DETAILED ACTION
Notice of Pre-AIA or AIA Status
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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/08/2025 has been entered.
Response to Arguments
Applicant's arguments filed 12/08/2025 have been fully considered but they are not persuasive.
Applicant submits that Fukuoka and Anderson do not teach amended claim 1, which specifies that the particles are amorphous or nanocrystalline.
Applicant submits that because Fukuoka discloses heating the silicon oxide powder in a temperature range of 1000 to 1600 °C, the particles would not be amorphous or nanocrystalline. Applicant cites M. Mamiya abstracts which are directed to the crystallization of SiOz. Applicant further notes Fukuoka’s examples 1-4 shows that increasing the nitriding temperature increases nitrogen incorporation. Examples 1 and 3 of Fukuoka show a high content of nitrogen and are produced at a temperature of 1400 and 1500 °C. Applicant submits that silicon oxynitride produced at these temperatures would necessarily be crystalline or microcrystalline, not amorphous or nanocrystalline. Applicant further submits the diffraction peaks in figures 1-5 of Fukuoka are evidence of crystalline or semi-crystalline structures. Applicant submits that the process recited in claim 23 is a bottom-up synthesis, wherein reactant gases containing oxygen are fed into the reaction chamber.
Firstly, regarding the abstract of M. Mamiya et al. in “Journal of Crystal Growth 237-239,” M. Mamiya submits that crystallization of SiO starts around 850-1000 °C. Moreover, M. Mamiya submits that the annealing time effects the number of precipitated particles. The temperature at which crystallization starts is different from the final structure of the heated powder. Fukuoka which discloses heating temperatures of 1000 to 1600 °C may lead to the start of crystallization in the SiO, but the disclosed temperature does not necessitate that the particles result in completely crystalline structures as opposed to nanocrystalline. As disclosed by M. Mamiya et al. other process elements such as the amount of time of annealing is important in the resulting structure of particles.
Regarding the abstract of M. Mamiya et al. in “Journal of Crystal Growth 229,” M. Mayima et al. discloses that temperatures of 1000 to 1300 °C for more than 0.5h results in Si particles dispersed in amorphous oxide media, with particles sizes 1-3 to 20-40 nm. Fukuoka overlaps with the disclosure of M. Mayima et al. because Fukuoka discloses the temperature range of 1000 to 1600 °C which is partially nitrided for 0.5 to 10 hours (see e.g., Fukuoka; [0025]). Therefore, it is possible for Fukuoka to have particles which are amorphous or nano-crystalline.
While only examples 1 and 3 of Fukuoka show a nitrogen content that exceeds 30% of the x+y value, the full disclosure of Fukuoka still overlaps with instant claim 1. That is, the full disclosure of Fukuoka which discloses a temperature range of 1000-1600 °C, processing time of 0.5-10 hours, and particular chemical formula of SiNxOy, with the ranges of x and y being 0<x<1.3 and 0<y<1.5 (see e.g., Fukuoka; [0011]), may still be combined with Anderson to form particles that are amorphous or nano-crystalline. The examples 1 and 3 of Fukuoka are only examples; different temperatures and processing times disclosed by Fukuoka may be used to produce silicon oxynitride which both falls within the chemical formula as disclosed by Fukuoka and are amorphous or nano-crystalline—the full disclosure of Fukuoka does not prevent the particles from being amorphous or nanocrystalline.
Regarding newly added claim 23, the claim recites “supplying reactant gases containing silicon and nitrogen and oxygen to a reaction chamber of a reactor”. The disclosure of Fukuoka states that silicon oxide powder generates SiO gas, and the powder is heated in a nitrogen gas-containing atmosphere (see e.g., Fukuoka; [0015]). So, the disclosure of Fukuoka which provides SiO and N gas in the reaction chamber directly overlaps with the claimed method of having reactant gases with silicon, nitrogen, and oxygen. Therefore, because Fukuoka also overlaps with the method of production as claimed in claim 23, the produced particles of modified Fukuoka may further be amorphous or nanocrystalline as claimed.
