DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 1/20/26 has been entered.
Response to Amendment
Claims 1-14 are currently pending. The amended claim 1 does not overcome the previously stated 102 rejections. Therefore, upon further consideration, claims 1-14 are 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.
Claims 2, 3, 5, 6, 9, 10, 12, and 13 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 2, 3, 5, 6, 9, 10, 12, and 13 recites the limitation "particle size distributions". There is insufficient antecedent basis for this limitation in the claim.
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 1/20/26 have been fully considered but they are not persuasive.
The Applicant argues that “claims 1-14, as pending when the Final Action was issued, are not anticipated by Park, and re-submits herein the arguments previously made with respect to this rejection. See Appeal Brief at 9-11; Reply Brief at 8-12” and “claims 1-14, as pending when the Final Action was issued, are not anticipated by Kondo, and re-submits herein the arguments previously made with respect to this rejection. See Appeal Brief at 12-22; Reply Brief at 12-20”.
In response, the Office takes the position that the “Response to Arguments” stated in the Examiner’s Answer dated 10/29/24 with respect to Kondo teaching the same particle size distribution of silicon particles as the present invention is still applicable because the claim interpretation of the currently amended claim 1 has not changed. As previously stated, the currently amended claim 1 and its depend claims only require selecting a predetermined particle size distribution of silicon particles in the active material, wherein the particular particle size distribution range from 5 to 25 um. Since Park and Kondo both teach the same particle size distribution of silicon particles as the present invention, they still read on the claims.
Conclusion
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/T.S.C/Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 5/13/2026
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