`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
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`CONF {MATION NO.
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`12/ 177,442
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`07/22/2008
`
`P. Subramanya Herle
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`PESL—108US
`
`4442
`
`EXAMINER
`RATNERPRESTIA —
`07W —
`”90
`52473
`PO. BOX 980
`LAIos, MARIAI
`VALLEY FORGE, PA 19482-0980
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`PAPER NUMBER
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`ART UNIT
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`1727
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`MAIL DATE
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`07/03/2012
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL—90A (Rev. 04/07)
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`

`

`
`Application No.
`Applicant(s)
`
`Office Action Summary
`
`12/177,442
`
`Examiner
`MARIA .I. LAIOS
`
`HERLE, P. SUBRAMANYA
`
`Art Unit
`1727
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1)IZI Responsive to communication(s) filed on 30 January 2012.
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`2a)I:l This action is FINAL.
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`2b)IZ| This action is non-final.
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`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)IZI Claim(s) 1 4 6 8-17and19-34is/are pending in the application.
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`5a) Of the above claim(s) _ is/are withdrawn from consideration.
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`6)I:I Claim(s) _ is/are allowed.
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`7)|Zl Claim(s) 1 4 6 8- 17and 19-34 is/are rejected.
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`8)I:I Claim(s) _ is/are objected to.
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`9)I:l Claim(s) _ are subject to restriction and/or election requirement.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
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`11)|X| The drawing(s) filed on 22 July 2008 is/are: a)IZl accepted or b)I:l objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`12)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`13)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)|:l All
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`b)I:I Some * c)|:l None of:
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`1.I:I Certified copies of the priority documents have been received.
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`2.I:I Certified copies of the priority documents have been received in Application No. _
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`3.|:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`4) D Interview Summary (PTO-413)
`1) X Notice of References Cited (PTO-892)
`Paper N°(5 )/Mai| Date. _
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`5)I:I Notice of Informal Patent Application
`3) IZI Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| DateM10”: Other:
`US. Patent and Trademark Office
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`PTOL-326 (Rev. 03-11)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20120610
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`
`
`

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`Application/Control Number: 12/177,442
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`Page 2
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`Art Unit: 1727
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`DETAILED ACTION
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`1.
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`This office action is in response to the amendment filed 1/30/2012. Claims 1, 6, 17, 19
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`have been amended; claims 2, 3, 5, 17, 18 have been cancelled; and claims 32—34 have been
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`added (support for added claims can be found paragraph 49 of published application). Claims 1,
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`4, 6, 8—17, 19—34 are currently pending.
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`2.
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`The text of those sections of Title 35, US. Code not included in this action can be found
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`in a prior Office action.
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`Claim Rejections - 35 USC § 102
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`3.
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`The claim rejections under 35 USC 102(b) as being anticipated by SugnauX (EP 1 207
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`572 A1) for claims 1, 2, 4, 6, 11—15, 17, 20, 23, 27, 28, 30 and 31 are Withdrawn because the
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`independent claims have been amended. The claim rejections under 35 USC 102(b) as being
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`anticipated by SugnauX et al. (US 2004/0131934 A1) for claims 6-8, 10, 12-21, 23-24, 26, 28-31
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`are Withdrawn because the independent claims have been amended.
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`Claim Rejections - 35 USC § 103
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`4.
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`The claim rejections under 35USC 103(a) as being unpatentable over SugnauX (EPl 207
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`572 A1) and Takezawa et al. (EP 1 777 771 A1) for claims 3, 5, 6, 9, 22 and 25 are Withdrawn.
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`5.
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`Claims 1, 2, 4, 6, 11—15, 17, 20, 23, 27, 28, 30 and 31 are rejected under 35 USC. 103(a)
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`as being unpatentable over SugnauX (EP 1 207 572 A1) in View of Gao et al. (US
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`2006/0057463).
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`

