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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-3 recite the term “silicon suboxide” to describe the SiOx material that is comprised in the negative electrode material.
The specification does not utilize the term “silicon suboxide”; and therefore, the use of this terms fails to comply with the written description requirement.
The “x” in the SiOx chemical formula is not specified in the written description.
Clarification is required.
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.
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.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Choi (US 20200168890 A1) and further in view of Oh (US 20180090750 A1).
Regarding claim 1, Choi teaches a silicon-based negative electrode material containing a silicate skeleton (abstract, [neg electrode active material … includes a core including SiOx]),
wherein the silicon-based negative electrode material comprises a modified silicon suboxide material comprises a silicon suboxide phase (para. 0079, Example 1, the primary particles are the silicon suboxide phase of SiO) and a silicate phase (para. 0087, Example 2, [primary particles [SiO] comprising the core, in which a metal compound comprising MgO, Mg2SiO4, and MgSiO3 was included])
wherein the silicate phase is originally added as a solid material (para. 0087. Examiner notes that the metal compounds of MgO, Mg2SiO4, and MgSiO3 are solids) and
is dispersed within the silicon suboxide phase (para. 0087, Example 2, [mixed powder was prepared by mixing 10 g of preliminary particles and 0.8g of Mg powder]. Examiner notes that mixing of the particles can cause dispersion)(furthermore para. 0049 explains that the metal compound is doped into the primary particle which comprises the core comprising SiOx);
a general formula of the modified silicon suboxide material is MxSiOy, 1 < x <6, 3 < y < 6, the element M is Mg (para. 0055, [MgSiO3, Mg2SiO4]), and
the silicate material accounts for 5-60% of a total mass of the modified silicon suboxide material; (para. 0057 [the metal compound may be included in an amount of 1 wt% to 60 wt% based on a total weight of the core]); and the silicate material dispersed within the modified silicon suboxide material constitutes a skeleton structure of the silicon-based negative electrode material (Examiner notes that para. 0009 of the instant specification defines the silicate skeleton as one in where the Si-based negative electrode material comprises a modified SiOx material with a silicate material dispersed inside) (para. 0049 of Choi explains that the metal compound is doped into the primary particle which comprises the core comprising SiOx).
Choi is silent regarding grain size and does not teach the grain size of the modified SiOx material is 0.5-100 nm.
Oh, in the same field of endeavor, silicon-based negative electrode materials, teaches that the grain size of the modified SiOx material is 0.5-100 nm (para. 0077, example 2/sample 2 [15nm]).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Choi’s grain size, in order to prepare a silicon oxide composite, of which silicon crystals are controlled to several nm levels to retain the battery capacity through an efficient reaction of the added metal, as taught by Oh (para. 0039).
Regarding the recitation that the silicate material does not have physical and chemical reactions with lithium intercalation and deintercalation of the silicon-based negative electrode material during a cycling process, and keeps an original structure even after multiple cycles, modified Choi teaches the silicon based negative electrode, including the modified SiOx material, the grain size, and mass percent, and thus contains the inherent properties of a silicate material that does not have physical and chemical reactions with lithium intercalation and deintercalation of the silicon-based negative electrode material during a cycling process.
Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding claim 2, modified Choi teaches the Silicon-based negative electrode material according to claim 1, and further teaches wherein the Silicon-based negative electrode material further comprises a carbon coating layer (para. 0021), and the modified silicon suboxide material is coated with the carbon coating layer with a thickness of 1-100 nm (para. 0033 [1 nm to 100 nm).
Regarding claim 3, modified Choi teaches the Silicon-based negative electrode material according to claim 1, wherein the grain size of the modified SiOx material is 2-30 nm (Oh, para. 0077, example 2/sample 2 [15nm]) and the silicate material accounts for 10-30% of the total mass of the modified Silicon suboxide material (para. 0057 [the metal compound may be included in an amount of 1 wt% to 60 wt%]).
Regarding claim 4, modified Choi teaches the Silicon-based negative electrode material according to claim 1, wherein an average particle diameter (D50) of the Silicon-based negative electrode material is 0.1-40 µm (claim 9, [0.1-20 µm]).