In the rejection combination, Anderson is used to modify Fukuoka to teach that the particles may be amorphous or nano-crystalline: Anderson discloses a powder of particles comprising amorphous or nano-crystalline silicon nitride (see e.g., page 1 paragraph 1, page 3 paragraph 2, page 7 paragraph 1). Anderson is further equivalent analogous art because Anderson discloses the same silicon oxynitride particle with a chemical formula of SiNx, wherein x is in the similar range of 0.2 ≤ x < 0.9 (see e.g., page 3 paragraph 4), and wherein oxygen may be included into the formula (see e.g., page 10 paragraph 4). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the particle disclosed by Fukuoka such that the particles are amorphous or nano-crystalline silicon oxynitride disclosed by Anderson to improve lithiation homogeneity and reduce the stresses in the particles during lithiation (see e.g., page 7 paragraph 1).
Applicant submits that Anderson teaches a maximum oxygen content of 10 at%, which is different from the high nitrogen content as claimed. However, the modification with Anderson is only for providing the amorphous or nano-crystalline property of the silicon oxynitride. The content of high nitrogen content is already disclosed by Fukuoka, and Anderson does not further modify the chemical formula of Fukuoka. As instant claim 1 is a structural/product claim, the modification of Anderson to Fukuoka is structural.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 23 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.
The term “sufficient” in claim 23 is a relative term which renders the claim indefinite. The term “sufficient” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The temperature for thermal decomposition or reduction of the reactant gases is rendered indefinite by the term “sufficient”.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-18, 20-21, 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukuoka (JP-2002356314-A) (see translation), and further in view of Anderson (WO-2017207525-A1).
Regarding claim 1, Fukuoka discloses an electrode for an energy storage device (see e.g., [0006], regarding material for anode of lithium ion secondary batteries, [0038]) which comprises a powder of particles (see e.g., [0006], regarding silicon oxide powder). Fukuoka discloses the silicon oxide powder having a general formula of SiNxOy, wherein 0<x<1.3 and 0<y<1.5 (see e.g., [0009]), and more preferably 0.5≦x≦1.0 and 0.3≦y≦1.0 (see e.g., [0011]). Fukuoka does not mention the particles being coated; therefore they may be uncoated. Fukuoka further discloses an example 1 wherein SiN0.47O0.78 is used (see e.g., [0036]). In this case, x+y=1.25 which is greater than 0.03 and less than 1.3, and nitrogen makes up 37.6% of said x+y value with the balance being oxygen. This overlaps with the claimed particle having a chemical formula SiNXOy, where 0.03 <x+y < 1.3, whereby nitrogen makes up 30-80% of said x+y value with the balance being oxygen.
Fukuoka does not explicitly disclose the particle comprising amorphous or nano-crystalline silicon oxynitride. However, Anderson discloses a powder of particles comprising amorphous or nano-crystalline silicon nitride (see e.g., page 1 paragraph 1, page 3 paragraph 2, page 7 paragraph 1). Anderson is further equivalent analogous art because Anderson discloses the same silicon oxynitride particle with a chemical formula of SiNx, wherein x is in the similar range of 0.2 ≤ x < 0.9 (see e.g., page 3 paragraph 4), and wherein oxygen may be included into the formula (see e.g., page 10 paragraph 4). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the particle disclosed by Fukuoka such that the particles are amorphous or nano-crystalline silicon oxynitride disclosed by Anderson to improve lithiation homogeneity and reduce the stresses in the particles during lithiation (see e.g., page 7 paragraph 1).
Regarding claim 2, modified Fukuoka discloses the electrode according to claim 1. Fukuoka also discloses the general formula of SiNxOy, wherein 0<x<1.3 and 0<y<1.5 (see e.g., [0009]). Combining these ranges, Fukuoka discloses the formula wherein 0 < x+y < 2.5, which overlaps with the claimed range of 0.03 ≤ x+y ≤ 0.3. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention selected SiNxOy wherein 0.03 ≤ x+y ≤ 0.3, which is within the range disclosed by Fukuoka, to improve the charge/discharge capacity of the battery without causing cycle degradation (see e.g., [0005]).
