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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/767,774
`
`05/28/2020
`
`Yohei Uchiyama
`
`P200473US00
`
`1037
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`FREEMAN, EMILY ELIZABETH
`
`1724
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/13/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Application No.
`Applicant(s)
`16/767 ,774
`Uchiyama etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`EMILY E FREEMAN
`1724
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)C) Responsive to communication(s) filed on
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)C) This action is FINAL. 2b)¥)This action is non-final.
`3)0) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\() Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-8 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-8 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)(2 The specification is objected to by the Examiner.
`11) The drawing(s) filed on 5-28-2020 is/are: a) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)[M) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a) All
`1.{¥] Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`4)
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`
`Paper No(s)/Mail Date2/8/2021and7/1/2020.
`U.S. Patent and Trademark Office
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220406
`
`

`

`Application/Control Number: 16/767,774
`Art Unit: 1724
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined underthe
`
`first inventor to file provisions of the AIA.
`
`Claim Objections
`
`2.
`
`Claims 1 and 5 are objected to becauseofthe following informalities:
`
`e Claims 1 and 5 each recite a range of values which are given in improper form. For
`
`example, Claim 1, line 7 recites “O.008 to 6%”, which should be corrected to “0.008%to
`
`6%” to be formatted properly.
`
`Appropriate correction is required.
`
`3.
`
`Claim Rejections - 35 USC § 112(b)
`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-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`4.
`
`Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), 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-AlA 35 U.S.C.
`
`112, the applicant), regards as the invention.
`
`e Claims 1, 5, and 7-8 recite at least one of the terms “composite particles”, “secondary
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`particles”, or “lithium silicate particles”. These terms appear to be used interchangeably
`
`throughout the claims and the specification to refer to the same structure, and their
`
`respective differentiating features are unclear even in light of the specification leading to
`
`ambiguity in the claimed subject matter. The examiner notes that for purposesof
`tt
`examination, the recitation of any of “composite particles”, “secondary particles”, or
`
`

`

`Application/Control Number: 16/767,774
`Art Unit: 1724
`
`Page 3
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`“lithium silicate particles” will be interpreted to be interchangeable. Claims 2-8 are also
`
`rejected due to their dependency on Claim 1. Claim8is further rejected due toits
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`dependency on Claim 7.
`
`Claim Rejections - 35 USC § 102
`
`5.
`
`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-AlA 35 U.S.C. 102 and 103)is incorrect, any correction of the
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`statutory basis 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 undereitherstatus.
`
`6.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
`
`basis for the rejections underthis section made in this Office action:
`
`A personshall 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 effectivefiling date of the claimed
`invention.
`
`7.
`
`Claims 1-2 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Yamamoto et al. (WO 2016121325A1). In lieu of a machine translation of (WO 2016121325A1),
`
`all citations in the office action are made in reference to the equivalent US case Yamamoto et
`
`al. (US 20170324083A1).
`
`The applied reference has a common inventor with the instant application. Based on the
`
`earlier public availability date of the reference (greater than one yearprior to the effectivefiling
`
`date of the instant application), it constitutes prior art under 35 U.S.C.102(a)(1).
`
`e Regarding Claim 1, Yamamoto disclosesa lithium ion battery including a positive
`
`electrode, a negative electrode, and an electrolyte [0028]. Yamamoto further discloses
`
`that the negative electrode has a current collector, and a negative electrode active
`
`material layer disposed on the current collector and containing lithium silicate particles
`
`and a binder [0034-0035]. Yamamoto further discloses that the lithium silicate particles
`
`comprise composite particles (negative electrode active material particle, 10) including a
`
`

