DETAILED ACTION
Claims 1-15 are presented for examination, wherein claim 1 is currently amended.
The objection to claim 1 is withdrawn, as a result of the amendment to said claim.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Zha et al (CN 112467097, published March 2021).
Regarding independent claim 1, Zha teaches a negative electrode material for a negative electrode sheet in a secondary battery, wherein said negative electrode sheet may be formed e.g. from coating a uniform homogenized slurry comprising said negative electrode material on a copper foil, then drying, and then rolling,
wherein said negative electrode material comprising
(i) silicon oxide particles comprising lithium and elemental silicon nanoparticles, wherein
said lithium may be in a form of lithium silicate, such as one or more of e.g. Li2Si2O5, Li2SiO3, Li8SiO6, Li6Si2O7, and Li4SiO4; and,
said elemental silicon nanoparticles may have a median particle size of e.g. 0.2 to 20 nanometers,
said silicon oxide particles may be prepared by pulverizing in ball mills or air jet mills;
(ii) a carbon film layer completely or partially coating a surface of said silicon oxide particles a thickness of said carbon film layer is 0.001 to 5 micrometers; and,
(iii) a niobium-containing coating layer coating a surface of said silicon oxide particles having said carbon film layer, a thickness of said niobium-containing coating is 0.001 to 3 micrometers,
wherein
a total lithium content in said negative electrode material is 0.01 to 30 wt%, preferably 0.1 to 15 wt%, wherein a concentration of lithium gradually decreases from the surface of the silicon oxide particles towards the core region to reduce an irreversible loss of lithium ions during a first charge and discharge, and improve a first coulombic efficiency;
a total silicon content in said negative electrode material is 29.9–69.9 wt%,
a total dopant content in said negative electrode material is 0.01-10 wt%, said dopant may be Mg, and said Mg is doped into said silicon oxide particles by a method wherein said silicon oxide particles and said Mg dopant are uniformly mixed together, then heat treated in a non-oxidizing atmosphere at 600–1200°C, preferably 650–1050°C, for a holding time of 0.5–24 hours, then may be further treated by subsequently forming said carbon film layer thereon,
wherein said negative electrode material has a median particle size of 0.5 to 20 micrometers, wherein said median particle size is a particle size corresponding to 50% of the total mass of particles smaller than this particle size on the particle size distribution curve, i.e., D50
(e.g. ¶¶ 005-12, 17, 26-31, 38, 63-66, 78-82, 85, 96-99, 116-117, 120-123, and 257), reading on “negative electrode active material,” said negative electrode material comprising:
(1) said silicon oxide particles comprising lithium and elemental silicon nanoparticles (e.g. supra), reading on “silicon-containing oxide particles,” wherein:
(1a) said lithium may be in said form of lithium silicate, such as one or more of e.g. Li2Si2O5, Li2SiO3, Li8SiO6, Li6Si2O7, and Li4SiO4,
wherein said total lithium content in said negative electrode material is 0.01 to 30 wt%, preferably 0.1 to 15 wt%, wherein said concentration of lithium gradually decreases from the surface of the silicon oxide particles towards the core region to reduce said irreversible loss of lithium ions during said first charge and discharge, and improve said first coulombic efficiency;
(1b) said elemental silicon nanoparticles may have said median particle size of e.g. 0.2 to 20 nanometers; and,
(1c) said total dopant content in said negative electrode material is 0.01-10 wt%, said dopant may be Mg, and said Mg is doped into said silicon oxide particles by said method wherein said silicon oxide particles and said Mg dopant are uniformly mixed together, then heat treated in said non-oxidizing atmosphere at 600–1200°C, preferably 650–1050°C, for said holding time of 0.5–24 hours,
wherein said negative electrode material has a median particle size of 0.5 to 20 micrometers, wherein said median particle size is a particle size corresponding to 50% of the total mass of particles smaller than this particle size on the particle size distribution curve, i.e., D50, said thickness of said carbon film layer is 0.001 to 5 micrometers; and, said thickness of said niobium-containing coating is 0.001 to 3 micrometers,
(e.g. supra), reading on “at least a portion of the silicon-containing oxide particles comprise Mg and Li;” and, establishing a prima facie case of obviousness of the claimed relationship, see also e.g. MPEP § 2144.05(I), reading on the limitation:
“when…an amount of Li within 50% of a radius in a surface direction from a particle center of the silicon-containing oxide particles are defined as … C (Li) …, and
… an amount of Li within 50% of a radius in a center direction from the particle surface of the silicon-containing oxide particles are defined as … S (Li), …
the amounts satisfy … Equation (2):…
Equation (2) 1 < S(Li) / C(Li),”
but does not expressly teach the limitation:
“when an amount of Mg … within 50% of a radius in a surface direction from a particle center of the silicon-containing oxide particles are defined as C (Mg) …, and
an amount of Mg … within 50% of a radius in a center direction from the particle surface of the silicon-containing oxide particles are defined as S (Mg) …,
the amounts satisfy Equation (1) …
Equation (1) 0.8 ≤ S(Mg) / C(Mg) ≤ 1.2….”
