DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The Information Disclosure Statements (IDS) filed 05/01/2024 and 07/20/2026 have been placed in the application file and the information referred to therein has been considered.
Drawings
The drawings received 05/01/2024 are acceptable for examination purposes.
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.
Claim 1 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
In claim 1 it is unclear how many negative active materials are claimed: instant claim 1 recites a negative active material, while dependent claims 2 and 3 recite the negative active material characterized by two different 29Si NMR Spectra?
In claims 2 and 3 it is unclear how recited NMR spectra were measured. One skilled in the art would recognize that peaks chemical shifts in NMR spectra as well as peaks width depend on solvents, temperature and nature of reference standard. Claims must be interpreted in light of the specification without reading limitations from the specification into the claim. See: MPEP §2111.01.
Claims 2-18 depend from claim 1 directly or indirectly and fall therewith.
Claim Rejections - 35 USC § 102
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.
Claims 1-4, 6,14, 18 and 20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by US 2005/0214644 to Aramata (Aramata)
Regarding claim 1, Aramata discloses a negative active material (Title, Fig. 1), comprising silicon-oxygen particles (11 Fig. 1, claim2) and a silicon-oxygen-carbon layer located on surfaces of the silicon-oxygen particles (12. Fig. 1), wherein the silicon-oxygen-carbon layer comprises silicon-oxygen-carbon composite particle (claim 4). Therefore, instant claim 1 is anticipated by Aramata.
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Regarding claims 2-4: since the negative active material of Aramata has substantially similar structure to that as claimed , parameters of 29Si MAS NMR Spectra are inherently present. Products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed property (i.e. the specific output energy density), is necessarily present in the prior art material. The courts have held that “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.
MPEP 2112 V states that "once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning tending to show inherency, the burden shifts to the Applicant to show an unobvious difference."
Regarding claim 6, Aramata discloses wherein the silicon-oxygen-carbon layer comprises amorphous silicon-oxygen-carbon composite particles (para 11).
Regarding claim 14: since the negative active material of Aramata has substantially similar structure to that claimed , parameters of X-ray diffraction pattern are inherently present. Products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed property (i.e. the specific output energy density), is necessarily present in the prior art material. The courts have held that “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.
Regarding claim 19, Aramata discloses a non-aqueous electrolyte secondary cell (claim 35), wherein a negative electrode comprises a negative active material (Title, Fig. 1), comprising silicon-oxygen particles (11 Fig. 1, claim2) and a silicon-oxygen-carbon layer located on surfaces of the silicon-oxygen particles (12. Fig. 1), wherein the silicon-oxygen-carbon layer comprises silicon-oxygen-carbon composite particle (claim 4).
Regarding claim 20, Aramata discloses portable electronic equipment (para 3).
Claim Rejections - 35 USC § 103
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.
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.
Claims 10-13, 16, 17 are rejected under 35 U.S.C. 103 as obvious over US 2005/0214644 to Aramata.
Regarding clam 10, Aramata discloses the invention as discussed above as applied to claim 1 and incorporated therein. Aramata does not expressly disclose wherein Dv50 of the silicon-oxygen particles is 2.5 μm to 10 μm; and/or the silicon-oxygen particles are SiOx, wherein 0.5 ≤ x ≤ 1.5. However, Aramata teaches an average particle size of 100 nm to 10 µm at D50 and SiOy wherein 0<y≤2 (para 48, 51). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a 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. MPEP 2144.05. Therefore, It would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to optimize the silicon-oxygen particles diameter and content of oxygen in SiOy based on ranges disclosed by Aramata in order to provide silicon composite or silicon-carbon composite particles from which a lithium ion secondary cell negative electrode having improved cycle performance can be manufactured, a negative electrode material for use in non-aqueous electrolyte secondary cells.
Regarding claims 11, 12 and 13, Aramata discloses the invention discussed above as applied to claim 1 and incorporated therein. In addition, Aramata teaches that the silicon or silicon alloy fine particles and the carbon fine particles are preferably combined in a weight ratio between 90:10 and 20:80, Aramata also teaches that Too small an amount of carbon may lead to inferior cycle performance whereas too much carbon may lead to a drop of charge/discharge capacity per unit volume thus clearly teaches that content of carbon and silicon is a result effective variable. It has been held by the courts that discovering an optimum value or workable ranges of a result-effective variable involves only routine skill in the art, and thus not novel. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. It would have been obvious to one of ordinary skill of art at the time the invention was filed to optimize amount of silicon and carbon based on ranges disclosed by Aramata in order to provide silicon composite or silicon-carbon composite particles from which a lithium ion secondary cell negative electrode having improved cycle performance can be manufactured, a negative electrode material for use in non-aqueous electrolyte secondary cells.
Regarding clam 16, Aramata discloses the invention as discussed above as applied to claim 1 and incorporated therein. Aramata does not expressly disclose wherein a powder conductivity of the negative active material is 2.0 S/cm to 30 S/cm. However, Aramata teaches that desired powder conductivity in a range more than 1 10-8 S/cm. It has been held by the courts that discovering an optimum value or workable ranges of a result-effective variable involves only routine skill in the art, and thus not novel. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. It would have been obvious to one of ordinary skill of art at the time the invention was filed to optimize the powder conductivity based on range disclosed by Aramata in order to provide silicon composite or silicon-carbon composite particles from which a lithium ion secondary cell negative electrode having improved cycle performance can be manufactured, a negative electrode material for use in non-aqueous electrolyte secondary cells.
Regarding claim 17, Aramata discloses a method for preparing the negative active material comprising the following steps: heat-treating a solution containing an oxide of silicon, a silicon source, a carbon source, and an organic solvent to obtain a heat-treated powder; and calcining the heat-treated powder (Examples 1, 2). In addition, Aramata discloses wherein the calcination comprises: calcining at a temperature of 300 °C to 1000 °C (Example 2). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a 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. MPEP 2144.05. Therefore, It would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to optimize the temperature of calcining based on ranges disclosed by Aramata in order to provide silicon composite or silicon-carbon composite particles from which a lithium ion secondary cell negative electrode having improved cycle performance can be manufactured, a negative electrode material for use in non-aqueous electrolyte secondary cells.
Claim 15 is rejected under 35 U.S.C. 103 as obvious over US 2005/0214644 to Aramata in view of US 7358011 to Fukuoka (Fukuoka).
Regarding clam 15, Aramata discloses the invention as discussed above as applied to claim 1 and incorporated therein. Aramata does not expressly disclose wherein a specific surface area of the negative active material is 1 m2/g to 50 m2/g.
Fukuoka teaches a non-aqueous electrolyte secondary battery negative electrode material which exhibits a high charge/discharge capacity and satisfactory cycle performance when used as the negative electrode active material in lithium-ion secondary batteries, wherein the negative electrode active material comprising silicon-oxygen-carbon composite and material and BET surface area is 15.2 m2/g.
It is noted that a specific example in the prior art which is within a claimed range anticipates the range. See MPEP 2131.03. It would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to optimize the specific surface area in the negative active material of Aromata in the range disclosed by Fukuoka(see examples 1-4) in order to provide negative electrode material which exhibits a high charge/discharge capacity and satisfactory cycle performance when used as the negative electrode active material in lithium ion secondary batteries (Abstract).
Allowable Subject Matter
Claim 18 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and overcome rejection of base claim under 112b.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER USYATINSKY whose telephone number is (571)270-7703. The examiner can normally be reached IFP.
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/Alexander Usyatinsky/Primary Examiner, Art Unit 1751
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