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 .
The Applicant’s amendment filed on 9/4/2025 was received. Claim 1 was amended.
The text of those sections of Title 35, U.S.C code not included in this action can be found in the prior Office action issued on 05/19/2025.
Claim Objections
Claims 2, 3, 6, 10, 12 are objected to because (i) it is unclear that the numerical limitation is limited by the smaller number or the higher number. For example, “Young's modulus higher than 40, 100, 250, 300, 400, or 500 Gigapascals (GPa)” in claim 2. It is unclear the limitation is higher than 40, higher than 100, or higher than 250, etc; and (ii) there is no clear relationship between the claimed characteristics. For example, it is unclear how Young’s modulus relates to the aspect ratio of nanofibers. For compact prosecutions, Examiner takes the highest number as the numerical limitation.
Claim Rejections - 35 USC § 102
Claims rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goodman et al. (US 10,439,223 B1) on claims 1, 3-4, 6-8, 11-13 are withdrawn because Applicant amended independent claim 1. Claims rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chiu et al. (US 20160344018 A1) on claims 1, 2, 5, 8, 11 are withdrawn because Applicant amended independent claim 1. Claims rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yushin et al. (US 20200083542 A1) on claims 1, 3-9, 11 are withdrawn because Applicant amended independent claim 1.
Claim Rejections - 35 USC § 102/103
Claims 1, 3-4, 7-8, 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as obvious over Goodman et al. (US 10,439,223 B1).
Regarding to claim 1: Goodman et al. disclose lithium-ion batteries comprising a silicon based negative electrode with silicon carbide nanofibers (equivalent to mechanical enhancement additives), which addresses silicon volume changes (abstract, col. 1 line 60-67, col. 2 line 2-6). The silicon carbide nanofibers have a length to width ratio of at least 5, at least 10, at least 15, at least 20, at least 25, at least 30, at least 35, at least 40, at least 45, at least 50, at least 75, at least 100, at least 125, at least 150, at least 175, or at least 200 (col. 4 line 19-23) and have length, width, and heights that are between about 5 nm and about 10,000 nm (col. 4 line 13-15). However, it is the position of the examiner that the percentage of expansion of the electrode is inherent, given that (i) the additive material (silicon carbide) used in silicon base negative electrode is the same as the instant application; (ii) the silicon carbide weight percentage in active material has similar range as that in the instant application; and (iii) the aspect ratio and one dimension of the silicon carbide nanofiber have similar range as that in the instant application. A reference which is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
Alternatively, Goodman et al. recognize the strain from volumetric expansion of silicon has been mitigated by nanostructure of the anode material (col. 2, lines 13-15). Thus, one of ordinary skill in the art before the effective filing date of the claimed invention can adjust the weight percentage, aspect ratio, and dimension of the silicon carbide nanofiber to lower the volume expansion percentage of the anode. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 3: Goodman et al. disclose the silicon carbide nanofibers have a length to width ratio of at least 5, at least 10, at least 15, at least 20, at least 25, at least 30, at least 35, at least 40, at least 45, at least 50, at least 75, at least 100, at least 125, at least 150, at least 175, or at least 200 (col. 4 line 19-23).
Regarding claim 4: Goodman et al. disclose an instance where the silicon-carbide nanofibers are included in anode active materials (col. 12 line 35-48). Thus, silicon-carbide nanofibers are considered as electrochemically active.
Regarding claim 7: Goodman et al. disclose lithium-ion batteries comprising a silicon based negative electrode with silicon carbide nanofibers (equivalent to mechanical enhancement additives) (abstract, col. 1 line 60-67, col. 2 line 2-6).
Regarding claim 8: Goodman et al. disclose lithium-ion batteries comprising a silicon based negative electrode with silicon carbide nanofibers (equivalent to mechanical enhancement additives) (abstract, col. 1 line 60-67, col. 2 line 2-6).
Regarding claim 11: Goodman et al. disclose lithium-ion batteries comprising a silicon based negative electrode with silicon carbide nanofibers (equivalent to mechanical enhancement additives) (abstract, col. 1 line 60-67, col. 2 line 2-6).
