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 .
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6 and 7 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The limitations of claims 6 and 7 are already present in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/189,700 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each claims a composite fiber comprising a porous silicon phase and a porous carbon phase wherein the two phases are intertwined and continuous throughout the fiber.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 –
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.
Claim(s)1-10 are is/are rejected under 35 U.S.C. 103 as obvious over Sakshaung et al, U.S. Patent Application Publication No. 2020/0152983 in view of Rios et al, U.S. Patent Application Publication No. 2014/0038042.
Sakshaung discloses a structure which comprises a porous silicon phase comprising elemental silicon and a porous carbon phase comprising elemental carbon wherein the two phases are intertwined, interconnected and continuous. Sakshaung discloses forming the structure by providing a porous structure into which porous silicon is impregnated. See paragraph 0107. The porous scaffold can be porous carbon. See paragraph 0107. The porous scaffold can be a carbon fiber. See paragraph 0107. The pores of the porous carbon scaffold can be micro, meso and macropores. See paragraph 0179-0180. The pore volume can be 0.1 cc/g-2cc/g. See paragraph 0182. The pores of the carbon scaffold can have diameters of 100 nm or less. See paragraph 0184. The carbon scaffold can have a crystallinity of 0-99%. See paragraph 00372. Sakshaung teaches introducing porous silicon into the carbon scaffolds to form a composite material. See paragraphs 0190-0191 and 0321-0322. The structure has durable intercalation of lithium. See paragraph 0252. The amount of silicon in the silicon/carbon porous composite material can be 5-95%. See paragraph 0337.
With regard to the formulas as set forth in claims 1-3, Sakshaung does not clearly teach the claimed formulas, however, since the same materials are present in the same amounts, it is reasonable to expect that the particularly claimed relationships would necessarily be present in the structure of Sakshaung.
Sakshaung does not disclose the claimed diameter and aspect ratio of the fiber.
Rios discloses a silicon carbon fiber. See abstract. The structure can be formed by providing a carbon fiber and impregnating it with silicon particles. See paragraph 0016. The fiber can have a diameter of 10-200 microns and a length of at least 3 times the diameter. See paragraph 0032. The silicon crystals can have a size of 5nm - 200 microns. See paragraph 0033. The carbon matrix is porous. See paragraph 0034. The structure can include lithium which is intercalated into the silicon carbon composite fibers. See paragraph 0035.
Therefore, it would have been obvious to have formed the fiber of Sakshaung to have dimensions as taught by Rios in view of the teaching of Rios that such dimensions were recognized as suitable for forming silicon carbon fibers.
Sakshaung discloses a structure as set forth above.
Sakshaung differs from the claimed invention because it does not teach the claimed crystallite size or the claimed amount of lithium.
However, Sakshaung teaches controlling crystallite size in order to provide the desired properties to the final product. See paragraph 00369.
Therefore, it would have been obvious to have provided the size of carbon crystallites which provided the desired properties to the final product.
Further, with regard to the amount of lithium, since Sakshaung teach infiltrating with lithium, it would have been obvious to have added the amount of lithium which produced the desired proportion of lithium in the final structure, depending on the final end use of the product.
Sakshaung does not disclose the claimed diameter and aspect ratio of the fiber.
Rios discloses a silicon carbon fiber. See abstract. The structure can be formed by providing a carbon fiber and impregnating it with silicon particles. See paragraph 0016. The fiber can have a diameter of 10-200 microns and a length of at least 3 times the diameter. See paragraph 0032. The silicon crystals can have a size of 5nm - 200 microns. See paragraph 0033. The carbon matrix is porous. See paragraph 0034. The structure can include lithium which is intercalated into the silicon carbon composite fibers. See paragraph 0035.
Therefore, it would have been obvious to have formed the fiber of Sakshaung to have dimensions as taught by Rios in view of the teaching of Rios that such dimensions were recognized as suitable for forming silicon carbon fibers.
Applicant's arguments filed 12/23/25 have been fully considered but they are not persuasive.
Applicant argues that Sakshaung does not teach that the structure is a fiber. However, Sakshaung teaches at paragraph 0107 that the porous scaffold can be carbon and that the carbon can be a carbon fiber.
With regard to the median pore size, while it is acknowledged that the Sakshaung does not disclose the median pore size, however, since Sakshaung teaches pore sizes which encompass the median size, it would have been obvious to have provided pore sizes which provided the desired pore size to the composite material.
Applicant argues that the combination of Sakshaung and Rios would not have been made by one of ordinary skill because Rios teaches away from such a structure because Rios employs isolated Si particles. However, Rios is relied on for suitable aspect ratios and dimensions for silicon carbide composite fibers, and to employ that size in the invention of Sakshaung would not require any changes in the invention or structure of Rios .
THIS ACTION IS MADE FINAL. 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 ELIZABETH M IMANI whose telephone number is (571)272-1475. The examiner can normally be reached Monday-Wednesday 7AM-7:30; Thursday 10AM -2 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH M IMANI/Primary Examiner, Art Unit 1789