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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/13/2026 has been entered.
Response to Amendment
The amendment filed February 13, 2025 has been entered but does not place the application in condition for allowance.
The U.S.C. 103 rejection of claims 1-2, 4-5, 11-14, 17-19 over Yamaguchi in view of Kazunori is withdrawn.
The U.S.C. 103 rejection of claims 15-16 over Yamaguchi in view of Fang is withdrawn.
The U.S.C. 103 rejection of claim 20 over Yamaguchi in view of Evans is withdrawn.
The U.S.C. 103 rejection of claims 2-3, 7-10, 18-19 and 21 over Ohta in view of Kazunori is maintained.
New analysis follows.
Response to Arguments
Applicant's arguments and affidavit filed 02/13/2026 have been fully considered.
Applicant’s arguments with respect to the rejections of newly amended claim 1 under Yamaguchi in view of Kazunori with respect to the wt.% of binder have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
In response to applicant’s argument that the particle size would change the method of preparation. In this case, there is no teaching away in Ohta for particles sizes listed in claim 1 and in fact multiple particle sizes are present within the reference including wide range of sizes from nanometer to less than approximately 25 µm (see experimental section, SEM in Figure S2) and the limitation of claim 1 requires an overlapping range of diameters from 100 nm to 10 µm. Furthermore, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e. conductivity and areal loading amounts) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Additionally, the fact that the inventor 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).
The examiner also notes the requirements for a publication, even one as prestigious as Science, are significantly different from those of a patent. Although these publications can inform one of the potentially patentable subject matter, it does not directly provide evidence of patentability.
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.
The term “xLi2S-yP2S5” in claims 5 and 13 contain the variables “x” and “y” which renders the claim indefinite. The variables “x” and “y” are 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. For example is any value range of each of “x” and “y” acceptable or is a narrower range such as that used by Yamaguchi required (50:50 to 100:50, ¶[0029]).
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.
Claims 1-3, 7-10, 18-19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Ohta et. al. (Anode Properties of Si Nanoparticles in All-Solid-State Li Batteries, ACS Applied Energy Materials 2019 2 (10), 7005-7008, from IDS dated 1/8/25 and attached experimental section) in view of Kazunori (JP2019046722 as cited in IDS dated 04/18/2024, reference made to English translation).
Regarding claims 1-3 and 5, Ohta discloses a solid-state battery comprising: a negative electrode (i.e. anode), a positive electrode (i.e. counter electrode) and a solid electrolyte membrane interposed between the negative electrode and the positive electrode (experimental section, S3, see cell fabrication and electrochemical measurements, see anode and counter electrode pressed on each side of electrolyte pellet),
wherein the negative electrode comprises a negative electrode active material layer comprising silicon (Si) as a negative electrode active material,
the silicon includes silicon particles (experimental section, S2, line 3, Si nanoparticles in particulate anode)
the negative electrode active material layer comprises the silicon (Si) in an amount of 99.9 wt. % or more based on 100 wt. % of the negative electrode active material layer (experimental section, S2, see Si nanoparticles as only component of film after drying), and
the solid electrolyte membrane comprises a sulfide-based solid electrolyte (experimental section, S3, see cell fabrication and electrochemical measurements, line 1, Li2S·20P2S5), and discloses particles of a wide range of sizes from nanometer to less than approximately 25 µm (see experimental section, SEM in Figure S2) but does not explicitly disclose wherein the silicon (Si) particle has a particle size of 0.1 μm to 10 μm.
Kazunori, related to silicon based negative electrodes, teaches a negative electrode with a silicon active material where the average particle size may be 1 µm or less with the benefit of sufficiently increasing contact with the particles.
One of ordinary skill in the art would have recognized choosing the particle size of Kazunori for the negative electrode of Ohta would have provided increased contact between the particles.
Therefore it would have been obvious to have used the Si particle sizes of Kazunori within the negative electrode of Ohta to provide increased contact between the particles.
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). MPEP §2144.05.
Regarding claim 4, modified Ohta discloses a solid-state battery according to claim 1 and further discloses the Si active material disposed on a current collector(stainless-steel substrate)( experimental section, S2, preparation of Si continuous films).
Regarding claims 7, 8, and 21 modified Ohta discloses a solid-state battery according to the above, and Ohta additionally discloses a porous structure (page 7006, col. 2, ¶[3], Fig. 3a,c), but does not explicitly disclose the % porosity of the material.
However, one of ordinary skill in the art would recognize optimizing the porous structure, including % porosity, would improve cycling performance (page 7007, col. 1, ¶[1]).
Therefore, it would have been obvious to have modified the porosity of the prepared anode of Ohta to 25 vol % to 40 vol %.
“[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 9, modified Ohta discloses a solid-state battery according to the above, and Ohta additionally discloses wherein the negative electrode has a porosity of less than 10 vol % at SOC of 90% to 100%, in this case the voids between particles that cause the porosity have disappeared after full charge due to the large volume expansion of the Si (page 7006, col. 2, ¶[4], Fig. 3b,d).
Regarding claim 10, modified Ohta discloses a solid-state battery according to the above, and Ohta additionally discloses wherein the silicon (Si) having a purity of 97% or more is introduced as the negative electrode active material (in this case 98% purity, experimental section, S2).