MPEP 2144.05 I states that '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)'."
Regarding claim 3, modified Fukuoka discloses the electrode according to claim 1. Fukuoka does not explicitly disclose wherein said SiNXOy particles have a maximum transverse dimension of 150 nm in a coated or uncoated state. However, Anderson teaches particles having maximum transverse dimension up to 100 μm or 2nm - 10 μm or 10nm -10 μm or less than 10 μm or less than 1 μm in their coated and uncoated state (see e.g., page 8 paragraph 2, page 11 paragraph 3), which overlaps with the claimed particles having a maximum transverse dimension of 150 nm in a coated or uncoated state. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the particles disclosed by Fukuoka such that they have a maximum transverse dimension of up to 100 μm or 2nm - 10 μm or 10nm -10 μm or less than 10 μm or less than 1 μm in their coated and uncoated state disclosed by Anderson such to improve the kinetics of the battery (see e.g., page 11 paragraph 3).
Regarding claim 4, modified Fukuoka discloses the electrode according to claim 1. Fukuoka does not explicitly disclose wherein said SiNXOy particles have a maximum transverse dimension of 10 μm in a coated or uncoated state. However, Anderson teaches particles having maximum transverse dimension up to 100 μm or 2nm - 10 μm or 10nm -10 μm or less than 10 μm or less than 1 μm in their coated and uncoated state (see e.g., page 8 paragraph 2, page 11 paragraph 3), which overlaps with the claimed particles having a maximum transverse dimension of 150 nm in a coated or uncoated state. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the particles disclosed by Fukuoka such that they have a maximum transverse dimension of up to 100 μm or 2nm - 10 μm or 10nm -10 μm or less than 10 μm or less than 1 μm in their coated and uncoated state disclosed by Anderson such to improve the kinetics of the battery (see e.g., page 11 paragraph 3).
Regarding claim 5, modified Fukuoka discloses the electrode according to claim 1. Fukuoka does not explicitly disclose wherein the SiNXOy particles comprise 0-60 atomic-% of one or more elements other than silicon and nitrogen and oxygen. However, Anderson teaches the particles comprise of lithium content in the range of 0 to 30 atomic-% or 0 to 350 atomic-% (see e.g., page 7 paragraph 4, page 9 paragraph 4, page 11 paragraph 2), which overlaps with the claimed range of 0-60 atomic-% of one or more elements other than silicon and nitrogen and oxygen. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the particle disclosed by Fukuoka to comprise of lithium content in the range of 0 to 30 atomic-% or 0 to 350 atomic-% disclosed by Anderson such that the concentration of lithium matches the bulk irreversible capacity of the SiNx powder and it will not be necessary to provide cathode capacity corresponding to the irreversible capacity (see e.g., page 10 paragraph 5).
Regarding claim 6, modified Fukuoka discloses the electrode according to claim 1. Fukuoka does not explicitly disclose wherein said SiNXOy particles have a lithium content in the range of 0 to 60 atomic-%. However, Anderson teaches the particles comprise of lithium content in the range of 0 to 30 atomic-% or 0 to 350 atomic-% (see e.g., page 7 paragraph 4, page 9 paragraph 4, page 11 paragraph 2), which overlaps with the claimed range of 0-60 atomic-% of lithium. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the particle disclosed by Fukuoka to comprise of lithium content in the range of 0 to 30 atomic-% or 0 to 350 atomic-% disclosed by Anderson such that the concentration of lithium matches the bulk irreversible capacity of the SiNx powder and it will not be necessary to provide cathode capacity corresponding to the irreversible capacity (see e.g., page 10 paragraph 5).
