 1-5 in the reply filed on 6/5/2026 is acknowledged. The traversal is on the ground(s) that searching all the claims would require no serious search burden. This is not found persuasive because the searching the active material and the two different methods of making an active material would require separate search terms and strategies.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
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.
Claim 5 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: In Claim 5, when the thickness of the second structure is 0 nm, the second structure would not be present, which conflicts with the limitations of Claim 4 (“a second structure coated on the surface of the first structure”). 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 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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Oh (US 20210184204 A1).
Regarding Claim 1, Oh teaches a negative electrode active material (Title) comprising a porous silicon oxide composite (first structure) comprising silicon, silicon oxide, and magnesium silicate (metal doping element) (Abstract). The mass percentage of Si can be above 40% and the mass percentage of the metal doping element can be between 1% and 15% (0080 – 15 kg of Si and SiO2 are mixed at a 1:1 molar ratio, which is equivalent to about 6.86 kg of Si, and further mixed with 1.5 kg of Mg. Thus, the mass percentage of silicon is about 41.6% (6.86/16.5) and the mass percentage of the metal doping element is about 9.1% (1.5/16.5)). The structure comprises silicon grains (silicon crystallite/crystal) with a size of 1 to 20 nm (0025; 0082 – the size of the silicon crystal is 8 nm).
Oh does not disclose that the structure comprises micropores and mesopores (0016 – the average pore diameter is 50 to 300 nm) or disclose the adsorption-desorption curve of the active material.
However, it has been held that, "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
In this case, the material of Oh is made by mixing Si, SiO2, and Mg, where the mass percentage of silicon is about 41.6% and the mass percentage of magnesium is about 9.1% (0080). The mixture is heated to 1400°C at reduced pressure and cooled to 700°C (0080). The product is pulverized (0080) and coated with carbon (0081). This method of making is substantially similar to that detailed in Example 6 of the present invention (instant specification: 0062-0064).
Therefore, as the material of Oh has the same composition and is made in a substantially similar process as the material of the present invention, it would also have the same properties as the material of the present invention, namely micropores and mesopores and a hysteresis loop in the adsorption-desorption curve of the porous negative electrode active material, where the relative pressure corresponding to the hysteresis loop is 0.4-1, and the adsorption capacity is 5cm³/g-25cm³/g.
Regarding Claim 2, Oh teaches the active material of Claim 1. Silicon powder, which would be a zerovalent silicon element, is mixed with silicon dioxide, which would comprise a tetravalent silicon element, at a molar ratio of 1:1 (0080). Thus, the mass ratio between the tetravalent silicon element and the zerovalent silicon element would be 1.
Regarding Claim 3, Oh teaches the active material of Claim 1. The metal doping element comprises Mg (0080).
Regarding Claim 4, Oh teaches the active material of Claim 1. The active material may contain a second structure coated on the surface of the first structure (0036 – carbon-containing coating), where the second structure comprises at least one of amorphous carbon or graphitized carbon (0037). The carbon-containing coating layer is formed through chemical vapor deposition using argon and methane (0080), which would mean that the mass of the carbon element would account for at least 80% of the total mass of the second structure/coating.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oh (US 20210184204 A1).
Regarding Claim 5, Oh teaches the active material of Claim 5. The thickness of the second structure/carbon coating is between 1 nm and 5 µm (0039-0040), which overlaps the claimed range of 0 nm-40 nm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have routinely selected the overlapping portions of the disclosed thickness ranges as the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05).
The active material may have an average particle diameter of 0.5 to 20 µm (0041), which overlaps the claimed range of 0.1 µm-18 µm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have routinely selected the overlapping portions of the disclosed particle diameter ranges as the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZIHENG LU whose telephone number is (703)756-1077. The examiner can normally be reached Monday-Friday 8:30 - 5 ET.
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/ZIHENG LU/ Examiner, Art Unit 1752
/Maria Laios/ Primary Examiner, Art Unit 1727
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