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`Application/Control Number: 12/177,442
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`Page 3
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`Art Unit: 1727
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`As to claims 1 and 4, SugnauX discloses a non—aqueous organic electrolyte
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`electrochemical cell (Paragraph 1, batteries line 20—22) having an anode/negative electrode (69),
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`a cathode/positive electrode (67). SugnauX discloses an electrode (40) comprises a current
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`collector (53) and a mixture comprising an active material of mesoporous micro particles (43),
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`electrically conductive particles (48—conductive material) and a binder (49) on the current
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`collector (Figure 4a). The active material is a semiconductor material such as T102 (metal oxide—
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`applies to claim 4) which allows lithium intercalation (Paragraph 53). However SugnauX does
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`not disclose the nanoparticle to be nanoparticles of aluminum, silicon or tin as is instantly
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`claimed.
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`Gao et al. discloses a composite compound for a battery (Paragraph 29) and teaches the
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`addition of silicon and/or tin nanoparticles to the electrode improves the capacity of the
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`electrodes (Paragraph 27). Therefore it would have been obvious to one of ordinary skill in the
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`art at the time of the invention to include the tin and/or silicon nanoparticles to the electrode
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`active material of SugnauX because this would increase the capacity of the electrode in a battery.
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`As to claim 32, modified SugnauX discloses the electrode having an active material with
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`nanoparticles. Although Gao et al. further discloses the nano particles are formed from salts
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`containing tin and or silicon (thus metal salts, Paragraph 41), the product—by—limitations of claim
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`32 are not given patentable weight since the courts have held that patentability is based on a
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`product itself, even if the prior art product is made by a different process (In re Thorpe, 227
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`USPQ 964, 1985). Moreover, a product—by—process limitation is held to be obvious if the
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`product is similar to a prior art product (In re Brown, 173 USPQ 685, and In re Fessman, 180
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`

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`Application/Control Number: 12/177,442
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`Page 4
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`Art Unit: 1727
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`USPQ 324). Claim 32 as written does not distinguish the product of the instant application from
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`the product of the prior art.
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`As to claims 6, 17, 20, 23 SugnauX discloses a non—aqueous organic electrolyte
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`electrochemical cells (Paragraph 1, batteries line 20—22) having an anode/negative electrode (69),
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`a cathode/positive electrode (67) and a non—aqueous electrolyte separator (68) between the anode
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`and the cathode (Figure 5). The non—aqueous electrolyte includes lithium salt and solvent
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`(Paragraphs 76 and 116).
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`SugnauX discloses an electrode (40) comprising a current collector (53) and a mixture
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`comprising active material of a mesoporous micro particles (43), electrically conductive particles
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`(48—conductive material) and a binder (49) on the current collector (Figure 4a). The active
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`material comprises a mesopores (45) and macropores (46) which form a network (Paragraph 40—
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`porous network). The active material is a semiconductor material such as T102 (metal oxide)
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`which allows lithium intercalation (Paragraph 53). The porous electrode material is used for
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`either the anode or the cathode (Paragraph 1—applies to claims 17, 20 and 23, figure 4a depicts
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`the active material, binder, and conductive material on the current collector). However SugnauX
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`does not disclose nanoparticles of aluminum, silicon or tin as is instantly claimed.
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`Gao et al. discloses a composite compound for a battery (Paragraph 29) and teaches the
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`addition of silicon and/or tin nanoparticles to the electrode improves the capacity of the
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`electrodes (Paragraph 27). Therefore it would have been obvious to one of ordinary skill in the
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`art at the time of the invention to include the tin and/or silicon nanoparticles to the electrode
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`active material of SugnauX because this would increase the capacity of the electrode.
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`

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`Application/Control Number: 12/ 177,442
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`Page 5
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`Art Unit: 1727
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`As to claim 8, 9, 21, 22, 24 and 25, modified SugnauX discloses the nanoparticles to be
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`silicon and/or tin (Paragraph 27).
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`As to claims 11, 13 and 28, SugnauX discloses the carbon whiskers, nanotubes, carbon
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`black (amorphous carbon), graphite (Paragraph 56) carbon conductive particles (Paragraph 68).
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`As to claims 12, 26 and 27, SugnauX discloses mesopores and macropores (45 and 46)
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`linked to inter—particular electrolyte channels (50). Linking means between the particles are
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`assured by the binder and conductive particles (48) that provide an interconnecting network with
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`micro particles. The percolating electron conduction network occupies a small domain only at
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`the external surfaces of the particles leaving the pores accessible to the electrolyte (Paragraph
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`40). Since the network includes the mesopores the network is mesoporous network (applies to
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`claim 12 and 26) and since the network also includes macropores the porous network is also a
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`macroporous network (applies to claim 27).
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`As to claims 14, 15, 16, 29 and 31, SugnauX discloses the active material of T102
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`(titanium oxide) intercalates lithium thus it is absorbed (Paragraph 53) which is part of the
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`porous network and Gao et al. discloses the nanoparticles of tin or silicon (Paragraph 27).
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`As to claim 19, modified SugnauX discloses the nanoparticles of silicon or tin alloy and
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`de—alloy with lithium, thus the nanoparticles comprise absorbed lithium (Paragraph 39 of Gao).
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`As to claim 30, SugnauX discloses the battery/electrochemical generator having a
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`separator (Paragraph 116).
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`As to claims 33—34, modified SugnauX discloses the electrode having an active material
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`with nanoparticles. Although Gao et al. further discloses the nano particles are formed from salts
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`containing tin and or silicon (thus metal salts, Paragraph 41), the product—by—limitations of
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`

