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 .
Response to Arguments
Applicant’s arguments with respect to claims 1, 16, 17, and dependents have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Double Patenting
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 17/952,646 (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. Since all of the positively recited elements are present in the reference claim, it is considered to have the same properties.
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 1-10, 13, 16, 17, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bendimerad (US 2017/0117538 A1).
Regarding claims 1, 5, 8-10, and 19, Bendimerad discloses a composition comprising: a silicon core encapsulated by a carbon shell (paragraph 32). Bendimerad discloses that the carbon shell is less than 5 wt. % of the silicon core (paragraph 36). Bendimerad discloses that its surface area is less than 200 m2/g (paragraph 39). Bendimerad discloses that the carbon shell is polyvinylpyrrolidone (PVP) decomposed into 4-15% carbon (paragraph 41). Bendimerad discloses that the carbon material comprises soft carbon, hard carbon, graphite, graphene, carbon nanotubes (paragraph 36) and that the polymer is PVP which are the same materials presented in the instant application as the polymer and carbon material; it therefore has the same properties. See MPEP 2112 I.
Regarding claims 2 and 3, since Bendimerad discloses the elements claims, it possesses the same properties. See MPEP 2112 I.
Regarding claim 4, Bendimerad disclose that the polymer is PVP and thus has the claimed weight.
Regarding claims 6 and 7, Bendimerad discloses that the silicon contains Si-O and Si-C bonds (paragraph 37).
Regarding claim 13, Bendimerad discloses that the silicon is 1-5 microns in diameter (paragraph 44).
Regarding claims 16 and 17, Bendimerad discloses an apparatus comprising: a battery with anode, cathode, and separator (paragraph 5), wherein the anode comprises composition comprising a silicon core encapsulated by a carbon shell (paragraph 32). Bendimerad discloses that the carbon shell is less than 5 wt. % of the silicon core (paragraph 36). Bendimerad discloses that its surface area is less than 200 m2/g (paragraph 39). Bendimerad discloses that the carbon shell is polyvinylpyrrolidone (PVP) decomposed into 4-15% carbon (paragraph 41). Bendimerad discloses that the carbon material comprises soft carbon, hard carbon, graphite, graphene, carbon nanotubes (paragraph 36) and that the polymer is PVP which are the same materials presented in the instant application as the polymer and carbon material; it therefore has the same properties. See MPEP 2112 I.
Claim Rejections - 35 USC § 103
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 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.
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 between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Bendimerad as applied to claim 10 above, and further in view of Horikoshi (US 2017/0288218 A1).
Bendimerad discloses the use of carbon nanotubes but not their dimensions. Horikoshi—in an invention for an electrode composition—discloses the use of carbon nanotubes that are 5 to 100 nm in diameter with a length to dimeter ratio of 10 or more so as to optimize the number of nanotubes per unit weight (paragraph 35). It would have been obvious to one having ordinary skill in the art at the time of invention to utilize the size ranges claimed in Bendimerad so as to maximize the conductive network as suggested by Horikoshi.
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 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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