Regarding claim 7, modified Fukuoka discloses the electrode according to claim 1. Fukuoka does not explicitly disclose wherein said SiNXOy particles contain at least one of the following modifying elements: phosphorus (P), boron (B), carbon (C), sulphur (S), selenium (Se), arsenic (As), tin (Sn), magnesium (Mg), aluminium (Al), iron (Fe), germanium (Ge) and/or antimony (Sb). However, Anderson teaches supplying at least one gas containing a metal such as copper or iron (see e.g., page 8 paragraph 4), in addition to dopant gases such as phosphorus, boron, arsenic, gallium, and aluminum (see e.g., page 8 paragraphs 6-7, page 11 paragraph 4) to the particle. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the particle disclosed by Fukuoka by doping the particle with copper, iron, phosphorus, boron, arsenic, gallium, or aluminum so that the electron mobility and the lithium mobility can be improved (see e.g., page 8 paragraph 6).
Regarding claim 8, Fukuoka discloses the electrode according to claim 1, wherein said powder of particles comprises aggregates of individual SiNxOy particles, wherein “aggregate” relate to SiNxOy particles that themselves are comprised of a number of smaller primary SiNxOy particles bound together by chemical or mechanical means to form a whole according to the instant specification (see e.g., [0035], wherein the formation of a silicon oxynitride powder is provided with an intermediate material that is an aggregate of silicon oxynitride; although the intermediate aggregate of silicon oxynitride is pulverized to form a completed powder, the pulverization does not break apart all aggregates because the grinding process in itself is known to further form aggregates due to the mechanical motion compressing small particles together).
Regarding claim 9, modified Fukuoka discloses the electrode according to claim 1. As above regarding claim 1, Fukuoka discloses the silicon oxide powder having a general formula of SiNxOy, wherein 0<x<1.3 and 0<y<1.5 (see e.g., [0009]), and more preferably 0.5≦x≦1.0 and 0.3≦y≦1.0 (see e.g., [0011]), and an example 1 wherein SiN0.47O0.78 is used (see e.g., [0036]). In this case, x+y=1.25 which is greater than 0.03 and less than 1.3, and nitrogen makes up 37.6% of said x+y value with the balance being oxygen, which overlaps with the claimed particle having a chemical formula SiNXOy, where 0.03 <x+y < 1.3, whereby nitrogen makes up 30-80% of said x+y value with the balance being oxygen. This particle may correspond with the claimed core region. As above regarding claim 1, modified Fukuoka discloses the particle is amorphous or nanocrystalline.
Fukuoka does not explicitly disclose the particles are at least partially coated and at least one continuous or non-continuous shell region comprising an inorganic and/or organic material. However, Anderson teaches the particles of at least partially coated continuous or non-continuous shell region comprising an inorganic and/or organic material such as carbon or silicon carbide coating a core region (see e.g., page 7 paragraphs 1-2, page 12 paragraph 6, page 19 paragraph 4, regarding intermediate layer/coating/shell). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the particle disclosed by Fukuoka by providing an intermediate layer/coating as a shell region around the particle to reduce importance of the electric conductivity of the nitride (see e.g., page 7 paragraph 1) and the coated particles may speed up the kinetics of charging a battery with Lithium (see e.g., page 7 paragraph 2).
Regarding claim 10, modified Fukuoka discloses the electrode according to claim 1. Fukuoka also discloses wherein the electrode comprising a binder, such as polyvinylidene fluoride (see e.g., [0039]) and a conductive additive such as artificial graphite (see e.g., [0039]) or other conductive additive materials (see e.g., [0028]-[0029]).
Regarding claim 11, modified Fukuoka discloses an energy storage device comprising the at least electrode according to claim 1 (see e.g., [0034], [0039] regarding a lithium ion secondary battery with the silicon oxynitride negative electrode).
Regarding claim 12, modified Fukuoka discloses the energy storage device according to claim 11, wherein the energy storage device is a battery (see e.g., [0038], regarding lithium ion secondary battery).
