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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. KR10-2021-0172786, filed on 06 December 2021.
Response to Amendment
The amendments filed on 22 April 2024 have been entered. Claims 1-17 remain pending in the application.
Claim Interpretation
In claim 1, the language “crystalline fine particle” is understood by the examiner as being interchangeable with the language “crystal, a crystal grain, and a crystal particle” as indicated in paragraph [0045] of the original specification.
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.
Claims 1-2, 4, and 7 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Hirono et al. (JP2021131991A, provided in an IDS received on 06/30/2025). The uploaded machine translated description is used for the rejection below.
Regarding Claim 1, Hirono teaches a negative-electrode material for a secondary battery, the negative electrode material comprising an active material, a conductive material, and a binder (paragraph [0024], third sentence teaches an active material, a conductive material, and a binder),
wherein the active material includes a silicon oxide composite having a carbon-coated surface (paragraphs [0026] and [0027] teach the core is a composite of Si and SiO2, and paragraphs [0015] and [0048] teach a carbon-based material as the material of the coating layer),
wherein the silicon oxide composite includes silicon oxide (SiOx, 0.5<X≤2) nanoparticles and silicon (Si) nanoparticles (paragraph [0017] teaches an overlapping range; for example, if SiO2 is 67% by mass and Si is 33% by mass, then a 100g core has 1.115 moles SiO2 and 1.17 moles Si, which gives Si2.3O2.2, and X is 0.97),
wherein a diameter of a first silicon crystalline fine particle of the silicon oxide nanoparticle and a diameter of a second silicon crystalline fine particle of the silicon (Si) nanoparticle are different from each other (paragraph [0026], second to last sentence teaches that fine Si is introduced into the SiO2 phase by substituting part of the O in the SiO2 phase; paragraphs [0035], [0036], and [0060] teach that a size of a Si crystal and a size of a fine Si crystal are different).
Regarding Claim 2, Hirono teaches the negative-electrode material for the secondary battery of claim 1, wherein the first silicon crystalline fine particle of the silicon oxide nanoparticle has the diameter in a range of 3 to 20 nm (paragraph [0036] teaches the crystal size of the fine Si, which is substituted into the SiO2 phase, is between 3 nm and 5 nm).
Regarding Claim 4, Hirono teaches the negative-electrode material for the secondary battery of claim 1, wherein an average diameter (D50) of the silicon oxide composite is in a range of 1 to 50 µm (paragraphs [0019] and [0051] teach the average particle size D50 of the negative electrode material, i.e., the composite particle, is in a range of 1µm to 12 µm).
Regarding Claim 7, Hirono teaches the negative-electrode material for the secondary battery of claim 1, wherein the further includes a first carbon material (paragraphs [0048] and [0060] teach a first carbon material in the negative electrode material).
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.
Claims 3, 6, 10-12, 14, and 16 are rejected under 35 U.S.C. 103 as obvious over Hirono et al. (JP2021131991A).
Regarding Claim 3, Hirono teaches the negative-electrode material for the secondary battery of claim 1, wherein the second silicon crystalline fine particle of the silicon (Si) nanoparticle has the diameter in a range of 20 to 50 nm (paragraph [0035] teaches the crystal size of Si is preferably 20 nm or less; a crystal size of 20 nm would be within the range of 20 to 50 nm).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 about obviousness of similar and overlapping ranges.
Regarding Claim 6, Hirono teaches the negative-electrode material for the secondary battery of claim 1, wherein a molar ratio of oxygen and silicon in the silicon oxide composite is in a range of 0.5:1.0 to 1.0:1.0 (paragraph [0017] teaches an overlapping range; for example, if SiO2 is 40% by mass and Si is 60% by mass, then a 100g core has 0.666 moles of SiO2 and 2.136 moles of Si, which has a molar ratio of oxygen to silicon of 1.332:2.802 or 0.48:1, and if SiO2 is 67% by mass and Si is 33% by mass, then a 100g core has 1.115 moles SiO2 and 1.17 moles Si, which has a molar ratio of oxygen to silicon of 2.23:2.29 or 0.97:1.0).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 about obviousness of similar and overlapping ranges.
Regarding Claim 10, Hirono teaches a method for preparing a negative-electrode material for a secondary battery, the negative-electrode material comprising an active material, a conductive material, and a binder (paragraph [0024], third sentence teaches an active material, a conductive material, and a binder), wherein the method comprises:
(a) mixing silicon oxide (SiOx, 0.5<x≤2) nanoparticles and silicon (Si) nanoparticles to prepare a mixture (paragraph [0053], steps (1) and (2) provide the Si and SiO2 nanoparticles; paragraph [0054] teaches milling the mixture of step (1), which forms nanoparticles of the silicon and silicon oxide);
(c) heat-treating the mixture to prepare a silicon oxide composite (paragraph [0055] teaches step (3), heat treating the mixture, which crystallizes the silicon and silicon oxide); and
(d) coating carbon on the silicon oxide composite to prepare the active material (paragraph [0059] teaches coating the core particles with carbon), wherein a diameter of a first silicon crystalline fine particle of the silicon oxide nanoparticle and a diameter of a second silicon crystalline fine particle of the silicon (Si) nanoparticle are different from each other (paragraph [0060] teaches the crystals of the SiO2 and Si phase are different sizes).
