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 .
Response to Amendment
In response to the amendment received on 07/15/2026:
Claims 1-16 are pending in the current application. Claims 1-3 and 8 have been amended. Claims 8-9 stand withdrawn. Claims 10-14 16 are newly added.
Response to Arguments
Applicant’s arguments, see Remarks Page 5, filed 07/15/2026, with respect to the rejections under 35 U.S.C. 112(b) have been fully considered. The rejections have been withdrawn in light of the amendments to the claims.
Applicant’s arguments, see Remarks Pages 5-8, filed 07/15/2026, with respect to the rejections under 35 U.S.C. 102 and 103 have been fully considered. The rejections have been withdrawn in light of the amendments to the claims.
Further, regarding Applicant’s arguments towards Yoshida (US 20200020929 A1) are persuasive, however, upon further consideration, a new rejection utilizing Yoshida has been set forth below.
Election/Restrictions
Newly submitted claims 15-16 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claims 2 and 10-14 are drawn to a negative electrode active material.
Claims 15-16 are drawn to a method for producing a negative electrode active material.
Previously, a restriction requirement between Invention I (claims 1-7, drawn to a negative electrode active material) and Invention II (claims 8-9, drawn to a method for producing a negative electrode active material) was set forth in the Requirement for Restriction/Election filed 02/12/2026.
Invention I and Invention II were noted to be independent or distinct from one another due to the negative electrode active material of Invention I being able to be made by another and materially different process such as one that does not require heating a mixture of NaSi alloy powder, a Na trap agent, and one or more of the metals listed in claim 8 at a heating temperature of 250 to 500 °C for a heating time of 30 to 200 hours (for example, Invention I could be made by heating the mixture of materials at a temperature of 240 °C for 25 hours).
Applicant elected Group I (claims 1-7) in the reply filed on 03/25/2026.
Claims 2 and 10-14 and Claims 15-16 are related similarly. Also similarly, the negative electrode active material of Claims 2 and 10-14 can be made by another and materially different process such as one that does not require heating a mixture of NaSi alloy powder, a Na trap agent, and one or more of the metals listed in claim 15 at a heating temperature of 250 to 500 °C for a heating time of 30 to 200 hours (for example, the negative electrode active material of Claims 2 and 10-14 could be made by heating the mixture of materials at a temperature of 240 °C for 25 hours).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 15-16 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claims 1-7 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al (US 20200020929 A1).
Regarding claim 1, Yoshida discloses a negative electrode active material (anode active material; see entire disclosure and especially P17-18, 41). Yoshida discloses the active material has a composition represented by
N
a
x
M
y
S
i
46
, wherein M is a metal element other than Na, x and y satisfy 0<x, 0≤y, y≤x and 0<x+y<8, and comprises a crystal phase of a Type I silicon clathrate (P42, 44). Yoshida discloses, according to the present disclosure, by having the specific composition and the crystal phase, the volume variation of the active material due to charge/discharge may be decreased (P43). Yoshida discloses, since the volume variation of the active material in the present disclosure due to charge/discharge is small, a battery having good battery properties such as capacity and cycle property may be obtained (P43).
Although Yoshida does not specifically provide an embodiment using all of the claimed components together, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have chosen the negative electrode active material to be
N
a
0.05
M
g
0.05
S
i
46
because the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). (see MPEP § 2143, A.). Further, the Supreme Court decided that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp.” An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) (see MPEP § 2143, E.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the negative electrode active material of Yoshida to be
N
a
0.05
M
g
0.05
S
i
46
, given it is a material which falls into the scope of the material formula of Yoshida, Yoshida teaches the volume variation of the active material due to charge/discharge may be decreased thereby leading to a battery having good battery properties such as capacity and cycle property being obtained, and the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Therefore, modified Yoshida meets the limitation “a negative electrode active material consisting of clathrate-type Si particles comprising one or more metals selected from the group consisting of Mo, Zn, Mg, Pd, Zr, Ag, Co, Cr, Nb and V” (anode active material of
N
a
0.05
M
g
0.05
S
i
46
comprising a crystal phase of a Type I silicon clathrate).
Regarding claim 3, modified Yoshida meets the limitation wherein the one or more metals are interstitially doped in the clathrate-type Si particles (see the rejection of claim 1; one of ordinary skill in the art would understand that the silicon clathrate-type structure of modified Yoshida makes up a ‘cage’ that at least the Mg would sit within).
