DETAILED CORRESPONDENCE
1. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
3. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/10/2026 has been entered.
Response to Amendment
4. In response to the amendment received on 6/10/2026:
Claims 1-2, 4-6, and 8-18 are pending in the current application. Claim 6 is amended, Claims 3 and 7 are cancelled, and Claim 18 is newly added.
The previous prior art-based rejections are withdrawn in favor of the discovery of closer prior art.
Claim Interpretation
5. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Objections
6. Claim 18 is objected to because of the following informalities: Claim 18 recites “the silicon-based material” before it recites “a silicon-based material”. For proper antecedent basis to be established, “a silicon-based material” should be recited in the claim first. Appropriate correction is required.
Claim Rejections - 35 USC § 103
7. Claims 1-2, 4-6, 8-9, 13-14, and 16-18 rejected under U.S.C. 103 as being unpatentable over Matsuda US PG Publication 2008/0062616 in view of Liao CN109524643.
Regarding Claims 1-2 and 4-5, Matsuda discloses a silicon composite material comprising a one-dimensional conductive material (carbon nanotubes/CNT) 4c (nanofibers in a tubular state, para 0064), an inner core 2c/1c including e.g. graphite and silicon oxide (para 0114), and a cladding layer 1c, wherein the cladding layer 1c clads on an outer surface of the inner core 2c, the one-dimensional conductive material 4c is arranged on an outer surface of the cladding layer 1c, the one-dimensional conductive material comprises a carbon nanotube extending outwardly from the outer surface of the cladding layer (paras 0064, 0100, Fig. 3A, meeting Claim 2); wherein the outer surface of the cladding layer 1c comprises catalyst particles, the one-dimensional conductive material 4c is arranged on surfaces of the catalyst particles 3c, the catalyst particles comprise transition metal nanoparticles such as Fe, Co, and Ni nanoparticles (para 0058-0059, 0092, 0119, particle size 1-1000 nm, meeting Claim 4) (see entire disclosure and especially Figs 3A/3B, paras 0050-0064, 0072-0076, 0114-0120).
Matsuda does not specifically recite wherein the inner core comprises the silicon-based material and there is a cladding layer on the inner core comprising the silicon-based material. However, in the same field of endeavor of silicon composite material, Liao discloses a silicon composite material comprising a one-dimension conductive material (carbon nanotubes/CNT, para 0022), an inner core comprising silicon-based material layered on a graphite center (the silicon is nanosilicon which is elemental or elementary silicon, para 0022), and a cladding layer (amorphous carbon is coated on the nano-silicon, para 0022, meeting Claim 5) that clads on an outer surface of the inner core, and the one-dimensional conductive material comprises a carbon nanotube, and Liao recites that the inner core of graphite coated in silicon (being a silicon-based material) allows for silicon to be supported by mitigating volume expansion effect during charge and discharge, and further, a carbon cladding layer provided on top of the silicon layer provides protection from electrolyte and also limits volume expansion of the silicon which improves silicon cycling performance (see entire disclosure and especially paras 0004-0005, 0022, 0047). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to including a cladding layer on top of the graphite/silicon inner core of Matsuda because Liao teaches that the carbon cladding layer provides protection from electrolyte and also limits volume expansion of the silicon which improves silicon cycling performance.
Regarding Claims 6 and 18, Matsuda discloses wherein the mass percentage of the catalyst particles is 0.1% to 10% by weight/mass relative to the total amount of catalyst element and materials A and B (carbon and silicon of the core and cladding layer of Matsuda) (see entire disclosure and especially Figs 3A/3B, paras 0050-0064, 0072-0076, 0114-0120). Matsuda modified by Liao does not specifically recite wherein the mass percentage of the catalyst particles is 0.001%-0.3% (addressing Claim 6) or 0.15%-0.3% (addressing Claim 18) based on mass of just the silicon-based material. However, Matsuda does exemplify in Example 1 where one part by mass nickel nitrate hexahydrate is mixed with 100 parts by mass SiO/C (which is equal parts by mass carbon and SiO/silicon-based material), giving 0.5 parts nickel nitrate hexahydrate vs. 100 parts silicon-based material, and since nickel nitrate hexahydrate is about 20% nickel, the reduced nickel content would be about 0.1 part by mass versus silicon-based material mass for just the one example cited. Matsuda teaches a range of values that can be used for material A (silicon) and material B (carbon) (para 0088) and so the scope of Matsuda includes a range of mass percentages of catalyst particles relative to the mass of silicon-based material, e.g. if the skilled artisan chooses a blend of SiO and graphite such as 40 parts by wt Si/60 parts by weight C, the addition of 1 part by weight nickel catalyst precursor would have a higher proportion relative to the Si-based material content. It is easy to see that the skilled artisan would be capable of arriving at an amount of catalyst in the claimed ranges quite easily, given the teaching of Matsuda.
Further, the amount of catalyst used is optimized by Matsuda (para 0094) and “[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Regarding Claims 8 and 9, Matsuda discloses wherein the diameter of the carbon nanotubes (again, the carbon nanofibers can have the shape of a tube, making the material carbon nanotubes) is preferably 1 nm to 1000 nm and the average length can be 1 nm to 1000 µm and are optimized (see para 0063-0064), both ranges encompassing the claimed ranges of length (0.5 µm to 10 µm in Claim 8 and 1 µm to 10 µm in Claim 9) and claimed ranges of diameter (1 nm to 50 nm in Claim 8 and 20 nm to 30 nm in Claim 9). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Further, 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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range."). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Regarding Claim 13, Matsuda discloses wherein the silicon-based material comprises silicon monoxide (para 0114) which is a silicon-oxygen compound.