Regarding claim 12: Goodman et al. disclose a weight percentage of a composition that includes silicon metal (1-75 wt. %), silicon carbide (1-25 wt. %), and carbon (10-90 wt. %) (col. 4 line 42-60). Examiner extracts one example from the weight percentage range of Goodman et al. as shown in table 1. In the example, 15 wt. % silicon carbide is used. After considering Si atomic mass of 28u and SiC atomic mass of 40u, 15 wt. % of SiC can be broken down into 10.5 wt. % of Si (15 wt. % × (28/40)) and 4.5 wt. % of C (15 wt. % × (28/40)). Thus, the weight percentage of the silicon can reach to 85.5 wt. % (75 wt. % + 10.5 wt. %) (See table 1 below).
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Table 1
In addition, Goodman et al. recognize the silicon metal provides high theoretical specific capacity of battery and causes volumetric expansion in the electrode (col. 1, lines 60-67, col. 2 lines 1-11). Thus, one of ordinary skill in the art before the effective filing date of the claimed invention can adjust the weight percentage of silicon metal to obtain the desired silicon weight percentage in anode for the optimum balance between capacity and volume expansion. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 13: Goodman et al. disclose a weight percentage of a composition that includes silicon metal (1-75 wt. %), silicon carbide (1-25 wt. %), and carbon (10-90 wt. %) (col. 4 line 42-60). The weight percentage of the silicon carbide can be at least 1% in the anode.
Claims 1, 5, 8, 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as obvious over Chiu et al. (US 20160336591 A1).
Regarding claim 1: Chui et al. disclose a stress-buffering silicon-containing composite particle for an anode material of the lithium ion battery (abstract, par. 22). The stress-buffering silicon-containing composite particle (2) (equivalent to active material) includes: a stress-buffering particle (21) (equivalent to mechanical enhance6ment additive) having a Young's modulus greater than 100 GPa; and a plurality of silicon flakes (231) (par. 21, fig. 2). The stress-buffering particle (21) can provide a buffering effect for absorbing stress caused by volume expansion of the stress-buffering silicon-containing composite particle (2) during charging or intercalation of lithium ions thereon (par. 22). However, it is the position of the examiner that the percentage of expansion of the electrode is inherent, given that (i) the stress-buffering particle (21) material (silicon carbide, silicon nitride, aluminum nitride (par. 23)), used in the anode material is the same as that in the instant application; (ii) the weight percentage of the stress-buffer particle (21) in the active material has similar range as that in the instant application; and (iii) Young’s modulus of the stress-buffer particle (21) has similar range as that in the instant application. A reference which is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
Alternatively, Chiu et al. recognize the stress-buffering particle (21) can provide a buffering effect for absorbing stress caused by volume expansion of the stress-buffering silicon-containing composite particle (2) during charging or intercalation of lithium ions thereon, and the stress-buffering particle (21) has a Young's modulus greater than 100 GPa that can provide a buffering effect for absorbing the stress (par. 22). Thus, one of ordinary skill in the art before the effective filing date of the claimed invention can adjust the weight percentage, Young’s modulus of the stress-buffering particle (21) to lower the volume expansion percentage of the anode. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 5: Chiu et al. disclose the stress-buffering particles (21) can be made from aluminum nitride (AlN). Aluminum nitride is considered to be electrochemically inactive.
Regarding claim 8: Chiu et al. disclose stress-buffering particles (21) are made from a material selected from the group consisting of silicon carbide (SiC), silicon nitride (Si3N4), titanium nitride (TiN), titanium carbide (TiC), tungsten carbide (WC), aluminum nitride (AlN), gallium, germanium, boron, tin, and indium (par. 23).
Regarding claim 11: Chui et al. disclose a stress-buffering silicon-containing composite particle for an anode material of the lithium ion battery (abstract, par. 22).
Claim Rejections - 35 USC § 103
Claims rejected under 35 U.S.C. 103 as being unpatentable over Yushin et al. (US 20200083542 A1) and in view of Vahtrus et al. on claims 2 and 10 are withdrawn because Applicant amended independent claim 1.