Regarding claim 13, modified Fukuoka discloses the energy storage device according to claim 11. Fukuoka does not explicitly disclose the energy storage device comprises an electrolyte additive that enhances a first cycle lithiation of said SiNXOy particles, by providing a surface electrolyte interface (SEI) layer that facilitates the lithiation of SiNXOy particles. Fukuoka does mention that the electrolyte is not particularly limited (see e.g., [0030], [0032]). Anderson teaches the energy storage device comprises an electrolyte additive that enhances a first cycle lithiation of the particles by providing a surface of electrolyte interface (SEI) layer that facilitates the lithiation of SiIN,O, particles, such as fluoroethylene carbonate (FEC) or vinylene carbonate (VC) (see e.g., page 13 paragraphs 2-3). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the battery disclosed by Fukuoka by providing fluoroethylene carbonate (FEC) or vinylene carbonate (VC) in the electrolyte disclosed by Anderson to make an SEI-layer aiding lithium insertion and to prevent cracking and degradation (see e.g., page 13 paragraph 3).
Regarding claim 14, modified Fukuoka discloses the energy device according to claim 13. Fukuoka does not explicitly disclose wherein said electrolyte additive is at least one of the following: fluoroethylene carbonate (FEC) or vinylene carbonate (VC). However, Anderson an electrolyte additive such as fluoroethylene carbonate (FEC) or vinylene carbonate (VC) (see e.g., page 13 paragraphs 2-3). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the battery disclosed by Fukuoka by providing fluoroethylene carbonate (FEC) or vinylene carbonate (VC) in the electrolyte disclosed by Anderson to make an SEI-layer aiding lithium insertion and to prevent cracking and degradation (see e.g., page 13 paragraph 3).
Regarding claim 15, modified Fukuoka discloses the energy storage device according to claim 11. Fukuoka does not explicitly disclose wherein the energy storage device comprises an electrolyte additive that enhances a first cycle Coulombic efficiency of said SiNxOy, by providing an additional source of lithium that is arranged to be incorporated into the SiNxOy particles during cycling. However, Anderson also teaches the energy storage device comprises an electrolyte additive that enhances a first cycle Coulombic efficiency of said SiNxOy such as fluoroethylene carbonate or vinylene carbonate (see e.g., page 13 paragraph 2), by providing an additional source of lithium, such as pre-lithiating with lithium trimethylsilane, lithium tert-butoxide, or lithium bis(trimethylsilyl)amide, that is arranged to be incorporated into the SiNxOy particles during cycling (see e.g., page 7 paragraph 2). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the battery disclosed by Fukuoka by providing an electrolyte with an electrolyte additive such as fluoroethylene carbonate or vinylene carbonate and pre-lithiating with lithium trimethylsilane, lithium tert-butoxide, or lithium bis(trimethylsilyl)amide during cycling disclosed by Anderson to make an SEI-layer aiding lithium insertion, and to prevent cracking and degradation (see e.g., page 13 paragraph 3), and to improve battery performance from reducing electrolyte consumption during initial battery cycles, and to reduce the need for time-consuming battery cycling for stabilization, and to easily form a coating (see e.g., page 7 paragraph 2).
Regarding claim 16, modified Fukuoka discloses a method for producing an electrode (see e.g., [0005]-[0006], regarding method for producing electrode, [0034], regarding example 1 production method) according to claim 1, wherein the method comprises the steps of mixing a powder of particles comprising uncoated silicon oxynitride (see e.g., [0039], regarding mixing the silicon oxynitride particles), amorphous or nano-crystalline (see above regarding claim 1), having a chemical formula of SiNxOy where x=0.47 and y=0.78 (see e.g., [0036]), which overlaps with the claimed 0.03 ≤ x+y < 1.3 whereby nitrogen makes up 10-80% of said x+y value with the balance being oxygen. Fukuoka discloses a binder such as polyvinylidene fluoride (see e.g., [0039]), a conductive additive such as artificial graphite (see e.g., [0039]) or other conductive additive materials (see e.g., [0028]-[0029]), and a solvent (see e.g., [0035], regarding hexane as a solvent, [0039], regarding N-methylpyrrolidone which is a solvent). Fukuoka further discloses the obtained slurry applied to a copper foil and dried (see e.g., [0040]) to form a negative electrode.
