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 .
Response to Amendment
This Office Action is responsive to the amendment filed on 1/9/2026. Claims 1-17 are pending. Claims 8, 12-16 are withdrawn from further consideration as being drawn to a non-elected invention, in accordance with 37 CFR 1.142(b). Claim 1 has been amended. Applicant’s arguments have been considered. Claims 1-7, 9-11, 17 are finally rejected for reasons necessitated by applicant’s amendment.
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.
Claims 1, 2, 4-6, 9-11, 17 are rejected under 35 U.S.C. 103 as being unpatentable over Awano (US 2021/0193990) in view of Park (US 2020/0365882).
Regarding claim 1, Awano discloses a negative electrode active material for a secondary battery comprising a core-shell composite including: a core including a silicon oxide (SiOx, 0<x<2) and a metal silicate in at least a part of the silicon oxide. See Abstract.
Regarding claim 4, the metal silicate is one or more selected from the group consisting of lithium silicate, sodium silicate, potassium silicate, and magnesium silicate. See Abstract.
Regarding claim 5, the core includes 10 to 95 parts by weight of the metal silicate with respect to 100 parts by weight of the silicon oxide, Awano discloses modifying SiO2 to form a lithium silicate, the irreversible capacity generated during charge may be reduced [0077]. It would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the amount of lithium silicate formed in Awano’s silicon particle for the benefit of adjusting the capacity. Awano clearly teaches that lithium silicate is a result effective variable. It has been held by the courts that discovering an optimum value or workable ranges of a result-effective variable involves only routine skill in the art, and thus not novel. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05.
Regarding claim 1, Awano does not disclose a shell outside the core and including a metal-substituted organic compound, wherein the metal of the metal silicate and the substituted metal of the organic compound are independent of each other, wherein each of the metal of the metal silicate and the substituted metal of the organic compound includes an alkali metal or an alkaline earth metal. Park teaches a silicon particle having a metal substituted organic compound to prevent or alleviating a side reaction of the electrolyte. In addition, the polymer coating layer imparts excellent conductivity and an excellent adhesive property to the silicon-based particle-polymer composite [0026]. It would have been obvious to one of ordinary skill in the art at the time the invention was made to add a polymer coating layer of Park to the silicon particle of Awano, as taught by Park, for the benefit of preventing or alleviating a side reaction of the electrolyte.
Regarding claim 2, the metal of the metal silicate and the substituted metal of the organic compound are the same. Awano discloses a lithium silicate [0077], and Park teaches a lithium substituted poly(acrylic acid) [0027].
Regarding claim 6, the organic compound is an aqueous organic compound including one or more functional groups selected from the group consisting of a hydroxyl group, a carboxyl group, an amine group, and an amide group [0027].
Regarding claim 9, the shell has an average thickness of 0.1 to 100 nm [0038].
Regarding claim 10, in the core-shell composite, a weight ratio of the shell to the core is 0.1 to 10.
Regarding claim 1, a value of the following Equation (1) is 0.08 to 0.16 in XPS analysis of a surface of the core-shell composite: (1) [M/C] wherein M is a substituted metal of the organic compound, [M] is an M content (at%) measured by XPS analysis, and [C] is a C content (at%) measured by XPS analysis, Park teaches that capacity retention and expansion rate depends on the amount of metal substituted in the polymer, see Table 2. It would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the amount of metal on the coating of Park for the benefit of optimizing the expansion rate and the capacity retention.
Regarding claim 11, the core-shell composite further includes amorphous carbon, Awano discloses a superficial layer of carbon with a coverage of 30% or more to improve conductivity [0092]. It would have been obvious to one of ordinary skill in the art at the time the invention was made to add a carbon layer to the outer surface of Awano modified by Park for the benefit of increasing the conductivity. It is noted that amorphous carbon is a commonly used to increase electrical conductivity, and hence would have been an obvious choice.
Regarding claim 17, Awano modified by Park teaches a secondary battery comprising a negative electrode having the negative electrode active material of claim 1.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,990,610. Although the claims at issue are not identical, they are not patentably distinct from each other in that claim 4 of U.S. Patent No. 11,990,610 contains all the limitations of claim 1 of the instant application.
Regarding claim 1, “Equation (1) is 0.08 to 0.16”, claim 4 of U.S. Patent No. 11,990,610 discloses “Equation (1) is 0.02 to 0.18”. 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). See MPEP 2144.05.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art is Awano (US 2021/0193990) in view of Park (US 2020/0365882).
Awano modified by Park does not teach nor suggest:
Regarding claim 3, a concentration of the substituted metal on an outer surface of the core-shell composite is lower than a concentration of the substituted metal in an interface between the core and the shell, based on a cross-section through the center of the core-shell composite.
Regarding claim 7, the organic compound includes a catechol-based compound.
Response to Arguments
Arguments dated 1/9/2026 are addressed below:
Applicant argues that Table 2 of the present application clearly demonstrates the critical technical significance of the claimed numerical range of Equation 1 in amended Claim 1. According to Table 2, Examples 1-4 and 6-11, the [M]/[C] values of which fall within the claimed range of 0.08 to 0.16, exhibit significantly improved performance compared to Example 5 and the comparative examples. In particular, these examples exhibited high capacity retention rates ranging from 80.8% to 91.8%. By contrast, Example 5 and Comparative Examples 2-3, the [M]/[C] values of which fall outside the claimed range of 0.08 to 0.16, showed decreased high capacity retention rates ranging from 73.6% to 80.1%.
In response, Applicant’s claim 1 is not commensurate in scope with Applicant’s Table 2. It is noted that Table 2 is specific to a performance of a half cell, not simply an active material. Further, Table 2 is specific as to the type of the organic compound and the surface amounts of Li and C. Further, the performance of the half cell is dependent on further variables, such as the amount of active material in a negative electrode and contents of the negative electrode.
Further, it is noted that the negative electrode active material shown in Table 2 further contains carbon coating prior to the formation of the shell, see the instant Specification [00134]:
Example 1 Manufacture
a) Pretreatment Process
a-1) Preparation of Silicon Compound
[0134] A raw material in which silicon and silicon dioxide were mixed was introduced to a reaction furnace and evaporated at 600° C. for 5 hours under an atmosphere having a vacuum degree of 10 Pa, the resultant product was deposited on a suction plate and sufficiently cooled, and then a deposit was taken out and pulverized with a ball mill. The pulverized silicon compound particles were adjusted by sorting to obtain silicon compound particles having an average particle diameter (D50) of 6.7 μm. The obtained silicon compound particles were coated with carbon by a CVD process at 600° C. for 3 hours. At this time, coated carbon was 5 wt % based on the total weight of the carbon-coated silicon compound.
Hence, it is unclear as to how the carbon coating affects the negative electrode performance of Table 2. Depending on the amount of the organic compound on the shell, it is unclear if the carbon coating is exposed on the shell, and hence affects its performance. Hence, the rejection is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CYNTHIA KYUNG SOO WALLS whose telephone number is (571)272-8699. The examiner can normally be reached on M-F until 5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Leong can be reached at 571-270-1292. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CYNTHIA K WALLS/ Primary Examiner, Art Unit 1751