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`Application/Control Number: 12/177,442
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`Page 6
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`Art Unit: 1727
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`claims 333—34 are not given patentable weight since the courts have held that patentability is
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`based on a product itself, even if the prior art product is made by a different process (In re
`
`Thorpe, 227 USPQ 964, 1985). Moreover, a product—by—process limitation is held to be obvious
`
`if the product is similar to a prior art product (In re Brown, 173 USPQ 685, and In re Fessman,
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`180 USPQ 324). Claims 33—34 as written does not distinguish the product of the instant
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`application from the product of the prior art.
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`6.
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`Claim 10 rejected under 35 U.S.C. 103(a) as being unpatentable over SugnauX (EP 1 207
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`572 A1) and Gao et al. (US 2006/0057463) as applied to claims 6 above, and further in view of
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`Kogetsu et al. (US 2006/0099507 A1).
`
`As to claim 10, modified SugnauX disclose an active material comprising a porous
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`network of an oxide and tin or silicon nanoparticles but does not disclose the nanoparticles are
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`partially amorphous. Kogetsu et al. discloses an electrode for a lithium ion secondary battery
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`and teaches the active material having an amorphous silicon is advantageous over a crystalline
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`silicon because the crystalline form increases in volume compared to the amorphous form
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`(Paragraph 3, 26). The large volume change of active material results in cracking of active
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`material particles, therefore causing insufficient contact between the active material and current
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`collector which causes the cycle life of the battery to shorten (Paragraph 4). Therefore it would
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`have been obvious to one of ordinary skill in the art at the time of the invention to have the
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`nanoparticles of modified SugnauX in an amorphous form because Kogetsu et al. teaches that
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`amorphous form do not have a large volume change and therefore the battery has a better cycle
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`life.
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`

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`Application/Control Number: 12/ 177,442
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`Page 7
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`Art Unit: 1727
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`7.
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`Claims 6, 8, 9, 12—17, 19—26, 28—31, 33—34 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Sugnaux et al. (US 2004/0131934 A1) in view of Gao et al. (US
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`2006/0057463).
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`As to claims 6, 8, 9, 12, 15—17, 20—26, 29 and 30, Sugnaux et al. discloses a
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`battery/electrochemical generator (Fig. 4) having active material mesoporous electrode layers (1
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`and 2—electrodes, anode/negative electrode, cathode/positive electrode), separator located
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`between the electrodes (3—applies to claims 17, 30) and current collectors (4 and 5). The
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`electrochemical generator/battery has a non—aqueous electrolyte (Paragraph 1) which comprises a
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`solvent such as ethylene carbonate and lithium salts such as LiPF6 (Paragraph 87—applies to claim
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`17).
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`The electrode layers comprise a mixture of active material (41—nanoparticales and 53—
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`microparticles), conductive material/electrically conductive particles (55) and binder (42—
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`paragraph 48). The contacting particles allow for the formation of a mesoporous framework
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`structure/mesoporous network (apples to claim 12, 26) that exhibit electrically active, ion
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`intercalation (Paragraph 17). The electrode active material of the electrode is selected from an
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`oxide, chalcogenide, hydroxide, oxyhydroxide, oxo—acid, oxohydride or thiocyanic acid of a non—
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`transition or transition metal, or its lithiated or partially lithiated form selected from the group
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`consisting of Group IB, IIA, IIB, IIIA, IVA, IVB, VA, VB, VIIB, VIIB and VIII elements of the
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`Periodic Table of Elements, and blends thereof (Paragraph 49). Sugnaux et al. further discloses
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`

