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 Arguments
Applicants’ arguments filed 08/13/2026 have been fully considered but they are not persuasive.
Applicant argues that the expression “within the same particle” refers to clathrate-type Si and diamond-type Si coexist within one primary particle or one secondary particle. Examiner clarifies that the claimed language is “…in the same particles…” with a reasonable interpretation allowing for a primary particle or secondary particle containing only clathrate-type or diamond-type Si so long as a combination of primary or secondary particles contain both types. Even under the interpretation given by the applicant Harata does disclose clathrate-type Si and diamond-type Si in the same particle as described by the instant application. The instant application discloses the method of producing the electrode active material Si particles as mixing NaSi alloy powder with a Na trap agent and heating them [0062]. The instant specification gives examples of Na trap agents including particles such as CaCl2 [0065], Harata discloses mixing NaSi alloy and CaCl2 (Harata, [0051]). The instant specification discloses a preferred heating temperature of between 250 to 500 degrees Celsius [0069] to allow both diamond-type and clathrate-type Si to form, Harata discloses heating the above-mentioned mixture to a temperature of 300 degrees Celsius (Harata, [0051]), another instance in Harata discloses heating NaSi alloy and Na trapping agent of up to 500 degrees Celsius (Harata, [0037]). The instant specification discloses a preferred heating time of between 30 to 200 hours to allow both diamond-type and clathrate-type Si to form, Harata discloses heating the above-mentioned mixture for a period of 40 hours (Harata, [0051]). The instant application does not specify any other special means as to how the diamond-type and clathrate-type Si in the same particle is obtained, and since Harata discloses the same method of producing electrode active material Si particles the method of Harata would necessarily produce the same particles described in the instant application.
Applicant argues that Goodman does not disclose diamond-type Si as 0.05 to 11.00 area% with respect to the entire electrode active material Si particles. Applicant states “…no basis for converting the atomic percentage disclose in Goodman into the area percentage recited in claim 1.” Applicant is reminded that the instant specification states that the area% is an abundance ratio of diamond-type Si in electrode active material [0082]. Goodman discloses polycrystalline silicon nanocrystal with more than one crystal domain, with an example one instance where preferably at least 10 atom % (Goodman, column 7 lines 33 - 39), taken to also be an abundance ratio, has a diamond-cubic crystal structure. At least 10 atom % is taken to disclose a range between 10 to 100 % which overlaps with the abundance ratio of the instant claim of 0.05 to 11.00 %. Applicant argues one of ordinary skill in the art would not have motivation to combine Goodman and Harata. Goodman discloses a problem in the art of strain of the volumetric expansion of Si electrodes (Goodman, column 2 lines 4-6), with this strain causing fractures and eventual electrode failure. (Goodman, column 2 lines 4-6) Goodman presents a solution with nanostructure Si materials to prevent this from occurring and improving discharge capacities and lifespan characteristics. Goodman presents the abundance ratio of 10 atom % as one of the many disclosed improvements (Goodman, column 7 lines 33 – 39). Therefore, one of ordinary skill in the art would have the motivation to nanostructure said Si materials to prevent fractures caused by the strain of volumetric expansion and to improve discharge capacities and lifespan characteristics.
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) 1, 3-7 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 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])
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.
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])
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 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
/NICHOLAS A SMITH/Supervisory Primary Examiner, Art Unit 1752
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