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 .
Claim Rejections - 35 USC § 102
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 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.
Claim Rejections - 35 USC § 103
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 non-obviousness.
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) 1-6 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Akira et al. (WO 2019151016), as evidenced by any of US 2011/0310395, US 2016/0276126 or US 2020/0232891. For the sake of citations, the examiner is using the corresponding US application – US 2021/0057727 for WO 2019151016 - hereinafter referred to as Akira.
Regarding claim 1, Akira discloses a negative electrode active material for a secondary battery ([0005]) that includes silicon particles (i.e. silicon phase) dispersed in a lithium silicate phase ([0006; figure 1). Akira further discloses that the active material particle size is preferably between 4 and 10 micrometers ([0041]). This extremely large overlap is taken to anticipate the claimed range; however, the examiner notes that in the event the foregoing fails to anticipate the claimed “less than 8 micrometers,” such would have nonetheless been obvious in light of the large overlap in ranges. The courts have held 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 MPEP 2144.05.
The prior art of record fails to explicitly teach a spot image visible with a 200nm aperture transmission electron microscope (TEM); however, like the instant invention, Akira discloses a secondary battery with a lithium silicate matrix, silicon particles, the same general active material particle sizes and the same general elemental components all used within the same type of battery and an up to 25nm crystalline size of the lithium silicate phase ([0043]). In essence, Akira discloses the same general invention and discloses, importantly, that there is a distinct crystalline phase ([0043]). The up to 25nm crystalline phase would be expected to be viewable in the claimed TEM aperture range as by their very nature TEMs tend to have resolutions down to 0.1-0.2nm (see evidentiary references for example – US 2011/0310395, [0002]; US 2016/0276126, [0010]; US 2020/0232891, [0006]). Additionally, the examiner highlights the tremendous similarities noted above and notes that the courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on "inherency" under 35 USC § 102, on prima facie obviousness" under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Akira fails to teach the presently claimed acceleration voltage, but this is not found to patentably distinguishing for three reasons. First, the claims are drawn to a product and the process by which something is measured is not found to be material to patentability unless it relates to a structural specification. Second, because as noted above, the product appears to be substantially identical and there has not been sufficient showing to overcome the strong presumption that the features are present. Third, the examiner notes that it is well known that general purpose TEMs use voltages in the range of 100-300k.
Regarding claim 2, Akira discloses the content of silicon particles as broadly 20-95 and preferably 35-75 mass% of the base particle. This extremely large overlap is taken to anticipate the claimed range; however, the examiner notes that in the event the foregoing fails to anticipate the claimed “above 50%,” such would have been highly obvious in light of the large overlap in ranges. The courts have held 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 MPEP 2144.05.
Regarding claim 3, Akira discloses that the silicon phase is dispersed inside of the base particle in the form of a network (figure 1; [0020]). The examiner notes that the term “network shape” is given its broadest reasonable interpretation consistent with the plain meaning and thus is viewed simply as “an arrangement”. The lack of claimed arrangement specificity fails to exclude the prior art from consideration as such. Akira discloses an arrangement of particles (order need not be specified) dispersed in a matrix ([0020]), thus reading on the broad claim.
Regarding claims 4 and 5, Akira discloses silicon dioxide bonded to varying choices of (rare earth element La) Lanthanum oxides and thus anticipates or is highly suggestive of the claimed Lanthanum silicate type compound ([0029]-[0033]). In the event that the applicant establishes a nuanced difference between the claimed and prior art lanthanum silicates, which it doesn’t appear is present, it is additionally noted that the MPEP states that a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” No unexpected results have been presented.
Regarding claim 6, Akira discloses a secondary battery comprising a positive electrode, negative electrode and electrolyte ([0007]), in addition to the active material discussed above in claim 1.
Claim(s) 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Akira et al. (WO 2019151016), as evidenced by any of US 2011/0310395, US 2016/0276126 or US 2020/0232891. For the sake of citations, the examiner is using the corresponding US application – US 2021/0057727 for WO 2019151016 - hereinafter referred to as Akira; in view of CN111180693A.
Regarding claim 1, Akira discloses a negative electrode active material for a secondary battery ([0005]) that includes silicon particles (i.e. silicon phase) dispersed in a lithium silicate phase ([0006; figure 1). Akira further discloses that the active material particle size is preferably between 4 and 10 micrometers ([0041]). This extremely large overlap is taken to anticipate the claimed range; however, the examiner notes that in the event the foregoing fails to anticipate the claimed “less than 8 micrometers,” such would have nonetheless been obvious in light of the large overlap in ranges. The courts have held 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 MPEP 2144.05.
