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 .
Summary
The Applicant’s arguments and claim amendments received April 15, 2026 have been entered into the file. Currently, claim 5 is amended and claims 9-11 are withdrawn, resulting in claims 1-8 and 12 pending for examination.
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claims 1-4, 6-8, and 12 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kizaki, et al. (US 2018/0309160 A1).
Regarding claims 1 and 6-7, Kizaki teaches a powder for a negative electrode of a lithium ion secondary battery including a silicon oxide powder containing lithium (silicon-based active material particles) (¶ [0013]-[0014]. To produce the negative electrode, a slurry containing the powder (negative electrode active material layer) is applied to a copper current collector (¶ [0069], Ln. 1-6).
While it is acknowledged that the claimed values of A, B, and C, and the claimed relationships between the values, such that 0.01≤A-B≤0.81, 0.01≤A-C≤0.65, 0.3≤A≤8.50, 0.3≤B≤7.71, and 0.3≤C≤7.91, are not expressly recited by Kizaki, the claimed relations would be inherent to the material taught by the reference. A negative electrode satisfying the claimed relations would be implicitly achieved by silicon-based negative electrode active material with substantially the same composition formed by substantially the same process. The instant specification has not provided adequate teachings that the claimed property is only obtainable with the claimed material.
As evidence that the claimed relations are inherent to the powder taught by Kizaki, the reference teaches a silicon-based negative electrode active material with substantially the same composition formed by substantially the same process. Paragraphs [0041] and [0046] of the instant specification teach that the claimed relations indicate that the plurality of silicon-based particles have uniform crystallinity. Paragraph [0069] of the instant specification explains that the formation of crystalline-silicon seeds and the growth of crystalline-silicon are suppressed during the production of the silicon compound particles to produce an amorphous or microcrystalline silicon-based compound, teaching that this is achieved by heat treatment at a low temperature range. Specifically, paragraphs [0081]-[0084] teach that a preliminary heat treatment is performed at a temperature of 100-500 °C in order to uniformly mix the metal precursor, and a subsequent heat treatment is performed at 500-800 °C in order to suppress crystalline-silicon growth and uniformly distribute particles. Examples 1-11 of the instant specification include silicon-based active materials formed by mixing silicon oxide and lithium hydride at a mole ratio of Li/Si of 0.5 to 1.0, performing the preliminary heat treatment at a temperature of 300-400 °C, and performing the subsequent heat treatment at 600-750 °C.
With respect to the composition and processing of the silicon-based active material, Kizaki teaches that the negative electrode active material powder of Example 1 is formed by mixing silicon oxide with lithium hydride powder at a Li/O molar ratio of 0.5, performing a preliminary calcination step at 350 °C, and performing a main calcination step at 700 °C (¶ [0065], Ln. 1-2; Table 1). Kizaki teaches that the molar ratio of O/Si is 0.5-1.5 (¶ [0035], Ln. 1-10), thus the ratio of Li/Si taught by Kizaki ranges from 0.25-0.75. Further, Kizaki teaches that the production method suppresses the formation of crystalline silicon, increasing the initial efficiency and the capacity retention rate over a long-term cycle (¶ [0024], Ln. 1-6). Therefore, Kizaki teaches a silicon-based negative electrode active material with substantially the same composition and formed by substantially the same process, and thus would achieve the claimed relations 0.01≤A-B≤0.81, 0.01≤A-C≤0.65, 0.3≤A≤8.50, 0.3≤B≤7.71, and 0.3≤C≤7.91.
In the alternative, if the reference is not considered to anticipate the claimed property, then the property would be considered obvious because the reference discloses all of the limitations of the claim except a property or function of the claimed article. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP 2112-2112.02). In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985) (MPEP 2113).
