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. Applicant has amended claim 1 to recite further details associated with the TGA analysis. But as repeated throughout prosecution, the Office does not consider the manner in which the surface silicon to be measured as a patentable distinction.
The arguments state in paragraph 4 on page 8 that the Applicant decline the invitation to structurally distinguish the invention further and instead want to focus further on the TGA analysis. Applicant further states the surface silicon is measured from a mass increase when increasing from one temperature range to another and that “TGA does not directly measure pore closure. Instead, it measures the oxidation [behavior] of silicon domains under controlled thermal conditions.” The Office construes this argument and limitation as the manner in which the property is measured—not that the result is a different physical structure. If the prior art has claimed structure, but does not measure it by increasing the temperature, it still anticipates the claims. MPEP 2113 I. TGA—and now the claimed formula—is using the temperature increase to measure the surface silicon. The end product is still that “the particulate material comprises a percentage of surface silicon located in internal void spaces as a proportion of the total silicon of at least 20 wt%.” This is the feature and limitation that is of consequence. In a claim directed to a composition, the manner in which this is measured does not structurally distinguish the claim. The Office has made this position abundantly clear and Applicant’s attempts to further distinguish the claim by adding more detail to the measurement process does not further prosecution. Again, the Office has stated this to Applicant clearly on the record and in the 10/31/25 interview. The arguments in section “1” of the Remarks simply provide more and more detail to the measurement process and do nothing to further the Applicant’s position.
Section 2 of the Remarks states that the Office has “cherry picked” the meaning of surface silicon as defined by the instant specification. So, the Office will now quote the Applicant’s specification verbatim: “For avoidance of doubt, the calculation of ‘surface silicon’ therefore takes into account only silicon that is unoxidized at the start of the TGA analysis after the material has been passivated in air (i.e. the particulate material is not kept under any special inert conditions prior to the TGA analysis). As defined herein, ‘surface silicon’ is calculated from the initial mass increase in the TGA trace from a minimum between 150 °C and 500 °C to the maximum mass measured in the temperature range between 550 °C and 650 °C, wherein the TGA is carried out in air with a temperature ramp rate of 10 °C/min. This mass increase is assumed to result from the oxidation of surface silicon and therefore allows the percentage of surface silicon as a proportion of the total amount of silicon to be determined according to the” claimed formula (page 8, lines 6-25). The Office has correctly identified that the “surface silicon” as “silicon that is unoxidized at the start of the TGA analysis after the material has been passivated in air (i.e. the particulate material is not kept under any special inert conditions prior to the TGA analysis).” The remaining quoted limitation pertains to the TGA process. It does not matter what that process is, what the temperature change is, or what the formula is if the prior art discloses the claimed percentage of “surface silicon”—which it does. Applicant further gives an example from their own specification where the value is 14% and not inevitable. It is unclear why this would matter if the prior art discloses the claimed value. There is nothing inevitable about the anticipation rejection. It teaches the claimed composition and structure.
The Office is not going to grant patentability for something which is old upon the discovery of a new property: in this case, the claimed TGA analysis. Applicant’s assertion that the Office has not provided proof or citation wholly incorrect. Both MPEP 2112 I and 2113 are relevant here.
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 27-38 and 42-52 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, 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
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 IMRAN AKRAM whose telephone number is (571)270-3241. The examiner can normally be reached M-F 9a-5p.
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
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