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
Claims 2, 4, 11-15, 17, and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/22/2025.
Claim Interpretation
It is noted that the term “atomically dispersed” and “chemically dispersed” as recited by Claim 1 is interpreted according to those definitions of the terms provided at [0050]-[0051] of the specification.
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) 1, 3, 6-8, 10, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bohm et al. (GB 2055400B), hereinafter ‘Bohm’, in view of Abbott et al. (Electrolyric metal coatings and metal finishing using ionic liquids, The Electrochemical Society, 2009), Unacademy (Washing, Drying, and Ignition of the Precipitate), and as evidenced by LibreTexts (Standard Reduction Potentials by Element).
Regarding Claim 1, Bohm discloses a method of fabricating electrochemically active-material structures (Page 1, lines 20-25: the electrodeposited silicon is considered an electrochemically active-material structure), for negative battery electrodes in lithium-ion electrochemical cells(this phrase is considered an intended use of the produced product that does not serve to limit the scope of the claim, given that the body of the claim fully and intrinsically sets forth all of the limitations of the claimed invention, and this phrase merely states, the purpose or intended use of the invention – see MPEP 2111.02(II)), using a homogenous liquid-phase mixture (see below), the method comprising:
providing one or more precursors dissolved in a liquid solvent and forming the homogenous liquid-phase mixture in which one or more precursors are atomically dispersed, wherein the one or more precursors comprise silicon, carbon, oxygen, and one or more inert elements (Page 1, lines 50-51: Bohm discloses the use of silyl alkanes comprising silicon and carbon, including SiCl3CH3 and SiCl2(CH3)2; Page 1, lines 54-56; Example: Bohm discloses the use of ethylene glycol monoethylether, diethylene glycol diethylether, and ethylene glycol dimethylether as organic solvents – each of these members comprises oxygen. Further, in the case that a non-protonically polar solvent is used, an alcohol is added to effect hydrolysis – all alcohols comprise oxygen; Page 1, lines 39-40; lines 32-33: Bohm discloses adding halides such as LiCl, CaF2, KCl, KBr, and KI to the electrolytic deposition solvent as conducting salts, and each of these members comprises an inert element according to those members claimed in Claim 3. Further, Bohm discloses adding phosphorous chloride in droplets during deposition – phosphorous is an inert element according to those members claimed in Claim 3. When the above components are combined to form the inventive electrolytic deposition solvent, a homogenous liquid-phase mixture in which one or more precursors are atomically dispersed would be formed – further, all of the above members are considered to meet the one or more precursors comprising silicon, oxygen, carbon, and at least one inert element), and
reacting the one or more precursors using reaction conditions that induce formation of the electrochemically active-material structures by simultaneously extracting the silicon and the one or more inert elements from the one or more precursors and incorporating the silicon and the one or more inert elements into the electrochemically active-material structures (Page 2, lines 3-18: the organic solvent mixture is brought together with the silicon compound in an electrolysis vessel, and voltage is applied to the vessel, and a reaction occurs; further, as this reaction occurs, silicon and the one or more inert elements would be extracted from the solution by said reaction by the formation of solid product), wherein
the silicon and the one or more inert elements are chemically dispersed in the electrochemically active-material structures (the chemical reaction occurring in Bohm would form electrochemically active-material structures having the silicon and the one or more inert elements chemically dispersed therein, absent evidence to the contrary, as such a chemical reaction would necessarily form a product in the same way as claimed– see MPEP 2112.01(I)),
the electrochemically active-material structures are solid structures forming a suspension in the liquid solvent (the chemical reaction occurring in Bohm would form a solid precipitate of electrochemically active-material structures that would be suspended in the liquid solvent, absent evidence to the contrary, as such a chemical reaction would necessarily form a product in the same way as claimed – see MPEP 2112.01(I)),
the electrochemically active-material structures are characterized by an amorphous silicon phase or a polycrystalline silicon phase while comprising the one or more inert elements in addition to the silicon (Page 1, lines 28-29: the produced silicon is disclosed to be amorphous; further, the formed amorphous silicon comprise the one or more inert elements in addition to the silicon, absent evidence to the contrary, as such a chemical reaction would necessarily form a product in the same way as claimed – see MPEP 2112.01(I)),), and
the reaction conditions induce one or both of a chemical reaction and an electrochemical reaction of the one or more precursors (the reaction of Bohm is an electrochemical reaction, given a voltage is applied to electrodes immersed in the solvent of Bohm to initiate the reaction as discussed above).
Further regarding Claim 1, Bohm discloses (Page 2, lines 20-21) that the cathode, or the reducing agent of an electrochemical reaction, may be aluminum, which has a standard reduction potential compared to a standard hydrogen electrode of -1.67 V (see evidentiary reference above).
Further regarding Claim 1, while Bohm discloses the formation of electrochemically active material structures as discussed above, Bohm does not disclose that such structures are heat treated at a temperature of 50-1100 °C.