Regarding claims 2-3, Kizaki teaches all of the limitations of claim 1 above and further teaches that the powder for the negative electrode is a silicon oxide containing lithium (¶ [0013]-[0014]), further teaching that the silicon oxide powder and lithium compound powder are mixed to obtain a first mixed powder prior to heating (pretreated with a metal) (¶ [0019], Ln. 1-4). Kizaki teaches that the average composition of the silicon oxide powder is SiOx, wherein 0.5≤x≤1.5 (¶ [0029], Ln. 7-8).
Regarding claim 4, Kizaki teaches all of the limitations of claim 3 above and further teaches that when the silicon oxide powder containing lithium is heat-treated, lithium silicates including Li2Si2O5, Li2SiO3, and Li4SiO4 may be formed (MaSibOc, wherein M is Li, a is 2-4, b is 1-2, and c is 3-5) (¶ [0028], Ln. 1-6). These silicates are formed on at least part of the silicon oxide particles. Kizaki teaches that the average composition of the silicon oxide powder is SiOx, wherein 0.5≤x≤1.5 (¶ [0029], Ln. 7-8).
Regarding claim 8, Kizaki teaches all of the limitations of claim 1 above and further teaches that in the negative electrode using the powder of Example 1 (silicon-based active material particles), the negative electrode active material layer includes the powder of Example 1, acetylene black, SBR, and carboxymethyl cellulose in a mass ratio of 96.5:1:1.5:1.5 (10 wt% or more of the silicon-based active material particles) (¶ [0069], Ln. 8-15).
Regarding claim 12, Kizaki teaches all of the limitations of claim 1 above and further teaches that batteries were manufactured using the negative electrode meeting the limitations of claim 1 above (¶ [0070], Ln. 1-2).
Claim Rejections - 35 USC § 103
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kizaki, et al. (US 2018/0309160 A1) as applied to claim 3 above, and further in view of Park, et al. (US 2024/0266509 A1).
Regarding claim 5, Kizaki teaches all of the limitations of claim 3 above and further teaches that when the silicon oxide powder containing lithium is heat-treated, lithium silicates including Li2Si2O5, Li2SiO3, and Li4SiO4 may be formed (¶ [0028], Ln. 1-6). Although Kizaki teaches lithium silicates, the reference is silent to teach the weight percent of lithium silicate relative to a total weight of the silicon oxide powder including lithium, and thus does not expressly teach that the silicon oxide powder including lithium includes 40-95 wt% lithium silicate with respect to a total weight of the silicon oxide powder including lithium.
Park teaches negative electrode active materials including silicon-containing oxide particles as well as lithium (¶ [0013], Ln. 1-5). Park teaches that the lithium may be present as a compound phase, including lithium silicates such as Li2SiO3, Li2Si2O5, Li3SiO3, and Li4SiO4 (¶ [0042]-[0043]). Park further teaches that these lithium silicates may be included in an amount of 40 wt% or more, 60 wt% or more, or 80 wt% or more, based on 100 wt% of the lithium compound phase (¶ [0045], Ln. 1-5). Park teaches that the lithium compound is distributed on the surface and/or inside the silicon-containing oxide particle, and may control the volume expansion and contraction of the silicon-containing oxide particle and may prevent damage to the active material (¶ [0046], Ln. 5-10).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the silicon oxide powder including lithium of Kizaki to include lithium silicate in an amount of 40-80 wt% based on a total weight of the silicon oxide powder including lithium, based on the teachings of Park. One of ordinary skill in the art would be motivated to include the lithium silicate in an amount within this range in order to control the volume expansion and contraction of the silicon oxide particle and prevent damage to the active material.
Response to Arguments
Response-Claim Objections
The previous objection to claim 5 has been withdrawn in light of the Applicant’s amendment to claim 5 in the response filed April 15, 2026.
Response-Claim Rejections – 35 U.S.C. 102 and 103
Applicant's arguments filed April 15, 2026 have been fully considered but they are not persuasive. The Applicant argues that: Kizaki does not recognize the uniformity of crystallinity across individual particles; that claimed Relation 1 is not an inherent property, as demonstrated in Comparative Examples 1-7; and that the Examples and Comparative Examples demonstrate a significant and non-linear improvement in capacity retention, providing unexpected and superior technical effects.