Regarding claims 18 and 19, modified Ohta discloses a solid-state battery according to the above, and Ohta additionally discloses wherein the negative active material layer comprises no conductive material (experimental section, S2, see Si nanoparticles as only component of film after drying).
Claims 11-15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Ohta et. al. (Anode Properties of Si Nanoparticles in All-Solid-State Li Batteries, ACS Applied Energy Materials 2019 2 (10), 7005-7008, from IDS dated 1/8/25 and attached experimental section) in view of Kazunori (JP2019046722 as cited in IDS dated 04/18/2024, reference made to English translation) as applied to claim 1 and further in view of Yamaguchi (JP2019121557 from IDS dated 10/7/22, reference made to English translation).
Regarding claim 11, modified Ohta discloses a solid-state battery according to claim 1, but does not disclose wherein the positive electrode comprises a positive electrode active material layer, the positive electrode active material layer comprises lithium transition metal composite oxide as a positive electrode active material, and the transition metal comprises Co, Mn, and Ni (¶[0044]).
Yamaguchi, related to solid-state batteries, teaches a silicon based battery with a sulfide electrolyte(¶[0006]), containing a positive electrode active material layer, the positive electrode active material layer comprising lithium transition metal composite oxide as a positive electrode active material, and the transition metal comprises Co, Mn, and Ni (¶[0044]).
One of ordinary skill in the art world have recognized pairing the negative electrode of modified Ohta with the positive electrode of Yamaguchi would have resulting a optimization of the contraction of the positive electrode(¶[0002]).
Therefore, It would have been obvious to one of ordinary skill in the art to pair the negative electrode of modified Ohta with the positive electrode of Yamaguchi to optimize the contraction of the positive electrode.
Regarding claims 12 and 13, modified Ohta discloses a solid-state battery according to claim 11, and Yamaguchi further teaches wherein the positive electrode active material layer further comprises a binder resin (in this case, polyvinylidene fluoride), a conductive material (in this case, VGCF) and a solid electrolyte (in this case, glass Li2 S-P2S5)(¶[0044]).
Regarding claim 14, modified Ohta discloses a solid-state battery according to claim 11, and Yamaguchi further teaches wherein the lithium transition metal composite oxide comprises at least one of compounds represented by the following Formula 1:LixNiaCobMncMzOy [Formula 1]
where 0.5≤x≤1.5, 0<a≤1, 0≤b<1, 0≤c<1, 0≤z<1, 1.5<y<5, a+b+c+z is 1 or less, and M comprises Al, in this case LiNi1/3Co1/3Mn1/3O2 where M=0 (¶[0044])
Regarding claim 17, modified Ohta discloses a solid-state battery according to claim 12, but does not teach a dry mixing process.
Claim 17 is considered product-by-process claim reciting a manufacturing method according to a dry mixing process without a solvent. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product including an absence of solvent after a drying step. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ohta et. al. (Anode Properties of Si Nanoparticles in All-Solid-State Li Batteries, ACS Applied Energy Materials 2019 2 (10), 7005-7008, from IDS dated 1/8/25 and attached experimental section) in view of Kazunori (JP2019046722 as cited in IDS dated 04/18/2024, reference made to English translation), in view of Yamaguchi (JP2019121557 from IDS dated 10/7/22, reference made to English translation) as applied to claim 14 and further in view of Fang et. al. (CN110589901A, reference made to English translation).
Regarding claims 15 and 16, Modified Ohta discloses a solid-state battery according to claim 14, however does not disclose wherein the a is 0.5 or more and more specifically wherein the lithium transition metal composite oxide comprises LiNi0.8Co0.1Mn0.1O2.
Fang, related to cathode active materials, teaches a positive electrode active material, NMC811, LiNi0.8Co0.1Mn0.1O2 (¶[0033]-[0034]) as a method to increase the Ni content and reduce the cobalt content to reduce electrode cost (¶[0004]).
One of ordinary skill in the art would have recognized the active materials of Fang and Youn only differ in the molar ratios elements present and that using the active material of Fang would have resulted in a battery with lower costs.
Therefore, it would have been obvious to have substituted the active material of Yamaguchi for the active material of Fang to lower costs.
Claim 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ohta et. al. (Anode Properties of Si Nanoparticles in All-Solid-State Li Batteries, ACS Applied Energy Materials 2019 2 (10), 7005-7008, from IDS dated 1/8/25 and attached experimental section) in view of Kazunori (JP2019046722 as cited in IDS dated 04/18/2024, reference made to English translation) as applied to claim 1 and further view of Evans (US20190267617A1).
Regarding claim 20, modified Ohta discloses a solid-state battery according to claim 1, but does not disclose an NP ratio of 0.1 to 30.0.
Evans, related to silicon-based anode batteries, teaches that the weight percent of silicon in the anode can be added to “1” to obtain the minimum N/P ratio for the system, for example 90% silicon would result in a minimum value of 1.9 to prevent wrinkling and deformation of the anode film(¶[0043]).
One of ordinary skill in the art would recognize setting the NP ratio of at least 1.9 would prevent wrinkling and film deformation.
Therefore, it would have been obvious to one of ordinary skill in the art to have set the NP ratio to at least 1.9 to prevent wrinkling and film deformation.
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). MPEP §2144.05.
Conclusion
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/K.J.A./Examiner, Art Unit 1726 /RYAN S CANNON/Primary Examiner, Art Unit 1726
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