However, it is routine in the art, after the formation of a precipitate as formed in the process of Bohm, to filter and dry the formed precipitate in an oven at a temperature of 100 °C or greater to remove any undesired solvent and obtain a dry product (see Unacademy, Drying and Igniting Of Precipitate).
Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to dry the solid produced in the process of Bohm in an oven at a temperature of 100 °C or greater, considered heat treating the produced electrochemically active material structures, in order to dry the produced precipitate and remove undesired solvent from the electrochemically active material structures.
Further regarding Claim 1, while Bohm as modified above discloses a process for electrodeposition of silicon onto a base for an electrode, it does not disclose that the homogenous liquid-phase mixture further comprises quaternary ammonium compounds.
Abbott discloses methods for electrolytic deposition of metals upon a substrate (title). A person of ordinary skill in the art would have recognized Abbott as analogous to Bohm, as both references are drawn to the same field of endeavor as the claimed invention, methods for the electrodeposition of metals - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Further, Abbott discloses the use of choline-based euteric solvents such as chlonine chloride, a quaternary ammonium compound, as a deposition solvent for the deposition of metlas. Notably, Abbott discloses that such solvents have low environmental impact and toxicity, are inexpensive and easy to handle, and can be considered “drop-in” replacement technologies for existing aqueous process that utilize highly toxic reagents.
In light of this, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize choline chloride, a quaternary ammonium compound, in the liquid-phase mixture of Bohm as modified above. Such a deposition solvent would have been expected to facilitate metal deposition while also providing a liquid-phase mixture that has low environmental impact and toxicity, and that is inexpensive and easy to handle.
Regarding Claim 3, the prior art meets the limitations of Claim 1 as shown above. Further, Bohm discloses (Page 1, lines 39-40) adding halides such as LiCl, CaF2, KCl, KBr, and KI to the electrolytic deposition solvent as conducting salts; further, Bohm discloses (Page 1, lines 32-33) adding phosphorous chloride in droplets during deposition. Lithium (Li), Calcium (Ca), potassium (K), and phosphorous (P) are all inert elements of the instant claim.
Regarding Claim 6-7, the prior art meets the limitations of Claim 1 as shown above. Further, Bohm discloses (Page 1, lines 20-22) the solvent of the inventive solution to be an organic solvent such as ethylene glycol monoethylether, diethylene glycol diethylether, and ethylene glycol dimethylether (as discussed above) – each of these members are alkenes.
Regarding Claim 8, the prior art meets the limitations of Claim 1 as shown above. Further, the invention of Bohm is disclosed as a solvent (Title, etc.), compounds are disclosed as being dissolved in the solvent (Page 1, line 59), and there is no disclosure of solids present in the solvent before reaction.
Regarding Claim 10, the prior art meets the limitations of Claim 1 as shown above. Further, Bohm discloses (Page 1, lines 18-19) the electrodeposition of the invention occurs at room temperature, which is a temperature below 300 °C.
Regarding Claim 16, the prior art meets the limitations of Claim 1 as shown above. Further, Bohm discloses the use of LiCl as discussed above.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bohm et al. (GB 2055400B), hereinafter ‘Bohm’, in view of Abbott et al. (Electrolyric metal coatings and metal finishing using ionic liquids, The Electrochemical Society, 2009), Unacademy (Washing, Drying, and Ignition of the Precipitate), and as evidenced by LibreTexts (Standard Reduction Potentials by Element), as evidenced by LibreTexts (The Cell Potential).
Regarding Claim 9, the prior art meets the limitations of Claim 1 as shown above. Further, Bohm discloses an electrochemical reaction of the one or more precursors in an electrolysis vessel having two electrodes (an anode and a cathode; Page 2, lines 20-21)), considered an electrochemical fabrication cell.
Further regarding Claim 9, while Bohm discloses the use of an electrochemical fabrication cell as discussed above, Bohm does not disclose the cell operating at a voltage between 2.5V to 6V.
However, it is known in the art of chemistry that the voltage applied to an electrochemical fabrication cell is the “driving force” of the electrochemical reaction – the voltage applied to an electrolytic cell determines whether a non-spontaneous reaction will occur, and at to what extent such a reaction will occur (see Summary of LibreTexts, 20.9: Electrolysis). Therefore, the voltage in an electrolytic cell such as that of Bohm would have been recognized by one of ordinary skill in the art as a variable that may be manipulated in order to ensure that the electrochemical reaction of Bohm occurs to the desired extent.
Accordingly, as the occurrence and extent of reaction of an electrochemical reaction is a variable that can be modified, among others, by adjusting the electrochemical fabrication cell voltage, the precise the electrochemical fabrication cell voltage 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 electrochemical fabrication cell voltage in Bohm to obtain the desired occurrence and extent of reaction of the electrochemical reaction of Bohm, 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).
Response to Arguments
Applicant’s arguments, filed 08/11/2025, are acknowledged.
With respect to arguments with regard to the rejection of the Claim(s) under section 112, the arguments have been fully considered and are persuasive. These rejections have been withdrawn.
With respect to arguments in regard to prior art rejections under section 102, Applicant’s arguments have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under section 103 in view of Abbott.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/L.E.L./ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738