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 .
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
In this instance, the abstract recites the legal term “comprises” in the 3rd line.
Claim Objections
Claim 10 is objected to because of the following informalities: in the 2nd line of claim 10, “the negative plate of claim 8” should be changed to “the negative plate of claim 9”, since claim 9 recites “A negative plate” in its preamble. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4-8 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 4 recites the limitation "the mixture" bridging the 3rd and 4th lines. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to replace “the mixture” with “a mixture thereof” (or similar claim language) to obtain proper antecedent basis. Since claims 5-8 depend from claim 4, these claims are rejected under 35 USC 112(b) for the same reason.
Claim 4 recites the limitation "the deposited material" bridging the 8th and 9th lines. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to delete “the” to obtain proper antecedent basis. Since claims 5-8 depend from claim 4, these claims are rejected under 35 USC 112(b) for the same reason.
Claim Rejections - 35 USC § 102/103
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-10 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 EP 2 768 050 A1, of which a copy of this document was provided with the Information Disclosure Statement dated September 1, 2026.
Regarding independent claim 1, EP ‘050 discloses a uniformly modified silicon monoxide negative electrode material (see abstract; paragraphs [0027]-[0067]; Examples 1-3; claims 1-8; and Figure 1), in which the negative electrode material includes the following features/properties:
silicon monoxide (SiO) and carbon atoms, wherein the carbon atoms would become uniformly distributed in the silicon monoxide at an atomic level (upon carrying out the processes set forth in Examples 1-3 of EP ‘050), wherein each of the carbon atoms would be bonded to a silicon atom to form an amorphous Si-C bond, resulting in an X-ray diffraction (XRD) energy spectrum having no SiC crystallization peak (see paragraphs [0027] and [0029]; and Examples 1-3);
an average particle size D50 of silicon monoxide negative electrode material particles is 0.1 to 30 µm (within the claimed range of 1 nm to 100 µm), and a specific surface area is 0.5 m2/g to 30 m2/g (of which the range of specific surface area is entirely within the claimed range of 0.5 m2/g to 40 m2/g), as disclosed in paragraphs [0034]-[0038]; and
a mass of the carbon atoms accounts for 0.5 to 30% of a mass of the silicon monoxide (see abstract and paragraph [0029]), which has substantial overlap with 0.1% to 40%, as claimed.
With regard to the ranges of the average particle size D50, specific surface area, and mass of carbon atoms in the silicon monoxide, these ranges would be anticipated and/or obvious since these ranges would be readily contemplated by one of ordinary skill in the art. In this instance, one of ordinary skill in the art would have recognized the obviousness of the ranges in view of EP ‘050, as set forth in MPEP 2144.05. “In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”. 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). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
In addition, since the claimed ranges of average particle size D50, specific surface area, and mass of carbon atoms in the silicon monoxide include substantial overlap with those of EP ‘050, one of ordinary skill in the art would have determined that there would be an inevitable presence of a 29Si NMR spectrum showing that there is a resonance peak of Si-C between -10 ppm and -20 ppm in solid-state nuclear magnetic resonance (NMR) detection of the uniformly modified silicon monoxide negative electrode material, including that an X-ray diffraction (XRD) energy spectrum would not include any SiC crystallization peak (see paragraphs [0027] and [0029]; and Examples 1-3), thus improving cycle characteristics and high capacity (see abstract and paragraph [0067]).
Regarding claim 2, and in referring to the claimed ranges set forth in independent claim 1 above, EP ‘050 discloses that a carbon coating layer is further provided outside the silicon monoxide negative electrode material, and a mass of the carbon coating layer accounts for 1 to 50% of the mass of the silicon monoxide (see paragraph [0061]), which has substantial overlap with 0 to 20%, as claimed.
Regarding claim 3, and in referring to the claimed ranges set forth in independent claim 1 and claim 2 above, EP ‘050 discloses that the mass of the carbon atoms accounts for 0.5% to 30% of the mass of the silicon monoxide (see abstract and paragraph [0029]), which has substantial overlap with 0.5% to 10%, as claimed, and the mass of the carbon coating layer accounts for 0 to 10% of the mass of the silicon monoxide (see paragraph [0061]), which has substantial overlap with 0 to 20%, as claimed.
Regarding claim 4, EP ‘050 discloses a preparation method for making the uniformly modified silicon monoxide negative electrode material of claim 1 (also see the claimed ranges set forth in claim 1 above), in which the method comprises the following process steps (also refer to Examples 1-3):
uniformly mixing silicon (Si) and silicon dioxide (SiO2) powders in a prescribed amount, and placing a mixture thereof into a furnace body (tubular furnace (10) of Figure 1) to obtain a vapor (SiO gas) containing silicon (Si) and oxygen (O) elements by heating under reduced pressure (1 to 200 Pa), wherein a heating temperature is 1100°C to 1600°C, which has substantial overlap with 1000°C to 1800°C, as claimed (see paragraphs [0046]-[0049]; Example 1; and claim 6);
introducing a carbon substance-containing (hydrocarbon-based) solution into the furnace body (10) to vaporize the carbon substance-containing solution, so as to obtain a mixed vapor (see paragraphs [0050]-[0053]; Example 1; and Figure 1); and
cooling and depositing the mixed vapor on a water-cooled substrate (see paragraphs [0053]-[0057]), then pulverizing deposited material to obtain a silicon monoxide (SiO) material with carbon atoms uniformly dispersed at an atomic level, which is a silicon monoxide negative electrode material (see Examples 1-3 of EP ‘050).
Regarding claim 5, EP ‘050 discloses that the carbon substance-containing (hydrocarbon-based) solution comprises one or more of an organic solution and an organic solution in which a solute is dissolved (see paragraphs [0050] and [0060]).
Regarding claim 6, EP ‘050 discloses that the carbon substance-containing (hydrocarbon-based) solution comprises one or more organic compounds, including (but not limited to) benzene, ethanol, and pyridine (see paragraphs [0050] and [0060]).
Regarding claim 7, EP ‘050 discloses that the preparation method further includes the step of performing a carbon coating on the pulverized material (see paragraph [0061] and Example 1), then obtaining the silicon monoxide negative electrode material after grading (see Example 1).
Regarding claim 8, EP ‘050 discloses that the carbon coating comprises a gas-phase coating provided by introducing methane (CH4) gas near a temperature of 1,400°C (see Example 1).
Regarding claims 9 and 10, EP ‘050 discloses a lithium battery comprising a negative plate that includes the silicon monoxide negative electrode material of claim 1 (see abstract; paragraphs [0027], [0062], [0063] and [0067]; and claims 1 and 8).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN P KERNS whose telephone number is (571)272-1178. The examiner can normally be reached Monday-Friday 8am-430pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571)272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN P KERNS/Primary Examiner, Art Unit 1735 September 2, 2026
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