DETAILED ACTION
Response to Amendment
Claims 1-14 are currently pending. Claim 15 is cancelled. The previously stated 112, 2nd paragraph rejection of claims 2, 3, 5, 6, 9, 10, 12, and 13 is withdrawn. The amended claims do not overcome the previously stated 102 rejections. Therefore, upon further consideration, claims 1-14 stand rejected under the following 112 and 102 rejections.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With regards to claim 1, the phrase “an expansion of the anode during operation is set or adjusted to meet particular expansion characteristics, and wherein setting or adjusting the expansion of the anode to meet the expansion characteristics comprises, at least, selecting and utilizing a predetermined particle size distribution of silicon particles in the active material” is not supported by the specification. Although the specification discloses expansion levels in the anode formed with different silicon particle size distributions … Generally, the larger the particle size, the lower the expansion … Fig. 8 shows that larger silicon particle size distributions do reduce anode expansion (See para. [0049]), there is no support for “setting or adjusting the expansion of the anode to meet the expansion characteristics”. The expansion of the anode is not set or adjusted, but instead is a result of selecting a predetermined particle size distribution of silicon particles.
With regards to claim 8, the phrase “controlling an expansion of the anode, wherein the controlling comprises, at least, utilizing a predetermined particle size distribution of silicon particles in the active material” is not supported by the specification.
Claim Rejections - 35 USC § 102
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.
Claims 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al (US 2014/0166939).
Regarding claims 1, 2, 4-6, 8, 9, and 11-13, Park et al discloses a battery comprising a cathode, an electrolyte, and an anode, the anode comprising a mixture (active material) on an aluminum foil (current collector), wherein the mixture comprises a selected predetermined particle size distribution of silicon particles, wherein at least 90% of the particles is between 5 µm and 20 µm (second particle size distribution); wherein the surface of the silicon particles (active material) is roughened; wherein the anode including the silicon is able to expand while allowing for the silicon to maintain electrical contact with the silicon; wherein micron-sized silicon particles predetermined particle size distribution) have the benefit of high energy density (performance criteria) and nanometer-sized silicon particles (predetermined particle size distribution) have the benefit of good cycling behavior (performance criteria) ([0005],[0045],[0053],[0062], [0069],[0102] and Fig. 27A).
Examiner’s note: the Office takes the position that the limitations “an expansion of the anode during operation is set or adjusted to meet particular expansion characteristics, and wherein setting or adjusting the expansion of the anode to meet the expansion characteristics comprises selecting and utilizing a predetermined particle size distribution of silicon particles in the active material” and “controlling an expansion of the anode, wherein the controlling comprises, at least, utilizing a predetermined particle size distribution of silicon particles in the active material” are inherent characteristics of the Park anode because Park discloses the same particle size distributions of silicon particles as the present invention. In addition, Park discloses that smaller particle size distribution of silicon particles corresponding to good cycling behavior and larger particle size distribution correspond to high energy density. Further, one of ordinary skill in the art would have recognized that the limitation “the expansion of the anode is increased by use of silicon particles with first particle size distributions instead of silicon particles with second particle size distributions, wherein the first particle size distributions are smaller than the second particle size distributions” is also an inherent characteristic of the Park anode.
Regarding claims 3 and 10, Park et al also discloses a particle size distribution of silicon particles, wherein at least 50% of the particles have a particle size between 1 µm and 10 µm ([0102] and Fig. 27B).
Regarding claims 7 and 14, Park et al also discloses hot pressing (flat press laminating) the mixture (active material) to an aluminum foil (current collector) which inherently results in anisotropic expansion of the anode that is decreased ([0079]).
Claims 1-6 and 8-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kondo et al (US 2017/0012282).
Regarding claims 1-6 and 8-14, Kondo et al discloses a battery comprising a cathode, an electrolyte, and an anode, the anode comprising an anode active material layer (active material) on a current collector, wherein the anode active material layer comprises a predetermined particle size distribution of silicon particles, wherein the particle size distribution is in a range of 8 µm to 15 µm (second particle size distribution) for cumulative 90% and is in a range of 1 µm to 4 µm (first particle size distribution) for cumulative 10%; wherein the particle size distribution in a range of 8 µm to 15 µm inherently has a rougher surface active material; wherein the anode active material layer is rolled press (laminated) to the current collector, wherein the expansion of the anode during charging and discharging (operation) is mitigated (controlled) (Abstract and [0097],[0277]).
Examiner’s note: the Office takes the position that the limitations “an expansion of the anode during operation is set or adjusted to meet particular expansion characteristics, and wherein setting or adjusting the expansion of the anode to meet the expansion characteristics comprises, at least, selecting and utilizing a predetermined particle size distribution of silicon particles in the active material” and “controlling an expansion of the anode wherein the controlling comprises, at least, utilizing a predetermined particle size distribution of silicon particles in the active material” are inherent characteristics of the Kondo anode because Kondo teaches the same particle size distribution (i.e. 8 µm to 15 µm) as the present invention and the amount of expansion of the anode depends on the particle size distribution of the silicon particles. In addition, the limitation “the anisotropic expansion of the anode is increased by roll press laminating the active material to the current collector” is also an inherent characteristic of the Kondo anode because Kondo also teaches the same process of roll press laminating the active material layer to the current collector.
Response to Arguments
Applicant's arguments filed 9/15/26 have been fully considered but they are not persuasive.
