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 .
Response to Amendment and Claim Status
The amendment filed 6 January 2026 has been entered. Claims 3, 5, 11, 13, and 19 have been canceled. Claims 1, 2, 4, 6–10, 12, 14–18, and 20 are pending in the application.
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.
Claims 1, 2, 4, 6–10, 12, 14–18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hotta et al. (US 2017/0271673 A1) in view of Wang et al. (Wang, D.; Gao, M.; Pan, H.; Wang, J.; Liu, Y. High performance amorphous-Si@SiOx/C composite anode materials for Li-ion batteries derived from ball-milling and in situ carbonization, Journal of Power Sources 256, p. 190–199, published 20 January 2014), further in view of Ha et al. (US 2017/0062810 A1), further in view of Kim et al. (US 2021/0143439 A1), and further in view of Wu et al. (Wu, S.; Yu, B.; Wu, Z.; Fang, S.; Shi, B.; Yang, J. Effect of particle size distribution on the electrochemical performance of micro-sized silicon-based negative materials, RSC Advances 8, p. 8544–8551, published 23 February 2018).
Regarding Claims 1, 2, 9, 10, 17, and 18, Hotta discloses a negative electrode material (see electrode material, [0024]; [0088]–[0090] disclose that the electrode material is for use in a negative electrode), comprising silicon composite particles (see composite particle, [0021]; [0022]–[0024] disclose the composite particle can comprise silicon), wherein the silicon composite particles comprise silicon particles (see metal, [0022], specifically silicon (Si), [0024], [0027]) and a buffer phase (see combination of carbonaceous material and metal oxide, [0022], specifically silicon oxide (SiOx (0 ≤ x ≤ 2)), [0024], [0030]; [0030] discloses that the expansion and contraction of the silicon phase is relieved by dispersing it in the silicon oxide phase and carbonaceous material, and therefore one of ordinary skill in the art will understand that the carbonaceous material and silicon oxide phase can be considered a buffer phase), and the silicon particles are dispersed in the buffer phase ([0030]).
Hotta does not explicitly disclose wherein the silicon particles are amorphous, though one of ordinary skill in the art will understand that the silicon particles can be either amorphous or crystalline.
Wang teaches a negative electrode material (see anode material, p. 191 ¶ “In this study…”), comprising silicon composite particles (see a-Si@SiOx/C composites, p. 191 ¶ “In this study…”), wherein the silicon composite particles comprise amorphous silicon particles (see a-Si as core, p. 191 ¶ “In this study…”) and a buffer phase (see double layer of SiOx and carbon, p. 191 ¶ “In this study…”), the amorphous silicon dispersed in the buffer phase (p. 191 ¶ “In this study…”). Wang teaches (p. 191 ¶ “In terms of…”) that amorphous silicon provides more paths for the insertion/extraction of lithium in comparison to crystalline silicon, and further that the volume expansion of amorphous silicon upon lithium insertion is isotropic, which causes less pulverization compared with the highly anisotropic expansion of crystalline silicon.
Hotta and Wang are analogous to the claimed invention as they are in the same field of silicon-based negative electrode materials. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the negative electrode material of Hotta such that the silicon particles are amorphous, as Wang teaches that amorphous silicon provides the advantages of more paths for the insertion/extraction of lithium and lessened pulverization as compared to crystalline silicon.
Hotta does not explicitly disclose wherein a non-uniformity of the amorphous silicon particles dispersed in the buffer phase is less than or equal to 30% (Claims 1, 9, and 17) or more narrowly less than or equal to 15% (Claims 2, 10, and 18) but does disclose ([0031]) that it is preferable that the silicon particles be microparticulated as finely as possible and be dispersed in the composite particle in order to relieve stress caused by large expansion and contraction of the silicon phase during lithium insertion and extraction.
Ha teaches a negative electrode material (see anode active material, [0035]), comprising silicon composite particles (see carbon-silicon composite, [0033]), wherein the silicon composite particles comprise silicon particles (see nano silicon (Si) fine particles, [0033]) and a buffer phase (see carbonaceous substance, [0033]), and the silicon particles are dispersed in the buffer phase ([0034]). Ha teaches ([0011]–[0013]) that uniform dispersion of silicon particles in the negative electrode material is most important ([0014]), and specifically that increasing the dispersion of silicon particles included in a negative electrode material reduces the deterioration in secondary battery lifespan caused by the volume change of silicon during charge/discharge ([0011]–[0013]). Note that Ha is analogous to the claimed invention as it is in the same field of silicon-based negative electrode materials.
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious (MPEP § 2144.05.II). In the instant case, the dispersion uniformity of silicon particles is a variable that achieves the recognized result of affecting secondary battery lifespan, as taught by Ha, thus making the dispersion uniformity of silicon particles a result-effective variable. Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the negative electrode material of modified Hotta such that the non-uniformity of the amorphous silicon particles dispersed in the buffer phase is less than or equal to 30%, or more narrowly less than or equal to 15%, via routine experimentation, for the purpose of achieving a suitable secondary battery lifespan.