Regarding claim 4, modified Yoshida meets the limitation wherein the clathrate-type Si particles at least partially have a clathrate type II structure (“Also, the active material in the present disclosure preferably comprises no crystal phase of Type II silicon clathrate, but may comprise slightly”, Yoshida P55; underline added by Examiner).
Regarding claims 5-7, modified Yoshida meets the limitation wherein the negative electrode active material is for a lithium-ion battery (battery 10 in Fig. 2), and a lithium-ion battery (battery 10 in Fig. 2) having a negative electrode collector layer (anode current collector 5 in Fig. 2), a negative electrode active material layer comprising the negative active material according to claim 1 (anode layer 3 in Fig. 2), a solid electrolyte layer (electrolyte layer 2 in Fig. 2), a positive electrode active material layer (cathode layer 1 in Fig. 2), and a positive electrode collector layer (cathode current collector 4 in Fig. 2), in that order (see Yoshida P17-18, 21, 66-67, 70, 78, 87-88).
Regarding claim 2, Yoshida discloses a negative electrode active material (anode active material; see entire disclosure and especially P17-18, 41). Yoshida discloses the active material has a composition represented by
N
a
x
M
y
S
i
46
, wherein M is a metal element other than Na, x and y satisfy 0<x, 0≤y, y≤x and 0<x+y<8, and comprises a crystal phase of a Type I silicon clathrate (P42, 44). Yoshida discloses, according to the present disclosure, by having the specific composition and the crystal phase, the volume variation of the active material due to charge/discharge may be decreased (P43). Yoshida discloses, since the volume variation of the active material in the present disclosure due to charge/discharge is small, a battery having good battery properties such as capacity and cycle property may be obtained (P43).
Although Yoshida does not specifically provide an embodiment using all of the claimed components together, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have chosen the negative electrode active material to be
N
a
0.05
M
g
0.05
S
i
46
because the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). (see MPEP § 2143, A.). Further, the Supreme Court decided that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp.” An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) (see MPEP § 2143, E.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the negative electrode active material of Yoshida to be
N
a
0.05
M
g
0.05
S
i
46
, given it is a material which falls into the scope of the material formula of Yoshida, Yoshida teaches the volume variation of the active material due to charge/discharge may be decreased thereby leading to a battery having good battery properties such as capacity and cycle property being obtained, and the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
In the active material
N
a
0.05
M
g
0.05
S
i
46
of modified Yoshida, the “one or more metals selected from the group consisting of Mo, Zn, Mg, Pd, Zr, Ag, Co, Cr, Nb and V” would be Mg. Therefore, in the active material
N
a
0.05
M
g
0.05
S
i
46
of modified Yoshida, a content of the “one or more metals” with respect to the clathrate-type Si particles would be the content of the Mg with respect to the clathrate-type Si particles, and the mass percent of Mg in this selected composition is 0.0939%.
Therefore, modified Yoshida meets the limitation “a negative electrode active material consisting of clathrate-type Si particles comprising one or more metals selected from the group consisting of Mo, Fe, Zn, Mg, Pd, Zr, Ag, Co, Cr, Nb and V wherein a content of the one or more metals with respect to the clathrate-type Si particles is 0.01 to 1.60 mass%”.
Regarding claim 10, modified Yoshida meets the limitation wherein the one or more metals are interstitially doped in the clathrate-type Si particles (see the rejection of claim 2; one of ordinary skill in the art would understand that the silicon clathrate-type structure of modified Yoshida makes up a ‘cage’ that at least the Mg would sit within).
Regarding claim 11, modified Yoshida meets the limitation wherein the clathrate-type Si particles at least partially have a clathrate type II structure (“Also, the active material in the present disclosure preferably comprises no crystal phase of Type II silicon clathrate, but may comprise slightly”, Yoshida P55; underline added by Examiner).
Regarding claims 12-14, modified Yoshida meets the limitation wherein the negative electrode active material is for a lithium-ion battery (battery 10 in Fig. 2), and a lithium-ion battery (battery 10 in Fig. 2) having a negative electrode collector layer (anode current collector 5 in Fig. 2), a negative electrode active material layer comprising the negative active material according to claim 1 (anode layer 3 in Fig. 2), a solid electrolyte layer (electrolyte layer 2 in Fig. 2), a positive electrode active material layer (cathode layer 1 in Fig. 2), and a positive electrode collector layer (cathode current collector 4 in Fig. 2), in that order (see Yoshida P17-18, 21, 66-67, 70, 78, 87-88).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary Harris whose telephone number is (571)272-0690. The examiner can normally be reached M-F 8 am-5 pm EST.
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/MARY GRACE HARRIS/Examiner, Art Unit 1729
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