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 .
This action is in response to applicant’s amendments and arguments filed 01/27/2026. Claims 1-3 and 5-8 are currently pending for examination on the merits, with claims 9-14 withdrawn from consideration.
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.
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 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. ("Nanostructured Phosphorus Doped Silicon/Graphite Composite as Anode for High-Performance Lithium-Ion Batteries," ACS Applied Material & Interfaces, Vol. 9, pp. 23672-23678, Jun. 2017) (Huang) (of record) in view of Choi et al. (US 2021/0175488) (Choi) (of record) and Rohani et al. (US 2021/0114886) (Rohani) (of record).
Regarding claim 1, Huang discloses a method of manufacturing a silicon nanocomposite structure powder for a negative electrode material (title; abstract), the method comprising: a first ball milling process designed to reduce micro-sized (from 1 to 3 m) micron silicon powder into a nano-sized (from 100 to 1,000 nm) nano silicon powder (see Scheme 1; pg. 23673, col. 1, lines 4-8; pg. 23673, col. 2, lines 16-22), suggesting the claimed step of refining a micro-sized micro silicon powder into a nano-sized nano silicon powder by milling. Huang fails to disclose, however, that the method includes heating a surface of the nano silicon powder to oxidize the surface of the nano silicon powder and form a non-stoichiometric amorphous silicon oxide SiOx (1<x<2) layer on the surface of the nano silicon powder, thereby producing an SiOx-surface treated nano silicon powder.
However, it is known in the art to create an amorphous silicon oxide layer on the surface of silicon powder in negative electrode active materials. For instance, Choi teaches a similar method of manufacturing a silicon nanocomposite structure powder for a negative electrode material (title; abstract; [0023]; [0048]), wherein a surface of the nano silicon powder is heated to oxidize the surface of the nano silicon powder and form a non-stoichiometric amorphous silicon oxide SiOx (0<x
≤
2) layer on the surface of the nano silicon powder, thereby producing an SiOx-surface treated nano silicon powder ([0021]; [0024]-[0025]; [0048]-[0049]). Examiner notes that the amorphous silicon oxide SiOx (0<x
≤
2) layer taught by Choi encompasses the claimed silicon oxide SiOx (1<x<2) layer. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP §2144.05. Choi further teaches that providing this silicon oxide layer on the surface of the silicon powder allows the excessive volume change of the silicon powder to be controlled during charging and discharging of the battery ([0025]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method disclosed by Huang to include a step of heating a surface of the nano silicon powder to form a silicon oxide layer on the surface of the silicon powder, as taught by Choi, because they would have had a reasonable expectation that doing so would help to control excessive volume change of the silicon powder during charging and discharging of the battery.
Regarding the claimed heating conditions, modified Huang fails to explicitly disclose that a surface of the nano silicon powder is heated at a range of 350oC to 450oC for two hours.
However, this heat treatment condition is conventional in the art. For instance, Rohani teaches a method of oxidizing a surface of nano silicon powder to form a non-stoichiometric amorphous silicon oxide SiOx (1
≤
x
≤
2) layer on the surface of the nano silicon powder through a heat treatment process ([0028]-[0029]; [0037]). Rohani further teaches that the oxide coating thickness can be tuned by changing the oxidation time and temperature ([0042]), thus making the duration and the temperature of the heat treatment process result-effective variables. Furthermore, Rohani teaches that the temperature of the heat treatment process for obtaining the oxide layer can be in the range of 400oC to 1,100oC ([0083]), overlapping the claimed range of 350oC to 450oC. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Rohani further teaches that the duration of the heat treatment process can be as low as one hour or as high as six hours depending on the desired oxide thickness and the temperature ([0083]; [0029]), which encompasses the claimed duration of 2 hours.
Therefore, absent any showing of unexpected results or criticality for the claimed heat treatment condition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Huang to have chosen a heat treatment condition for obtaining the oxide phase that falls within the claimed heat treatment condition, as suggested by Rohani, through routine experimentation in order to optimize the desired thickness of the silicon oxide layer.