However, it would have been obvious to a person of ordinary skill in the art to ensure the Mg dopant is provided as a uniform concentration throughout said silicon oxide particles, since doing so would ensure the silicon particles have a uniform property associated with the Mg dopant, see also the taught heat treatment duration may be extended for a long duration, e.g. 24 hours, and at a high temperature, e.g. 1050°C or 1200°C—permitting a uniform diffusion of Mg throughout said silicon particles, wherein said uniform concentration throughout said silicon oxide particles result in said claimed ratio to be about 1, establishing a prima facie case of obviousness of the claimed relationship, see also e.g. MPEP § 2144.05(I); and/or, Zha teaches substantially identical silicon oxide particles (e.g. lithium silicate, elemental silicon nanoparticles, and Mg dopant, said silicon oxide particles having a D50 particle size that may be calculated to be e.g. 0.0498 to 12 micrometers, see supra, compared with the instant specification, at e.g. ¶¶ 0051-55 and 57) processed by a substantially identical heat treatment (e.g. said silicon oxide particles and said Mg dopant are uniformly mixed together, then heat treated in said non-oxidizing atmosphere at 600–1200°C, preferably 650–1050°C, for said holding time of 0.5–24 hours, see e.g. supra, compared with instant specification, at e.g. ¶¶ 0060-61), establishing a prima facie case of obviousness of the claimed limitation, see also e.g. MPEP § 2112.01.
Regarding claim 2, Zha teaches said negative electrode material of claim 1, wherein said total dopant content in said negative electrode material is 0.01-10 wt%, wherein said dopant may be Mg, and said Mg is doped into said silicon oxide particles (e.g. supra), establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.05(I), reading on “a Mg amount T (Mg) throughout each particle of at least a portion of the silicon-containing oxide particles is 0.01 wt % to 15 wt % based on total 100 wt % of the entire particles.”
Regarding claims 3-4, Zha teaches said negative electrode material of claim 1, wherein said total lithium content in said negative electrode material is 0.01 to 30 wt%, preferably 0.1 to 15 wt%, wherein a concentration of lithium gradually decreases from the surface of the silicon oxide particles towards the core region to reduce an irreversible loss of lithium ions during a first charge and discharge, and improve a first coulombic efficiency (e.g. supra), severably establishing a prima facie case of obviousness of the claimed ranges, see also e.g. MPEP § 2144.05(I), reading on “a Li amount T (Li) throughout each particle of at least a portion of the silicon-containing oxide particles is 0.01 wt % to 15 wt % based on total 100 wt % of the entire particles” (claim 3) and “a Li amount S (Li) on the surface of each particle of at least a portion of the silicon-containing oxide particles is 0.1 wt % to 20 wt % based on total 100 wt % until 50% of the radius in the center direction from the particle surface” (claim 4).
Regarding claim 5, Zha teaches said negative electrode material of claim 1, wherein said negative electrode material comprises said carbon film layer completely or partially coating a surface of said silicon oxide particles (e.g. supra), reading on “the silicon-containing oxide particles further comprise at least one of a carbon layer or a phosphate layer provided on at least a portion of the surface of the silicon-containing oxide particles, wherein the phosphate layer includes at least one of aluminum phosphate or lithium phosphate.”
