DETAILED 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Any rejections and/or objections made in the previous Office Action and not repeated below, are hereby withdrawn in view of Applicant’s amendments or/and arguments.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.
Status of Claims
Claims 1-18 are pending, wherein claims 1, 6 and 9 are amended, and 9-18 are withdrawn. Claims 1-8 (with M1=Mn and M2=Mg in claim 4) are being examined on the merits in this office action.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on Jan. 6 and Mar. 19, 2026 have been considered by the examiner.
Specification
The amended Specification filed Jan. 20, 2026 is acknowledged and accepted.
Examiner’s Note
The data shown in the Tables of the specification should have data deviations/errors presented. For example, in Table 1, 104.8±?, 102.1±?
Claim Interpretations
The term “efficiency constants” recited in claim 1 is interpreted according to the description in paragraphs starting with paragraph [0074] of the instant specification.
Claim Rejections - 35 USC § 112
Claims 1-8 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.
Claim 1 recites “a silicon-carbon composite”, which is not only a silicon-based active material but also a carbon-based active material, because the term “based” has an extremely broad meaning. Thus, it is unclear whether the claimed “a carbon-based active material” in claim 1 can include the said silicon-carbon composite or not, rendering the claim(s) indefinite. See also the response to Applicant’s arguments with respect to “a silicon-carbon composite”, below. See the art rejections below for how the recitation is interpreted.
Claim Rejections - 35 USC § 103
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano et al. (US 20210384497 A1, hereafter Nakano).
Regarding claims 1-2 and 4, Nakano teaches a lithium secondary battery (See, Figs. 1-2) comprising:
a positive electrode and a negative electrode and a negative electrode (e.g., [0021]-[0026]),
wherein the positive electrode comprises a lithium composite transition metal compound comprising nickel and cobalt represented by the formula LiaNibMncCodMxO2, which reads on the formula as recited in claim 4 when M is Mg. The molar fraction range of each element in the claimed formula as well as the range of x+y as claimed overlap those of Kuroda, respectively. 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).
Nakano teaches the negative electrode comprises a carbon-based active material (e.g., graphite, [0047]) and a silicon-based active material (e.g., silicon oxide, [0043]) (See [0037]-[0049]).
As to the limitation associated with the inequation 1, the “a” and “b” represent characteristic or property of the silicon-based active material and the carbon-based active material, respectively. Since Nakano teaches the same materials as claimed, the characteristics or properties are expected to be necessarily present. Products of identical chemical composition cannot have mutually exclusive properties (See MPEP § 2112.01). As for “a*”, Nakano further teaches that the ratio of the silicon-based active material based on 100 parts by weight of the total amount of the silicon-based active material and the carbon-based active material in the negative electrode is adjustable ([0049]). Therefore, one of ordinary skill in the art would have readily arrived at the claimed inequation 1 by adjusting the said ratio through routine experimentations.
Note also that the conditional limitation (i.e., in the last paragraph, “when …”) does not set forth a positive limitation because “when” supports the notion that the limitation is optional and is not necessarily present.
Regarding claim 3, Nakano teaches the lithium secondary battery of claim 1, wherein the lithium composite transition metal compound comprises nickel in a molar ratio of 0 to 1. The claimed ratio range of 0.8 or more overlaps or lies inside the range of 0 to 1. 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 6, Nakano teaches the lithium secondary battery of claim 1, and further teaches only the lithium composite transition metal compound can be used as the positive electrode active material ([0071]), meaning the positive electrode comprises 100 parts by weight of the lithium composite transition metal compound based on 100 parts by weight of the positive electrode active material.
Regarding claim 7, Nakano teaches the lithium secondary battery of claim 1, wherein a positive electrode active material of the positive electrode consists of the lithium composite transition metal compound comprising nickel and cobalt. See the rejection of claim 6.
Regarding claim 8, Nakano teaches the lithium secondary battery of claim 1, wherein a negative electrode active material of the negative electrode consists of the silicon-based active material and the carbon-based active material (See, “other than”, “may be further …”, etc., [0049]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Nakano, as applied to claim 1 above, and further in view of Choi et al. (US 20180342757 A1, hereafter Choi).
Regarding claim 5, Nakano teaches the lithium secondary battery of claim 1, but is silent as to the instantly claimed silicon-carbon composite. However, the use of a Si-C composite as a negative electrode active material is well known in the art. For example, Choi discloses a Si-C physically or chemically combined with a carbon-based material can be used as a negative electrode active material (at least [0034]). 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 Si-C physically or chemically combined with a carbon-based material as an alternative to the negative electrode active material of Nakano, 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.
Further, since Nakano in view of Choi teaches the same silicon-carbon composite, the characteristic or property of having a discharge efficiency of from 85% to 95% is reasonably expected to be present. Products of identical chemical composition cannot have mutually exclusive properties (See MPEP § 2112.01).
Terminal Disclaimer
The terminal disclaimer filed on Mar. 2, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of the copending Application No. 18377088 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant's arguments filed Jan. 30, 2026 have been fully considered but they are not persuasive.
1) In response to the argument that “there is no statutory or rule-based requirements noted in MPEP for inclusion of statistical deviations or error values”, it is noted that including data deviations/errors for data presented is basic/general knowledge for one of ordinary skill in the art (e.g., a scientist or an engineer), especially when comparing two data points whose values are very close to each other. MPEP is only a guidance of patent law for patent examination and does not have to or can include everything, including art-specific stuffs. Not written in MPEP does not necessarily mean that one is free to disregard basic common sense.
2) Applicant argues:
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In response, the assertation that “… a silicon-carbon composite active material is not “carbon-based”, even though it includes carbon, because it is expressly defined and recognized as a composite having silicon as an active material component” is not convincing.
Although “a silicon-carbon composite” is referred to as a silicon-based active material by the Applicant, as claimed, the claim does not exclude that a silicon-based active material is a carbon-based active material. As a matter of fact, one of ordinary skill in the battery field knows that both silicon and carbon are most commonly used negative electrode active materials.
In other words, the limitation “a silicon-based active material that is a silicon-carbon composite” may imply a silicon-carbon composite is a silicon-based active material, but the limitation itself does not limit a silicon-carbon composite to be only interpreted as a silicon-based active material. That is, there is no reason that a silicon-carbon composite cannot also be interpreted as a carbon-based active material since carbon is a most commonly used in a negative electrode.
Note also that the answer in google search to the question “Is silicon-carbon composite a silicon-based material or a carbon-based material?” is “It is both, depending on its structure and primary function”.
3) Applicant argues that while the instant Examples 1-2 show the claimed inequation is satisfied, comparative Examples 1-3 do not satisfy the inequation as claimed.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In the instant case, although comparative Examples 1-3 do not satisfy the claimed inequation, these comparative examples only are not in scope with the claim which the evidence is offered to support (that is, claim 1 is not required to limit “c” to be that for these comparative examples 1-3). Applicant appears to be disregarding the evidence for all it offers which includes the Examples 1-2 satisfying the claimed inequation.
4) In response to the arguments associated with “inherency”, 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).
5) In response to applicant's argument (above Section “Double Patenting” in the Remarks) that “… this argument also does not recognize the effect that a different … can have on whether or not Inequation 1 is satisfied”, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHONGQING WEI whose telephone number is (571)272-4809. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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/ZHONGQING WEI/
ZHONGQING WEI, Ph.D.Primary Examiner, Art Unit 1727
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