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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-5 in the reply filed on 06/10/2026 is acknowledged.
Claims 6-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claims 2-3 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 2 and 3 contain the limitation (Mo1) and (Mo2). It is unclear, due to the presence of the parentheses, if these terms refer to a distinct limitation from the claimed “content of molybdenum” or an optional feature. Furthermore, the use of the subscripts “1” and “2” is misleading since in chemical notation, these may be misinterpreted as referring to a single atom of Mo or a dimer/two atoms of Mo (Mo2).
Claim 3 contains the limitation “in a surface layer”. Layer implies a structure that is distinct from the forsterite particle and it is therefore unclear if the Mo2 content is present in the forsterite particle or on a coating or layer added onto the surface thereof.
Appropriate correction is required.
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 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ushio et al. (Crystal Growth of Mg2SiO4 and MgSiO3 Single Crystals by the Flux Method, Journal of the American Ceramic Society, 1991, Vol. 74, No. 7, p. 1654-1657). (cited in the IDS filed on 12/17/2024).
Regarding claim 1, Ushio et al. discloses forsterite particles which includes a flux having MoO3. (Abstract, Fig. 1, Table 1). The forsterite particles would therefore include Mo, as claimed.
Regarding claim 4, the particle size of the forsterite particles lies in the range of 30-90 micrometers based on the type of flux used and temperature used. Since the particle diameters are disclosed in specific inventive examples, Ushio et al. discloses the range with sufficient specificity as to anticipate it. MPEP 2131.03.
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.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Ushio et al. (Crystal Growth of Mg2SiO4 and MgSiO3 Single Crystals by the Flux Method, Journal of the American Ceramic Society, 1991, Vol. 74, No. 7, p. 1654-1657). (cited in the IDS filed on 12/17/2024).
Ushio et al. does not specifically disclose a content of MoO3 in the range of 0.05 mass% to 35 mass% in the forsterite particle as determined by XRF analysis or 0.05 mass% to 25 mass% in a surface layer of each forsterite particle as determined by XPS surface analysis.
However, Ushio et al. teaches that the content of the flux for growing the crystals of forsterite is affected by both the composition and quantity of flux material and can be optimized for crystal growth. (page 1654, left col., last paragraph). Therefore, Ushio et al. implies a result effective variable of the nature and content of the flux, including MoO3, within and on the surface forsterite particles. Since the instant specification is silent to unexpected results, the specific amount of Mo within and on the surface of the forsterite is not considered to confer patentability to the claims. As the content thereof is a variable that can be modified, among others, by adjusting the amount of MoO3 flux, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of MoO3 flux in Ushio et al. to obtain the desired Mo content as measured using XRF or XPS (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ushio et al. (Crystal Growth of Mg2SiO4 and MgSiO3 Single Crystals by the Flux Method, Journal of the American Ceramic Society, 1991, Vol. 74, No. 7, p. 1654-1657) (cited in the IDS filed on 12/17/2024) in view of Sun et al. (U.S. App. Pub. No. 2011/0027651).
Ushio et al. is relied upon as described in the rejection of claim 1.
Ushio et al. does not disclose the specific surface area of the forsterite particles.
Sun et al. teaches an olivine-type cathode active material having the general formula MXO4-zBz which would include the formula MgSiO4 (i.e. forsterite). (see Abstract, par. [0011], selecting Mg and Si and z =0). Sun et al. teaches that the specific surface area of the particles should lie in the range of 1-10 m2/g from the standpoint of improving the electrochemical properties of the cathode active material, such as improved capacity per unit volume. (par. [0103]).
It would have been obvious to one of ordinary skill in the art to control the morphology and size of the morphology of the forsterite particles synthesized according to the process of Ushio et al. such that the specific surface area thereof lies in the range disclosed in Sun et al.
One of ordinary skill in the art would have found it obvious to target the range for the specific surface area value of the forsterite particles in Ushio et al. to lie in the range of Sun et al. in order to make a cathode active material having improved electrochemical properties.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Behan et al. (U.S. App. Pub. No. 2017/033353).
Regarding claim 1, Behan et al. teaches a method of making lithium ion battery anodes including a silicon-silica hybrid material (Abstract and par. [0044]-[0046]) having the general formula MxSiO2+x where M may be Mg and x is a positive integer (i.e. including 2) (par. [0055]-[0056] and [0065]) which meets the formula for forsterite. Furthermore, the particle surface and pores are explicitly mentioned to include forsterite. (par. [0064] and [0081]). The particles may include a dopant or additive which may include Mo. (par. [0009] and [0046]).
Regarding claims 2-3, Behan et al. teaches that the dopant material can be included in amounts in the range of 0-20 wt% with respect to the content of the hybrid material. (par. [0009]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
While Behan et al. does not mention the contents are measured via XRF or XPS, the method of measuring the content of Mo would not affect the composition thereof. As such, it would be inherent that measuring the content of Mo in the particles of Behan et al. according to the methods as claimed would result in a Mo content which overlaps with the presently claimed range. Given that the content in the forsterite particles would lie within the presently claimed range, the forsterite layer would include the disclosed amount, overlapping with the range in claim 3.
Regarding claim 4, Behan et al. teaches that the size of the hybrid material lies in the range of 1-10 micrometers (par. [0008], overlapping with the presently claimed range.
Regarding claim 5, Behan et al. teaches a specific surface area for the hybrid material lying in the range of 10-250 m2/g (par. [0051]), overlapping with the presently claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 07/23/2026
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