`

`Application/Control Number: 16/767,774
`Art Unit: 1724
`
`Page 4
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`lithium silicate phase andsilicon particles dispersed in the lithium silicate phase [0035],
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`and that a carbon material (electrically conductive layer, 14) is present inside the
`
`composite particles (negative electrode active material particle, 10) (Figure 1, [0071)).
`
`Yamamoto further discloses that the binder includesat leastafirst resin, wherein
`
`the first resin may be selected fromalist including polyacrylic acid and a polyacrylic acid
`
`salt [0034]. Yamamoto discloses that the binder comprising a first resin may be used
`
`alone or in combination with a secondary binder material [0032-0034]. Yamamoto further
`
`provides an exemplary embodiment in Example 4, in which a combination ofafirst resin
`
`and a secondary binder material are used to prepare a negative electrode active
`
`material layer [0113]. In the embodiment of Example 4, the negative electrode active
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`material, a first resin, and a secondary binder material are mixed in a massratio of
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`97.5:1.0:1.5 [0113]. Thus, Yamamoto teachesthat the first resin may be contained in an
`
`amount of 2 mass% or less in the negative electrode active material layer.
`
`Yamamoto further discloses that the average particle size of the composite
`
`particles (negative electrode active material particle, 10) is between 1-15 um (Figure 1,
`
`[0066]). Yamamoto further discloses that the thickness of the carbon material
`
`(electrically conductive layer, 14) is between 1-200 nm (Figure 1, [0073]). Thus, the
`
`skilled artisan would appreciate that the are many embodiments of the composite
`
`particles (negative electrode active material particle, 10) disclosed by Yamamotoin
`
`which an area ratio of the carbon material (electrically conductive layer, 14) occupying a
`
`cross section of the composite particles (negative electrode active material particle, 10)
`
`is 0.008% to 6%.
`
`e Regarding Claim 2, Yamamoto discloses in the embodiment of Example 4, the negative
`
`electrode active material, a first resin, and a secondary binder material are mixed in a
`
`massratio of 97.5:1.0:1.5 to form the negative electrode active material layer [0113].
`
`

`

`Application/Control Number: 16/767,774
`Art Unit: 1724
`
`Page 5
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`Regarding Claim 4, Yamamotodisclosesthat the lithium silicate phase has a
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`composition represented by a formula: Liz,SiOi2.., where 0<x<2 [0025].
`
`Regarding Claim 5, Yamamoto discloses that the average particle size of the composite
`
`particles (negative electrode active material particle, 10) is between 1-15 um (Figure 1,
`
`[0066]). Yamamoto further discloses that the thickness of the carbon material
`
`(electrically conductive layer, 14) is between 1-200 nm (Figure 1, [0073]). Thus, the
`
`skilled artisan would appreciate that the are many embodimentsof the composite
`
`particles (negative electrode active material particle, 10) disclosed by Yamamotoin
`
`which an area ratio of the carbon material (electrically conductive layer, 14) occupying a
`
`cross section of the composite particles (negative electrode active material particle, 10)
`
`is 1% to 3%.
`
`Regarding Claim 6, Yamamotofurther discloses that the carbon material (electrically
`
`conductive layer, 14) may be carbon black, acetylene black, ketjen black, graphite, and a
`
`mixture of at least two of these materials [0071].
`
`Claim Rejections - 35 USC § 103
`
`8.
`
`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.
`
`9.
`
`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 betweenthe prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
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`

`

`Application/Control Number: 16/767,774
`Art Unit: 1724
`
`Page 6
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`4. Considering objective evidence presentin the application indicating obviousness or
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`nonobviousness.
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`10.
`
`This application currently namesjoint inventors. In considering patentability of the claims
`
`the examiner presumesthat the subject matter of the various claims was commonly owned as
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`of the effectivefiling date of the claimed invention(s) absent any evidenceto the contrary.
`
`Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective
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`filing dates of each claim that was not commonly ownedasofthe effectivefiling date of the later
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`invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any
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`potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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`11.
`
`Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamotoetal.
`
`(WO 2016121325A1) as applied to Claim 1 above, and further in view of Jiang et al. (US
`
`20170179469A1).
`
`In Regards to Claim 3 (Dependent Upon Claim 1):
`
`Yamamoto discloses that the binder may be a poly(acrylic acid) or a salt thereof, and
`
`further provides that the poly(acrylic acid) salt may be a salt such as poly(acrylic acid)—K,
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`poly(acrylic acid) -Na, or a partially neutralized salt thereof [0034].
`
`Yamamotois deficient in disclosing that the polyacrylic acid salt is a cross-linked
`
`polyacrylic acid lithium.
`
`Jiang disclosesalithium ion battery including a negative electrode (12) having a
`
`negative electrode current collector (18) with a negative electrode active material layer (22)
`
`disposed thereon (Figure 1, [0016-0017]). Jiang further discloses that the negative electrode
`
`active material layer (22) includes a binder which may be selected from a group of binder
`
`materials including polyacrylic acid or cross-linkedlithiated polyacrylate [0019].
`
`As such, it would be obvious to one of ordinary skill in the art at the time of the filing of
`
`the invention to select for the binder of Yamamoto, cross-linkedlithiated polyacrylate as taught
`
`by Jiang, as it is known in the art to be used as a binder in a negative electrode active material
`
`