Regarding claim 6, Zha teaches said negative electrode material of claim 1, wherein said total dopant content in said negative electrode material is 0.01-10 wt%, wherein said dopant may be Mg, and said Mg is doped into said silicon oxide particles by said method wherein said silicon oxide particles and said Mg dopant are uniformly mixed together, then heat treated in said non-oxidizing atmosphere at 600–1200°C, preferably 650–1050°C, for 0.5–24 hours, then may be further treated by subsequently forming said carbon film layer thereon (e.g. supra), reading on the limitation “the Mg is present as a Mg compound phase comprising at least one of Mg silicates, Mg silicides or Mg oxides;” and/or, Zha teaches substantially identical silicon oxide particles (e.g. lithium silicate, elemental silicon nanoparticles, and Mg dopant, said silicon oxide particles having a D50 particle size that may be calculated to be e.g. 0.0498 to 12 micrometers, see supra, compared with the instant specification, at e.g. ¶¶ 0051-55 and 57) processed by a substantially identical heat treatment (e.g. said silicon oxide particles and said Mg dopant are uniformly mixed together, then heat treated in said non-oxidizing atmosphere at 600–1200°C, preferably 650–1050°C, for said holding time of 0.5–24 hours, see e.g. supra, compared with instant specification, at e.g. ¶¶ 0060-61), establishing a prima facie case of obviousness of the claimed limitation, see also e.g. MPEP § 2112.01.
Regarding claims 7-9, Zha teaches said negative electrode material of claim 1, wherein said silicon oxide particles comprising said lithium may be in said form of lithium silicate, such as one or more of e.g. Li2Si2O5, Li2SiO3, Li8SiO6, Li6Si2O7, and Li4SiO4 (e.g. supra), reading on “the Li is present as a Li compound phase comprising at least one of Li silicates, Li silicides or Li oxides” (claim 7) and “the Li is present as a Li compound phase comprising Li2SiO3 and Li2Si2O5 (claim 8), and “a sum of the amounts of Li2SiO3 and Li2Si2O5 is greater than a total sum of a remainder of the Li compound phase” (claim 9).
Regarding claim 10, Zha teaches said negative electrode material of claim 1, wherein said median particle size of said negative electrode material is 0.5 to 20 micrometers, wherein said median particle size is said particle size corresponding to 50% of the total mass of particles smaller than this particle size on the particle size distribution curve, i.e., D50 (e.g. supra), establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.05(I), reading on “the silicon-containing oxide particles have an average particle diameter of (D50) of 1 μm to 30 μm.”
Regarding claim 11, Zha teaches said negative electrode material of claim 1, wherein Zha teaches said silicon oxide particles comprising said lithium silicate, elemental silicon nanoparticles, and Mg dopant, wherein said silicon oxide particles having said D50 particle size that may be calculated to be e.g. 0.0498 to 12 micrometers, wherein said silicon oxide particles may be processed by e.g. pulverizing in ball mills or air jet mills (e.g. supra), but does not expressly teach the limitation “the silicon-containing oxide particles have a BET specific surface area of 0.5 m2/g to 60 m2/g.”
However, Zha teaches substantially identical silicon oxide particles (see e.g. supra, compared with instant specification, at e.g. ¶¶ 0051-55 and 57) made by a substantially identical process (see e.g. supra, compared with instant specification, at e.g. ¶¶ 0063 and 89), establishing a prima facie case of obviousness of said limitation, see also e.g. MPEP § 2112.01.
Regarding claim 12, Zha teaches said negative electrode material of claim 1, wherein said silicon oxide particles comprising said elemental silicon nanoparticles may have a median particle size of e.g. 0.2 to 20 nanometers (e.g. supra), assuming said taught median particle size and said average particle size (D50) are approximately similar, establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.05(I), reading on “the silicon-containing oxide particles comprise Si crystal grains having a particle diameter of 1 nm to 20 nm.”
Regarding claims 13-15, Zha is applied as provided supra, with the following modifications.
