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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/02/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of Claims
The Applicant’s amendment and arguments, filed 02/05/2026, has been entered. Claims 1-5 and 7 are amended; claim 6 is canceled; and claims 8-12 are new. Support for the amendments is found in the original filing, and there is no new matter.
Upon considered said amendments and arguments, the previous 35 U.S.C.103 rejection set forth in Office Action mailed 11/06/2025 has been withdrawn. Amended and new grounds of rejections under 35 U.S.C. 102 citing to newly cited art is set forth below as necessitated by the claim amendments.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 and 7-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukasawa et al. (WO 2015145522 A1, hereinafter Fukasawa, cited in IDS filed 03/22/2023).
Regarding Claim 1, Fukasawa discloses the limitations regarding a negative electrode active material for a secondary battery (Fukasawa, negative electrode active material for a non-aqueous electrolyte battery, Page 3, Lines 12-18) including
a silicon composite material, the silicon composite material (Fukasawa, silicon composite active material 10, Annotated Figure 1, Page 6, Lines 11-18) comprising:
a lithium-ion conductive phase including silicon (Fukasawa, lithium silicate phase 12, Annotated Figure 1, Page 8, Lines 14-15); and
silicon particles dispersed in the lithium-ion conductive phase (Fukasawa, silicon nanoparticles, Annotated Figure 1 below, Page 6, Lines 11-18), wherein
the silicon composite material has a sea-island structure in which the silicon particles being an island part are dispersed in the lithium-ion conductive phase beinq a sea part (Fukasawa, Annotated Figure 1 below),
the lithium-ion conductive phase comprises at least one phase selected from the group consisting of a silicate phase (Fukasawa, lithium silicate phase 12, Annotated Figure 1, Page 8, Lines 14-15),
the silicon composite material includes a nitrogen-containing compound on a surface thereof (Fukasawa, the particles 13 that do not alloy with lithium are one or more selected from crystalline silicon nitride, crystalline silicon oxynitride, which can be used individually or in mixtures, Annotated Figure 1 below, Page 9, Lines 3-6), and
the nitrogen-containing compound is represented by the general formula: LimSiOxNyMz, wherein 0 ≤ m ≤ 1, 0 ≤ x ≤ 2.5, 0.025 ≤ y ≤ 1.33, 0 ≤ z ≤ 0.5, and M represents a metal element other than Si and Li (Fukasawa, silicon oxynitride Si2ON2, Page 40, Line 7; the Examiner notes that Si2ON2 is the empirical formula, and the claimed general formula encompasses the molecular formula, as demonstrated in Instant Specification [0016], so the molecular formula of Si2ON2 is SiO0.5N:
Lim, and m = 0, falling within the claimed range of 0 ≤ m ≤ 1;
Si = Si;
O = O, and x = 0.5, falling within the claimed range of 0 ≤ x ≤ 2.5;
N = N, and y = 1, falling within the claimed range of 0.025 ≤ y ≤ 1.33;
Mz, and z = 0, meeting the claimed range of 0 ≤ z ≤ 0.5).
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Regarding Claim 2, Fukasawa discloses all of the claim limitations as set forth above. Fukasawa discloses the limitations regarding a negative electrode active material for a secondary battery (Fukasawa, negative electrode active material for a non-aqueous electrolyte battery, Page 3, Lines 12-18), wherein the nitrogen-containing compound includes at least one of silicon nitride and a nitride silicate (Fukasawa, the particles 13 that do not alloy with lithium are one or more selected from crystalline silicon nitride, crystalline silicon oxynitride, which can be used individually or in mixtures, Annotated Figure 1 above, Page 9, Lines 3-6).
Regarding Claim 3, Fukasawa discloses all of the claim limitations as set forth above. Fukasawa discloses the limitations regarding a negative electrode active material for a secondary battery (Fukasawa, negative electrode active material for a non-aqueous electrolyte battery, Page 3, Lines 12-18).
With respect to the limitations an XPS pattern obtained by X-ray photoelectron spectroscopy has an N1s peak corresponding to a Si element-N element bond within a range of 397 eV or higher and 399 eV or lower, it is submitted that such limitations are simply measurements of, and thus descriptions of, inherent properties of the recited negative electrode active material.
Applicant discloses in Comparative Example 1, on battery B1, nitrogen gas was used at 850 °C, and an XPS peak within a range of 397 eV or higher and 399 eV or lower was absent (see Instant Specification [0066, 0073-0074]). Applicant discloses
since having high resistance against hydrogen fluoride, the nitride containing compound particularly preferably has a Si element-N element bond (Instant Specification [0016]).
Accordingly, it is reasonably interpreted that a Si element-N element bond would fulfil the recited measurements and necessarily possess the inherent properties.