Claims 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Goodman et al. (US 10,439,223 B1) as applied to claim 1 above, and further in view of Joo et al. (US 20150247263 A1).
Regarding claim 2: Goodman et al. disclose lithium-ion batteries comprising a silicon based negative electrode with silicon carbide nanofibers (equivalent to mechanical enhancement additives), which addresses silicon volume changes (abstract, col. 1 line 60-67, col. 2 line 2-6). Goodman et al. fail to explicitly disclose the mechanical enhancement additive has a Young's modulus higher than 500 Gigapascals (GPa). However, Joo et al. disclose that a process of preparing high quality, high performance, highly coherent, highly continuous nanofibers (abstract). The nanofibers comprise silicon carbide (par. 31) and have Young’s modulus higher than 1000 Gpa (fig. 14). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the silicon carbide nanofibers of Joo et al. in the silicon based negative electrode of Goodman et al. because Joo et al. teach that the nanofibers fabricated by Joo et al. provide improved performance characteristics (such as fracture toughness, electrical and thermal conductivity, etc.) compared to other nanostructure formation techniques and are suitable for applications such as batteries (par. 40-41).
Regarding claim 6: Goodman et al. disclose the silicon carbide nanofibers having length, width, and heights that are between about 5 nm and about 10,000 nm (equivalent to 0.005 µm-10 µm) (col. 4 line 13-15). Goodman et al. fail to explicitly disclose the mechanical enhancement additive has a length in at least one dimension of 200 µm or more. However, Joo et al. disclose that a process of preparing high quality, high performance, highly coherent, highly continuous nanofibers (abstract). The nanofibers comprise silicon carbide (par. 31) and have length at least 500 µm (par. 35). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the silicon carbide nanofibers of Joo et al. in the silicon based negative electrode of Goodman et al. because Joo et al. teach that the nanofibers fabricated by Joo et al. provide improved performance characteristics (such as fracture toughness, electrical and thermal conductivity, etc.) compared to other nanostructure formation techniques and are suitable for applications such as batteries (par. 40-41).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Goodman et al. (US 10,439,223 B1) as applied to claim 1 above, and further in view of Chen et al. (US 2230275215 A1).
Regarding claim 9: Goodman et al. disclose lithium-ion batteries comprising a silicon based negative electrode with silicon carbide nanofibers (equivalent to mechanical enhancement additives), which addresses silicon volume changes (abstract, col. 1 line 60-67, col. 2 line 2-6). Goodman et al. fail to explicitly disclose the mechanical enhancement additive comprises an aluminum oxide (Al203) nanofiber. However, Chen et al. disclose that a silicon-carbon anode material, comprising a silicon-based core material, for a secondary lithium battery (abstract, par. 2). The silicon-based core material is coated with ion conductor composite to address the expansion stress in the silicon-based core material (par. 20, 22, 24). The ionic conductor composite material comprises an ionic reinforcing phase and an ionic matrix (par. 26). Therefore, the ionic conductor composite material combines the advantages of the high strength of the ionic matrix and the high toughness of the ionic reinforcing phase, effectively preventing stress dispersion, better buffering volume expansion, and improving the structural strength (par. 26). The ionic reinforcing phase comprises one or more selected from the groups consisting of Al2O3 fibers, SiC fibers, SiC whiskers, Al2O3 whiskers (equivalent to Al2O3 nanofiber), SiC particles, Al2O3 particles (par. 27). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute SiC nanofiber of Goodmen et al. with Al2O3 whisker of Chen et al. because it is merely the selection of functionally equivalent ionic reinforcing phase with the mechanical property of high toughness as shown by Chen et al. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Goodman et al. (US 10,439,223 B1) and Chen et al. (US 2230275215 A1) as applied in claim 9 above, and further in view of Yushin et al. (US 20230322572 A1).
