DETAILED ACTION
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1 – 7 and 14) in the paper filed August 6, 2026 is acknowledged. Claims 8 – 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 7 and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for x > 0, y > 0 and z > 0, does not reasonably provide enablement for an alkali metal-containing compound of the coating being pure Li, Na or K, for example. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
The test of enablement is whether one skilled in the art could make and use the claimed invention coupled with information known in the art without undue experimentation (See United States v. Theketronic Inc., 8 USPQ2d 1217 (Fed. Cir. 1988)). Whether undue experimentation is required is not based upon a single factor but rather a conclusion reached by weighing many factors (See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400 and MPEP 2164.01.)
(A) The breadth of the claims;
The pending claims (at least the independent claims) are broad. There are millions of possible AMO combinations that would potentially read on the claimed breadth, given the lack of specific material compositions.
(B) The nature of the invention;
Alkali metal coatings are not a very complex type of invention, per se, as alkali metal coatings have been known for many years. However, there are many different formulations for such coatings and the Examiner acknowledges that chemical variations do not always yield predictable results.
(C) The state of the prior art;
The battery and alkali metal coating art is in a relatively crowded art since batteries and alkali metal coatings have been made for many years.
(D) The level of one of ordinary skill;
The level of ordinary skill in the art is probably a research chemist or engineer having a minimum of two or three years of experience.
(E) The level of predictability in the art;
The art is relatively predictable – a good coating will exhibit known, desired properties. However, it is unclear in the art whether all coatings encompassed by the claimed composition, including pure metal Li, Na or K (which aren’t really ‘compounds’, per se) would exhibit desired properties, and the present specification does not provide any illumination to this question.
(F) The amount of direction provided by the inventor;
As noted above, there is almost no direction provided by the inventor as to what materials constitute proper AMO coatings that do not include all of AMO in some amount.
(G) The existence of working examples; and
The specification discloses a ‘shell’ of LiSi (i.e. z can be 0), but it is unclear if this is referring to the ‘shell’ also claimed or the ‘coating’. If it is demonstrated that this is referencing the coating, then the Examiner notes that inclusion that “at least one of y or z is greater than 0” would be sufficient to overcome this rejection as oxide coatings are well established in the coating arts and both AM and AO would be recognized as ‘alkali metal-containing compounds’.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Millions of experiments are required in order to determine what will and will not work. It is the Examiner's contention that the interaction of the various components are likely within the skill level of a POSITA, so the interactions among the components may, or may not, present an undue burden. However, without specific limitations on exact combinations or what additional components may (or may not) be necessary, the Examiner notes that the breadth of the claim scope is immense relative to what is taught in the as-filed specification.
Given the above analysis of the factors, which courts have determined, are critical in asserting whether a claimed invention is enabled, it must be considered that a skilled artisan would have to conduct undue and excessive experimentation in order to practice the claimed invention. Applicant is advised to positively set forth specific comparative shielding structures with definite structural limitations or to present specific arguments on the record as to why a POSITA would view the claimed limitations as enabling.
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 1 - 7 and 14 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 pre-AIA the applicant regards as the invention.
Claims 1 – 7 and 14 require a coating compound of AMO, where M and O can be 0 (y=0; z=0). A skilled artisan would not deem elemental Li, Na or K as a ‘compound’, much less an ‘alkali metal-containing compound’ as recited in the claim. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “compound” in claim 1 is used by the claim to mean “element or compound (i.e. singular element or compound of multiple elements),” while the accepted meaning is “compound (of multiple elements).” The term is indefinite because the specification does not clearly redefine the term. A skilled artisan would not consider pure Li, Na, or K to be a “compound”.
Claim Rejections - 35 USC § 102
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.
(a)(2) The claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(g)(1) During the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 1 – 4, 6 and 14 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Wu et al. (U.S. Patent App. No. 2022/0328813 A1 and corresponding WO document published on Jun 13, 20202).
