DETAILED ACTION
Response to Amendments
Applicant’s amendments and arguments filed Dec. 29, 2025 have been entered. A reply to the Applicant’s remarks/arguments is presented after addressing the claims.
Any rejections and/or objections made in the previous Office Action and not repeated below, are hereby withdrawn in view of Applicant’s amendments or/and arguments.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. References cited in the current Office action can be found in a prior Office action.
Status of Claims
Claims 1, 6-7, 9, 17-18 and 21-30 are pending, wherein claims 1, 7, 9 and 18 have been amended, claims 7, 9 and 17 were previously withdrawn, and claims 21-30 are newly added. Thus, claims 1, 6, 18 and 21-30, with previously elected species, are being examined on the merits in this office action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on Oct. 29, 2025 has been considered by the examiner.
Claim Interpretations
The term “about” recited in claims 1 and 6 are interpreted according to the specification (paragraph [0041]).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 25 and 30 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The second plurality of cations elected by the Applicant in response to the Restriction/Election requirement mailed Jul. 3, 2025 is “lithium ions” (i.e., Species C1). The species recited in claims 25 and 30 were non-elected species and remain “withdrawn”. The subject matters of claims 25 and 30 do not further limit claims 1 or 18 upon which they depend. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 1, 6, 18 and 21-30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Due to the claim amendments, “the cations” recited in claim 1 (last line) and claim 18 (line 12) are ambiguous. There is insufficient antecedent basis for this limitation in the claims. For purposes of examination, the “the cations” is being interpreted as referring to aforementioned “a plurality of cations” (line 3 in claim 1; line 8 in claim 18).
Claim 18 (line 12) recites a ratio, however, it is unclear as to what unit it is about (mass amount?, Volume?, Number? …), rendering the claim(s) indefinite. For purposes of examination, the claimed ratio is interpreted as referring to a molar ratio.
Claim 1 (line 3) and claim 18 (line 8) recite “the atomic layers”. There is insufficient antecedent basis for this limitation in the claims.
Claim 18 recites the limitation "the atomic layer" in “… that define the atomic layers”. There is insufficient antecedent basis for this limitation in the claim.
Claims 22-23 recite “the first cation”, i.e., “a first cation” aforementioned “a first cation” recited in claim 1 from which claims 22-23 depend. Firstly, it is unclear as to what unit (number? weight? …) the claimed “50%” or “95%” is based on. Secondly, it is not understandable that a cation can comprise 50% or 95% of the plurality of cations. For purposes of examination, the recitations in the two claims are interpreted as referring to numbers of the first kind of cation. The issue applies similarly to “the second cation” recited in claim 24 and the recitation in the claim is interpreted as referring to a number of the second kind of cation.
Claim 25 recite “the second plurality of cation”. There is insufficient antecedent basis for this limitation in the claim.
Claims 27-28 recite “the first cation”, i.e., “a first cation” aforementioned “a first cation” recited in claim 18 from which claims 27-28 depend. Firstly, it is unclear as to what unit (number? weight? …) the claimed “50%” or “95%” is based on. Secondly, it is not understandable that a cation can comprise 50% or 95% of the plurality of cations. For purposes of examination, the recitations in the two claims are interpreted as referring to numbers of the first kind of cation. The issue applies similarly to “the second cation” recited in claim 29 and the recitation in the claim is interpreted as referring to a number of the second kind of cation.
Claim Rejections - 35 USC § 103
Claims 1-3, 6, 18 and 21-30 are rejected under 35 U.S.C. 103 as being unpatentable over Mah et al. (US 20140295273 A1, hereafter Mah).
Regarding claims 1-3, Mah teaches an electroactive material for an electrochemical cell that cycles lithium ions (e.g., [0099], [0100], [0108]), wherein the electroactive material comprises CaSi2 (e.g., Example 1, [0100]). CaSi2 is a well-known layered structure of alternating atomic layers of silicon and calcium (e.g., google “CaSi2 molecular structure”; also admitted by the applicant in paragraph [0072] of the instant specification), which teaches a plurality of atomic layers of silicon as claimed and a plurality of first cations of calcium disposed between the plurality of atomic layers of silicon.
Mah further teaches the electrochemical cell comprising CaSi2 as an anode material can be charged/discharged (e.g., [0108]). During the discharging process, it is reasonably expected that a plurality of Ca2+ cations are removed from CaSi2 and a plurality of two-dimensional and layered atomic layers comprising Si remain, according to the instant specification (at least: [0072]-[0073]) as well as general knowledge about how a lithium ion secondary works.. The same process/method is expected to produce the same or at least similar results/effects. On the other hand, during the charging process, it is reasonably expected that Ca2+, together the lithium cations Li+ (LiPF6, [0099]) present in the electrolyte solution of the electrochemical cell, would move back to the spaces or voids between Si layers resulted from Ca2+ removal during the discharging process. The lithium cations Li+ reads on the second cation(s) as claimed. The discharging/charging process described above represents basic working mechanism of a lithium ion secondary and would be readily understood by one of ordinary skill in the battery field.
Mah further discloses an evaluation of charge-discharge characteristics, wherein different current rates or/and voltages can be applied during charging/discharging process (Evaluation Example 3). One of ordinary skill in the battery field would readily appreciate that a change of current rate or/and voltage during the said process will affect the amount and movement of cations including Li+ and Ca2+. Although Mah does not expressly disclose it, the said process is general knowledge about how a lithium-ion secondary works. Thus, one of ordinary skill in the battery field would have readily arrived at the claimed molar ratio of less than about 1:2 by changing the current rate or/and voltage during the discharging/charging process to control the amount of Ca2+and Li+ that moves back to the spaces or voids between Si layers. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Regarding claim 6, Mah teaches the electroactive material of claim 1, where the electroactive material is in the form of a plurality of electroactive particles having an average diameter of about 40 µm ([0095]), reading on the instantly claimed range.