Fukasawa teaches that if the heat treatment temperature is lower than 1100°C, the nitriding reaction will not occur (Fukasawa, Page 11, Lines 4-12). Fukasawa discloses the temperature is raised to between 1100°C and 1400°C to react the silicon particles deposited on the surface with nitrogen gas. This makes it possible to convert silicon nanoparticles, particularly those located on the surface, into silicon nitride or silicon oxynitride (Fukasawa, Page 11, Lines 4-12). The Examiner notes that the nitriding reaction between nitrogen gas and silicon only occurs at a temperature between 1100 °C and 1400°C, as taught by Fukasawa, so Comparative Example 1 of the Instant Specification was performed at 850 °C, so the nitriding reaction between the silicon and the nitrogen gas did not occur and the N1s peak was not observed, as expected by Fukasawa. Fukasawa discloses the particles 13 that do not alloy with lithium are one or more selected from crystalline silicon nitride, crystalline silicon oxynitride, which can be used individually or in mixtures, which would have a Si element-N element bond (Fukasawa, Annotated Figure 1 above, Page 9, Lines 3-6).
It is submitted that the negative electrode active material of Fukasawa is substantially similar to the instant negative electrode active material such that the negative electrode active material of Fukasawa would reasonably possess the same properties and exhibit the same results.
Therefore, based upon such substantial similarities, it appears reasonable that the negative electrode active material of Fukasawa would inherently possess physical properties, e.g. XPS pattern, such that the negative electrode active material of Choi would necessarily fulfill the recited limitations, i.e. XPS pattern obtained by X-ray photoelectron spectroscopy has an N1s peak corresponding to a Si element-N element bond within a range of 397 eV or higher and 399 eV or lower.
Assuming, arguendo, that such properties are not inherent, it is submitted that before the effective filing date of the current invention, one having ordinary skill in the art would find such properties obvious over the negative electrode active material. The skilled artisan would reasonably find that the disclosed negative electrode active material of Fukasawa is so similar to the instant negative electrode active material, that the prior art negative electrode active material would also exhibit a XPS pattern obtained by X-ray photoelectron spectroscopy has an N1s peak corresponding to a Si element-N element bond within a range of 397 eV or higher and 399 eV or lower.
Regarding Claim 7, Fukasawa discloses all of the claim limitations as set forth above. Fukasawa discloses the limitations regarding a secondary battery (Fukasawa, non-aqueous electrolyte secondary battery 200, Page 23, Lines 13-14, Figure 5-6), comprising:
a negative electrode using the negative electrode active material for the secondary battery (Fukasawa, negative electrode 203, Page 24, Lines 3-6, Figures 5-6);
a positive electrode (Fukasawa, positive electrode 205, Page 24, Lines 3-6, Figures 5-6); and
a non-aqueous electrolyte solution (Fukasawa, liquid non-aqueous electrolyte, Page 24, Lines 18-19).
Regarding Claim 8, Fukasawa discloses all of the claim limitations as set forth above. Fukasawa discloses the limitations regarding a negative electrode active material for a secondary battery (Fukasawa, negative electrode active material for a non-aqueous electrolyte battery, Page 3, Lines 12-18), wherein the lithium-ion conductive phase comprises the silicate phase, the silicate phase includes at least one of an alkali metal element or a group 2 element in a long periodic table, and the alkali metal element is a group 1 element other than hydrogen in the long periodic table (Fukasawa, lithium silicate phase 12, Annotated Figure 1 above, Page 8, Lines 14-15).
Regarding Claim 9, Fukasawa discloses all of the claim limitations as set forth above. Fukasawa discloses the limitations regarding a negative electrode active material for a secondary battery (Fukasawa, negative electrode active material for a non-aqueous electrolyte battery, Page 3, Lines 12-18), wherein the silicate phase includes lithium (Fukasawa, lithium silicate phase 12, Annotated Figure 1 above, Page 8, Lines 14-15).
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.
Claim(s) 4 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukasawa et al. (WO 2015145522 A1, hereinafter Fukasawa, cited in IDS filed 03/22/2023).
Regarding Claim 4, Fukasawa discloses all of the claim limitations as set forth above. Fukasawa discloses the limitations regarding a negative electrode active material for a secondary battery (Fukasawa, negative electrode active material for a non-aqueous electrolyte battery, Page 3, Lines 12-18). Fukasawa discloses that the particles 13 that do not alloy with lithium are one or more selected from crystalline silicon carbide, crystalline silicon nitride, crystalline silicon oxynitride, which can be used individually or in mixtures, (Fukasawa, Annotated Figure 1 above, Page 9, Lines 3-6), and when producing silicon carbide as particles 13, the carbon coverage is preferably in the range of 0.1% by mass or more and 20% by mass or less after carbonization with respect to the silicon oxide particles (Fukasawa, Page 10, Lines 13-19).