Although Hirono does not teach step (b) adding a binder to the first mixture and drying the first mixture having the binder added thereto to prepare a second mixture, he teaches adding binder in a later step (paragraph [0066] teaches adding the binder to mixture and drying).
Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the method of Hirono to add the binder to the first mixture in an earlier step before heat treatment, in the absence of new or unexpected results.
Regarding Claim 11, Hirono teaches the method of claim 10, wherein the diameter of the first silicon crystalline fine particle of the silicon oxide nanoparticle is in a range of 3 to 20 nm (paragraph [0036] teaches the crystal size of the fine Si, which is substituted into the SiO2 phase, is between 3 nm and 5 nm).
Regarding Claim 12, Hirono teaches the method of claim 10, wherein the diameter of the second silicon crystalline fine particle of the silicon (Si) nanoparticle is in a range of 20 to 50 nm (paragraph [0035] teaches the crystal size of Si is preferably 20 nm or less; a crystal size of 20 nm would be within the range of 20 to 50 nm).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 about obviousness of similar and overlapping ranges.
Regarding Claim 14, Hirono teaches the method of claim 10.
Paragraph [0055] teaches the temperature being raised to 1000 C for heat treatment, and in this process, a first step of increasing a temperature from a room temperature to 500 C is performed. Then, this temperature is maintained until the temperature is further increased to 1000 C to ensure specific crystallinity characteristics are achieved.
Hirono does not teach a third step of increasing the temperature from the heat-treatment temperature at the second step to 1200C and a fourth step of maintaining that temperature to heat treat the mixture.
However, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
Additionally, Hirono teaches that the temperature for heat treatment directly affects the crystallinity of the Si phase and the SiO2 phase; thus, he is teaching that the heat treatment temperature is a results effective variable that controls crystallinity of the silicon and silicon oxide phases. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have increased the heat treatment temperature to 1200C because it has been held by the courts that optimization of a results effective variable is not novel. In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980).
Regarding Claim 16, Hirono teaches the method of claim 10, wherein an average diameter (D50) of the silicon oxide composite is in a range of 1 to 50 µm (paragraphs [0019] and [0051] teach the average particle size D50 of the negative electrode material, i.e., the composite particle, is in a range of 1µm to 12 µm).
Claims 5, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hirono et al. (JP2021131991A) in view of Lee et al. (WO 2021034109 A1, provided in an IDS received on 06/30/2025). The uploaded machine translated descriptions are used for the rejection below.
Regarding Claim 5, Hirono teaches the negative-electrode material for the secondary battery of claim 1.
Hirono does not teach that a specific surface area (BET) of the silicon oxide composite is in a range of 1 to 5 m2/g.
However, Lee teaches a negative electrode active material for a secondary battery comprising a silicon and silicon oxide composite core with a carbon coating for improving capacity, cycle characteristics, and initial efficiency when used as a negative electrode active material of a secondary battery (see paragraph [0017] describing advantageous effects). Lee teaches that the specific surface area of the silicon-silicon oxide-carbon composite, measured by BET method, is optimal between 3 m2/g and 20 m2/g, and when outside this range, battery performance decreases (paragraph [00124]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the silicon oxide composite of Hirono to have a specific surface area (BET) in a range of 3 and 20 m2/g, as taught by Lee.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 about obviousness of similar and overlapping ranges.
Regarding Claim 13, Hirono teaches the method of claim 10.
Hirono does not teach wherein in the (b), 1 to 20 parts by weight of the binder is added based on 100 parts by weight of the silicon oxide nanoparticles.
However, Lee teaches 1 to 20 parts by weight of the binder is added based on 100 parts by weight of the silicon oxide nano particles (paragraph [00201] teaches an 8:1 ratio of negative electrode active material to binder by weight, and the negative electrode active material contains 66% by weight silicon oxide nanoparticles, taught in paragraph [00194]),
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 about obviousness of similar and overlapping ranges.
Furthermore, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (see MPEP § 2144.04).
Regarding Claim 15, Hirono teaches the method of claim 10.
Hirono does not teach that in each of the (b) and (c), pulverizing is performed.