Regarding claim 17, modified Fukuoka discloses the energy storage device of claim 12, wherein the battery is a Li-ion battery (see e.g., [0038]).
Regarding claim 18, modified Fukuoka discloses the method of claim 16, wherein the additive may be artificial graphite (see e.g., [0039]) or other conductive additive materials (see e.g., [0028]-[0029]).
Regarding claim 20, modified Fukuoka discloses the electrode according to claim 1. Fukuoka also discloses the general formula of SiNxOy, wherein 0<x<1.3 and 0<y<1.5 (see e.g., [0009]). Combining these ranges, Fukuoka discloses the formula wherein 0 < x+y < 2.5, which overlaps with the claimed range of 0.03 ≤ x+y ≤ 0.2. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention selected SiNxOy wherein 0.03 ≤ x+y ≤ 0.2, which is within the range disclosed by Fukuoka, to improve the charge/discharge capacity of the battery without causing cycle degradation (see e.g., [0005]).
MPEP 2144.05 I states that '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)'."
Regarding claim 21, modified Fukuoka discloses the electrode according to claim 1. Fukuoka discloses the silicon oxide powder having a general formula of SiNxOy, wherein 0<x<1.3 and 0<y<1.5 (see e.g., [0009]), and more preferably 0.5≦x≦1.0 and 0.3≦y≦1.0 (see e.g., [0011]). Fukuoka further discloses in example 3 wherein SiNxOy, x=0.98 and y=0.51 (see e.g., table 2), such that nitrogen makes up 65.77% of the x+y value with the balance being oxygen, which overlaps with the claimed range of 60-80%. Furthermore, as shown in the bottom range of the disclosed general formula wherein x may be 0.5 and y may be 0.3, nitrogen may make up 62.5% of the x+y value. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have selected an x and y value from the general formula disclosed by Fukuoka such that nitrogen makes up 62.5-80% of the x+y value. One of ordinary skill in the art would have been motivated to make this modification in order to further improve the charge/discharge capacity of the battery and not cause cycle degradation (see e.g., [0005]).
MPEP 2144.05 I states that '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)'."
Regarding claim 23, modified Fukuoka teaches the particles comprising amorphous or nano-crystalline silicon oxynitride of claim 1. Fukuoka discloses a method for producing the particles (see e.g., Fukuoka; [0007], [0015]), the method comprising the steps of supply reactant gases containing silicon and nitrogen and oxygen (see e.g., Fukuoka; [0015], regarding SiO gas in a nitrogen gas-containing atmosphere) to a reaction chamber of a reactor (see e.g., Fukuoka; [0026]), heating the reactant gases to a temperature sufficient for thermal decomposition or reduction of the reactant gases to take place inside the reaction chamber (see e.g., Fukuoka; [0022], regarding heating step).
As above regarding claim 1, modified Fukuoka teaches the produced silicon oxynitride having a chemical formula SiNXOy, where 0.03 ≤x+y < 1.3, whereby nitrogen makes up 30-80% of said x+y value with the balance being oxygen.
The claimed “optionally at least partially coating the particles with organic and/or inorganic material” is not a required limitation in the scope of the claim due to “optionally.”
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukuoka (JP-2002356314-A) (see translation) and Anderson (WO-2017207525-A1) as applied to claim 16, and further in view of He (CN-110190283-A) (see translation).
Regarding claim 19, modified Fukuoka discloses the method of claim 16. Fukuoka does not explicitly disclose wherein the solvent is water. However, He teaches forming an electrode with a solvent such as water (see e.g., page 2 paragraph 5). He is further equivalent analogous art because He similarly teaches a ceramic powder wherein silicon may be used (see e.g., [0014]) It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have formed an electrode disclosed by Fukuoka by including water solvent disclosed by He. One of ordinary skill in the art would have been motivated to make this modification in order to further improve the quality of the negative electrode slurry (see e.g., [0016]).
Conclusion
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/KEVIN SONG/Examiner, Art Unit 1728
/MATTHEW T MARTIN/Supervisory Patent Examiner, Art Unit 1728