Still regarding independent claim 13, Zha teaches said uniform homogenized slurry comprising said negative electrode material coated on a copper foil (e.g. supra), reading on “negative electrode slurry comprising the negative electrode active material according to claim 1.”
Still regarding independent claim 14, Zha teaches said negative electrode sheet comprising said negative electrode material (e.g. supra), reading on “negative electrode comprising the negative electrode active material according to claim 1.”
Still regarding independent claim 15, Zha teaches said secondary battery comprising said negative electrode material sheet comprising said negative electrode material (e.g. supra), reading on “secondary battery comprising the negative electrode of claim 14.”
Response to Arguments
Applicant’s arguments filed March 9, 2026 have been fully considered but they are not persuasive.
First, the applicant alleges the following.
The Examiner argues that the claimed relationships of Equation (1) and Equation (2) would have been obvious modifications of Zha. Zha discloses an anode material comprising silicon oxide compound particles containing lithium and silicon nanoparticles. See Abstract. Other metal elements, such as one or more of Mg, Al, Cu, Mn, Ca and Z, with a weight percentage of 0.01-10 wt% can be doped during, before or after the process of coating the silicon oxide compound particles with carbon. ¶[0038]. The concentration of lithium element is gradually reduced from the surface layer of the silicon-oxygen compound particles to the inner core region. ¶[0257].
However, Zha does not disclose when an amount of Mg and an amount of Li within 50% of a radius in a surface direction from a particle center of the silicon-containing oxide particles are defined as C (Mg) and C (Li), respectively, and an amount of Mg and an amount of Li within 50% of a radius in a center direction from the particle surface of the silicon-containing oxide particles are defined as S (Mg) and S (Li), respectively, the amounts satisfy Equation (1) and Equation (2), as required by claim 1. In this regard, Zha merely discloses Mg as an incidental additive. Zha is completely silent about any relationship between an amount of Mg in a surface region versus a core region much less the claimed relationship defined by Equation (1). And Zha merely discloses a gradual reduction in Li content. Zha does not explicitly disclose Equation (2).
Regardless of whether there are some hypothetical amounts of Mg and Li in Zha that could result in values that would satisfy the claimed relationships, there would have been no reason to modify Zha in this manner. The Examiner's reasoning in this respect has been rejected as insufficient grounds for establishing obviousness where the relationship is not described or suggested in the prior art. In In re Waymouth, 499 F.2d 1273 (CCPA 1974), the Applicant claimed a ratio of halogen to mercury atoms of 0.08 to 0.75. The prior art that was applied to reject the claims did not disclose the ratio of halogen to mercury atoms, but the PTO rejected the claims based on the prior art disclosure of the amount of halogen atoms and the amount of mercury atoms, which could be combined to calculate a ratio that overlapped the claim range. Id. at 1275. The Court reversed the PTO, finding that “[w]e cannot agree with the board that appellants’ claimed ratio was the result of obvious experimentation since, in our judgment, any such experimentation would not have come from within the teachings of the art.” Id. at 1276.
The Court concluded that “the board[,] in discussing the results[,]... appears to have completely ignored the fact that it is appellants, not [the prior art], who have discovered that any relationship exists at all between [the factors in the claimed ratio].” Id.
The facts here are very similar to Waymouth. Zha gives no indication that the claimed relationships are important and thus there is no teaching or reason in the art for a person of skill to determine the “optimum” relationship from the broadly disclosed amounts in Zha. See also In re Antonie, 559 F.2d 618 (CCPA 1977) (reversing the PTO’s finding of obviousness where the prior art did not disclose a claimed ratio and rejecting the PTO’s argument that “it would always be obvious for one of ordinary skill in the art to try varying every parameter of a system in order to optimize the effectiveness of the system even if there is no evidence in the record that the prior art recognized that particular parameter affected the result.”).
(Remarks, at e.g. 6:3-7:1.)
In response, the examiner respectfully notes that the argument is not commensurate with the scope of the art and the rejection.