Hotta does not explicitly disclose wherein a sphericity of the silicon composite particles is greater than or equal to 0.88.
Kim teaches a negative electrode material (see negative active material, [0035]), comprising silicon composite particles (see Si-carbon composite, [0035]), wherein the silicon composite particles comprise silicon particles (see Si nanoparticles, [0035]) and a buffer phase (see amorphous carbon, [0035]), the silicon particles are dispersed in the buffer phase ([0043]–[0044]), and a sphericity of the silicon composite particles is greater than or equal to 0.70 ([0036]). Note that when the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP § 2144.05.I). Also note that Kim is analogous to the claimed invention as it is in the same field of silicon-based negative electrode materials.
Kim teaches ([0037]) that when the sphericity is 0.7 or more, the surface area and therefore side reactions with electrolyte and lithium can be reduced, and uniform volume expansion can be facilitated. Thus in addition to the prima facie case of obviousness set forth above, it would further have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to select the overlapping portions of the ranges for the sphericity of the silicon composite particles with a reasonable expectation that such selection would successfully result in silicon composite particles with reduced surface area and therefore reduced side reactions with electrolyte and lithium, and facilitated uniform volume expansion.
Hotta does not explicitly disclose wherein a particle size of the negative electrode material satisfies D90 – D10 ≤ 8.5 µm. However, one of ordinary skill in the art will understand that the expression D90 – D10 is a measure of particle size distribution.
Wu teaches a negative electrode material (see micro-sized silicon-based material, p. 8545 ¶ “Herein, we used…”), comprising silicon composite particles (see SiOx/C, p. 8545 ¶ “Herein, we used…”). Wu teaches that increasing the particle size distribution increases energy density and volumetric capacity, but also increases the degree of electrode polarization and limits buffer space. Note that Wu is analogous to the claimed invention as it is in the same field of silicon-based negative electrode materials.
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious (MPEP § 2144.05.II). In the instant case, the particle size distribution is a variable that achieves the recognized result of affecting the energy density, volumetric capacity, degree of electrode polarization, and buffer space of the negative electrode material, as taught by Wu, thus making the particle size distribution a result-effective variable. Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the negative electrode material of modified Hotta such that a particle size satisfies D90 – D10 ≤ 8.5 µm via routine experimentation, for the purpose of achieving suitable levels of energy density, volumetric capacity, degree of electrode polarization, and buffer space.
Further regarding Claims 9 and 17, Hotta further discloses an electrochemical device (see nonaqueous electrolyte battery 20, [0110], [0152], FIG. 2 and 3), comprising a negative electrode plate (see negative electrode 10, [0090], [0110]; see also negative electrode 23, [0153], FIG. 2 and 3), the negative electrode plate comprises a negative active material layer (see electrode mixture layer 12, [0090], FIG. 1; see also negative electrode layer 23b, [0153], FIG. 3), and the negative active material layer comprises the negative electrode material of Claim 1 as set forth above ([0088], [0113]).
Further regarding Claim 17, Hotta further discloses an electronic device (see electronic device, [0174]) comprising the electrochemical device of Claim 9 as set forth above ([0173]–[0174]).
Regarding Claims 4, 12, and 20, modified Hotta discloses the negative electrode material, electrochemical device, and electronic device of Claims 1, 9, and 17, respectively. Hotta further discloses ([0049]) wherein a specific surface area of the negative electrode material is 0.5 m2/g or more and 10 m2/g or less, which overlaps with the claimed range of less than or equal to 5 m2/g. Note that when the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP § 2144.05.I).
Hotta teaches ([0049]–[0050]) that a negative electrode material having a specific surface area of 0.5 m2/g or more and 10 m2/g or less, the electrode can exert stable electrode characteristics. Thus in addition to the prima facie case of obviousness set forth above, it would further have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to select the overlapping portions of the ranges for the specific surface area of the negative electrode material with a reasonable expectation that such selection would successfully result in a negative electrode material which can exert stable electrode characteristics.
Regarding Claims 6 and 14, modified Hotta discloses the negative electrode material and electrochemical device of Claims 1 and 9, respectively. As set forth in the rejection of Claims 1 and 9 above, Hotta discloses wherein the buffer phase comprises carbon (see carbonaceous material, [0022], [0030]), oxygen, and silicon (see metal oxide, [0022]; see specifically silicon oxide (SiOx (0 ≤ x ≤ 2)), [0024], [0030]).
