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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Great Britain on 3/8/20. It is noted, however, that applicant has not filed a certified copy of the GB 2012062.2 application as required by 37 CFR 1.55.
Response to Arguments
Applicant's arguments filed 11/10/25 have been fully considered but they are not persuasive. The Sakshaug reference still anticipates the claims as amended though the new limitation does modify how Sakshaug is applied. New double patenting rejections are made after an updated search.
Applicant asserts that Sakshaug fails to disclose at least 20 wt% of the silicon is surface silicon located in internal void spaces as determined by TGA. The Examiner respectfully disagrees. As stated previously, the manner in which the properties are measured (in this case, TGA) does not patentably distinguish the composition if the properties are present. See MPEP 2113 and 2112 I. The claims require only that at least 20 wt% of the silicon is surface silicon located in internal void spaces. And contrary to the discussion in the interview conducted on 10/31/25, the claim does not state that these void spaces are closed. The instant specification recites a special definition for “surface silicon”: “only silicon that is unoxidized at the start of the TGA analysis after the material has been passivated in air” (page 8, lines 6-10). In other words, unoxidized silicon since the TGA method is not given patentable weight as above. It is the Office’s position that Sakshaug discloses these limitations. First, as cited in the previous rejection, paragraph 317 states that over 100% of the pores are loaded with silicon. Second, as now recited in the rejection below, Sakshaug discloses that the oxygen content of the silicon is 0-50% (paragraph 195). Therefore at least 20% of the silicon located in the pores of Sakshaug would be unoxidized and considered surface silicon by Applicant’s own definition.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Applicant is advised that should claims 31-34 be found allowable, claims 39-41 and 47 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 27-51 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 10,964,940 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims encompass all of the limitations of the instant claims.
Claims 27-51 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 12,218,341 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims encompass all of the limitations of the instant claims.
Claims 27-51 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 12,176,521 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims encompass all of the limitations of the instant claims.
Claim 27 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of copending Application No. 17/024,402 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim encompasses all of the limitations of the instant claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 27-52 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakshaug (US 2017/0170477 A1).
Regarding claim 27, Sakshaug discloses particles comprising: a porous carbon framework comprising micropores and mesopores (paragraph 16), wherein the micropores and mesopores have a total pore volume of at least 0.55 cm3/g (paragraph 173), wherein the PD90 pore diameter is at least 3 nm and less than 12 nm (paragraph 180), and wherein a volume of micropores is at least 0.36 cm3/g (paragraph 324); and a plurality of nanoscale elemental silicon domains located within the pores of the porous carbon framework, wherein the particulate material comprises from 25 to 65 wt% silicon (paragraph 40), and wherein 100% of the pores are loaded with silicon (paragraph 317). The instant specification recites a special definition for “surface silicon”: “only silicon that is unoxidized at the start of the TGA analysis after the material has been passivated in air” (page 8, lines 6-10). Sakshaug discloses that the oxygen content of the silicon is 0-50% (paragraph 195). Therefore at least 20% of the silicon located in the pores of Sakshaug would be unoxidized and considered surface silicon by Applicant’s own definition. The manner in which the properties are measured (TGA) does not further distinguish the structure. See MPEP 2113 I.
Regarding claims 28-30, Sakshaug discloses total pore volume of 0.5 to greater than 2 cm3/g (paragraph 173).
Regarding claims 31-33 and 39-41, Sakshaug discloses BET surface area (paragraph 96) of less than 10 to greater than 3000 m2/g (paragraph 172).
Regarding claims 34-38 and 47, Sakshaug discloses 15 to 85% silicon by weight (paragraph 40). The manner in which the properties are measured does not further distinguish the structure. See MPEP 2113 I.
Regarding claim 42, Sakshaug discloses a micropore volume fraction of 0.43 to 0.85 (paragraph 179).
Regarding claims 43 and 45, Sakshaug discloses hard carbon and activated carbon (paragraph 77).
Regarding claim 44, Sakshaug discloses amorphous carbon (paragraph 100).
Regarding claim 46, Sakshaug discloses 5-100% of pores are occupied by silicon (paragraph 310).
Regarding claim 48, Sakshaug discloses that the particles have a lithium ion- permeable coating disposed thereon (paragraph 34).
Regarding claim 49, the manner in which the properties are produced does not further distinguish the structure. See MPEP 2113 I.
Regarding claims 50 and 51, Sakshaug discloses an anode, cathode, and electrolyte (paragraph 562).
Regarding claim 52, Sakshaug discloses particles comprising: a porous carbon framework comprising micropores and mesopores (paragraph 16), wherein the micropores and mesopores have a total pore volume of at least 0.55 cm3/g (paragraph 173), wherein the PD90 pore diameter is at least 3 nm and less than 12 nm (paragraph 180), and wherein a volume of micropores is at least 0.36 cm3/g (paragraph 324); and a plurality of nanoscale elemental silicon domains located within the pores of the porous carbon framework, wherein the particulate material comprises from 25 to 65 wt% silicon (paragraph 40), and wherein 100% of the pores are loaded with silicon (paragraph 317). The instant specification recites a special definition for “surface silicon”: “only silicon that is unoxidized at the start of the TGA analysis after the material has been passivated in air” (page 8, lines 6-10). Sakshaug discloses that the oxygen content of the silicon is 0-50% (paragraph 195). Therefore at least 20% of the silicon located in the pores of Sakshaug would be unoxidized and considered surface silicon by Applicant’s own definition. The manner in which the properties are measured (TGA) does not further distinguish the structure. See MPEP 2113 I. Sakshaug discloses a BET surface area (paragraph 96) of less than 10 to greater than 3000 m2/g (paragraph 172).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IMRAN AKRAM whose telephone number is (571)270-3241. The examiner can normally be reached M-F 8a-4p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia Ridley can be reached at 571-272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IMRAN AKRAM/Primary Examiner, Art Unit 1725