Regarding Equation (2), “1 < S(Li)/C(Li),” the relationship of Equation (2) provides even a difference of one lithium atom more in the outer radial half (i.e. portion toward the surface)—relative to the 50% radial distance between the surface and the core—than that in the inner radial half (i.e. portion toward the core) satisfies the claimed limitation.
Here, the argument is not commensurate with the scope of the art’s disclosure and the prior and instant Office actions. As provided in the December 17, 2025 non-final Office action, the art is applied as reproduced below.
(1a) said lithium may be in said form of lithium silicate, such as one or more of e.g. Li2Si2O5, Li2SiO3, Li8SiO6, Li6Si2O7, and Li4SiO4,
wherein said total lithium content in said negative electrode material is 0.01 to 30 wt%, preferably 0.1 to 15 wt%, wherein said concentration of lithium gradually decreases from the surface of the silicon oxide particles towards the core region to reduce said irreversible loss of lithium ions during said first charge and discharge, and improve said first coulombic efficiency;
(1b) said elemental silicon nanoparticles may have said median particle size of e.g. 0.2 to 20 nanometers; and,
(1c) said total dopant content in said negative electrode material is 0.01-10 wt%, said dopant may be Mg, and said Mg is doped into said silicon oxide particles by said method wherein said silicon oxide particles and said Mg dopant are uniformly mixed together, then heat treated in said non-oxidizing atmosphere at 600–1200°C, preferably 650–1050°C, for said holding time of 0.5–24 hours,
wherein said negative electrode material has a median particle size of 0.5 to 20 micrometers, wherein said median particle size is a particle size corresponding to 50% of the total mass of particles smaller than this particle size on the particle size distribution curve, i.e., D50, said thickness of said carbon film layer is 0.001 to 5 micrometers; and, said thickness of said niobium-containing coating is 0.001 to 3 micrometers,
(e.g. supra), reading on “at least a portion of the silicon-containing oxide particles comprise Mg and Li;” and, establishing a prima facie case of obviousness of the claimed relationship, see also e.g. MPEP § 2144.05(I), reading on the limitation:
“when…an amount of Li within 50% of a radius in a surface direction from a particle center of the silicon-containing oxide particles are defined as … C (Li) …, and
… an amount of Li within 50% of a radius in a center direction from the particle surface of the silicon-containing oxide particles are defined as … S (Li), …
the amounts satisfy …the following Equation (2):…
Equation (2) 1 < S(Li) / C(Li),”
(December 17, 2025 non-final Office action, at pp. 5-6, emphasis in the original.)
The examiner respectfully notes that the teaching as indicated in said Office action of “said concentration of lithium gradually decreases from the surface of the silicon oxide particles towards the core region to reduce said irreversible loss of lithium ions during said first charge and discharge, and improve said first coulombic efficiency” establishes a prima facie case of obviousness of the claimed relationship “<” in “1 < S(Li) / C(Li)” of Equation (2).
As noted, the art provides a concentration of lithium that gradually decreases from the surface of the particle to a core region such that said concentration of lithium decreasing to the core region includes the 50% radial distance between the particle surface and core, noting for example the taught “gradual” and “core region.”
Finally, as noted above, even a difference of one lithium atom more in the outer radial half—relative to the 50% radial distance between the surface and the core—than that in the inner radial half satisfies the claimed limitation, as claimed.
Regarding Equation (1), “0.8 ≤ S(Mg) / C(Mg) ≤ 1.2,” the relationship of Equation (2) provides an equal amount of Mg in the outer radial half (i.e. portion toward the surface)—relative to the 50% radial distance between the surface and the core—to that in the inner radial half (i.e. portion toward the core) satisfies the claimed limitation.
Here, the argument is not commensurate with the scope of the prior and instant Office actions.
