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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Claims 1 - 7 in the reply filed on 03/27/2026 is acknowledged.
Claims 8 – 10 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/27/2026.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 07/14/2023, 04/20/2026, and 05/08/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings received on 07/14/2023 were received and are acceptable.
Specification
The specification received on 07/14/2023 was received and is acceptable.
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.
Claim 7 is 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 7 recites the limitation "the separator layer". There is insufficient antecedent basis for this limitation in the claim. The spec describes a lithium-ion battery having a negative electrode layer, an electrolyte layer, and a positive electrode layer; therefore, the examiner is interpreting the separator layer as being the electrolyte layer for art purposes.
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.
(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.
Claim(s) 1, 3-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Harata et al (JP2022034998A, as provided in IDS received 04/20/2026, hereinafter Harata).
Regarding claim 1, Harata teaches the following elements:
Electrode active material Si particles having clathrate-type Si and diamond-type Si in the same particles. (FIG. 1 shows an overlaid X-ray diffraction chart of the negative electrode active material of Examples 1 to 3, and an overlaid X-ray diffraction chart of the negative electrode active material of Examples 4 to 7 is shown in FIG. Shown in 2. In FIG. 1, the peaks indicated by black triangles are derived from silicon clathrate II, the peaks indicated by white circles are derived from silicon clathrate I, and the peaks indicated by × are diamond structures., Harata, [0060])
Regarding claim 3, Harata teaches the following elements:
The electrode active material Si particles according to claim 1, wherein the clathrate-type Si at least partially has a clathrate type II structure. (FIG. 1 shows an overlaid X-ray diffraction chart of the negative electrode active material of Examples 1 to 3, and an overlaid X-ray diffraction chart of the negative electrode active material of Examples 4 to 7 is shown in FIG. Shown in 2. In FIG. 1, the peaks indicated by black triangles are derived from silicon clathrate II, the peaks indicated by white circles are derived from silicon clathrate I, and the peaks indicated by × are diamond structures., Harata, [0060])
Regarding claim 4, Harata teaches the following elements:
The electrode active material Si particles according to claim 1, which have a porous structure. (Na is present in all polyhedral cages that make up the silicon clathrate I., Harata, [0003]) and (That is, Na may or may not be present in the cage of the polyhedron constituting the silicon clathrate II., Harata, [0004])
The cage like structure of clathrate-type silicon containing pores.
Regarding claim 5, Harata teaches the following elements:
An electrode compound material comprising electrode active material Si particles according to claim 1. (From FIG. 3, while the negative electrode active material of Comparative Example 1 contains a large amount of silicon clathrate I and an unreacted Na—Si alloy in addition to silicon clathrate II, each of Example 1 and Comparative Example 2 It can be seen that all the negative electrode active materials contain silicon clathrate II as a main component., Harata, [0079])
Regarding claim 6, Harata teaches the following elements:
A lithium-ion battery having a negative electrode layer comprising an electrode compound material according to claim 5, an electrolyte layer and a positive electrode layer, in that order. (The negative electrode active material of the present invention can be used as a negative electrode active material for a secondary battery such as a lithium ion secondary battery and a power storage device such as an electric double layer capacitor and a lithium ion capacitor. The lithium ion secondary battery includes a positive electrode, a negative electrode, an electrolytic solution and a separator, or a positive electrode, a negative electrode and a solid electrolyte., Harata, [0041])
Regarding claim 7, Harata teaches the following elements:
The lithium-ion battery according to claim 6, wherein the separator layer is a solid electrolyte layer. (The negative electrode active material of the present invention can be used as a negative electrode active material for a secondary battery such as a lithium ion secondary battery and a power storage device such as an electric double layer capacitor and a lithium ion capacitor. The lithium ion secondary battery includes a positive electrode, a negative electrode, an electrolytic solution and a separator, or a positive electrode, a negative electrode and a solid electrolyte., Harata, [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.
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(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harata et al (JP2022034998A, as provided in IDS received 04/20/2026, hereinafter Harata) in view of Goodman et al (US10439223B1, hereinafter Goodman).
Regarding claim 2, Harata teaches all of the elements of claim 1 as shown above. However, Harata does not teach the specific abundance ratio of diamond-type Si of 0.05% to 11.00% in the electrode active material. Goodman teaches a silicon-carbide reinforced binder for secondary batteries, specifically silicon nanocrystals mixed with a binder. Goodman also teaches that these silicon nanocrystals can have a certain portion of silicon in a diamond-cubic crystal structure ranging from 10% of the silicon metal to 95%. (Preferably, at least 10 atom %, 20 atom %, 25 atom %, 30 atom %, 35 atom %, 40 atom %, 45 atom %, 50 atom %, 55 atom %, 60 atom %, 65 atom %, 70 atom %, 75 atom %, 80 atom %, 85 atom %, 90 atom %, or 95 atom % of the silicon metal has a diamond-cubic crystal structure. Notably, the silicon metal can be single crystalline or can be polycrystalline., Goodman, column 7 lines 33 - 39)
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one skilled in the art before the effective filling date of the invention to modify the abundance ratio of diamond-type silicon in the electrode active material of Harata with the specified ratio of at least 10% of Goodman because it might further negate the volumetric expansion of Si materials due to the influx of atoms.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA P BISTANY-RIEBMAN whose telephone number is (571)272-9591. The examiner can normally be reached Mon-Fri. 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas A Smith can be reached at 5712728760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA P BISTANY-RIEBMAN/Examiner, Art Unit 1752
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
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