DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claim 9 is objected to because of the following informalities: the limitation “the method comprising comprising” includes a drafting error. For the purpose of this Office Action, the limitation has been interpreted as “the method comprising ”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
3. 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.
4. Claim(s) 1-5, 8, 9, 11, and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iyama et al. (WO2019150725A1) as cited in IDS dated 5/22/25 with citations from machine translation provided by Applicant.
Regarding claim 1, Iyama discloses particles having a chromaticity b* of 0.34 ([0020], Table 12, example 3) which is within the claim range of 2.0 or less, thus reading on the limitation.
According to the MPEP, “"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) See MPEP 2131.03.
Continuing with claim 1, Iyama discloses the particles comprising graphite (A) and particles (B) comprising a silicon element([0017], [0020], [0191], [0246]-[0247]).
Regarding claim 2, Iyama discloses the chromaticity b* is 1.1 or less(0.34, Table 12, example 3).
Regarding claim 3, Iyama discloses the chromaticity b* is in a range of from 0.2 to 1.2 (0.34, Table 12, example 3).
Regarding claim 4, Iyama discloses having a chromaticity a* of 1.2 or less (0.86, Table 12, example 3).
Regarding claim 5, Iyama discloses having a chromaticity a* of in a range of from 0.2 to 1.1(0.86, Table 12, example 3).
Regarding claim 8, Iyama discloses a secondary battery, comprising: the particles of claim 1 ([0246]).
Regarding claim 9, Iyama discloses a method for producing particles ([0020], [0246]-[0247]) having a chromaticity b* of 0.34 ([0020], Table 12, example 3) which is within the claim range of 2.0 or less, thus reading on the limitation.
According to the MPEP, “"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) See MPEP 2131.03.
Continuing with claim 9, Iyama discloses the method comprising: compositing graphite (A) and particles (B) comprising a silicon element([0017], [0246]-[0247]).
Regarding claim 11, Iyama discloses a secondary battery ([0246]-[0247]) comprising: a positive electrode([0094]; a negative electrode([0094]); and an electrolyte([0094]), wherein the negative electrode comprises a current collector and a negative electrode active material layer disposed on the current collector([0106]), and wherein the negative electrode active material layer comprises the particles of claim 1([0017], Table 12, example 3).
Regarding claim 12, Iyama discloses a method for manufacturing a secondary battery ([0116]) including a positive electrode, a negative electrode, and an electrolyte([0117]), the method comprising forming a negative electrode active material layer comprising the particles of claim 1 on a current collector to produce the negative electrode([0017], [0106], Table 12, example 3).
Claim Rejections - 35 USC § 103
5. 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.
6. 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.
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.
7. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
8. Claim(s) 1-3, 6-9, 11, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (JP2015149208A) as cited in IDS dated 4/26/24 with citations from machine translation provided by Applicant.
Regarding claim 1, Watanabe discloses particles having a chromaticity b* of 0.8 to 5.0 ([0013], claim 1) which overlaps the claim range of 2.0 or less, thus reading on the limitation.
Watanabe is explicitly silent to the claim range however “in the case where the 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). MPEP 2144.05.
Continuing with claim 1, Watanabe discloses the particles comprising graphite (A) and particles (B) comprising a silicon element ([0013]-[0014], [0033]).
Regarding claim 2, Watanabe discloses the chromaticity b* is 0.8 to 5.0 ([0013], claim 1) which overlaps the claim range of 1.1 or less, thus reading on the limitation.
Watanabe is explicitly silent to the claim range however “in the case where the 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). MPEP 2144.05.
Regarding claim 3, Watanabe discloses the chromaticity b* is in a range of 0.8 to 5.0 ([0013], claim 1) which overlaps the claim range from 0.2 to 1.2, thus reading on the limitation.
Watanabe is explicitly silent to the claim range however “in the case where the 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). MPEP 2144.05.
Regarding claim 6, Watanabe discloses the silicon element has a d50 of 0.1 to 50 μm ([0017]) which overlaps the claim range of 0.3 μm or more, thus reading on the limitation.
Watanabe is explicitly silent to the claim range however “in the case where the 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). MPEP 2144.05.
Regarding claim 7, Watanabe discloses the silicon element has a formula SiOx,
wherein x is in a range of from 0.5 to 1.5 (SiOx 0.5≤x≤1.6 [0015]).
Regarding claim 8, Watanabe discloses a secondary battery, comprising:
the particles of claim 1(claims 1-7, [0013]).
Regarding claim 9, Watanabe discloses a method for producing particles having a chromaticity b* of 2.0 or less, the method comprising: compositing graphite (A) and particles (B) comprising a silicon element([0019]-[0020]).
Regarding claim 11, Watanabe discloses a secondary battery comprising: a positive electrode([0038]; a negative electrode([0038]; and an electrolyte([0038]), wherein the negative electrode comprises a current collector and a negative electrode active material layer disposed on the current collector([0037]), and wherein the negative electrode active material layer comprises the particles of claim 1 (claims 1-3).
Regarding claim 12, Watanabe discloses a method for manufacturing a secondary battery including a positive electrode, a negative electrode, and an electrolyte, the method comprising
forming a negative electrode active material layer comprising the particles of claim 1 on a current collector to produce the negative electrode([0042]-[0046]).
Allowable Subject Matter
9. Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
In particular, the allowable limitation is the method comprising: mixing the graphite (A) and the particles (B), to obtain a mixture; and then subjecting the mixture to a spheroidization treatment.
Watanabe discloses the method comprising: mixing the graphite (A) and the particles (B), to obtain a mixture([0019]); but does not disclose, teach or render obvious and then subjecting the mixture to a spheroidization treatment.
Iyama does not disclose, teach or render obvious the method comprising: mixing the graphite (A) and the particles (B), to obtain a mixture; and then subjecting the mixture to a spheroidization treatment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA HOM LYNCH whose telephone number is (571)272-0489. The examiner can normally be reached 7:30 AM - 4:30 PM EST M-F.
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/VICTORIA H LYNCH/Primary Examiner, Art Unit 1724
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