The prior art of record fails to explicitly teach a spot image visible with a 200nm aperture transmission electron microscope (TEM); however, like the instant invention, Akira discloses a secondary battery with a lithium silicate matrix, silicon particles, the same general active material particle sizes and the same general elemental components all used within the same type of battery and an up to 25nm crystalline size of the lithium silicate phase ([0043]). In essence, Akira discloses the same general invention and discloses, importantly, that there is a distinct crystalline phase ([0043]). The up to 25nm crystalline phase would be expected to be viewable in the claimed TEM aperture range as by their very nature TEMs tend to have resolutions down to 0.1-0.2nm (see evidentiary references for example – US 2011/0310395, [0002]; US 2016/0276126, [0010]; US 2020/0232891, [0006]). Additionally, the examiner highlights the tremendous similarities noted above and notes that the courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on "inherency" under 35 USC § 102, on prima facie obviousness" under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Akira fails to teach the presently claimed acceleration voltage, but this is not found to patentably distinguishing for three reasons. First, the claims are drawn to a product and the process by which something is measured is not found to be material to patentability unless it relates to a structural specification. Second, because as noted above, the product appears to be substantially identical and there has not been sufficient showing to overcome the strong presumption that the features are present. Third, the examiner notes that it is well known that general purpose TEMs use voltages in the range of 100-300k.
Further in regard to the spot image, CN111180693A, drawn also to the battery art, discloses that it was well known to use nanocrystalline lithium silicate (example 1) and notes that such is known to be useful in batteries with high capacity, coulombic efficiency, rate and circulation performance (abstract). A nanocrystalline lithium silicate would by nature demonstrate a spot image.
Regarding claim 2, Akira discloses the content of silicon particles as broadly 20-95 and preferably 35-75 mass% of the base particle. This extremely large overlap is taken to anticipate the claimed range; however, the examiner notes that in the event the foregoing fails to anticipate the claimed “above 50%,” such would have been highly obvious in light of the large overlap in ranges. The courts have held 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 MPEP 2144.05.
Regarding claim 3, Akira discloses that the silicon phase is dispersed inside of the base particle in the form of a network (figure 1; [0020]). The examiner notes that the term “network shape” is given its broadest reasonable interpretation consistent with the plain meaning and thus is viewed simply as “an arrangement”. The lack of claimed arrangement specificity fails to exclude the prior art from consideration as such. Akira discloses an arrangement of particles (order need not be specified) dispersed in a matrix ([0020]), thus reading on the broad claim.
Regarding claims 4 and 5, Akira discloses silicon dioxide bonded to varying choices of (rare earth element La) Lanthanum oxides and thus anticipates or is highly suggestive of the claimed Lanthanum silicate type compound ([0029]-[0033]). In the event that the applicant establishes a nuanced difference between the claimed and prior art lanthanum silicates, which it doesn’t appear is present, it is additionally noted that the MPEP states that a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” No unexpected results have been presented.
Regarding claim 6, Akira discloses a secondary battery comprising a positive electrode, negative electrode and electrolyte ([0007]), in addition to the active material discussed above in claim 1.
Response to Arguments
Applicant's arguments filed 12/24/2025 have been fully considered but they are not persuasive.
The applicant argues that the examiner fails to disclose an explicit teaching of the spot image and additionally that they fail to teach the claimed acceleration voltage, crystallite size and heat treatment.
The examiner appreciates the clarifications relating to the method utilized and the measurement techniques; however, none of the foregoing appears to establish the absence of the spot image, nor is spot image quantified in some way to exclude the prior art from consideration as such. As noted above, the disclosure of Akira, similar to the present claims, includes silicon particles embedded within a lithium silicate whereby the silicate is crystallized under heat [0043] and the overall particle size of the entire particle is as low as 1 micrometer [0041] and the silicate is defined as fitting within the void spaces of nanometer size silicon particles [0023] that appear to dwarf the intervening silicate phase (see figure 1). Moreover, Akira teaches crystallite silicate powder that is 25nm or less [0043] and CN111180693A also explicitly teaches nanocrystalline silicate phases in high functioning batteries. Given the foregoing there appears to be an extremely compelling amount of evidence that the invention of Akira, or at minimum Akira in view of CN111180693A, would be expected to provide a spot image. As additionally provided above, the courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on "inherency" under 35 USC § 102, on prima facie obviousness" under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977). In the present situation the entirety of claims 1-6 appear to be disclosed in the prior art down to the crystallization, the tiny particles, the tiny interparticle spaces and the fact that the present TEM measurements are well known. Furthermore, despite the fact that actual measurement is not required by the claim (it is a method step), the examiner provided as much evidence as seemed reasonable to bolster the case there is an expectation that the claimed merits are met.
Claim 1, as presently presented is defined almost entirely by a test that the examiner is unable to perform. The only required structural features are the lithium silicate, the silicon phase and the particle size. All of the structural features and the features of the dependent claims appear to be found in the prior art.
The examiner appreciates the detailed response and has given it thoughtful consideration against the backdrop of what is expected and what the prior art discloses. Additional arguments, evidence, or claim amendments which differentiate the present claims more structurally by what the active material is, will likewise be thoughtfully considered.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL N ORLANDO whose telephone number is (571)270-5038. The examiner can normally be reached M-F 8:00 AM - 4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at 571-272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746