Regarding claim 2, modified Huang discloses all of the limitations as set forth above for claim 1. Modified Huang further discloses that the nano silicon powder obtained by milling the silicon powder has a size in a range of 100 to 1,000 nm (Huang: pg. 23673, col. 2, lines 16-22), overlapping the claimed range of 50 to 200 nm. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Therefore, absent any showing of unexpected results or criticality for the claimed range, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Huang to have satisfied the claimed range based on the overlapping range disclosed by modified Huang.
Regarding claim 3, modified Huang discloses all of the limitations as set forth above for claim 2. Modified Huang further discloses that the milling is performed for a duration of 6 hours by mechanical milling (Huang: pg. 23673, col. 1, lines 4-8), suggesting the claimed range of 6 to 10 hours.
Regarding claim 5, modified Huang discloses all of the limitations as set forth above for claim 1. Choi further teaches that the SiOx (0<x
≤
2) layer has a thickness in a range of 0.01 m, to 20 nm (Choi: [0026]), encompassing the claimed range of 5 to 20 nm. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP §2144.05. Therefore, since modified Huang includes the teachings from Choi regarding the SiOx (0<x
≤
2) layer, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Huang to have satisfied all of the limitations in claim 5.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. ("Nanostructured Phosphorus Doped Silicon/Graphite Composite as Anode for High-Performance Lithium-Ion Batteries," ACS Applied Material & Interfaces, Vol. 9, pp. 23672-23678, Jun. 2017) (Huang) (of record) in view of Choi et al. (US 2021/0175488) (Choi) (of record) and Rohani et al. (US 2021/0114886) (Rohani) (of record) as applied to claim 1 above, and further in view of Chen (CN 108269967 with English Machine Translation) (of record).
Regarding claim 6, modified Huang discloses all of the limitations as set forth above for claim 1. Modified Huang further discloses that the method includes mixing the silicon powder with graphite powder (Huang: pg. 23673, col. 1, lines 4-9). Furthermore, Choi teaches that the silicon powder is SiOx-surface treated before mixing with a carbon source (Choi: [0048]-[0053]). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Huang to have mixed the SiOx-surface treated nano silicon powder with graphite powder. Modified Huang further discloses that the method includes milling the resulting mixed powder to disperse the SiOx-surface treated nano silicon powder on a matrix made of the graphite powder (Huang: see Scheme 1; pg. 23673, col. 1, lines 4-9; pg. 23672, col. 2, lines 8-10). However, modified Huang fails to explicitly disclose that the method includes forming a graphene layer on a surface of the SiOx (1<x<2) layer of the SiOx-surface treated nano silicon powder.
Chen teaches a similar method of manufacturing a silicon nanocomposite structure powder for a negative electrode material (title; abstract; [0036]), wherein the method comprises mixing silicon powder with graphite, and milling the resulting mixed powder in a solvent to form a graphene layer on a surface of the nano silicon powder ([0009]-[0010]; [0012]; [0014]; [0017]). Chen further teaches that forming a graphene layer on the nano silicon powder by this method improves the initial efficiency, cycle performance, and volume change of the battery ([0063]; [0005]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the milling step in the method disclosed by modified Huang such that a graphene layer is formed on a surface of the SiOx-surface treated nano silicon powder, as taught by Chen, because they would have had a reasonable expectation that doing so would improve the initial efficiency, cycle performance, and volume change of the battery.
Regarding claim 7, modified Huang discloses all of the limitations as set forth above for claim 6. Chen further teaches that the milling step of the mixed silicon powder and graphite is performed for a duration of 2 to 96 hours ([0010]), overlapping the claimed range of 2 hours or less. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Therefore, since modified Huang includes the teachings from Chen regarding the milling step, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Huang to have satisfied all of the limitations in claim 7.
