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 .
Election/Restrictions
Claims 15-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group 2, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 5th 2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9 & 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 recites “wherein the porous silicon-based-carbon composite comprises…a carbon layer”, then later recites “to form a carbon layer”. There is insufficient antecedent basis for this limitation. In the second mention of “a carbon layer”, it is not clear if Applicant is meaning to refer to the previous mention of “a carbon layer” or if Applicant is introducing a different “a carbon layer”. Appropriate correction is required.
Claim 10, as it depends from Claim 9, is indefinite for the same reasons.
Claim Rejections - 35 USC § 102
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.
Claims 1, 3, 5-8, 11, 14, 20, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oh et al. US 2018/0269475 A1.
Regarding Claim 1, Oh discloses a porous silicon-based carbon composite (silicon oxide composite that comprises carbon [0017, 0025] in the form of graphene, graphene oxide, or carbon nanofiber, which are porous [0025]). Oh discloses that the composite comprises silicon particles [0017], and that the composite is used as a negative electrode active material in a lithium secondary battery [0017], therefore the composite would be capable of releasing and absorbing Li ions. Oh discloses that the composite further comprises a magnesium compound [0017], and carbon [0017, 0025]. In the Examples, Oh discloses that the silicon particles, silicon dioxide, and magnesium are combined to make the composite in an amount of 8 kg, 16kg, and 2 kg, respectively [0050-0051]. Thus, Oh discloses that the molar ratio of Mg to Si is 0.22, and the molar ratio of O to Si is 0.48, as further outlined below:
Molar mass of Mg: 24.305 g/mol
Molar mass of Si: 28.085 g/mol
Molar mass of SiO2: 60.08 g/mol
Moles of Mg: 2 kg * 1/24.305 g/mol = 0.000083 mol
Moles of O: 16 kg * 1/60.08 g/mol * 2/3 = 0.00018 mol
Moles of Si: (8 kg * 1/28.085 g/mol) + (16 kg * 1/60.08 g/mol * 1/3) = 0.000374
Molar ratio of Mg/Si = 0.000083/0.000374 = 0.22, which falls within the claimed range.
Molar ratio of O/Si = 0.00018/0.000374 = 0.48, which falls within the claimed range.
Therefore, Oh discloses that the molar ratio of Mg to Si is 0.22, and the molar ratio of O to Si is 0.48, both of fall within the claimed ranges. In regards to the molar ratios, the Examiner directs Applicant to MPEP 2131.03 I. In the case where the prior art “discloses a point within the claimed range, the prior art anticipates the claim”. UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). Accordingly, the molar ratios disclosed in Oh anticipates the claimed range set forth in Claim 1. See MPEP 2131.03 I.
Regarding Claim 3, Oh discloses that the magnesium compound is MgSiO3 crystals [0018, Mg2SiO4 crystals [0019], or a mixture of both [0017].
Regarding Claim 5, Oh discloses that the content of magnesium in the porous silicon-based-carbon composite it 2-20 parts by weight based on the total 100 weight [0022], thus Oh discloses that the magnesium content is 2-20wt%, which overlaps with the claimed range. Further, Oh discloses in Embodiment 1 that the magnesium content was analyzed to be 11wt% based on the total weight of the composite [0058] which falls within the claimed range.
Regarding Claim 6, in Embodiment 1, Oh discloses that the content of magnesium, oxygen, and carbon were analyzed to be 11wt%, 30wt%, and 5wt%, respectively [0057-0058]. Thus, Oh discloses that the remaining content, which is silicon based on the raw materials added in the manufacturing of Embodiment 1 [0050-0054, 0056], is 54wt% of silicon, which falls within the claimed range. Similarly, in Embodiment 2, Oh discloses that the content of magnesium, oxygen, and carbon were analyzed to be 10wt%, 31wt%, and 6wt%, respectively [0068-0069]. Thus, Oh discloses that the remaining content, which is silicon based on the raw materials added in the manufacturing of Embodiment 2 [0067], is 53wt% of silicon, which falls within the claimed range.