Regarding Claims 7 and 15, modified Hotta discloses the negative electrode material and electrochemical device of Claims 6 and 14, respectively. Modified Hotta further discloses wherein the buffer phase comprises silicon monoxide (see silicon oxide (SiOx (0 ≤ x ≤ 2)), [0024], [0030]; one of ordinary skill in the art will understand that SiOx (0 ≤ x ≤ 2) includes silicon monoxide where x = 1) and silicon dioxide (see silicon oxide (SiOx (0 ≤ x ≤ 2)), [0024], [0030]; one of ordinary skill in the art will understand that SiOx (0 ≤ x ≤ 2) includes silicon dioxide where x = 2; see specifically silicon dioxide (SiO2), [0029]).
Regarding Claims 8 and 16, modified Hotta discloses the negative electrode material and electrochemical device of Claims 1 and 9, respectively. Hotta further discloses wherein the silicon composite particles further comprise a conductive agent (see electroconductive auxiliary agent, [0071]), and the conductive agent is dispersed in the buffer phase ([0071] discloses that the electroconductive auxiliary agent is mixed in with silicon particles and the carbon precursor during the synthesis of the silicon composite particles, thus one of ordinary skill in the art will understand that the conductive agent will necessarily be dispersed in the buffer phase in the final silicon composite particles).
Response to Arguments
Applicant’s arguments (p. 9–10) in the Remarks filed 6 January 2026 with regards to the 35 U.S.C. § 103 rejection of Claims 3, 11, and 19 in view of the combination of references including Haufe have been fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments (p. 9–10) in the Remarks filed 6 January 2026 with regards to the 35 U.S.C. § 103 rejection of Claims 5 and 13 in view of the combination of references including Li have been fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments (p. 10) in the Remarks filed 6 January 2026 with regards to the criticality of the newly claimed range for the sphericity of the silicon composite particles of greater than or equal to 0.88 has been fully considered but is not persuasive. Firstly, the Applicant’s statement that “the articulated range provides a lower expansion rate of the negative electrode plate, and therefore the claimed sphericity range is critical” is a conclusory statement without any supporting evidence (see MPEP § 716.01(c)). Secondly, the Instant Specification does not specifically describe the above range as critical, and thus a showing of the criticality of the range must be in an affidavit or declaration. An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). Applicants may compare the claimed invention with prior art that is more closely related to the invention than the prior art relied upon by the Examiner. In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978); Ex parte Humber, 217 USPQ 265 (Bd. App. 1961). In other words, the evidence of unexpected results must be compared with prior art. Emphasis added. See MPEP § 716.02(e). Furthermore, as per MPEP § 716.02(e), the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). See MPEP § 716.02(b). In the instant case, the evidence of Table 1 does not appear to sufficiently indicate that there is a statistical and practical significance to the claimed range. Finally, to establish advantageous results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (see MPEP § 716.02(d).II). In the instant case, for example, no tests have been performed over the range of sphericities of 0.90–1.00, which is part of the claimed range. Thus for the above reasons, this argument is not persuasive.
Applicant’s arguments (p. 10) in the Remarks filed 6 January 2026 with regards to the criticality of the newly claimed range of D90 – D10 ≤ 8.5 µm for the particle size of the negative electrode material has been fully considered but is not persuasive. Firstly, the Applicant’s statement that criticality is evident for this newly claimed narrower range is a conclusory statement without any supporting evidence (see MPEP § 716.01(c)). Secondly, the Instant Specification does not specifically describe the above range as critical, and thus a showing of the criticality of the range must be in an affidavit or declaration. An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). Applicants may compare the claimed invention with prior art that is more closely related to the invention than the prior art relied upon by the Examiner. In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978); Ex parte Humber, 217 USPQ 265 (Bd. App. 1961). In other words, the evidence of unexpected results must be compared with prior art. Emphasis added. See MPEP § 716.02(e). Furthermore, as per MPEP § 716.02(e), the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). See MPEP § 716.02(b). In the instant case, the evidence of Table 1 does not appear to sufficiently indicate that there is a statistical and practical significance to the claimed range. Finally, to establish advantageous results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (see MPEP § 716.02(d).II). In the instant case, for example, no tests have been performed over the range of D90 – D10 ≤ 7.9 µm, which is part of the claimed range. Thus for the above reasons, this argument is not persuasive.
Applicant’s arguments (p. 10) in the Remarks filed 6 January 2026 with regards to the present amendment resolving any issues regarding the claims sufficiently reflecting the critical examples, on the basis that the Examiner previously asserted that the claims did not present criticality based on the examples not being sufficiently close to what was recited in the claims, has been fully considered but is not persuasive. While it is the case that removing the limitations relating to the inclusion of iron, titanium, aluminum, or cadmium from the independent claims does make the claims in question more commensurate with the data shown in Table 1 of the Instant Specification, the examples of Table 1, as set forth above, fail to demonstrate criticality. Thus, this argument is not persuasive.
Applicant’s arguments (p. 10–11) in the Remarks filed 6 January 2026 with regards to the combination of the references Wang and Kurita have been fully considered but are moot because the new ground of rejection does not rely on this combination.
Conclusion
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/J.M.F./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725