DETAILED CORRESPONDENCE
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
3. Information disclosure statements (IDS), submitted November 28, 2023, October 15, 2025, and October 17, 2025, have been received and considered by the examiner.
Claim Interpretation
4. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Objections
5. Claims 21 and 31 are objected to because of the following informalities: the preambles recite “characterized by, comprising” which is nonsensical and grammatically incorrect. Appropriate correction is required.
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.
6. Claims 21-28 and 31-35 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. Claims 21 and 31 recite “the surface of the silicon particles” but this limitation lacks antecedent basis because no surface has previously been defined. Claims 22-28 and 32-35 are rejected as being dependent upon a rejected base claim.
7. Claim 23 recites “powder shape” but it is unclear how a “powder” has a specific shape.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
8. Claims 21-27 and 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over He US PG Publication 2018/0375094 in view of Wang CN104282877 and Zhang CN101851098.
Regarding Claims 21, 23-26, and 29, He discloses a lithium secondary battery comprising a cathode and an anode arranged on opposing sides of a separator (meeting Claim 29) wherein the anode comprises an anode active substance comprising a composite material in a spherical powder shape (spheres of this material would be capable of forming a powder and so have a powder shape) having a secondary (combined) particle size of e.g. 0.5 µm to 20.0 µm (meeting Claim 23) and a primary particle size (e.g. initial or primary silicon powder particle size of 1-500 nm, para 0013, meeting Claim 24) comprising silicon nanoparticles (silicon core of spherical silicon nanoparticles, Fig. 1, which necessarily have a size/diameter in the nm range of e.g. 1 to 1000 nm since they are nanoparticles, meeting Claims 25-26) 1, a silicon oxide material (can be SiO2, para 0019) layer 2 formed on at least a partial area on the surface of the silicon particles 1, and a conductive carbon layer 4 formed on the ceramic material to cover the silicon particles 1 and the intervening SiO2 material (Fig 1, paras 0010-0019). He does not disclose wherein the layer 2 is MxSi12-(m+n)Al(m+n)OnN(16-n) where M is Y, Zr, Rh, Pd, Li, Mg, Ca, Ba, Ce, Nd, Eu or Yb, and X= 0.01-0.5, m=0.1-2, and n=0.1-3. However, in a similar field of endeavor of anode design using silicon anode active material in combination with oxide or ceramic materials including Si, O, and N, Wang teaches that an anode using Si as an active material benefits from including a layer of ion conducting insulating material such as SiO22 or SiAlON and combined with an additional conductive layer (see e.g. paras 0009-0014, 0021, 0023-0024), Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to use a SiAlON material in the ceramic layer of He rather than SiO2 because Wang teaches that this material is known as a functional equivalent to benefit Si active materials in a similar configuration and the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
He modified by Wang does not specifically disclose the claimed chemical formula. However, in a similar field of endeavor of SiAlON technology, Zhang discloses a material having excellent qualities for use in electronic applications and is represented by LiSiAlON or LimSi12-m-nAlm+nOnN16-n where 0.4<m<2.0, 0.8<n<2.0, e.g. Li0.5Si10.6Al1.4O0.9N15.1 and has the benefit of being a SiAlON that is fast to produce (where in the instant formula, x = 0.5, m = 0.5, and n= 0.9) (paras 0004-0022, 0048). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to use the Li0.5Si10.6Al1.4O0.9N15.1 ceramic of Zhang in the anode active substance of He modified by Wang because Zhang teaches that this material is a known and desirable example of SiAlON material for use in electronic systems and the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Regarding Claim 22, the prior art does not specifically recite wherein when forming the composite material, the ceramic material covering the silicon particles is obtained by a silicon material in an organic solvent to be subjected to a plasma treatment, and the organic solvent comprises an alcohol compound, an aluminum compound, and a flux. However, Claim 22 is a product-by-process claim and the skilled artisan would recognize that the cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
Regarding Claim 27, He discloses wherein the nanocomposite layer has a minimal thickness of 5 nm (para 0018) and since the nanocomposite layer of He includes both the SiO2 layer and a metal alloy layer, the SiO2 layer would be close to e.g. 3 nm in thickness and so would be obvious over the claim since a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Regarding Claim 30, He teaches that a weight percentage of the anode active substance in the anode is 94% (para 0066) which is greater than 70%.
9. Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over He US PG Publication 2018/0375094 in view of Wang CN104282877 and Zhang CN101851098, as applied to Claim 27, and further in view of Choi US PG Publication 2019/0288281.
Regarding Claim 28, He modified by Wang and Zhang discloses the claimed anode active substance as described in the rejection of Claim 27, which is incorporated herein in its entirety. Modified He does not disclose a thickness of the conductive carbon. However, in the same field of endeavor of anode design using composite Si materials, Choi discloses an anode active substance for a secondary battery comprising a composite material comprising silicon particles (a core of SiOx where x can be zero, resulting in silicon particles, para 0019-0020), an ion conducting/intercalating ceramic material (silicon oxynitride, para 0023), and a conductive carbon (para 0026), wherein the ceramic material is formed on at least a partial area on the surface of the silicon particles (para 0019), and the conductive carbon is formed on the ceramic material to cover the silicon particles and the ceramic material (since the ceramic material covers the silicon particles then the carbon covering the ceramic materials would necessarily also cover the silicon particles) (see entire disclosure and especially paras 0019-0030). Choi further discloses wherein the carbon coating layer is e.g. 1-100 nm and is optimized to improve electrical conductivity of the electrode while maintaining a conductive path (para 0029). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the conductive carbon of modified He such that a thickness of the conductive carbon is in the range of 3 nm to 10 nm because Choi teaches that these values are in the known beneficial range for a similar use and “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Allowable Subject Matter
10. Claims 31-35 are allowable over the prior art. The closest prior art is Kawakami US PG Publication 2012/0321949, which teaches a method of forming an anode active substance comprising a composite material comprising silicon particles (silicon crystal), a ceramic material (aluminum oxynitride), and a conductive carbon where plasma sintering is used, but the method recited including placing multiple electrodes and an organic solvent (including an alcohol compound) and an aluminum compound and a flux and adding a silicon material in the reaction chamber to contact the organic solvent) is not taught by this prior art and such a method is not found otherwise in the prior art.
Conclusion
11. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Van Rutten NPL discloses e.g. Ca α-sialon as an improvement over silicon nitride ceramics with a number of beneficial properties (see at least the introduction) but the stoichiometry of Ca (M appears to always be greater than 1) is not the same as what is claimed.
Lange US PG Pub 2010/0104942 has an anode material of lithium silicon tin oxynitride (para 0052).
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/LISA S PARK/Primary Examiner, Art Unit 1729
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