However, Lee teaches a pulverizing step to obtain a core, and that pulverization controls the average particle diameter of the core to be obtained (paragraphs [0136] and [0137]).
Lee teaches pulverization as an alternative process for controlling particle size. It would have been obvious to one of ordinary skill in the art before the effective filing date to perform pulverization of the composite particles either before or after heat treatment to control the size of the silicon and silicon oxide materials.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hirono et al. (JP2021131991A) in view of Kim et al. (US 20240021792 A1, provided in an IDS received on 09/25/2024).
Regarding Claim 8, Hirono teaches the negative-electrode material for the secondary battery of claim 7.
Hirono does not teach wherein a ratio of a weight of the silicon oxide composite and a weight of a first carbon material in the active material is in a range of 1:1 to 1:7.
However, Kim teaches an anode active material for a lithium secondary battery providing good initial efficiency and improved capacity and lifetime characteristics [0005], and the anode active material comprises a silicon-silicon oxide composite with different crystal sizes and a carbon-based material ([0008]-[0009]).
In paragraph [0052], Kim teaches that the thermal treatment temperature of the silicon composite materials causes the crystallization of amorphous silicon starting material and a change in the crystal size formed. Thus, the product will be a composite with different sized silicon crystals in the silicon and silicon oxide phases.
For preparing the anode active material for providing good initial efficiency and improved capacity and lifetime characteristics, Kim teaches that a ratio of a weight of the silicon oxide composite and a weight of a first carbon material in the active material is in a range of 1:1 to 1:7 (the mixing ratio of the graphite to the anode active material in preparing the anode active material was 85:15 by weight, or a 1:6 weight ratio of silicon oxide composite to first carbon material, in example 6, paragraph [0091]; example 8 uses a 75:25 weight ratio of graphite to anode active material, or a 1:3 weight ratio of silicon oxide composite to first carbon material, [0093]).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 about obviousness of similar and overlapping ranges.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the anode active material of Hirono to be prepared with a ratio of a weight of silicon oxide composite and a weight of a first carbon material in a range of 1:1 to 1:7 for providing a lithium secondary battery with good initial efficiency and improved capacity and lifetime characteristics, as taught by Kim.
Regarding Claim 9, Hirono teaches the negative-electrode material for the secondary battery of claim 1.
Hirono does not teach wherein a ratio of a weight of the active material, a weight of the conductive material, and a weight of the binder in the negative-electrode material for the secondary battery is in a range of 100:1 to 25:1 to 25.
However, Kim teaches in Manufacture Example 1 ([0099]) a weight ratio of the active material, conductive material, and binder of 10:1:3, which lies within the 100:(1-25):(1-25) range.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 about obviousness of similar and overlapping ranges.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date to have used a ratio of a weight of the active material, a weight of the conductive material, and a weight of the binder in the negative-electrode material for the secondary battery in a range of 100:(1-25):(1-25) for providing a lithium secondary battery with good initial efficiency and improved capacity and lifetime characteristics, as taught by Kim.
Regarding Claim 17, Hirono teaches the method of claim 10.
Hirono does not teach that the method further comprises, after (d), (e) further mixing the silicon oxide composite and a first carbon material with each other at a weight ratio of 1:1 to 1:7 to prepare the active material; and (f) mixing the active material, the conductive material, and the binder with each other at a weight ratio of 100:1 to 25:1 to 25 to prepare a slurry.
However, Kim teaches a ratio of a weight of the silicon oxide composite and a weight of a first carbon material in the active material is in a range of 1:1 to 1:7 (the mixing ratio of the graphite to the anode active material in preparing the anode active material was 85:15 by weight, or a 1:6 weight ratio of silicon oxide composite to first carbon material, in example 6, paragraph [0091]; example 8 uses a 75:25 weight ratio of graphite to anode active material, or a 1:3 weight ratio of silicon oxide composite to first carbon material, [0093]) and a weight ratio of the active material, conductive material, and binder of 10:1:3, which lies within the 100:(1-25):(1-25) range (Manufacture Example 1, [0099]).
See Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989) (Claimed ratios were obvious as being reached by routine procedures and producing predictable results) and MPEP 2144.05 III about routine optimization.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 about obviousness of similar and overlapping ranges.
Furthermore, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (see MPEP § 2144.04).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the method of Hirono to include steps (e) and (f) for mixing the silicon oxide composite material and the first carbon material in a weight ratio of 1:1 to 1:7 and to mix the active material, conductive material, and binder in a weight ratio in a range of 100:(1-25):(1-25) for providing a lithium secondary battery with good initial efficiency and improved capacity and lifetime characteristics, as taught by Kim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW N KIM whose telephone number is (571)272-9169. The examiner can normally be reached Mon-Fri. 7:30am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (571)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW KIM/Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727
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