While Fukasawa may be silent regarding a content of a nitrogen element included in the silicon composite material is 0.1 wt% or more and 20 wt% or less based on a total amount of the silicon composite material, Fukasawa does disclose that the carbon coverage is preferably in the range of 0.1% by mass or more and 20% by mass or less after carbonization with respect to the silicon oxide particles (Fukasawa, Page 10, Lines 13-19), and the particles 13 that do not alloy with lithium are one or more selected from crystalline silicon carbide, crystalline silicon nitride, crystalline silicon oxynitride (Fukasawa, Annotated Figure 1 above, Page 9, Lines 3-6).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention that the nitrogen coverage may be similar to the carbon coverage when using silicon nitride and/or silicon oxynitride instead of silicon carbide because silicon nitride and/or silicon oxynitride are obvious substitutions to silicon carbide, as disclosed by Fukasawa.
So, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have nitrogen coverage range of 0.1% by mass or more and 20% by mass or less with respect to the silicon oxide particles, as taught by Fukasawa, because silicon nitride and/or silicon oxynitride are obvious substitutions to silicon carbide. The disclosed range of 0.1% by mass or more and 20% by mass or less with respect to the silicon oxide particles would at least overlap the claimed range of 0.1 wt% or more and 20 wt% or less based on a total amount of the silicon composite material.
It would have been obvious to one having ordinary skill in the art before the time of the effective filing date of the current invention to select the overlapping portions of the disclosed because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05 (I)).
Regarding Claim 12, Fukasawa discloses all of the claim limitations as set forth above. Fukasawa discloses the limitations regarding a negative electrode active material for a secondary battery (Fukasawa, negative electrode active material for a non-aqueous electrolyte battery, Page 3, Lines 12-18), wherein the silicon particles dispersed in the lithium-ion conductive phase have an average particle diameter of 50 nm or more and 400 nm or less (Fukasawa, the average diameter of the silicon nanoparticles 11 is preferably between 2 nm and 150 nm, Page 7, Lines 9-12; the disclosed range of between 2 nm and 150 nm overlaps the claimed range of 50 nm or more and 400 nm or less).
It would have been obvious to one having ordinary skill in the art before the time of the effective filing date of the current invention to select the overlapping portions of the disclosed because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05 (I)).
Claim(s) 5 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukasawa et al. (WO 2015145522 A1, hereinafter Fukasawa, cited in IDS filed 03/22/2023), in view of Koposov et al. (US 20220246932 A1, hereinafter Koposov).
Regarding Claim 5, Fukasawa discloses all of the claim limitations as set forth above. Fukasawa discloses the limitations regarding a negative electrode active material for a secondary battery (Fukasawa, negative electrode active material for a non-aqueous electrolyte battery, Page 3, Lines 12-18), wherein
the nitrogen-containing compound is represented by the general formula: LimSiOxNyMz, wherein 0 ≤ m ≤ 1, 0 ≤ x ≤ 2.5, 0.025 ≤ y ≤ 1.33, 0 ≤ z ≤ 0.5, and M represents a metal element other than Si and Li (Fukasawa, silicon oxynitride Si2ON2, Page 40, Line 7; the Examiner notes that Si2ON2 is the empirical formula, and the claimed general formula encompasses the molecular formula, as demonstrated in Instant Specification [0016], so the molecular formula of Si2ON2 is SiO0.5N:
Lim, and m = 0, falling within the claimed range of 0 ≤ m ≤ 1;
Si = Si;
O = O, and x = 0.5, falling within the claimed range of 0 ≤ x ≤ 2.5;
N = N, and y = 1, falling within the claimed range of 0.025 ≤ y ≤ 1.33;
Mz, and z = 0, meeting the claimed range of 0 ≤ z ≤ 0.5).
Fukasawa is silent regarding the metal element M includes at least one element selected from the group consisting of B, AI, P, Sn, Sb, and C, which are group 1 elements in a long periodic table and group 2 elements in the long periodic table.