However, it would have been obvious to a person of ordinary skill in the art to ensure the Mg dopant is provided as a uniform concentration throughout said silicon oxide particles, since doing so would ensure the silicon particles have a uniform property associated with the Mg dopant, see also the taught heat treatment duration may be extended for a long duration, e.g. 24 hours, and at a high temperature, e.g. 1050°C or 1200°C—permitting a uniform diffusion of Mg throughout said silicon particles, wherein said uniform concentration throughout said silicon oxide particles result in said claimed ratio to be about 1, establishing a prima facie case of obviousness of the claimed relationship, see also e.g. MPEP § 2144.05(I); and/or, Zha teaches substantially identical silicon oxide particles (e.g. lithium silicate, elemental silicon nanoparticles, and Mg dopant, said silicon oxide particles having a D50 particle size that may be calculated to be e.g. 0.0498 to 12 micrometers, see supra, compared with the instant specification, at e.g. ¶¶ 0051-55 and 57) processed by a substantially identical heat treatment (e.g. said silicon oxide particles and said Mg dopant are uniformly mixed together, then heat treated in said non-oxidizing atmosphere at 600–1200°C, preferably 650–1050°C, for said holding time of 0.5–24 hours, see e.g. supra, compared with instant specification, at e.g. ¶¶ 0060-61), establishing a prima facie case of obviousness of the claimed limitation, see also e.g. MPEP § 2112.01.
(December 17, 2025 non-final Office action, at pp. 6-7, emphasis in the original.)
In comparison, the instant specification provides the following, which as noted in the prior and instant Office actions, is substantially identical, establishing a prima facie case of the second/alternative rejection under e.g. MPEP § 2112.01.
[0051] According to another exemplary embodiment of the present invention, the Mg may be present as a Mg compound phase. The Mg compound phase may include at least any one selected from the group consisting of, for example, Mg silicates, Mg silicides and Mg oxides. The Mg silicate may include at least any one of Mg2SiO4 and MgSiO3. The Mg silicide may include Mg2Si. The Mg oxide may include MgO.[0052] In preferred exemplary embodiments, the Mg compound phase includes Mg2SiO4 and MgSiO3. Preferably, the sum of the amounts of Mg2SiO4 and MgSiO3 is greater than the total sum of a remainder of the Mg compound phase, and is preferably 70 wt % or more in the entire Mg compound phase.[0053] According to still another exemplary embodiment of the present invention, the Li may be present as a Li compound phase. The Li compound phase may include at least one of, for example, Li silicates, Li silicides and Li oxides. The Li compound phase may include one or more selected from the group consisting of, for example, Li2SiO3, Li2Si2O5, Li3SiO3, and Li4SiO4.[0054] In preferred exemplary embodiments, the Li compound phase includes Li2SiO3 and Li2Si2O5. Preferably, the sum of the contents of Li2SiO3 and Li2Si2O5 is greater than the total sum of the rest of the Li compound phase, and is preferably 70 wt % or more in the entire Li compound phase.[0055] According to yet another exemplary embodiment of the present invention, the silicon-based oxide particles may have an average particle diameter (D50) of 1 μm to 30 μm. The silicon-based oxide particles may have an average particle diameter (D50) of specifically 3 μm to 20 μm, and more specifically 5 μm to 10 μm. When the above range is satisfied, side reactions between the negative electrode active material and an electrolytic solution may be controlled, and the discharge capacity and initial efficiency of the battery may be effectively implemented.…[0057] According to yet another exemplary embodiment of the present invention, the silicon-based oxide particles may further include Si crystal grains. The Si crystal grains may have a particle diameter of 1 nm to 20 nm.…
Method for Preparing Negative Electrode Active Material…
[0060] First, the preparing of the silicon-based oxide particles including Mg (S1) may use an in-situ doping method. In one example, in the preparing of the silicon-based oxide particles including Mg (S1), the silicon-based oxide particles may be formed through forming a mixed gas by vaporizing a powder in which a Si powder and a SiO2 powder are mixed and Mg, respectively, and then mixing the vaporized powder and Mg, and heat-treating the mixed gas in a vacuum state at 800° C. to 950° C. As another example, in the preparing of the silicon-based oxide particles including Mg, the silicon-based oxide particles may be formed through forming a mixed gas by mixing a Si powder, a SiO2 powder and Mg while or after vaporizing each of them, or mixing the Si powder, the SiO2 powder and the Mg, and then vaporizing the resulting mixture; and heat-treating the mixed gas in a vacuum state at 800° C. to 950° C.[0061] The mixed powder of the Si powder and the SiO2 powder may be vaporized by performing the heat treatment at 1,000° C. to 1,800° C. or 1,200° C. to 1,500° C., and the Mg powder may be vaporized by performing the heat treatment at 500° C. to 1,200° C. or 600° C. to 800° C. By allowing the materials to react in a gas state as described above, Mg may be uniformly distributed in the silicon-based oxide particles.
