DETAILED CORRESPONDENCE
1. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
3. In response to the amendment received on 3/2/2026:
Claims 1-5 and 7 are pending in the current application. Claim 1 has been amended and Claim 6 is cancelled.
The cores of the previous prior art-based rejections have been overcome in light of the amendment and new rejections are laid out below. All changes made to the rejection are necessitated by the amendment.
The Office notes that the previous Office action listed on the previous PTO-892 form an incorrect document number for the Ozeki reference. The Ozeki reference should be listed as “JP2019-220350” and is correctly cited on the PTO-892 attached hereto.
Claim Interpretation
4. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Rejections - 35 USC § 103
5. Claims 1-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshikawaawa US PG Publication 2016/0087270 in view of Ozeki JP2019-220350.
Regarding Claims 1 and 7, Yoshikawa discloses a non-aqueous secondary battery comprising a positive electrode, a negative electrode, and a nonaqueous electrolyte (para 0082, meeting Claim 7), the negative electrode containing a negative electrode active material for a non-aqueous electrolyte secondary battery comprising composite particles containing a lithium silicate phase (para 0064; lithium silicate phase is formed by heat treating composite material of silicon crystallites dispersed in silicon dioxide), a silicon phase disposed in the lithium silicate phase (since silicon microcrystals are dispersed in silicon oxide which is doped with lithium to form lithium silicate) where the silicon phase has a crystalline size of less than 8 nm (para 0045), which anticipates the claimed range of 1 nm or more to 8 nm or less since it substantially matches the range (see entire disclosure and especially paras 0037-0047, 0051, 0063-0064).
Yoshikawa discloses that the silicon phase is dispersed in the silicon-based substance “of different composition” and discloses that lithium is doped into the composite material of silicon in silicon oxide (paras 0046 and 0078, for example) but fails to specifically disclose wherein the silicon phase is dispersed in the lithium silicate phase or wherein the silicon dioxide is a crystalline silicon dioxide phase dispersed in the lithium silicate, and wherein the crystalline phase of silicon dioxide contains quartz and β-cristobalite. However, in the same field of endeavor of composite silicon-based negative electrode active material design, Ozeki discloses a negative electrode active material for a non-aqueous electrolyte secondary battery comprising composite particles containing a lithium silicate phase, a silicon phase dispersed with the lithium silicate phase, and a crystalline phase of silicon dioxide (containing quartz and cristobalite) (paras 0050-0053) dispersed with the lithium silicate phase (para 0041) (see entire disclosure and especially abstract and paras 0037-0047, 0050-0056, 0093). Ozeki teaches that this type of structure provides a lithium ion battery that has excellent battery performance such as large discharge capacity, high charge/discharge efficiency, and suppressed battery swelling (para 0010). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the negative electrode active material of Yoshikawa to retain a silicon dioxide phase with the lithium silicate phase and the silicon phase, because these three materials together in a composite particle provides a lithium ion battery that has excellent battery performance such as large discharge capacity, high charge/discharge efficiency, and suppressed battery swelling, and further, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the negative electrode active material of Yoshikawa using silicon dioxide having a crystalline material (including quartz and cristobalite) because Ozeki teaches that this type of silicon dioxide is a successful part of the silicon-based composite particle composition leading to a lithium ion battery that has excellent battery performance such as large discharge capacity, high charge/discharge efficiency, and suppressed battery swelling.
Even further, since Yoshikawa teaches that the silicon phase is beneficially dispersed in the silicon-based substance “of different composition” of the composite particle and that the silicon-based substance can be silicon oxide converted to lithium silicate, and Ozeki teaches the benefit of using all three materials in the same particle, as discussed above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the negative electrode active material of Yoshikawa modified by Ozeki such that the silicon phase and the crystalline silicon dioxide phase of Yoshikawa and Ozeki are dispersed in the lithium silicate phase of Yoshikawa because Yoshikawa teaches the dispersal of the silicon phase in the silicon-based substance “of different composition” of the composite particle and the use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Regarding Claims 2 and 3, Yoshikawa fails to specifically disclose any X-ray diffraction analysis of the active material. However, the skilled artisan would expect that the material of Yoshikawa modified by Ozeki would have substantially same or similar properties to those claimed since the silicon dioxide material in the active material includes the claimed crystal structures. Ozeki teaches that in an X-ray diffraction pattern of the composite particles obtained by X-ray diffractometry, a peak attribute to the cristobalite appears around 2θ=21.6° and a peak attribute to the quartz appears around 2θ =26.3° since Ozeki discloses a peak attribute to the cristobalite at 2θ=21.5°±0.5 (abstract) and a peak attributed to the quartz appears around 2θ =26.5°±0.5 (abstract) and that a ratio Ia/IB of intensities of the aforementioned peaks is 0.1 or more, since this ratio is 3-100 (abstract), which overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range."). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Regarding Claim 4, Yoshikawa fails to specifically disclose any formula of the lithium silicate phase. However, Ozeki discloses that the lithium silicate material (lithium composite oxide including silicon) is preferably Li2Si2O5 (para 0041). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the active material of Yoshikawa and Ozeki such that the lithium silicate phase contains Li2Si2O5 because Ozeki teaches that this is a preferable lithium composite oxide material/lithium silicate for the same mixture of materials in a composite particle. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Regarding Claim 5, Yoshikawa discloses in e.g. para 0044-0046 that preparation of the active material can include the addition of alumina to the mixture that results in silicon microcrystals dispersed in the silicon-based substance “of different composition” and so the skilled artisan would expect aluminum to be present in the lithium silicate phase of Yoshikawa modified by Ozeki. If it is not inherent that the lithium silicate phase of Yoshikawa includes Al, Ozeki discloses the use of lithium silicate phases that can include Na or K (para 0041) and and so it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the negative electrode active material of Yoshikawa and Ozeki such that more than one alkali metal composite oxide is used in addition to the most preferable examples which highlight lithium silicates because Ozeki teaches that using multiple species is known and within the scope of the invention. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Response to Arguments
6. Applicant's arguments with respect to the claims are based on the claims as amended. The amended claims have been addressed in the new rejection above.
Conclusion
7. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA S PARK whose telephone number is (571)270-3597. The examiner can normally be reached M-Th 5:30a to 3p Eastern Time.
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/LISA S PARK/Primary Examiner, Art Unit 1729
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