Regarding Claim 7, Oh discloses that the porous silicon-based carbon composite comprises a silicon oxide compound [0017] wherein the silicon oxide has the formula SiOx where 0<x<2 [0018]. More specifically, Oh discloses using silicon dioxide [0029], which meets the claim limitations when x = 2.
Regarding Claim 8, Oh discloses that the silicon particles have a crystal size of 1-25 nm [0018], which overlaps with the claimed range. More specifically, in Embodiment 1, Oh discloses that the Si crystals have a crystal size of 9 nm [0064], and similarly in Embodiment 2, Oh discloses that the Si crystals have a crystal size of 10 nm [0074], both of which fall within the claimed range. Oh discloses that the crystal sizes are measured using X-ray diffraction [0064, 0074], however Examiner notes that the limitation “when calculated from the measurement of X-ray diffraction analysis” was recognized as a product by process claim limitation and was not given undue weight.
Regarding Claim 11, Oh discloses that the content of carbon is included in an amount of 1-20 parts by weight based on the total 100 weight [0023], thus Oh discloses that the carbon is included in an amount of 1-20wt%, which overlaps with the claimed range. More specifically, Oh discloses in Embodiment 1 that the carbon content was 5wt% based on the total weight of the composite [0058] which falls within the claimed range.
Regarding Claim 14, Oh discloses that the composite has a specific gravity of 2.3-3.2 g/cm3 [0026], which overlaps with the claimed range. More specifically, Oh discloses in Embodiment 1 that the specific gravity is 2.5 g/cm3 [0059], which falls within the claimed range. Oh further discloses that the composite has a specific surface area of 1-40 m2/g, more preferably 3-30 m2/g [0028], which falls within the claimed range.
Regarding Claim 20, Oh discloses a negative electrode active material comprising the porous silicon-based-carbon composite of Claim 1 (“silicon oxide composite for a general secondary battery negative electrode material”) [0017]. Oh additionally discloses a negative electrode including the porous silicon-based-carbon composite as the negative electrode material [0040].
Regarding Claim 23, Oh discloses a lithium secondary battery that comprises the negative electrode active material of claim 20 [0041].
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.
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.
Claims 2, 4, & 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Oh as applied to claims 1 & 20 above, and further in view of Lee et al. US 2014/0030599 A1.
Regarding Claim 2, Oh is relied upon for the reasons given above in addressing Claim 1, however does not disclose the specific porosity of the porous silicon based carbon composite.
Lee discloses an electrode active material for a secondary battery comprising a porous silicon based composite [Abstract], similar to Oh. Lee discloses that the porous silicon based composite comprised a porous silicon oxide composite coated with carbon [0014, 0044], similar to that of Oh. Lee discloses that the porous silicon oxide composite comprises pores (“honeycomb-shaped pores” [0020]) and has a porosity of 5-90% [0020].
Lee discloses that if the porosity of the composite if less than 5%, the volume expansion during charging and discharging will not be suppressed, and if the porosity is greater than 90%, the mechanical strength of the electrode active material will be reduced since there is a large volume of pores and the electrode active material will break down during battery manufacturing [0020].
One of ordinary skill in the art would have recognized the porosity is a result effective variable, and would seek to optimize this parameter, and would therefore arrive at the claimed range to achieve provide an electrode with optimized volume expansion suppression and mechanical strength. See MPEP 2144.05. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the present invention to select a porosity within the claimed range to provide an electrode with optimized volume expansion suppression and mechanical strength as suggested by Lee.
Thus, modified Oh with the suggestion of porosity from Lee discloses that the porous silicon-based-carbon composite has a porosity within the claimed range.
Regarding Claim 4, modified Oh, as modified above by Lee, discloses porosity in the porous silicon carbon composite, however is silent as to the specific mention of the magnesium compound comprising a fluorine-containing magnesium compound, such as MgF2, MgSiF6, or a mixture thereof.
