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 .
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.
Claim 6-7, 14, and 17 are rejected under 35 U.S.C. 112(b) 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.
Claim 6 recites “the secondary agglomerated particles by a reactor in the shape of a ball to form a macro-structure” and is considered indefinite as it is unclear if applicant is attempting to claim where the secondary agglomerated particles are “formed by” a reactor, “formed by a reactor in the shape of a ball” where the reactor has the claimed shape, or formed by a reactor where the secondary agglomerated particles have the shape of a ball and therefore the scope of the claim is unclear.
Claims 6 and 14 recite “a macro-structure” and it is unclear how the macro-structure of the secondary agglomerated particles relates to the first “macro-structure” set forth in the claims (e.g. a singular macro-structure or a macro-structure formed of macro-structures). Clarification is required. Claim 7 is included in this rejection as it depends upon a rejected claim.
Claim 17 recites “in the form of spherical or agglomerated shapes” and the recitation of “form of” renders the claim indefinite as it is unclear if applicant is claiming something that is “spherical or agglomerated” or something this is spherical or agglomerated, but not quite either spherical or agglomerated and therefore the public is not appropriately appraised of the scope of the claim. This may be overcome by amending to “wherein the silicon-graphene macroscopic structure has a shape which is spherical or agglomerated with a diameter of 5 to 100 micrometers”.
Claim Objections
Claim 7 is objected to because of the following informalities: Claim 7 recites “The composite structure of any one of claims 6” and is grammatically incorrect. Appropriate correction is required (e.g. The composite structure of claim 6).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kung et al. (US 2012/0288750 – previously cited).
Considering claims 1, 9 and 15, Kung teaches graphene-based storage materials for high-power battery applications. Figure 1B (reproduced below) depicts a vertical stack of graphene sheets with disordered portions (112) outlined with dashed lines coupled to and in electrical contact via crystalline portions (110) depicted in dotted lines (e.g. a macrostructure of (112) conglomerates) where (112) comprises a plurality of graphene layers forming plural gaps between upper and lower graphene layers where the nanoparticles are distributed therein (e.g. the graphene layers form a matrix with the nanoparticles embedded therein) (Paragraphs 12 and 20). The nanoparticles are of electrochemically active material and may be Si (Paragraph 12), Sn, or other metallic materials (Paragraph 24). The nanoparticles may also be uniformly distributed between the graphene sheets (Paragraph 14).
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While not expressly teaching a singular example of the claimed composite structure or Si-C composite material, this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Kung as this is considered a combination of conventionally known disordered regions of graphene and electroactive material known to form conventionally known electrode materials and one would have had a reasonable expectation of success. While not expressly taught as where the particles are “closely bonded” as claimed, Figs.1B and 3B of Kung depict where the particles are proximally close to the graphene sheets and at least van Der Waals bonding between the materials is expected to be present.
Considering claims 2 and 10, Kung teaches where the disordered portions of graphene and embedded nanoparticles are electrically conductive (e.g. form an embedded conductive matrix) (Paragraphs 12 and 14). As the graphene and nanoparticles are in proximity to one another van der Waals forces (i.e. a chemical bond force) are expected to be present.
Considering claims 3 and 13, Kung teaches graphene for the sheets that form the matrix (Paragraph 12).
Considering claims 4-5 and 11-12, Kung teaches where the nanoparticles have a diameter (e.g. width) of no greater than about 1000 nm, no greater than 500 nm, or no greater than 100 nm (Paragraph 20) overlapping that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claims 6 and 14, Fig. 1B above depicts a macrostructure formed of units (112) and (110) and is considered to meet the instant claims due to indefiniteness as outlined above. Further, regarding the possibly claimed ball shape the courts have held that a mere change is shape does not render a patentable distinction absent a showing as to how the shape is significant. See MPEP 2144.04 (IV)(B).
Considering claim 7, in addition to the disclosure as outlined in claim 6 above, Kung teaches where the composite material is stable in a lithium battery environment (Paragraph 41) and is used in Li ion batteries (Paragraph 26).
Considering claim 8, the recitation of “are formed by…” is considered a product-by-process limitation and is not considered to render a patentable distinction over the prior art absent a showing as to how the claimed process affects the final structure of the claimed composite. See MPEP 2113.
Considering claim 16, Fig. 1B of Kung above depicts where disordered unit (112) of graphene and Si nanoparticles is a microscopic component of the larger macrostructure formed by (112) and (110).
Considering claim 17, Fig.3B of Kung depicts a macrostructure of the agglomerated graphene and silicon nanoparticles, Fig.1B depicts where (112) is formed by plural portions of graphene and nanoparticles, and as the nanoparticles may be less than about 1000 nm (Paragraph 20) this is considered to show where the agglomerated shape is greater than about 2000 nm (i.e. greater than about 2 microns) overlapping that which is claimed. See MPEP 2144.05.
Considering claims 18 and 20, the recitation of “formed by…” and “formed via…” are considered product-by-process limitations and are not considered to render a patentable distinction over the prior art absent a showing as to how the claimed process affects the final structure of the claimed Si-C composite. See MPEP 2113.
Considering claim 19, Kung teaches where the nanoparticles are of electrochemically active material and may be Sn or other metallic materials (Paragraph 24).
Response to Arguments
Applicant’s arguments, see remarks p.6, filed 26 November 2025, with respect to 35 USC 112(b) have been fully considered and are persuasive. The rejection of claim 10 has been withdrawn. Applicant has amended the claim to remove indefiniteness. However, claim 7 still stands rejected per the amendment to claim 6 and its dependency thereof as outlined above.
Applicant’s arguments, see remarks pp. 6-7, filed 26 November 2025, with respect to the rejection(s) of claim(s) 1-14 under 35 USC 103 in view of Amine and Zhamu have been fully considered and are persuasive. Amine and Zhamu do not adequately teach the claimed macrostructure. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kung as outlined above.
In response to the instant Office action applicant is encouraged to review and incorporate subject matter outlined in Figures 7a-7b and Paragraphs 74-75 of the originally filed specification to define the macrostructure of agglomerated silicon graphene formed of secondary agglomerated silicon graphene shapes/blobs, each with sizes thereof, where the secondary agglomerated silicon graphene shapes/blobs are formed of the plural graphene layers with gaps and plurality of Si/nanoparticles distributed in the matrix… as this appears to be the inventive feature of the instant application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kim et al. (US 2014/0219906) teaches agglomerated nanoparticles and graphene in a stacked configuration.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784