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 .
Election/Restrictions
2. Applicant’s election without traverse of Group I (Claims 1-3 and 9-10) in the reply filed on July 2, 2026, is acknowledged.
3. Claims 4-8 and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 2, 2026.
Priority
4. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f), which papers have been placed of record in the file.
Information Disclosure Statement
5. Information disclosure statement (IDS), submitted December 6, 2023; October 9, 2024; and, July 15, 2026, have been received and considered by the examiner.
Claim Rejections - 35 USC § 103
6. 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.
7. 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.
8. 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.
9. Claims 1, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (US 2019/0355977 A1).
With regard to Claim 1, Lin et al. disclose in Figure 1, a uniformly modified silicon-based composite material, including a silicon material, a metal source A wherein the metal source is one or more of Fe, Co, Ni, Cu and Ti, a graphite material, and a carbon source uniformly mixed to form a mixed slurry (paragraphs 0033-0037), wherein the carbon source C is uniformly and dispersively distributed on an atomic scale inside particles of the silicon-based composite material, at least some carbon atoms bind to silicon atoms to form unordered Si-C bonds (paragraphs 0038-0039); uniform distribution of silicon, carbon, metal source A and oxygen elements inside the particles of the silicon-based composite material; the silicon-based composite material has a multi-phase dispersive microstructure (paragraphs 0038-0039); the particles of the silicon-based composite material have an average particle size D50 between 3 µm and 25 µm (paragraph 0038), which meets the claimed limitation of 1 nm to 100 µm; a content of the carbon source C may be from 3 wt% to 20 wt% (paragraph 0037), which meets the claimed limitation of the carbon atoms having a mass accounting for 0.1%-40% of a mass of the silicon-based composite material; and a content of the metal source may be from 3 wt% to 30 wt% (paragraph 0035), which meets the claimed limitation of the metal source A element having a mass accounting for 3%-40% of the mass of the particles of the silicon-based composite material.
Lin et al. do not specifically disclose a specific surface area of 0.5 m²/g-40 m²/g, however, such properties are inherent given that both Lin et al. and the instant application utilize the same materials. A reference which is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. See MPEP 2112.
Lin et al. do not specifically disclose wherein the uniformly modified silicon-based composite material has a general formula of SiCxAyOz, with 0 < x < 20, 0 < y < 10, and 0 < z < 10, however, such properties are inherent given that both Lin et al. and the instant application utilize the same materials and disclose the same method for preparing a uniformly modified silicon-based composite material. A reference which is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. See MPEP 2112.
Lin et al. do not specifically disclose wherein no carbon element agglomeration above 20 nm occurs. The specific agglomeration of carbon in the composite material is not considered to confer patentability to the claims. As the composite material stability is a variable that can be modified, among others, by adjusting said agglomeration of carbon in the composite material, with the composite material stability increasing as the agglomeration of carbon is decreased, the precise agglomeration of carbon in the composite material would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the agglomeration of carbon in the composite material of Lin et al. to obtain the desired balance (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
The recitation, “in a focused ion beam transmission electron microscopy FIB-TEM test for the silicon-based composite material, energy-spectrum surface scanning of particle sections shows”, is considered a process step used to test the product, and is not further limiting to the product being claimed and the criticality of the specific testing step does not provide patentable distinction. As such, the limitations are not given patentable weight in this claim.
With regard to Claim 9, Lin et al. disclose in Figure 7, a negative electrode plate comprising the uniformly modified silicon-based composite material noted above (paragraphs 0041, 0046).
With regard to Claim 10, Lin et al. disclose in Figure 7, a lithium battery comprising the negative electrode plate noted above (paragraphs 0041, 0046).
10. Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (US 2019/0355977 A1), as applied to Claims 1, 9 and 10 above, and in further view of Oh et al. (WO 2020/256395 A2).
With regard to Claim 2, Lin et al. disclose the silicon-based composite material in paragraph 9 above, but do not specifically disclose wherein the silicon-based composite material has a carbon coating outside; and the carbon coating has a mass accounting for 0%-20% of the mass of the silicon-based composite material.
Oh et al. disclose a carbon-silicon composite oxide for a lithium secondary battery anode material, and a preparation method involving reacting a raw material powder mixture comprising silicon powder and silicon dioxide powder with metallic magnesium to obtain a silicon composite oxide, and then forming a carbon film on the surface of the obtained silicon composite oxide (paragraph 0036). Oh et al. disclose wherein the carbon coating amount (carbon content) is preferably 2 wt% to 15 wt% of the silicon composite oxide (paragraph 0099), which meets the claimed limitation of 0%-20%. Before the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the silicon-based composite material of Lin et al. to include a carbon coating outside and the carbon coating has a mass accounting for 0%-20% of the mass of the silicon-based composite material, because Oh et al. teach that coating the silicon surface with carbon makes it more conductive and demands a higher capacity (paragraph 0101).
With regard to Claim 3, Lin et al. disclose the silicon-based composite material in paragraph 9 above, including a content of the carbon source C may be from 3 wt% to 20 wt% (paragraph 0037), which meets the claimed limitation of the carbon atoms having a mass accounting for 0.5%-10% of a mass of the silicon-based composite material, but do not specifically disclose wherein the carbon coating has the mass accounting for 0%-10% of the mass of the silicon-based composite material.
Oh et al. disclose a carbon-silicon composite oxide for a lithium secondary battery anode material, and a preparation method involving reacting a raw material powder mixture comprising silicon powder and silicon dioxide powder with metallic magnesium to obtain a silicon composite oxide, and then forming a carbon film on the surface of the obtained silicon composite oxide (paragraph 0036). Oh et al. disclose wherein the carbon coating amount (carbon content) is preferably 2 wt% to 15 wt% of the silicon composite oxide (paragraph 0099), which meets the claimed limitation of 0%-10%. Before the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the silicon-based composite material of Lin et al. to include a carbon coating outside and the carbon coating has a mass accounting for 0%-10% of the mass of the silicon-based composite material, because Oh et al. teach that coating the silicon surface with carbon makes it more conductive and demands a higher capacity (paragraph 0101).
Conclusion
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARIE O APICELLA whose telephone number is (571)272-8614. The examiner can normally be reached Monday thru Friday; 8:00AM to 5:00PM EST.
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/KARIE O'NEILL APICELLA/Primary Examiner, Art Unit 1725
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