Regarding claim 1, Wu et al. disclose a negative electrode active material (Title; Abstract) comprising: a core (inner core including Si particle); a shell surrounding the core (first shell layer comprising MSiO); and a metal particle (the same as the core: ‘Si particle’ as there is nothing in the claim stating that the ‘core’ and ‘metal particle’ cannot be the same component) in which a part or all of the surface thereof is coated with an alkali metal-containing compound (the same as the ‘first shell layer comprising MSiO’ as there is nothing in the claim stating that the ‘shell’ and the ‘coated with … an alkali metal-containing compound’ can’t be the same component), wherein the metal particle comprises any one or more selected from the group consisting of Ti, Cu, V, Zr, Nb, Mg, Al, Si, Ca, Fe, Mn, Co, Ni, Zn, and Ge, and the alkali metal-containing compound is represented by Formula 1: AₓMyOz- (ibid and Paragraphs 0039 – 0048) wherein in Formula 1, A comprises any one or more selected from the group consisting of Li, Na, and K (ibid, noting Paragraph 0045), M meets the claimed limitations (e.g. at least Si, though can also include additional elements from the listing in Paragraph 0045), and O is O, wherein the amounts x, y and z overlap (ibid).
Regarding claims 2 and 3, these limitations are met as set forth above.
Regarding 4, these limitations are met as set forth above and see Paragraph 0055 for the mean, taken as D50, particle sizes.
Regarding claim 6, these limitations are met as set forth above.
Regarding claim 14, Wu et al. explicitly discloses the use of the anode as part of a secondary (rechargeable) battery (Title; Abstract; and examples). The Examiner takes Official Notice that all secondary (rechargeable) batteries possess an anode, cathode and some form of an electrolyte between the two electrodes to prevent direct shorting and to allow ion transmission. For support of this position of Official Notice, see the art cited on Applicants’ IDSs and the pertinent prior art cited with this action. As such, the Examiner deems that disclosure of ‘secondary battery’ necessarily and intrinsically discloses the additional limitations set forth in claim 14.
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 – 7 and 14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Wu et al. as applied above, and further in view of IDS reference KR 2013-0107892 A, and as further evidenced by Jung et al. (U.S. Patent App. No. 2020/0194785 A1).
Wu et al. is relied upon as described above.
Regarding claims 1 and 7, while the Examiner maintains that Wu et al. anticipates the claimed limitations of claim 1 when one considers the ‘core’ to be the same component as the ‘metal particle’ and the ‘shell’ to be the same component as the coating of AMO, but when taken as a core-shell active material separate from the metal particle with the alkali metal-containing coating, Wu et al. fails to disclose additional ‘core-shell’ particles, though Wu et al. does explicitly disclose adding carbon (C) particles that can include soft, hard, amorphous, and/or crystalline carbon materials (Title; Abstract; and at least Paragraphs 0039 – 0049).
However, KR ‘892 A teaches that one can form carbon particles for use in secondary batteries wherein the carbon particles can comprise a soft carbon and the shell can comprise a crystalline carbon, which allows the formation of secondary batteries having high charging and discharging capacity.
Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, the Examiner notes that ‘soft carbon’ and ‘amorphous carbon’ are functional equivalents in the field of nomenclature referencing carbon. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950)1.
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Wu et al. to use second, carbon core-shell particles comprising an amorphous core and a crystalline shell as taught by KR ‘892 A, since such dual core-shell carbon particles are known to provide high charging and discharging capacity. The Examiner notes that this reads on the core-shell structure recited in claim 7, as well.
Regarding claims 2 – 4 and 6, these limitations are taught as recited above. Regarding the D50 size, while the Examiner maintains that this is recognized as an ‘average particle size’ as recited in Wu et al., the Examiner notes that a skilled artisan would be well versed in optimizing a particle size as claimed to within the claimed range as conventional in the anode layer arts. The Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the D50 particle size through routine experimentation, especially given the knowledge in the art regarding the desire to control particles to ‘average particle sizes’ encompassing the claimed range2. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the grain size of the metal particles through routine experimentation, especially given the teaching the art regarding the overall diameters being on the nm scale. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 14, as further evidence that the claimed battery structure limitations are known and conventional, see Jung et al. (Paragraphs 0131 – 0149 and Figure 24). In the event that it is shown that Wu et al. fails to anticipate the claimed battery device limitations, the Examiner maintains it would have been obvious to a skilled artisan to form the battery to have an anode, a cathode, and an electrolyte therebetween as this is conventional in the battery arts to allow the battery to function.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
October 14, 2026
1 For support of this position, see art cited to Jung et al. (US ‘785 A1; Paragraph 0071) and/or Wu et al., Paragraph 0049.
2 As additional support that the claimed particle size range is known and that D50 is known as an ‘average particle size’, see the Jung et al. ‘785 A1 reference, at least Paragraphs 0086 and 0101.