(Instant specification, at e.g. ¶¶ 005-55, 57, and 60-61 emphasis added.)
A prima facie case of obviousness has been established, shifting the burden of going forward to the applicant.
Second, the applicant alleges the following.
Furthermore, any alleged prima facie case of obviousness has been rebutted since the claimed relationships produce unexpected results. The specification discloses, on page 4, that the claimed relationships are critical because:
...since Mg and Li have specific distributions within the particles, each disadvantage of Mg and Li can be minimized.
Specifically, due to the specific distribution, the presence of Mg not only can increase the initial efficiency of a battery, but can also minimize a decrease in discharge capacity despite the presence of Mg and minimize a decrease in viscosity of the negative electrode slurry due to the presence of Li.
And, all of the Inventive Examples in the specification (Examples 1-8) have Equation (1) and Equation (2) values within the claimed range, while Comparative Examples 1-4 do not, i.e., they have Equation (2) values outside the claimed range (Comparative Examples 1 and 2) or do not include Mg and Li together (Comparative Examples 3 and 4). See Table 1. As seen in Table 2, Examples 1-8 exhibited superior capacity retention rate and/or change rate as compared to Comparative Examples 1-4. Zha does not disclose or even contemplate these unexpected results.
It is an object of the subject matter recited in the pending claims to form the silicon oxide particles by uniformly distributing Mg within the particles through a process comprising: vaporizing a mixed powder of Si powder and Si02 powder, separately vaporizing Mg, mixing the vapors to form a mixed gas, and heat-treating the mixed gas at 800°C to 950°C under vacuum conditions. In other words, the claimed negative electrode active material is characterized by
vaporizing the raw materials and mixing them in a gaseous state in order to achieve a uniform distribution of Mg. In contrast, in Zha, Mg and SiOx particles are prepared by mixing in a liquid phase. See Example 6. In view of this fundamental difference in preparation method, one of ordinary skill in the art would not have reasonably expected the negative electrode active material in Zha to exhibit the claimed Mg distribution range.
(Remarks, at e.g. 7:3-8:1.)
In response, the examiner respectfully notes that an argument of counsel is insufficient to overcome a prima facie showing of obviousness. Since a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments or evidence to rebut the prima facie case. See e.g., In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented by way of an affidavit or declaration under 37 CFR 1.132. However, arguments of counsel cannot take the place of factually supported objective evidence. See e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). See also MPEP § 2145.
The showing of unexpected results must be commensurate in scope with the invention as claimed. The results must be due to the claimed features, not to unclaimed features.
The showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. MPEP § 716.02(d). Absent such showing, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” MPEP § 2144.05.
Here, the examiner respectfully calculated the ratios of Equations (1) and for the data provided in Table 1 below.
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200
400
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Regarding equation (1), there is insufficient data just below, at, and just above the lower endpoint (0.8); and, there is insufficient data just below, at, and just above the upper endpoint (1.2)
Regarding equation (2), there is insufficient data just below, at, and just above the lower endpoint (<1).
Furthermore, the unexpected property or result must actually be unexpected and of statistical and practical significance. MPEP § 716.02(a).
Here, the data provided for Comparative Example 1 appears to be substantially identical to those of the Examples 1-2. See Annotated Figure 2.
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558
592
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Third, the applicant alleges the following.
The dependent claims are also allowable at least based on their dependence on an allowable base claim, as well as for the additional features recited therein. Reconsideration and withdrawal of the rejection are respectfully requested.
(Remarks, at e.g. 8:3.)
In response, the examiner respectfully refers supra.
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 YOSHITOSHI TAKEUCHI whose telephone number is (571)270-5828. The examiner can normally be reached M-F, 8-4.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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/YOSHITOSHI TAKEUCHI/Primary Examiner, Art Unit 1723
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