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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/17/2025 has been entered.
Response to Amendment
The amendment filed 02/17/2026 has been entered. Claims 1 and 3-7 are currently pending. Claim 7 is new. Support for the new claim is found in paragraphs 0022 and 0027 of the present specification.
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.
Claims 1, 3-5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Tamai et al. (WO2018212274 A1, US 20210151749 A1 used as English equivalent) in view of Ji et al. (US 20200381707 A1) and Zhao et al. (Jie Zhao, Lei Liao, Feifei Shi, Ting Lei, Guangxu Chen, Allen Pei, Jie Sun, Kai Yan, Guangmin Zhou, Jin Xie, Chong Liu, Yuzhang Li, Zheng Liang, Zhenan Bao, and Yi Cui Journal of the American Chemical Society 2017 139 (33), 11550-11558)
Regarding claim 1, Tamai discloses a negative electrode active material, comprising
silicon particles (paragraphs 0016-0017), wherein, when an X-ray photoelectron spectroscopy spectrum with a binding energy in a range of 678 eV or more and 698 eV or less is measured from a surface in a depth direction (paragraph 0079, figure 5, 690 eV or more and 695 eV or less, overlapping the claimed range), the X-ray photoelectron spectroscopy spectrum measured at any position in the depth direction has a first peak with a binding energy of 687 eV or more (paragraph 0079, figure 5, peak in the range of 686 eV or more and 690 eV or less, overlapping the claimed value). Tamai is silent regarding the X-ray photoelectron spectroscopy spectrum measured at a depth position different from a depth position at which the first peak is measured having a second peak at a position different from that of the first peak, and wherein an energy difference between a binding energy of the first peak and a binding energy of the second peak is 1 eV or more.
It is deemed that the X-ray photoelectron spectroscopy spectrum having a second peak when measured at a different depth position is an inherent characteristic and/or property of the specifically disclosed negative active material. In this respect, MPEP 2112 sets forth the
following:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the instant case, the negative electrode active material of the instant application is produced through treating the silicon particles with plasma in fluorine gas, forming surface layer 3, which is responsible for the first peak. Coating layer 4, a solid electrolyte interphase coating is subsequently formed on the material, which is responsible for the second peak (see instant application specification, paragraphs 0022-0029, 0034, 0078-0084, figure 1).
Ji discloses a negative electrode active material comprising silicon particles for a lithium-ion battery (Ji paragraphs 0008, 0015, 0030). Ji further discloses that the negative electrode active material may be exposed plasma in fluorine gas (Ji paragraphs 0010-0011, 0051) and that a solid electrolyte interphase layer may be coated on the active material (Ji paragraphs 0007, 0032-0033). As the active material particles are treated with plasma in fluorine gas and a solid electrolyte interphase coating are formed, the material disclosed by Ji is substantially identical in
structure to that of the specifically disclosed active material in the instant application. The
reference teaches that the process may improve interfacial kinetics and lifetime as well as reduce
irreversible charge loss (Ji paragraphs 0033-0034). Ji and Tamai are analogous because they both disclose silicon particles for negative electrode active materials.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the negative electrode active material disclosed by Tamai to include the fluorine treatment and solid electrolyte interphase formation as disclosed by Ji. Doing so would improve interfacial kinetics and lifetime as well as reduce irreversible charge loss.
Zhao discloses a surface fluorination process for anode materials wherein a fluoride containing layer is formed by treating the material with fluorine gas (Zhao abstract). Zhao further discloses that the treated material may be prelithiated silicon nanoparticles which improves the stability of the particles (Zhao Characterization and Stability of LiF Coated LixSi NPs), and that the treatment time is preferably 12 hours for the purpose of creating a homogenous coating layer (Zhao Results and Discussion). Zhao and Tamai are analogous because they both disclose silicon based negative electrode active materials.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the active material of modified Tamai to include the treatment time disclosed by Zhao for the purpose of forming a homogenous layer and improving stability. The treatment time would necessarily result in the claimed binding energy difference (see present specification examples 1-3) as the treatment time exceeds the examined application examples which do not provide the difference.
Regarding claim 3, modified Tamai discloses the limitations of claim 1. Tamai further discloses a negative electrode comprising the negative electrode active material (paragraphs 0007, 0015).
Regarding claim 4, modified Tamai discloses the limitations of claim 3. Tamai further discloses a lithium-ion secondary battery (paragraphs 0007, 0087), comprising the negative electrode (figure 2, negative electrode 40), a positive electrode that faces the negative electrode (figure 2, positive electrode 30), and an electrolyte that connects the negative electrode and the positive electrode (paragraphs 0007, 0087).
Regarding claim 5, modified Tamai discloses the limitations of claim 1. Tamai is silent regarding wherein an energy difference between a binding energy of the first peak and a binding energy of the second peak is 2 eV or more.
It is deemed that the X-ray photoelectron spectroscopy spectrum having a second peak wherein an energy difference between a binding energy of the first peak and a binding energy of the second peak is 2 eV or more is an inherent characteristic and/or property of the specifically disclosed negative active material. In this respect, MPEP 2112 sets forth the
following:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the instant case, the negative electrode active material of the instant application is produced through treating the silicon particles with plasma in fluorine gas, forming surface layer 3, which is responsible for the first peak. Coating layer 4, a solid electrolyte interphase coating is subsequently formed on the material, which is responsible for the second peak (see instant application specification, paragraphs 0022-0029, 0034, 0078-0084, figure 1).