Choi does not teach that the specific surface area of the Silicon-based negative electrode material is 0.5-40 m2/g.
Oh teaches the specific surface area of the Silicon-based negative electrode material is 0.5-40 m2/g (para. 0057, [1 - 50 m2/g]).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to have inserted Choi’s negative electrode active material with a surface area of 0.5-7.5 m2/g, as taught by Oh, in order to have a material with uniform electrode film in the coating process after the slurry is prepared and to have a material unfavorable to side reaction in the battery at the time of charge and discharge, that may result in a deterioration in battery characteristics, as taught by Oh (para. 0050).
Regarding claim 5, modified Choi teaches the Silicon-based negative electrode material according to claim 4, wherein the average particle diameter (D50) of the Silicon-based negative electrode material is 2-15 µm (claim 9, [0.1-20 µm]), and the specific surface area is 1-10 m2/g (Oh, para. 0057, [1 - 50 m2/g]).
Regarding claim 6, modified Choi teaches the Silicon-based negative electrode material according to claim 1.
Choi does not teach wherein when the element M is Mg, the corresponding silicate is MgSiO3 and/or Mg2SiO4, maximum X-ray diffraction (XRD) peaks of MgSiO3 are located at one or more of 28.1 degrees, 31.1 degrees, 34.8 degrees, 34.9 degrees and 36.9 degrees, and a maximum XRD peak of Mg2SiO4 is located at 36.5 degrees.
Oh, in the same field of endeavor, silicon-based negative electrode materials, teaches a maximum XRD peak of Mg2SiO4 is located at 36.5 degrees (Fig. 2, example 2, sample 2).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to have analyzed Choi’s negative electrode material and to have a maximum XRD peak of Mg2SiO4 located at 36.5 deg., as taught by Fig. 2 of Oh, in order to measure the relative ratio between the intensity of a diffraction peak belonging to Si and Mg2SiO4 (para. 0086 and Table 1), which then determines the size of the Si crystals which have an overall effect on the efficiency and capacity of the battery, as taught by Oh (para. 0043).
Regarding claim 7, Choi teaches a negative electrode plate (abstract, [negative electrode]), wherein the negative electrode plate comprises the Silicon-based negative electrode material containing the silicate skeleton according to any one of claims 1-6 (abstract, [negative electrode … which include the same]).
Regarding claim 8, Choi teaches a lithium battery, wherein the lithium battery comprises the Silicon-based negative electrode material containing the silicate skeleton according to any one of claims 1-6 (abstract, [ a lithium secondary battery which include the same]).
Regarding claim 9, Choi teaches the lithium battery according to claim 8, wherein the lithium battery (abstract, [lithium secondary battery]) is a liquid lithium ion battery (para. 0070 [inorganic liquid electrolyte] [organic liquid electrolyte]), a semi-solid lithium ion battery (para. 0070, [gel-type polymer electrolyte]), an all-solid ion battery (para. 0070 [solid polymer electrolyte, solid inorganic electrolyte]).
Pertinent Art
US 20220231280 A1
Teaches a silicon based active material including a metal-silicon oxide.
Response to Arguments
Applicant's arguments filed 4/10/2026 have been fully considered but they are not persuasive.
Regarding the argument that Choi does not teach that the silicate phase is originally added but is rather a by-product of a reaction:
Examiner notes that Choi teaches a silicon suboxide and a silicate phase as claim 1 requires (see above). Furthermore, Choi is intentional regarding the silicate phase, as explained in para. 0049, para. 0053 and para. 0054. In the aforementioned paragraphs, Choi describes doping of the silicon suboxide with a metal compound and defines the metal compounds that can be used to dope the silicon suboxide.
Furthermore, the instant specification does not teach that when the silicate phase is formed in situ, a different product, other than the modified SiOx material, would be formed.
Regarding the argument that there is no motivation to modify the grain size with the teachings of Oh:
The motivation for Choi is described above (See claim 1).
Conclusion
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 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.
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/V.G./Examiner, Art Unit 1721 /ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
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