Koposov discloses a negative electrode active material for a secondary battery (Koposov, modified electrode active materials may be used to form at least part of an anode, which may be included in a battery, [0113]) comprising nitrogen-containing compound is represented by the general formula: LimSiOxNyMz, wherein 0 ≤ m ≤ 1, 0 ≤ x ≤ 2.5, 0.025 ≤ y ≤ 1.33, 0 ≤ z ≤ 0.5, and
M includes at least one element selected from the group consisting of B, AI, P, Sn, Sb, and C, which are group 1 elements in a long periodic table and group 2 elements in the long periodic table (Koposov, the modified electrode active material layer contains a plurality of particles comprising modified amorphous or crystalline, micro- or nano-sized stoichiometric or non-stochiometric silicon nitride, and each particle may have a chemical composition SiNx2Ay, wherein A represents one or more modifying elements element selected from the group phosphorus (P), boron (B), carbon (C), tin (Sn), aluminum (Al),) or antimony (Sb). 0-30% of the nitrogen or silicon atoms in the particles are substituted with one or more modifying elements element, and the atomic ratio of silicon to nitrogen is in the range of 1:0.02 to 1:1.33, [0098-0102];
Lim, and m = 0, falling within the claimed range of 0 ≤ m ≤ 1;
Si = Si;
O = O, and x = 0, falling within the claimed range of 0 ≤ x ≤ 2.5;
N = N, and 0.02 ≤ y ≤ 1.133, overlapping the claimed range of 0.025 ≤ y ≤ 1.33;
M = B, Al, Sn, P, C, and Sb,
and z = 0 ≤ x ≤ 0.3, falling within the claimed range of 0 ≤ z ≤ 0.5).
Koposov teaches that by producing particles of the modified active material containing one or more modifying elements, both the electron mobility and the lithium mobility can be improved when modified electrode active material particles are used in an anode in a lithium-ion battery (Koposov, [0057]). In addition, Koposov teaches that a nitride coating has a positive effect on both the cycling stability and high rate performance (Koposov, [0021]).
Fukasawa and Koposov are analogous to the current invention as they are all directed towards a negative electrode active material for a battery comprising silicon nitride.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the silicon nitride of Fukasawa with one or more modifying elements, such as B, Al, Sn, P, C, and Sb, wherein 0-30% of the nitrogen or silicon atoms in the particles are substituted with one or more modifying elements element, as taught by Koposov, in order to improve both the electron mobility and the lithium mobility.
It would have been obvious to one having ordinary skill in the art before the time of the effective filing date of the current invention to select the overlapping portions of the disclosed because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05 (I)).
Regarding Claim 10, Fukasawa discloses all of the claim limitations as set forth above. Fukasawa discloses the limitations regarding a negative electrode active material for a secondary battery (Fukasawa, negative electrode active material for a non-aqueous electrolyte battery, Page 3, Lines 12-18), wherein in the general formula: LimSiOxNyMz, a relation of 0 < z ≤ 0.5 is satisfied (Koposov, the modified electrode active material layer contains a plurality of particles comprising modified amorphous or crystalline, micro- or nano-sized stoichiometric or non-stochiometric silicon nitride, and each particle may have a chemical composition SiNx2Ay, wherein A represents one or more modifying elements element selected from the group phosphorus (P), boron (B), carbon (C), tin (Sn), aluminium (Al),) or antimony (Sb). 0-30% of the nitrogen or silicon atoms in the particles are substituted with one or more modifying elements element, and the atomic ratio of silicon to nitrogen is in the range of 1:0.02 to 1:1.33, [0098-0102]; the disclosed range of 0 ≤ z ≤ 0.3 overlaps the claimed range of 0 < z ≤ 0.5).
It would have been obvious to one having ordinary skill in the art before the time of the effective filing date of the current invention to select the overlapping portions of the disclosed because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05 (I)).
Regarding Claim 11, Fukasawa discloses all of the claim limitations as set forth above. Fukasawa discloses the limitations regarding a negative electrode active material for a secondary battery (Fukasawa, negative electrode active material for a non-aqueous electrolyte battery, Page 3, Lines 12-18), wherein the metal element M includes at least one element selected from the group consisting of B and AI (Koposov, the modified electrode active material layer contains a plurality of particles comprising modified amorphous or crystalline, micro- or nano-sized stoichiometric or non-stochiometric silicon nitride, and each particle may have a chemical composition SiNx2Ay, wherein A represents one or more modifying elements element selected from the group boron (B) or aluminium (Al). 0-30% of the nitrogen or silicon atoms in the particles are substituted with one or more modifying elements element, and the atomic ratio of silicon to nitrogen is in the range of 1:0.02 to 1:1.33, [0098-0102]).
Response to Arguments
Applicant’s arguments, see Pages 5-7, filed 02/05/2026, with respect to the rejection(s) of claim(s) 1-7 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Fukasawa et al. (WO 2015145522 A1, hereinafter Fukasawa, cited in IDS filed 03/22/2023), as noted above.
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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/K.N./Examiner, Art Unit 1752
/OSEI K AMPONSAH/Primary Examiner, Art Unit 1752
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