Regarding Claims 14 and 16, Matsuda discloses a negative electrode plate comprising a negative electrode current collector and a negative electrode active material layer arranged on at least one surface of the negative electrode current collector, wherein the negative electrode active material layer comprises the silicon composite material of Claim 1 (paras 0103-0105, meeting Claim 14) and a secondary battery comprising the electrode plate (para 0107, meeting Claim 16).
Regarding Claim 17, Matsuda does not specifically disclose an electrical apparatus comprising one or more of the negative electrode plate according to Claim 14. However, Matsuda does make it clear that the battery including the inventive negative electrode is applicable to the field of electronic device powering (para 0002) and so it would have been obvios to a person having ordinary skill in the art before the effective filing date of the instant application to use the negative electrode plate of Matsuda modified by Liao in an battery in an electrical apparatus because Matsuda teaches that this is the desired use and the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
8. Claims 10-12 are rejected under U.S.C. 103 as being unpatentable over Matsuda US PG Publication 2008/0062616 in view of Liao CN109524643, as applied to Claim 1, and further in view of Choi US PG Publication 2023/0058028.
Regarding Claims 10-11, Matsuda modified by Liao discloses the claimed silicon composite material as described in the rejection of Claim 1 which is incorporated herein in its entirety. Matsuda teaches that the mass percentage (weight proportion) of one-dimensional conductive material is preferably 5% by weight to 70% by weight relative to the silicon-based material plus the catalyst (which is generally a negligible amount) and the carbon material (see para 0095) and Matsuda teaches a range of values that can be used for material A (silicon) and material B (carbon) relative to one another (para 0088). For example, the amount of carbon can be 10% by weight relative to 90% by weight silicon oxide. If a large proportion of SiO is used, then the proportion of one-dimensional conductive material relative to SiO is below the minimum preferable amount of one-dimensional conductive material of 5% relative to material A. These relative quantities are determined by optimization processes of the skilled artisan and “[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Even further, Liao discloses the Si@C/rGO/CNT composite particles having the silicon-based inner core and the cladding layer on top of that inner core, and having the specified mass proportions (para 0043 of Liao):
Si@C is mixed at a glucose:Si at a 1:1 weight ratio, so the ratio of C:Si would be about 0.4:1 (since glucose is about 40% C)
GO:CNT is mixed at an 8:1 weight ratio
Si@C/ is mixed with GO:CNT at a 20:6 weight ratio
If Si@C is 40% Si, then based on the proportions listed above (resulting in 4/10 x 1/8 x 6/20 = 0.015), the weight ratios of components would result in a weight relationship between Si and CNT (the one-dimensional conductive material) of 1.5%. Even if there are slight differences in resulting masses (e.g. after the composition is heated), the skilled artisan would expect the values to be close to the claimed mass percentage. Further, Liao teaches multiple embodiments having varied proportions which also result in CNT:Si in the claimed range.
Even further, in the same field of endeavor of silicon-based composite negative electrode active material design, Choi discloses that silicon composite material having a silicon-based core coated in a carbon layer and having enhanced conductivity due to use of carbon nanotubes uses the nanotubes in a weight ratio with silicon-based active material that is designed to optimize the security of the conductive path of the silicon-based active material, e.g. from 0.2% to 1.0% (99:1 to 99.8:0.2) or 0.01% to 8.6% (92:8 to 99.99:0.01) (see e.g. para 0085). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the material of Matsuda modified by Liao such that mass percentage of the one-dimensional conductive material of modified Matsuda is 0.01% to 5% or 0.4% to 5% (meeting Claims 10 and 11) based on the mass of the silicon-based material because Choi teaches values in this range and teaches that this value should be optimized to ensure the security of the conductive path of the silicon-based active material. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Regarding Claim 12, Matsuda modified by Liao fails to specifically disclose the Dv50 of the silicon composite material is 1 µm to 30 µm. However, Choi teaches that the silicon composite active material particles preferably have a volume average particle size (D50) 4 µm to 11 µm, optimized for preventing side reactions with electrolyte and swelling effects disrupting the conductive path (see e.g. para 0159). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the silicon composite material of modified Matsuda to have a Dv50 of 4 µm to 10 µm (which falls within and therefore anticipates the claimed range of 1 µm to 30 µm) because Choi teaches that these values provide particles that are sized to be optimized for preventing side reactions with electrolyte and swelling effects disrupting the conductive path. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
9. Claim 15 is rejected under U.S.C. 103 as being unpatentable over Matsuda US PG Publication 2008/0062616 in view of Liao CN109524643, as applied to Claim 14, and further in view of Salem US PG Publication 2019/0214640.
Regarding Claim 15, Matsuda modified by Liao discloses the claimed silicon composite material as described in the rejection of Claim 14, which is incorporated herein in its entirety. Matsuda discloses wherein the negative active material layer can further comprise a carbon-based material (para 0104) but Matsuda modified by Liao fails to specifically disclose wherein a mass ratio of the silicon composite material to the carbon-based material is (10%-90%):(90%-10%). However, in the same field of endeavor of silicon-based composite negative electrode active material design, Salem teaches that silicon composite active material particles (such as silicon coated with carbon, paras 0200-0204) are enhanced by the presence of e.g. 2.5 wt% conductive additive (see paras 0239, 0242). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the silicon composite material of Matsuda modified by Liao to include a conductive additive of carbon-based material in addition to the carbon-and-silicon composite electrode material and to include said carbon-based material in a weight percent of e.g. 2.5 wt% because Salem teaches that this is a functional amount of conductive additive to use in a similar application and “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Response to Arguments
10. Applicant's arguments are moot in light of the new rejection presented above.
Conclusion
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/LISA S PARK/Primary Examiner, Art Unit 1729
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