Regardino claim 10: Goodman et al. in view of Chen et al. disclose lithium-ion batteries comprising a silicon based negative electrode with aluminum oxide (Al2O3) nanofibers (equivalent to mechanical enhancement additives) as described in paragraph 10 above. Goodman et al. and Chen et al. fail to disclose the aluminum oxide (Al2O3) nanofiber has a diameter of 300-900 nm, a length of at least 200 µm, an aspect ratio of at least 100 or 220, and a Young's modulus of at least 100, 200, or 300 GPa. However, Yushin et al. disclose a method to fabricate alumina nanowire for electrochemical devices (par. 2-3). The alumina nanowire has a diameter of 10 nm to 1 µm (equivalent to 10 nm to 1000 nm) (par. 104), a length of 100 nm to 1000 µm (par. 104), an aspect ratio of 10 to 100,000 (par. 104) and a Young' s modulus of 210-300 GPa (par. 77). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the alumina nanofibers with the characteristics (diameter, length, aspect ratio, and Young’s modulus) of Yushin et al. in the modified silicon based negative electrode of Goodman et al. because Yushin et al. teach that the ceramic nanowires to attain strong mechanical properties strikingly different micron-scale fibers. These properties make ceramic nanowires highly attractive for use in lithium-ion batteries (par. 77).
Response to Arguments
Applicant’s arguments filed on 09/04/2025 have been fully considered but they are not persuasive. Applicant primarily argues:
Alternative values for various parameters and/or characteristics in claims 2, 3, 6, 10, and 12 may be used.
Goodman, Chiu, and Yushin reference fails to teach all the limitations of claim 1.
Claims 3-9 and 11-13 are not anticipated by Goodman, Chiu, and Yushin.
Yushin reference fails to allege a proper prima facie case of obviousness with respect to claims 2 and 10.
In response:
The metes and bounds of the numerical limitation is unclear when alternative values are provided. A specific value should be provided to clearly set the numerical limitation.
(i) Regarding to Goodman reference, the amended feature “at least 20% lower expansion in at least one dimension” is inherent property as described in paragraph 6 above. In addition, the newly cited embodiment of Goodman recognizes the expansion is impacted by nanostructure of the anode material. Thus, one of ordinary skill in the art can adjust SiC nanofiber to control the expansion. The rest of limitations in claim 1 are mapped in paragraph 6 above.
(ii) Chui (20160344018 A1) and Yushin references are withdrawn because claim 1 is amended.
(iii) Newly cited Chiu (US 20160336591 A1) reference teaches a stress-buffering particle (21) to address volume expansion caused by silicon. The amended feature “at least 20% lower expansion in at least one dimension” is inherent property as described in paragraph 7 above. In addition, the Chiu recognizes the volume expansion can be addressed by stress-buffering particle. Thus, one of ordinary skill in the art can adjust stress-buffering particle to control the expansion. The rest of limitations in claim 1 are mapped in paragraph 7 above.
(i) Regarding to Goodman reference, Goodman clearly teaches the limitations of claims 3, 4, 7, 8, and 11-13 as described in the Office action mailed on 5/5/2025 and paragraph 6 above. As to claim 6, Goodman teaches one dimension of nanofiber is 5 nm-10,000 nm. Newly cited Joo teaches SiC nanofibers with a length at least 500 µm. It is obvious for one of ordinary skill in the art to use the silicon carbide nanofibers from Joo as the superior characteristics are provided. Higher strength can absorb more stress caused by volume expansion from silicon.
(ii) Chui (20160344018 A1) and Yushin references are withdrawn as the independent claim 1 is amended.
(iii) Newly cited Chiu (US 20160336591 A1) reference clearly teaches the limitations of claims 5, 8, and 11 as described paragraph 7 above.
Applicant’s argument is moot as newly cited Chen teaches the equivalent function among Al2O3 fibers, SiC fibers, SiC whiskers, Al2O3 whiskers. As these material have high strength and can buffer volume expansion of silicon, it is obvious for one of ordinary skill in the art to substitute SiC with Al2O3. Newly cited Yushin (20230322572) teaches the characteristics of Al2O3 nanofiber. Stronger mechanical properties of Al2O3 nanofiber can absorb more stress caused by volume expansion from silicon.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/PIN JAN WANG/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717