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 5/22/2026:
Claims 1-5 and 7 are pending in the current application. Claim 6 is cancelled.
The Declaration under 37 CFR 1.132 filed 5/29/2026 is sufficient to overcome the rejection of claims 1-5 and 7 based upon 35 USC 103.
Applicant's request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn. The previous rejection is withdrawn in light of the submitted 1.132 Declaration.
The updated rejection uses only prior art relied upon in the first Office action. Further reasoning for, and explanation of, the obviousness of the claimed invention is provided below.
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 Ozeki JP2019-220350 in view of Uchiyama US PG Publication 2019/0319261.
Regarding Claims 1, 4, and 7, Ozeki discloses a non-aqueous secondary battery comprising a positive electrode, a negative electrode, and a nonaqueous electrolyte (para 0083, 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, said lithium silicate phase containing Li2Si2O5 (para 0041, “lithium composite oxide”, meeting Claim 4), 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 fails to specifically disclose wherein the silicon phase is dispersed IN the lithium silicon phase and the crystalline phase of silicon dioxide is dispersed IN the lithium silicon phase. However, in the same field of endeavor of silicon-based negative electrode active material design, Uchiyama teaches that when silicon particles and crystalline SiO2 are dispersed in lithium silicate material, excellent cycle characteristics and capacity can be obtained for the battery (see e.g. para 0013, 0049-0052). 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 Ozeki such that the silicon phase and crystalline silicon dioxide phases are disposed in the lithium silicate phase because Uchiyama teaches that this configuration improves capacity and cycle characteristics of the active material.
Ozeki teaches that the silicon phase has a crystallite size of 10 nm to 70 nm (see para 0042) and does not provide criticality for the lower end of the disclosed range. The instant invention claims a crystallite size of 2 nm to 8 nm, but the upper limit of 8 nm is not seen as critical since para 0053 of the submitted disclosure recites “the crystallite size of the silicon phase is more preferably 10 nm or less, particularly preferably 2 nm or more and 10 nm (or) less.”
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 Claims 2 and 3, 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 5, Ozeki teaches that the composite contains at least one alkali metal composite oxide selected from a list of options which include at least one element from Li, Na, and K (para 0041) 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 Ozeki modified by Uchiyama 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 argues that the combination of Ozeki and Yoshikawa does not teach the claimed negative electrode active material because the skilled artisan would not combine the references in a way that would result in the claimed invention because the two references deal with fundamentally different technologies (see remarks filed 5/29/2026). Applicant further argues that the Ozeki reference is closer to the subject matter of the claimed invention. The Office finds these arguments convincing and has withdrawn the previous rejection used in the Final rejection.
However, as explained in the rejection above, the Ozeki reference in view of Uchiyama (as first presented in the Non-Final rejection mailed on 12/2/2025) teaches the claimed invention, including a value of silicon crystallite size that overlaps the range provided as “preferable” in the instant specification at a size of 10 nm (see paras 0053, 0072-0083), and is close enough to the currently claimed range of 2 nm - 8 nm that the skilled artisan would expect the material of the prior art to have the same properties, especially since Applicant has not shown criticality for the value of 8 nm. 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.).
The Office has considered this argument and respectfully disagrees. It is submitted that the xx
Accordingly, such arguments are not found to be persuasive, and the rejection of record is maintained.
Conclusion
7. THIS ACTION IS MADE FINAL. See MPEP § 706.07. 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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