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`Application/Control Number: 12/177,442
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`Page 8
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`Art Unit: 1727
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`the mesoporous electrode for the anode/negative electrode is of nano—particles of titanium
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`dioxide (Paragraph 86—applies to claim 15, 16, 29) or other active materials which include
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`lithium manganese oxide, tin oxide (Paragraph 87, applies to claim 16, 21, 29) which
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`intercalate/absorb lithium ions (Paragraph 87). Sugnaux et al. further discloses the porous
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`electrode can be used as the anode or the cathode (Paragraph 87—applies to claim 17, 20, 23).
`
`However Sugnaux does not disclose the nanoparticle to be nanoparticles of aluminum, silicon or
`
`tin as is instantly claimed.
`
`Gao et al. discloses a composite compound for a battery (Paragraph 29) and teaches the
`
`addition of silicon and/or tin nanoparticles to the electrode improves the capacity of the
`
`electrodes (Paragraph 27—claims 6, 8, 9, 16, 17, 21, 22, 24, 25, 29). Therefore it would have been
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`obvious to one of ordinary skill in the art at the time of the invention to include the tin and/or
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`silicon nanoparticles to the electrode active material of Sugnaux because this would increase the
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`capacity of the electrode in a battery.
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`As to claims 13 and 28, Sugnaux et al. discloses carbon nanotubes (Paragraph 53) are in
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`the mixture of the active material (as a conductive material).
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`As to claims 14 and 31, Sugnaux et al. discloses that in the presence of lithium ions, the
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`titanium dioxide in mesoporous form is prone to form an intercalation compound LiniOZ
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`(Paragraph 87) thus the electroactive material comprises absorbed lithium.
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`As to claim 19, modified Sugnaux discloses the nanoparticles of silicon or tin alloy and
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`de—alloy with lithium, thus the nanoparticles comprise absorbed lithium (Paragraph 39 of Gao).
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`As to claims 33—34, modified Sugnaux discloses the electrode having an active material
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`with nanoparticles. Although Gao et al. further discloses the nano particles are formed from salts
`
`

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`Application/Control Number: 12/177,442
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`Page 9
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`Art Unit: 1727
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`containing tin and or silicon (thus metal salts, Paragraph 41), the product—by—limitations of
`
`claims 333—34 are not given patentable weight since the courts have held that patentability is
`
`based on a product itself, even if the prior art product is made by a different process (In re
`
`Thorpe, 227 USPQ 964, 1985). Moreover, a product—by—process limitation is held to be obvious
`
`if the product is similar to a prior art product (In re Brown, 173 USPQ 685, and In re Fessman,
`
`180 USPQ 324). Claims 33—34 as written does not distinguish the product of the instant
`
`application from the product of the prior art.
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`8.
`
`Claim 10 rejected under 35 U.S.C. 103(a) as being unpatentable over SugnauX et al. (US
`
`2004/0131934 A1) and Gao et al. (US 2006/0057463) as applied to claims 6 above, and further
`
`in view of Kogetsu et al. (US 2006/0099507 A1).
`
`As to claim 10, modified SugnauX disclose an active material comprising a porous oxide
`
`and tin or silicon nanoparticles but does not disclose the nanoparticles are partially amorphous.
`
`Kogetsu et al. discloses an electrode for a lithium ion secondary battery and teaches the active
`
`material having an amorphous silicon is advantageous over a crystalline silicon because the
`
`crystalline form increases in volume compared to the amorphous form (Paragraph 3, 26). The
`
`large volume change of active material results in cracking of active material particles, therefore
`
`causing insufficient contact between the active material and current collector which causes the
`
`cycle life of the battery to shorten (Paragraph 4). Therefore it would have been obvious to one
`
`of ordinary skill in the art at the time of the invention to have the nanoparticles of modified
`
`SugnauX in an amorphous form because Kogetsu et al. teaches that amorphous form do not have
`
`a large volume change and therefore the battery has a better cycle life.
`
`

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`Application/Control Number: 12/177,442
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`Page 10
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`Art Unit: 1727
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`Response to Arguments
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`9.
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`Applicant’s arguments, see page 8 last paragraph, filed 1/30/2012, with respect to the
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`rejection(s) of claim(s) 1, 6 and 17 under 35 USC 103(a) have been fully considered and are
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`persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration,
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`a new ground(s) of rejection is made in view of newly found art.
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`Conclusion
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`10.
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure. Suzuki et al. (US 2006/0057355 A1) which teaches porous body having
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`nanoparticles.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to MARIA J. LAIOS whose telephone number is (571)272—9808.
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`The examiner can normally be reached on 11am—7pm Monday—Thursday.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Barbara Gilliam can be reached on 57 1—272— 1330. The fax phone number for the
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`organization where this application or proceeding is assigned is 571—273—8300.
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`

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`Application/Control Number: 12/177,442
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`Page 11
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`Art Unit: 1727
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`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`/MARIA J LAIOS/
`
`Examiner, Art Unit 1727
`
`