The Applicant argues that “the specification teaches at ¶29 that "[a] solution to the expansion of anodes is to configure the expansion that occurs with lithiation by configuring the size of the silicon particles in the anode active material [and] size of the particles may be configured by the source material and/or the mixing process when preparing the slurry for anode formation." Applicant submits that this clearly describes that expansion may be adaptive configured (i.e., controlled), with the configuring (controlling) being achieved by selective manipulation of size of the particles. Further the specification teaches at 35 that "particle size is a variable that affects expansion, where the particle size can influence the density of the material and/or surface roughness. Use of larger particles results in more roughness in the anodes, which leads to less expansion in lateral directions, and also results in less dense layers, which also expand less" and teaches at 38 that " particle size and mixing times may be varied to configure the active material density and/or roughness Silicon with higher particle size produces thicker coatings with lower density, which reduces expansion in all directions. Similarly, longer mixing times in a ball miller result in smaller particles sizes, and thus smoother, more dense active layers, but increased expansion.”.
In response, the Office maintain the contention that there is no support for “setting or adjusting the expansion of the anode” because the variable that is set or adjusted is the size of the silicon particles of anode active material. The expansion of the anode is a result of adjusting the particle size distribution of silicon particles.
The Applicant further argues that “This application is also a continuation-in-part of United States Application No. 16/821,072 filed on March 17, 2020, which is a continuation of Application Serial No. 15/413,021 filed on January 23, 3017, now Patent No. 10,622,620, which is a continuation of Application Serial No. 13/799,405 filed on March 13, 2013, now Patent No. 9,553,303. … Park does not qualify as prior art under 35 U.S.C. 102(a)(1)”.
In response, as stated in the previous Office Action, "Only the claims of
the continuation-in-part application that are disclosed in the manner provided by 35
U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of
the prior-filed application. If there is a continuous chain of copending nonprovisional
applications, each copending application must disclose the claimed invention of the
later-filed application in the manner provided by 35 U.S.C. 112(a) in order for the later- filed application to be entitled to the benefit of the earliest filing date". This Application is a continuation-in-part of U.S. Application No. 16/681,788 and is a continuation-in-part of U.S. Application No. 16/821,072 which is one of the applications of the continuous chain of copending nonprovisional applications. U.S. Application No. 16/821,072 must disclose the claimed invention of the present application (later-filed application) in the matter provided by 35 U.S.C. 112(a) in order for the present application to be entitled to the benefit of the earliest filing date (U.S. Pat. Application Serial No. 13/799,405). So, the subject matter of claims 1-14 is not fully supported by the parent application, U.S. Pat. Application No. 16/821,072. As stated in the previous Office Action, U.S. Application No. 16/821,072 discloses in para. [0100] of the specification, "Example silicon particles can have a particle size distribution. For example, at least 90% of the particles may have a particle size, for example, a diameter or a largest dimension, between about 5 um and about 20 um (e.g., between about 6 um and about 19 um). At least about 50% of the particles may have a particle size between about 1 um and about 10 um (e.g., about 2 um and about 9 um). Furthermore, at least about 10% of the particles may have a particle size between about 0.5 um and about 2 um (e.g., about 0.9 um and about 1.1 um)". Although U.S. Application No. 16/821,072 discloses a particle size distribution of the silicon particles, there is lack of support for "an expansion of the anode during operation that is set or adjusted to meet particular expansion characteristics, and wherein setting or adjusting the expansion of the anode to meet the expansion characteristics" or "controlling an expansion of the anode wherein the controlling comprises, at least, utilizing a predetermined particle size distribution of silicon particles in the active material". Since each copending application
does not disclose the claimed invention of the present application, the present application is not entitled to benefit of the earliest filing date which is U.S. Pat. Application Serial No. 13/799,405 (3/13/2013). Therefore, the effective filing date of the claimed invention of the present application is 5/20/2020 and the previously cited Park reference (published on June 19, 2014) is still qualified as a prior art reference.
The Applicant further argues that “claims 1 and 8 recite more than different particle size distributions. Rather, these claims require the expansion of the anode be controlled (actively in method claim 8) and/or otherwise that the expansion of the anode (in batteries per claims 1 and 15) meet specific performance requirements, with that
controlling and/or meeting of the specific performance requirements being achieved,
specifically, by means of adaptively configuring the size of particles. As such, Kondo's
alleged teaching is insufficient because Kondo does not teach, specifically, that anode
expansion is controlled such that it meets particular performance criteria, with that
controlling including, specifically, selecting and/or modifying particle sizes to ensure
meeting that performance criteria. For example, while Kondo may describe different
particle size ranges, Kondo does not state or otherwise suggest that these ranges have
any connection to anode expansion, or that one may choose between these ranges
based on desired expansion characteristics”.
In response, based upon knowledge that is well known in the art, silicon particles in the anode inherently expands during operation. Since the claims do not recite any particular amount of expansion of the anode, a predetermined particle size distribution of silicon particles in the active material necessarily corresponds to some degree of expansion of the anode during operation. Therefore, the Office maintains the contention that the limitation "an expansion of the anode during operation is set or adjusted to meet particular expansion characteristics" and "setting or adjusting the expansion of the anode to meet the expansion characteristics" are inherent characteristics of the Kondo anode because Kondo teaches the same particle size distributions of silicon particles in the active material as the present invention.
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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/T.S.C/Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 10/7/2026