In the instant specification, Applicant discloses that the magnesium silicate is converted to a fluorine-containing magnesium compound by etching [Page 10 Lines 3-7]. Applicant further discloses that the etching step includes an etching solution comprising a fluorine containing compound [Page 21 Lines 1-3] such as HF [Page 21 Lines 14-15]. Applicant discloses that the etching step is specifically to form pores [Page 21 Lines 12-13]. More specifically, Applicant discloses that, as shown by the reaction schemes L1a-L2, when an aqueous solution of HF is combined with MgSiO3 or Mg2SiO4, the resulting magnesium compound is MgSiF6 or MgF2 or a mixture of both [Page 21 Line 22 - Page 22 Line 3].
Similarly, Lee discloses that an etching solution is used to create pores in the silicon composite [0051], and HF is used an etching solution [0053]. Lee discloses that an aqueous solution of HF is used to chemically etch the particles thereby forming pores [0053, 0073-0074].
Thus, modified Oh, as modified by Lee, discloses that the porosity as mentioned above is formed by etching the silicon composite with an HF etching solution to create the pores. As supported by the instant specification, when HF is used as an etching solution to create pores in a silicon composite comprising MgSiO3 or Mg2SiO4 (as mentioned above, Oh’s silicon composite comprises these magnesium compounds [0017-0019]), the reaction products comprise MgSiF6 or MgF2 or a mixture of both, thus modified Oh discloses that the magnesium compound comprises a fluorine-containing magnesium compound, such as MgF2, MgSiF6, or a mixture thereof, as modified by Lee to use HF as an etching solution to form pores.
Regarding Claim 9, modified Oh discloses that that porous silicon-based-carbon composite comprises a porous silicon composite (as modified by the porosity of Lee) and a carbon layer on its surface (cladding the surface with carbon material [0017]; a carbon film place on a surface [0018]). Modified Oh discloses that the silicon particles and the magnesium compound are included in the porous silicon composite [0018], and the carbon is present on the surface to form a carbon layer (carbon film placed on a surface) [0018].
Regarding Claim 10, Oh discloses that the carbon layer comprises at least one selected from the group of a carbon nanofiber, graphene, graphene oxide, and reduced graphene oxide [0025].
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Oh as applied to claim 20 above, and further in view of Guo et al. CN 110649236 A. Citations to Guo are mapped to the English machine translation provided.
Regarding Claim 21, Oh is relied upon for the reasons given above in Claim 20, however is silent as to the negative electrode active material further comprising a carbon-based negative electrode material in the claimed amount.
Guo discloses a porous silicon carbon composite for a negative electrode in a secondary battery [Page 1 Lines 14-16], similar to that of Oh. Guo discloses that the porous silicon carbon composite comprises a porous silicon material combined with a carbon material to form a porous structure [Page 2 Lines 22-25], further coated with an amorphous carbon coating [Page 2 Lines 26]. Guo discloses that the carbon material can be one of graphite, hard carbon, soft carbon, graphene, carbon nanotubes, carbon nanowires, or carbon fibers [Page 2 Lines 35-37]. Thus Guo discloses that the porous silicon carbon composite comprises a carbon-based negative electrode material. Further, Guo discloses that the mass ratio of the silicon material to the carbon material is 5:5 to 7:3 [Claim 6], thus Guo discloses that the carbon material is included in an amount of 30-50wt% based on the total weight of the silicon-carbon composite.
Guo discloses that a silicon-carbon composite such as this effectively improves the cycle life and energy density of lithium battery anode materials [Page 2 Lines 15-18].
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the present invention to incorporate the carbon based negative electrode material (carbon material) of Guo in an amount of 30-50wt% as suggested by Guo in the porous silicon composite of Oh for the benefit of improving the cycle life and energy density of the anode materials. Thus, modified Oh discloses that the negative electrode active material further comprises a carbon-based negative electrode material in an amount of 30-50wt% based on the total weight of the negative electrode active material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA E GOULD whose telephone number is (571)270-1088. The examiner can normally be reached Monday-Friday 9:00am-5:00pm.
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/A.E.G./Examiner, Art Unit 1726
/DANIEL P MALLEY JR./Primary Examiner, Art Unit 1726