DETAILED ACTION
Status of Claims
Claims 1-14 and 16-21 are pending, wherein claims 1-14 and 20 have been amended and claim 21 is newly added. Claims 1-14 and 16-21 are being examined on the merits in this office action.
Remarks
Applicant’s amendments and arguments have been entered. A reply to the Applicant’s remarks/arguments is presented after addressing the claims.
Any rejections and/or objections made in the previous Office Action and not repeated below, are hereby withdrawn in view of Applicant’s amendments or/and arguments.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. References cited in the current Office action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claims 4, 6-9 and 17 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.
Claims 4, 6-9 and 17 recites the limitation SiC. There is insufficient antecedent basis for this limitation in the claims.
The recitation “2 nm to 5 nm or less” in claim 8 renders the claim indefinite, since the scope or boundary is unclear. For purposes of examination, the recitation is interpreted as 2 nm to 5 nm.
Claim Rejections - 35 USC § 103
Claims 1-6, 10-16 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 20180226642 A1, hereafter Wang) in view of Nakano et al. (US 20210384497 A1, hereafter Nakano) and Shin et al. (US 20190312264 A1, hereafter Shin).
Regarding claims 1-2 and 10, Wang teaches a negative electrode for a rechargeable lithium battery, the negative electrode comprising a negative active material that is prepared by mixing silicon particles and a carbon precursor (at least: [0044]) and then converting the carbon precursor into a carbon phase by pyrolyzing the carbon precursor at a temperature ranging from about 750 [Symbol font/0xB0]C to 1350 [Symbol font/0xB0]C (at least: [0044], [0047]) including 1050 [Symbol font/0xB0]C (at least: [0083] and Fig. 11). The carbonized precursor, i.e., the carbon phase, forms a coating on the silicon particles and holds the Si particles together (at least: [0044]). The carbon phase may be substantially amorphous (See, e.g., [0061], lines 19-20), and one of ordinary skill in the art would also readily appreciate that multiple coatings of amorphous carbon on Si particles form a larger area of amorphous carbon on the secondary particles (reading on the claimed “an amorphous carbon on the secondary particles”), since the carbon precursor coats on the surface of Si particles in the mixture before the carbon precursor is pyrolyzed ([0044]). The Si particles being held together ([0044]) carbon reads on the claimed “secondary particles of agglomerated primary particles”, and the amorphous carbon is positioned between the primary particles because Si particles are covered with the amorphous carbon. The above-described negative active material of Wang reads on “a first negative active material” as claimed.
Wang is silent as to “a second negative active material” as claimed. However, in the same field of endeavor, Nakano discloses a similar negative electrode comprising “composite secondary particles” (corresponding to Wang’s negative active material, i.e., the “a first negative active material”) and components other than “composite secondary particles” ([0056]-[0057]). The said components may be the constituent material of the negative electrode ([0057], lines 9-14), which may be, for example, hard carbon, graphite, etc. ([0047]). One of ordinary skill in the art would have been motivated to incorporate a component (such as graphite or hard carbon) other than “composite secondary particles” into Wang, as taught by Nakano, to form a new negative active material, which is predicable. It is prima facie obvious to combining prior art elements according to known methods to yield predictable results. See MPEP § 2143. As a result, the incorporated graphite or hard carbon in Wang reads on “a second negative active material” as claimed. In the case of the incorporated component being graphite, one of ordinary skill in the art would know it is crystalline carbon.