With respect to the argument, see page 9 of the remarks, that Kizaki does not recognize the uniformity of crystallinity across individual particles which prevents localized electrode degradation, this argument is not persuasive. While it is acknowledged that the claimed Relation 1 is not expressly recited by Kizaki, the claimed relation would be inherent to the material taught by the reference as detailed in the rejection above, given that Kizaki teaches a silicon-based negative electrode active material with substantially the same composition formed by substantially the same process. Paragraph [0069] of the instant specification explains that the formation of crystalline-silicon seeds and the growth of crystalline-silicon are suppressed during the production of the silicon compound particles to produce an amorphous or microcrystalline silicon-based compound, teaching that this is achieved by heat treatment at a low temperature range. Paragraphs [0081]-[0084] further specify the temperature ranges of the first and second heat treatments. It is noted that Kizaki similarly teaches a production method with the goal of suppressing the formation of crystalline silicon (¶ [0024], Ln. 1-6) including a first and second calcination step within the temperature ranges (¶ [0065], Ln. 1-2; Table 1) taught in the instant specification. In response to applicant's argument that Kizaki does not suggest that crystal uniformity prevents localized electrode degradation, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art 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).
With respect to the argument, see pages 9-10 of the remarks, that claimed Relation 1 is not an inherent property, as demonstrated in Comparative Examples 1-7, this argument is not persuasive. The Applicant points to Comparative Examples 1-7 to demonstrate that the claimed relation of 0.01≤A-B≤0.81 is not a result of the heat treatment conditions. While it is acknowledged that Comparative Examples 3-6 include similar temperature conditions, it is noted that additional parameters adjusted between the Examples and Comparative Examples are unclear, including possible adjustments to Li/Si mole ratio and particle size. Additionally, the Applicant points to specific mixing conditions, however, the current specification does not appear to mention the criticality of mixing conditions with respect to the uniformity of crystallinity.
With respect to the argument, see page 10 of the remarks, that the Examples and Comparative Examples demonstrate a significant and non-linear improvement in capacity retention, this argument is not persuasive. As noted above, it is not clear from the disclosure which parameters have been adjusted between the Examples and Comparative Examples, including the molar ratio of Li/Si and particle size. Additionally, the Applicant points to significant improvement in capacity retention, which is measured using a half battery produced with a negative electrode including the silicon-based active material particles, graphite, CNT, CMC, and SBR; a counter electrode; PE separator; and electrolyte solution including a lithium salt, EC:EMC organic solvent, and FEC electrolyte additive. Claim 1, however, is drawn to the negative electrode and thus, the results are not commensurate in scope with the claims. Further, it is noted that Kizaki discloses capacity retention rate after 500 charge-discharge cycles (Table 2). While it is acknowledged that the test is not identical, in looking to the capacity rates, the battery of Kizaki achieves capacity rates ranging from 76.1-85.5% compared to the capacity rates of 71-97% disclosed in the instant specification. Thus, it is not clear how the results are unexpected over the closest prior art (MPEP 716.02(e)).
Finally, it is noted that the Applicant has not provided a showing of evidence indicating the material of Kizaki would not inherently possess the claimed Relation 1. As stated above, Kizaki teaches a silicon-based negative electrode active material with substantially the same composition formed by substantially the same process. Further, Kizaki specifically teaches that the first calcination step is performed at a lower temperature in order to suppress the formation of crystalline Si (¶ [0048], Ln. 1-14). Once a reference appearing to be substantially identical is made the basis of rejection and the examiner presents evidence or reasoning to show inherency, the burden of productions shifts to the Applicant (MPEP 2112(V)).
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 SARAH J JACOBSON whose telephone number is (703)756-1647. The examiner can normally be reached Monday - Friday 8:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH J JACOBSON/Examiner, Art Unit 1785
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785
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