`

`Application/Control Number: 16/767,774
`Art Unit: 1724
`
`Page 7
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`layer for a lithium ion battery, and is further taught by Jiang to be an equivalent substitute for
`
`polyacrylic acid. By doing so, all of the limitations of Claim 3 are met.
`
`12.
`
`Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et
`
`al. (WO 2016121325A1) as applied to Claim 1 above, and further in view of Liu (US
`
`20140370378A1).
`
`In Regards to Claim 7 (Dependent Upon Claim 1):
`
`Yamamoto discloses composite particles (negative electrode active material particle, 10)
`
`which are formed of an aggregate of a plurality of primary particles including the lithium silicate
`
`phaseand the silicon particles [0035] and a carbon material (electrically conductive layer, 14) is
`
`present in the composite particles (negative electrode active material particle, 10) (Figure 1,
`
`[0071]).
`
`Yamamotois deficient in disclosing that the composite particles include secondary
`
`particles formed of an aggregate of a plurality of primary particles including the lithium silicate
`
`phase andthe silicon particles, and the carbon material is present on at least part of an
`
`interface between the primary particles adjacent to each other, inside the secondary particles.
`
`Liu discloses a secondary particle (polymer composite-Si secondary particles) for use as
`
`a negative electrode active material in a lithium ion battery [0003, 0052]. Liu further discloses
`
`that the secondary particles (polymer composite-Si secondary particles) are formed by mixing
`
`primary particles (Si nanoparticles) with a conductive polymer to form secondary particles
`
`(polymer composite-Si secondary particles) (Figure 1, [0039]). Liu teaches that when Si
`
`particles are used within a negative electrode active material, the battery may experiencelimited
`
`cycling capacity and a high degreeof side reactions [0038]. Liu further teaches that the
`
`formation of the disclosed secondary particles (polymer composite-Si secondary particles) in
`
`which Si particles are bonded together via a conductive polymer,a lithium battery having high
`
`energy density and prolonged cycling may be achieved [0038].
`
`

`

`Application/Control Number: 16/767,774
`Art Unit: 1724
`
`Page 8
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`As such, it would be obvious to one of ordinary skill in the art at the time ofthe filing of
`
`the invention to modify the composite particles (negative electrode active material particle, 10)
`
`of Yamamoto to be bound to one anothervia a conductive polymer, as taught by Liu, thus
`
`forming a secondaryparticle comprised of a plurality of composite particles (primary particles).
`
`In doing so, a negative electrode active material having high energy density and prolonged
`
`cycling performance may be achieved. Upon modification, all of the limitations of Claim 7 are
`
`met.
`
`In Regards to Claim 8 (Dependent Upon Claim 7):
`
`Yamamoto as modified by Liu discloses the lithium ion battery of Claim 7 as set forth
`
`above. Modified Yamamotofurther discloses that the primary particles (negative electrode
`
`active material particle, 10) includes a surface coating of carbon material (electrically conductive
`
`layer, 14) (Figure 1, [0071]). Liu further discloses a secondary particle (polymer composite-Si
`
`secondaryparticles) which includes an electrically conductive polymer binder surrounding the
`
`primary particles (Si nanoparticles) (Figure 1, [0039)).
`
`Therefore, when the primary particles (negative electrode active material particle, 10) of
`
`modified Yamamoto are bound to one anotherwithin the secondary particle (see Figure 1 of
`
`Liu), the carbon material (electrically conductive layer, 14) on the surface of the primary
`
`particles (negative electrode active material particle, 10)
`
`is necessarily present extending
`
`linearly on the cross section, from an interior toward the surface of the secondary particles,
`
`along the interface between the primary particles (negative electrode active material particle,
`
`10) adjacent to each other, and an end of the carbon material (electrically conductive layer, 14)
`
`on the surfaceside of the secondary particles is in contact with the conductive material
`
`(conductive polymer) (see Figure 1 of Liu). As such, all of the limitations of Claim 8 are met.
`
`

`

`Application/Control Number: 16/767,774
`Art Unit: 1724
`
`Page 9
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`Conclusion
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`13.
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`Anyinquiry concerning this communication or earlier communications from the examiner
`
`should be directed to EMILY E FREEMANwhosetelephone number is (571)272-1498. The
`
`examiner can normally be reached Monday- Friday 8:30AM-5:00PM.
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`/E.E.F./
`Examiner, Art Unit 1724
`
`/BRIAN R OHARA/
`Examiner, Art Unit 1724
`
`