Wang in view of Nakano teaches the negative active material for a rechargeable lithium battery as claimed in claim 1, but appears silent on a shape and an aspect ratio of the Si particles. However, in the same field of endeavor, Shin discloses flake shape silicon particles are included in a negative active material of a rechargeable lithium battery, and the silicon particles have an aspect ratio of 4 to 10 (See, at least: Abstract). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have employed the silicon particles taught by Shin as an alternative to the silicon particles of Wang, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP § 2144.07. The claimed aspect ratio range of about 5 to about 20 overlaps that of 4 to 10. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Wang as modified further teaches the first negative active material and the second negative active material are included at a mixing ratio of, for example, about 9.4:84.6 (Nakano, [0141]), which teaches the range of 1:30 to 1:4 by weight as claimed. Note that although the percentage of hard carbon is disclosed, one of ordinary skill in the art would readily appreciate that the percentage applies to graphite since graphite and hard carbon are functional equivalents as a component other than “composite secondary particles”, as disclosed in [0047] of Nakano.
Regarding claim 3, Wang as modified teaches the negative active material for a rechargeable lithium battery as claimed in claim 2, wherein the graphite comprises an unspecified shape. Absent persuasive evidence showing that a particular configuration is significant, a mere change in shape is not sufficient to provide a patentable distinction over the prior art since the shape itself may be considered as merely a matter of design choice. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); MPEP 2144.04(IV)(B).
Regarding claim 4, Wang as modified teaches the negative active material for a rechargeable lithium battery as claimed in claim 1, and further, the instantly claimed “the first negative active material has a peak intensity ratio (ISi(111)/ISiC(111) of a peak intensity (ISi(111)) at a Si (111) plane relative to a peak intensity (ISiC(111)) at a SiC (111) plane of 5 to 20 measured by X-ray diffraction analysis using a CuKα ray” represents a property or characteristic of the first negative active material including Si and SiC. However, since Wang as modified teaches substantially the same negative active material as claimed (e.g., a negative active material obtained from pyrolyzing at 1050 [Symbol font/0xB0]C (at least: [0083] and Fig. 11), under which the peak intensity ratio as claimed is expected to be 8 according to the Example 2 of the instant specification (See also Table 1, [0049] and [0051])), the claimed property or characteristic (i.e., the ratio as claimed) is reasonably expected to be about 8, which reads on the claimed “about 5 to about 20”. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 II.
Regarding claim 5, Wang as modified teaches the negative electrode for a rechargeable lithium battery as claimed in claim 1, wherein the amorphous carbon fills pores between the primary particles (See at least: [0061], lines 18-28, Wang).
Regarding claim 6, Wang as modified teaches the negative electrode for a rechargeable lithium battery as claimed in claim 1, wherein the SiC is continuously on the surface of the Si particles in a form of a layer, or the SiC is discontinuously on the surface of the Si particles in a form of an island or a dot (See at least: [0069], lines 5-19, Wang).
Regarding claim 11, Wang as modified teaches the negative electrode for a rechargeable lithium battery as claimed in claim 1, wherein the Si particles may have a particle diameter of about 110 nm ([0055], Wang), anticipating the claimed range of 10 nm to 200 nm.
Regarding claim 12, Wang as modified teaches the negative electrode for a rechargeable lithium battery as claimed in claim 1, and further teaches the first negative active material includes the Si in an amount of about 50 wt% to about 70 wt% based on a total weight of the first negative active material ([0059]). The instantly claimed range of 40 wt% to 70 wt% overlaps that of 50 wt% to 70 wt%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 13, Wang as modified teaches the negative electrode for a rechargeable lithium battery as claimed in claim 1, and further teaches the amount of SiC formed from reaction between the amorphous carbon and silicon can be controlled by pyrolysis temperature ([0081]). In other words, the amount of the amorphous carbon needed to form SiC can be controlled by pyrolysis temperature. Thus, one of ordinary skill in the art would be able to adjust the amount of the amorphous carbon by adjusting pyrolysis temperature. Since one of ordinary skill in the art would appreciate that the amount of the amorphous carbon is generally consistent with the thickness of the amorphous carbon. Therefore, one of ordinary skill in the art would have readily arrived at the instantly claimed thickness by controlling pyrolysis temperature.