Regarding claim 18, Mah teaches an electrochemical cell that cycles lithium ions (See “coin cell” in, e.g., [0099], [0100]), the electrochemical cell comprising:
a first electrode having a first polarity and comprising a first electroactive material (“metal lithium as a counter electrode”, [0099]);
a second electrode having a second polarity different from the first polarity and comprising a second electroactive material (“an anode active material” in [0100]); and
a separating layer disposed between the first electrode and the second electrode (“polyethylene separator”, [0099]).
The second electroactive material comprises the instantly claimed limitations as explained below:
Mah teaches the second electroactive material comprises CaSi2 (e.g., Example 1, [0100]). CaSi2 is a well-known layered structure of alternating atomic layers of silicon and calcium (e.g., google “CaSi2 molecular structure”; also admitted by the applicant in paragraph [0072] of the instant specification), which teaches a plurality of atomic layers of silicon as claimed and a plurality of first cations of calcium disposed between the plurality of atomic layers of silicon.
Mah further teaches the electrochemical cell comprising CaSi2 as an anode material can be charged/discharged (e.g., [0108]). During the discharging process, it is reasonably expected that a plurality of Ca2+ cations are removed from CaSi2 and a plurality of two-dimensional and layered atomic layers comprising Si remain, according to the instant specification (at least: [0072]-[0073]) as well as general knowledge about how a lithium ion secondary works. The same process/method is expected to produce the same or at least similar results/effects. On the other hand, during the charging process, it is reasonably expected that Ca2+, together the lithium cations Li+ (LiPF6, [0099]) present in the electrolyte solution of the electrochemical cell, would move back to the spaces or voids between Si layers resulted from Ca2+ removal during the discharging process. The lithium cations Li+ reads on the second cation(s) as claimed. The discharging/charging process described above represents basic working mechanism of a lithium ion secondary and would be readily understood by one of ordinary skill in the battery field.
Mah further discloses an evaluation of charge-discharge characteristics, wherein different current rates or/and voltages can be applied during charging/discharging process (Evaluation Example 3). One of ordinary skill in the battery field would readily appreciate that a change of current rate or/and voltage during the said process will affect the amount and movement of cations including Li+ and Ca2+. Although Mah does not expressly disclose it, the said process is general knowledge about how a lithium-ion secondary works. Thus, one of ordinary skill in the battery field would have readily arrived at the claimed molar ratio of less than about 1:2 by changing the current rate or/and voltage during the discharging/charging process to control the amount of Ca2+and Li+ that moves back to the spaces or voids between Si layers. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Regarding claim 21, Mah teaches the electroactive material of claim 1, and further teaches the size of CaSi2 can be reduced from a particle diameter of about 40 µm by milling in a planetary mill ([0095], [0100]). One of ordinary skill in the art would have readily arrived at the claimed size through routine experimentations of milling. In the absence of unexpected results or evidence that the claimed size is critical, the claim is not patentably distinguishable since the milling involves merely ordinary capabilities of one skilled in the art and the claimed size can be routinely achieved.
Regarding claims 22-24, Mah teaches the electroactive material of claim 1, and the claimed numbers of the first kind of cation (i.e., Ca2+) or the claimed numbers of the second kind of cation (i.e., Li+) relative to that of the plurality of cations can be achieved by adjusting current rate or/and voltage during discharging/charging process to control the amount of cations moving in the electrolyte solution. See the rejection of claim 1.
Regarding claim 25, all the members or a combination of members of the Markush group in the claim was/were non-elected in the response to the Restriction/Election requirement and therefore do not need to be addressed.
Regarding claim 26, Mah teaches the electroactive material of claim 18, and further teaches the size of CaSi2 can be reduced from a particle diameter of about 40 µm by milling in a planetary mill ([0095], [0100]). One of ordinary skill in the art would have readily arrived at the claimed size through routine experimentations of milling. In the absence of unexpected results or evidence that the claimed size is critical, the claim is not patentably distinguishable since the milling involves merely ordinary capabilities of one skilled in the art and the claimed size can be routinely achieved.
Regarding claims 27-29, Mah teaches the electroactive material of claim 18, and the claimed numbers of the first kind of cation (i.e., Ca2+) or the claimed numbers of the second kind of cation (i.e., Li+) relative to that of the plurality of cations can be achieved by adjusting current rate or/and voltage during discharging/charging process to control the amount of cations moving in the electrolyte solution. See the rejection of claim 18.
Regarding claim 30, all the members or a combination of members of the Markush group in the claim was/were non-elected in the response to the Restriction/Election requirement and therefore do not need to be addressed.
Response to Arguments
Applicant's arguments filed Dec. 29, 2025 have been fully considered but they are not persuasive.
Applicant's arguments are based on the claims as amended. The amended claims have been addressed in the new rejections above.
In addition, Applicant’s argument that “there is no suggestion in Mah that the proposed intercalation is or should be a partial intercalation …” is not clear. The examiner is trying his best to respond. In response, the argument is not commensurate with the scopes of at least the independent claims 1 and 18, since they do not claim/recite “partial intercalation”.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHONGQING WEI whose telephone number is (571)272-4809. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (571)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZHONGQING WEI/
ZHONGQING WEI, Ph.D.Primary Examiner, Art Unit 1727
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