Conclusion
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 § 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.
Claim(s) 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2015/0376016 (Krishna) (cited on IDS filed 12/10/2024).
Krishna discloses that silicon clathrates are actively being investigated as anode materials for lithium-ion batteries due to their high charge storage capacity [0004] and discloses a material comprising type I and type II silicon clathrates. Specifically, the material may comprise a phase fraction about 80 wt. % to about 95 wt. % of the type II silicon clathrate. and also include between about 3 wt. % to about 10 wt. % of type I silicon clathrate [0039]. A specific example in Table 1 cites 89.7 wt% type II and 3.5 wt% type I which provides a ratio of type I to type II of 3.9%. This ratio falls within the range of claims 1 and 2. The mass of the type I clathrate is 3.5 which falls within the range of claim 3.
Regarding claim 4, clathrates have an open framework forming cages which allows for gas transportation and storage [0005-0006]. Thus, the material is considered porous.
The recitation “for lithium-ion batteries” in the preamble is not seen to provide any further structural limitation to the material claimed. The material disclosed by Krishna is capable of said use.
Claim(s) 1, 3, 4 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2015/0380724 (Chan) (cited on IDS filed 08/06/2024).
Chan discloses an anode comprising type II and type I silicon clathrate [0045]. In an example, a product is formed having 80% type II and 20% type I, resulting a ratio of 25% falling in the ranges of claims 1 and 3 [0032]. Regarding claim 4, clathrates have an open framework forming cages which allows for gas transportation and storage [0044-0045]. Thus, the material is considered porous. Regarding claim 5, as stated above, Chan discloses the material is used as an anode for a rechargeable battery and discloses a lithium-ion battery ([0025], claims 14 and 15 of Chan).
Claim(s) 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horie, “Controlled thermal decomposition of NaSi to derive silicon clathrate compounds”, Journal of Solid State Chemistry, 2009 (Horie).
Horie discloses formation of a material comprising type I and type II silicon clathrate. Example #450 comprises 92.5wt% type II and 7.5wt% type I resulting in a ratio of type I to type II of 8% which falls within the ranges of claims 1-3. Example #500 comprises 85.9wt% type II and 11.2wt% type I giving a ratio of type I to type II of 13%. Horie concludes that optimal conditions for forming type II silicon clathrate with minimal contamination with type I phase is performed by thermally decomposing NaSi below 440C with rapid removal of Na (conclusions). Regarding claim 4, clathrates have an open framework forming cages which allows for gas transportation and storage, thus are considered porous.
The recitation “for lithium-ion batteries” in the preamble is not seen to provide any further structural limitation to the material claimed. The material disclosed by Horie is capable of said use.
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 rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0380724 (Chan) (cited on IDS filed 08/06/2024) in view of US 2015/0376016 (Krishna) (cited on IDS filed 12/10/2024).
Chan does not disclose a narrower ratio of the type I silicon clathrate to type II silicon clathrate. Krishna discloses that silicon clathrates are actively being investigated as anode materials for lithium-ion batteries due to their high charge storage capacity [0004] and discloses a material comprising type I and type II silicon clathrates. Specifically, the material may comprise a phase fraction about 80 wt. % to about 95 wt. % of the type II silicon clathrate. and also include between about 3 wt. % to about 10 wt. % of type I silicon clathrate [0039]. A specific example in Table 1 cites 89.7 wt% type II and 3.5 wt% type I which provides a ratio of type I to type II of 3.9%. This ratio falls within the range of claims 1 and 2. It would have been obvious to use the material of Krishna as the anode material of Chan with a reasonable expectation of successfully forming an anode for use in a lithium-ion battery as Krishna recognizes that silicon clathrates have a high charge storage capacity and Chan discloses a material comprising both phases are usable as an anode material.
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0376016 (Krishna) (cited on IDS filed 12/10/2024).
Krishna discloses that silicon clathrates are actively being investigated as anode materials for lithium-ion batteries due to their high charge storage capacity [0004] and discloses a material comprising type I and type II silicon clathrates as discussed above. Krishna does not give an example where the material is provided in a battery as the negative electrode layer, but does disclose that silicon clathrates are being investigated as anode materials due to their high charge storage capacity. Thus, it would have been obvious to one of ordinary skill to provide the material in the form of an anode in a battery, specifically lithium-ion, as this use is clearly suggested by Krishna and expressly due to the known property of high charge storage capacity.
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Horie, “Controlled thermal decomposition of NaSi to derive silicon clathrate compounds”, Journal of Solid State Chemistry, 2009 (Horie) in view of US 2015/0380724 (Chan) (cited on IDS filed 08/06/2024).
Horie discloses a silicon clathrate material as disclosed above, but does not disclose its use as an anode for a battery. Chen discloses that it is known to use clathrates, including type I and type II, as anode active materials in a lithium-ion battery. It would have been obvious to use the silicon clathrate material of Horie as an anode material as suggested by Chan with a reasonable expectation of providing an anode capable of use in a lithium-ion battery. Horie discloses a similar content of type I and type II silicon clathrates to Chan, thus one of ordinary skill would have reasonably expected that the material of Horie can be used in a similar manner with success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1723
/Jennifer McNeil/ Primary Examiner, Art Unit 1723
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