Ji discloses a negative electrode active material comprising silicon particles for a lithium-ion battery (Ji paragraphs 0008, 0015, 0030). Ji further discloses that the negative electrode active material may be exposed plasma in fluorine gas (Ji paragraphs 0010-0011, 0051) and that a solid electrolyte interphase layer may be coated on the active material (Ji paragraphs 0007, 0032-0033). As the active material particles are treated with plasma in fluorine gas and a solid electrolyte interphase coating are formed, the material disclosed by Ji is substantially identical in
structure to that of the specifically disclosed active material in the instant application. The
reference teaches that the process may improve interfacial kinetics and lifetime as well as reduce
irreversible charge loss (Ji paragraphs 0033-0034). Ji and Tamai are analogous because they both disclose silicon particles for negative electrode active materials.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the negative electrode active material disclosed by Tamai to include the fluorine treatment and solid electrolyte interphase formation as disclosed by Ji to produce the second peak with the claimed energy difference. Doing so would improve interfacial kinetics and lifetime as well as reduce irreversible charge loss.
Zhao discloses a surface fluorination process for anode materials wherein a fluoride containing layer is formed by treating the material with fluorine gas (Zhao abstract). Zhao further discloses that the treated material may be prelithiated silicon nanoparticles which improves the stability of the particles (Zhao Characterization and Stability of LiF Coated LixSi NPs), and that the treatment time is preferably 12 hours for the purpose of creating a homogenous coating layer (Zhao Results and Discussion). Zhao and Tamai are analogous because they both disclose silicon based negative electrode active materials.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the active material of modified Tamai to include the treatment time disclosed by Zhao for the purpose of forming a homogenous layer and improving stability. The treatment time would necessarily result in the claimed binding energy difference (see present specification examples 1-3) as the treatment time exceeds the examined application examples which do not provide the difference.
Regarding claim 7, modified Tamai discloses the limitations of claim 1. Tamai further discloses a surface layer formed on at least a part of a surface of the silicon particles (paragraph 0016, 0076).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Tamai et al. (WO2018212274 A1, US 20210151749 A1 used as English equivalent) in view of Ji et al. (US 20200381707 A1) as applied to claim 1, and further in view of Park et al. (US 20190181426 A1).
Regarding claim 6, modified Tamai discloses the limitations of claim 1. Tamai is silent regarding wherein the negative active electrode material has an average particle size of 0.1 m or more and 10 m or less.
Park discloses silicon particles used as an active material for cathodes and anodes in electrochemical cells, such as for lithium ion batteries (Park paragraphs 0004, 0045). Park further discloses that the silicon particles can have an average particle size of between 0.5 µm and 10 µm (Park paragraph 0061). The reference teaches that the micron-sized silicon particles provide benefits such as good volumetric and gravimetric energy density (Park paragraph 0061). Park and Tamai are analogous because they both disclose electrode active materials comprising silicon particles.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the active material disclosed by Tamai to have the silicon particle diameter disclosed by Park. Doing so would provide good volumetric and gravimetric energy density.
Response to Arguments
Applicant's arguments filed 02/17/2026 have been fully considered but they are not persuasive.
Applicant argues that the cited prior art fails to establish that the inherent property of the X-ray photoelectron spectroscopy spectrum measured at a depth position different from a depth position at which the first peak is measured having a second peak at a position different from that of the first peak, and the claimed binding energy difference is necessarily present. Tamai discloses a negative electrode active material comprising silicon particles which exhibits a XPS peak within the claimed range. Tamai is silent regarding the second peak being measured at a different depth than the first peak, which is a result of a SEI coating layer formed by a fluorine treatment (see instant application specification paragraphs 0022-0029, 0034, 0078-0084, figure 1). Ji remedies the deficiencies of Tamai by disclosing a fluorine gas treatment for a silicon active material (Ji paragraphs 0010-0011, 0051). Therefore, Tamai in view of Ji discloses an active material with a substantially identical structure and produced by a substantially identical process to the claimed invention. MPEP 2112 sets forth the following:
• Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
• When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
• “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The resulting composition would necessarily provide the inherent property as it is produced in a substantially identical manner. It is noted that "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). There is no suggestion as to a structural or compositional difference between the claimed configuration and the material disclosed by the cited prior art resulting in a difference in the claimed property. Applicant points to the treatment time in Examples 1-3 of the present specification to suggest that it is necessary for the claimed property to be present in the material. Applicant is reminded that that the features upon which applicant relies (i.e., the fluorine treatment time) are not recited in the rejected claim. 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). Applicant does not claim a treatment duration or any product-by-process language to include the production steps that are asserted to be necessary, and further does not disclose a critical range in which the property is established. Applicant alleges that the examples demonstrate unexpected results. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicant points to Example 3 falling below the claimed range of the binding energy difference as evidence that longer treatment is necessary to provide the claimed feature. To establish unexpected 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). Limited examples linking the binding energy difference to the treatment time are provided with only Example 3 falling below the claimed binding energy difference. Therefore, criticality of the necessary treatment time is unclear as well as the necessary duration that is unclaimed and suggested to be necessary.
Furthermore, even if the unclaimed treatment time that Applicant links to the inherent property is necessary for the property to be present, Zhao discloses a fluorine gas treatment for a duration of 12 hours to provide stability to silicon-based nanoparticles for an anode active material. The treatment time disclosed by Zhao is well in excess of the treatment times of present Examples 1-2 which provide the claimed property according to the examined application. Therefore, the claimed property must necessarily be present in view of the cited prior art, as it discloses a substantially identical composition, process of making, and sufficient treatment time.
Conclusion
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/B.T.L./Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727