Regarding claim 8, modified Huang discloses all of the limitations as set forth above for claim 6. The instant specification indicates that a milling time of 2 hours or less is sufficient to maintain the crystallinity of the graphite powder to at least 50% (see [0026] of the PGPub of the instant application). Furthermore, Chen teaches that the milling step of the mixed silicon powder and graphite is performed for a duration of 2 to 96 hours ([0010]), overlapping the disclosed range of 2 hours or less. Therefore, since the time range taught by Chen shares an endpoint of 2 hours with the disclosed time range of the instant application, absent any showing of unexpected results or criticality, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Huang to have chosen a milling time of 2 hours. What’s more, since the instant specification clearly states that a milling time of 2 hours or less leads to a graphite powder crystallinity of at least 50%, it is inherent that the milling time of 2 hours disclosed by modified Huang would lead to a crystallinity of the graphite powder of at least 50%. Thus, modified Huang satisfies all of the limitations in claim 8.
Response to Arguments
Applicant’s amendments to the claims have overcome the 112(b) rejection previously set forth in the Non-Final Office Action mailed 11/28/2025.
Applicant's arguments filed 01/27/2026 have been fully considered but they are not persuasive.
Applicant argues that the Rohani reference fails to teach the claimed oxidizing conditions of 350oC to 450oC for two hours. Specifically, applicant argues that paragraph [0083] of Rohani has nothing to do with the formation of a non-stoichiometric amorphous silicon oxide SiOx phase but, rather, replacement of surface hydrogen bonds with hydroxide bonds to help grow a uniform silica layer on the surface. Examiner respectfully disagrees. While applicant has correctly pointed out that the process described in paragraph [0083] of Rohani involves replacing surface hydrogen bonds with hydroxide bonds to form a silica layer on the surface of the silicon nanoparticles, applicant errs in assuming that this process is not an oxidizing heat treatment to form a non-stoichiometric amorphous silicon oxide SiOx phase. Indeed, the formation of a silica layer from silicon nanoparticles necessarily involves an oxidation reaction, and Rohani specifically characterizes this same process elsewhere as “oxidizing” the surface of the silicon nanoparticles ([0028]-[0029]; [0042]). Furthermore, Rohani specifically teaches that the silicon oxide (or silica) layer formed during the process in paragraph [0083] can be a non-stoichiometric SiOx phase, where x is 1-2, including all 0.1 values and ranges therebetween ([0037]). Thus, it is clear that one of ordinary skill in the art, in taking the Rohani reference as a whole, would have recognized the process described in paragraph [0083] as corresponding to the claimed heat treatment process. What’s more, to the extent that Rohani makes obvious the claimed heating conditions of 350oC to 450oC for two hours by the overlapping ranges of 400oC to 1,100oC for one to six hours ([0083]; [0029]), the oxidizing step disclosed by Rohani would inherently lead to the claimed non-stoichiometric amorphous silicon oxide SiOx phase since this step is said to necessarily lead to this result (see [0024] and [0050]-[0051] of the PGPub of the instant application).
Applicant further argues that the claimed processing step has nothing to do with the desired thickness of the silicon oxide layer and, thus, one of ordinary skill in the art would not have any reason or motivation to optimize processing step disclosed by Rohani to lead to the claimed invention. Examiner disagrees. The fact that the inventor and the prior art recognize different advantages for similar heat treatment processes cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Furthermore, as noted in the above rejection, Rohani gives sufficient motivation for optimizing the oxidizing step without any need for impermissible hindsight with regard to the instant invention. For example, Rohani teaches that the oxide coating thickness can be tuned by changing the oxidation time and temperature ([0042]), thus making the duration and the temperature of the heat treatment process result-effective variables. Therefore, since Rohani teaches oxidation conditions of 400oC to 1,100oC for one to six hours ([0083]; [0029]) that overlap and encompass the claimed conditions, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have reached the claimed conditions based on routine experimentation and optimization of the thickness of the silicon oxide layer. This is underscored by the fact that applicant has failed to produce any evidence of unexpected results or criticality for the claimed conditions. Thus, applicant’s arguments against the Rohani reference are not persuasive.
As such, claims 1-3 and 5-8 stand rejected.
Conclusion
THIS ACTION IS MADE FINAL. 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 BRENDON C DARBY whose telephone number is (571)272-1225. The examiner can normally be reached Monday - Friday: 7:30am - 5:00pm.
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/B.C.D./Examiner, Art Unit 1749 /KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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