Regarding claim 14, Wang as modified teaches the negative electrode for a rechargeable lithium battery as claimed in claim 1, and further teaches the first negative active material includes the amorphous carbon in an amount of about 10 wt% to about 25 wt% based on a total weight of the first negative active material ([0061]). The instantly claimed range overlaps the above range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 15, Wang as modified teaches the negative electrode for a rechargeable lithium battery as claimed in claim 1, and further teaches a particle diameter of the secondary particles is 3 µm to 20 µm. See, e.g., Fig. 13.
Regarding claim 16, Wang as modified teaches a rechargeable lithium battery, comprising:
the negative electrode as claimed in claim 1;
a positive electrode; and
an electrolyte (See, at least: [0003] and “anode” in [0043], Wang).
Regarding claim 18, Wang as modified teaches the negative active material for a rechargeable lithium battery as claimed in claim 1, wherein the primary particles further comprise SiC on the surface of the Si particles (“silicon carbide”, [0044]; Figs).
Regarding claim 19, Wang as modified teaches the negative active material for a rechargeable lithium battery as claimed in claim 1, and the claimed “the first negative active material has a full width at half maximum, FWHM (111), of a diffraction peak at a (111) plane found by X-ray diffraction of the Si particles using a CuKα ray is about 0.5 degrees ([Symbol font/0xB0]C) to about 7 degree ([Symbol font/0xB0]C)” represents a property or characteristic of the first negative active material. However, since Wang in view of Nakano as modified teaches similar Si particles to that as claimed, the claimed property or characteristic is necessary present. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 II.
Claims 7-9 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Nakano and Shin, as applied to claim 1 above, and further in view of Tanaka et al. (WO 2014181447 A1, whose English machine translation is being used for citation purposes, hereafter Tanaka)
Regarding claims 7-9, Wang as modified teaches the negative active material for a rechargeable lithium battery as claimed in claim 1, but is silent as to a thickness of the SiC. However, in the same field of endeavor, Tanaka discloses Si particles included in a negative electrode active material are coated with a SiC film of 2-100 nm to prevent a dielectric breakdown and ensure a proper electron conductivity (See, at least: Abstract and lines 303-315 on page 8). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used a thickness of 2-100 nm for the SiC surface coating of Wang as modified, as taught by Tanaka, in order to ensure a proper electron conductivity and prevent a dielectric breakdown. The claimed ranges of “5 nm or less” and “2 nm to 5 nm or less” overlaps the range of 2 to 100 nm. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
According to the specification, the thickness of the SiC may refer to the claimed particle diameter of the SiC ([0031]-[0033]). Thus, the claimed range of claim 9 overlaps or lies inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 17, Wang as modified teaches the rechargeable lithium battery as claimed in claim 9, and further, the instantly claimed XRD characteristic or property is expected to be necessarily present, since Wang as modified teaches the same crystalline carbon (graphite) and SiC as claimed (See the rejection of claim 1). It is well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed by the prior arts, the burden is on the applicant to prove that the prior art product does not necessarily possess properties or characteristics attributed to the claimed product, and that it is of no moment whether the rejection is based on § 102 or § 103 since the burden is on the applicant is the same. In re Spada, 911 F.2d 705,708 (Fed Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Also note that, according to paragraph [0059] of the instant specification, this claimed ratio is obtained from a negative electrode after an operation of charging and discharging a battery including the negative electrode. However, The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987).
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.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12255314 B2 in view of Nakano and Tanaka. The Nakano and Tanaka references are applied for the same reasons stated in the rejection above.
Response to Arguments
Applicant's arguments filed July 23, 2026 have been fully considered but they are not persuasive.
Applicant's arguments are based on the claims as amended. The amended claims have been addressed in the new rejections above. In addition:
In response to the argument with respect to “… hard carbon … is preferred. Thus, there is no reason to choose graphite as the components other than the composite secondary particles”, it is noted that “preferred” does not mean others cannot be used. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments, consult Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.1989).
In response to the argument associated with “via a binder” in Nakano, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727
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