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 Status
This office action is in response to amendments/arguments filed 02/24/2026. Claim(s) 1, 19, and 24 are currently amended. The amendments are supported by the specification and the original claims, and no new matter has been entered. Claim(s) 8-9, 12-13, and 21-22 are canceled. Claim(s) 2-7, 10-11, 14-18, 20, and 23 stand as originally or as previously presented. Claim(s) 1-7, 10-11, 14-20, and 23-24 are examined in this office action.
Claim Objections
The claim objections of the prior office action are withdrawn because of the amendments to the claims.
Double Patenting
In the office action of 11/05/2025, claims 19, 22, and 24 were objected to as being dependent upon a claim which was rejected under double patenting, but were not rejected themselves. Claim 1 is currently amended to include the limitations of previous claims 21 and 22. Despite no double patenting rejection being made in the office action of 10/05/2025, after further consideration and supervisor feedback, the following rejections are made:
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 1-7, 10-11, 14-15, and 18-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11492262 B2 in view of Hayner (US 20160036035 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because US 11492262 B2 contains every limitation of the instant claims, besides those disclosed/rendered obvious by Hayner.
Instant claim 1 is rejected because Claim 1 of 11492262 B2 discloses a silicon-carbon composite comprising:
a carbon scaffold comprising a pore volume, the pore volume being greater than 80% microporosity, a silicon content of 30-60% by weight, a surface area of less than 30 m2/g, and the claimed Z value, defined the same as defined in claim 1. Claim 19 claims an electrode, which would encompass the claimed anode, and claim 21 claims a Li battery. The silicon-carbon composite would be understood by a POSITA to be a particle.
11492262 B2 does not disclose that the composite particle has a volumetric capacity that is at least 5% greater than a second lithium-based energy storage device comprising a graphite electrode, however incorporating Si into a graphite or carbon-based electrode for the purpose of increasing the capacity is a practice that is known in the art and would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention. For example, Hayner (US 20160036035 A1) discloses that silicon is an attractive anode material due to its high volumetric capacity. [0066] discloses that table 2 compares properties of different materials containing differing amounts of silicon and carbon, including volumetric capacity. Table 2 notes that theoretical graphite can have a volumetric capacity of around 500 mAh/cc, whereas even a mixture comprising only 10% Si with a porosity of 80% will have a capacity of around 800 mAh/cc. Table 2 discloses other examples which use a higher silicon content that have volumetric capacities of 1500 mAh/cc or more.
As a result of the disclosure of Hayner, and the known teaching of incorporating silicon into carbon material in order to obtain an electrode with greater volumetric capacity than graphite alone, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to select a silicon content and porosity to result in a volumetric capacity which is at least 5% greater than a second lithium-based energy storage device comprising a graphite electrode, thus satisfying the limitations of the claimed invention.
The limitations of claim 2 can be found in claim 2 of 11492262 B2, claim 3 in claim 3, 4 in 4, 5 in 5, 6 in 4, 7 in 5, 10 and 11 in 9, 14 in 14, 15 in 15, 18 in 16, 19 in 17, and 20 in 18.
Claim 23 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11492262 B2 in view of Hayner (US 20160036035 A1) and Park (US 20150280243 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because US 11492262 B2 contains every limitation of the instant claims, except for the limitations contained by Hayner and Park.
23 is rejected because it claims common features found in almost any Lithium battery and would have been obvious to include based on numerous known references, such as Park (see [0007] of Park).
Claim 24 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11492262 B2 in view of Hayner (US 20160036035 A1) and Yilmaz (US 20240384398 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because US 11492262 B2 contains every limitation of the instant claims, except for the limitations contained by Hayner and Yilmaz.
Regarding claim 24, U.S. Patent No. 11492262 B does not disclose the claimed Span, however disclosures which offer motivations for optimizing spans for similar materials to be less than 3 were known in the art before the effective filing date of the claimed invention. Yilmaz, for example, discloses a similar product to the instantly claimed, comprising a porous carbon framework (abstract) with micropores, with silicon being present within said micropores (abstract), wherein at least 80% of the micro/mesopore volume of the porous carbon framework is in the form of pores having a diameter of no more than 5 nm (micropores) [0088], wherein the composite particles comprise preferably 45 to 65 wt.% silicon [0126]. Yilmaz discloses that for such a material, span is most preferably optimized to be 1.5 or less, and that by maintaining a narrow span, a consistent deposition of the electroactive material into the pores is more readily achievable [0036].
As a result, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to, based on the disclosure of Yilmaz, to optimize the span of the composite particle to be less than 3, meeting the limitation of the instant claim 24. A POSITA would have been motivated to do this in order to more readily achieve a consistent deposition of the electroactive material into the pores.
Claims 1-7, 10-11, 16-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11498838 B2 in view of Hayner, for similar reasons to the above claim rejections. Although the claims at issue are not identical, they are not patentably distinct from each other because US 11498838 B2 contains every limitation of the instant claims, besides those contained by Hayner. Claim 23 Rejected in view of US 11498838 B2, Hayner, and Park, for similar reasons to the claim 23 rejection above. Claim 24 rejected in view of US 11498838 B2, Hayner, and Yilmaz, for similar reasons to the claim 24 rejection above.
US 11498838 B2 contains claims that are substantially similar to 11492262 B2, except instead of disclosing the instantly claimed Z value, claim 1 discloses the claimed φ value. Since the instant claim 1 requires only one of Z and φ, the instant claims are also rejected in view of US 11498838 B2, with the exception of the claims relating specifically to the z value (instant claims 14 and 15). Additionally, claims 16 and 17, which recite specific values for φ, are also rejected in view of claims 14 and 15 of US 11498838 B2.
Claims 1-7, 10-11, 14-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. US 11174167 B1 in view of Hayner, for similar reasons to the above claim rejections. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. US 11174167 B1 contains every limitation of the instant claims, besides those contained by Hayner. Claim 23 Rejected in view of US 11174167 B1, Hayner, and Park, for similar reasons to the claim 23 rejection above. Claim 24 rejected in view of US 11174167 B1, Hayner, and Yilmaz, for similar reasons to the claim 24 rejection above.
US 11174167 B1 contains claims substantially similar to the above referenced patents, and includes limitations relating to both Z and φ. As a result, all of claims 1-7, 10-11, 14-21, and 23-24 are rejected in view of claims 1-20 of US 11174167 B1 and in the case of claim 23/24, Park/Yilmaz.
1-7, 10-11, and 14-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. US 12046744 B2 and Hayner. Although the claims at issue are not identical, they are not patentably distinct from each other because US 12046744 B2 contains every limitation of the instant claims except those disclosed by Hayner. Claim 23 is rejected in view of Park, for similar reasons as outlined above. Claim 24 rejected in view and Yilmaz, for similar reasons to the claim 24 rejection above.
US 12046744 B2 contains claims substantially similar to the above referenced patents, including limitations relating to both Z and φ, and as a result a similar double patenting rejection is made.
1-7, 10-11, and 14-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. US 11335903 B2 and Hayner. Although the claims at issue are not identical, they are not patentably distinct from each other because US 11335903 B2 contains every limitation of the instant claims, besides those disclosed in Hayner. Claim 23 is rejected in view of Park, for similar reasons outlined above. Claim 24 rejected in view of Yilmaz, for similar reasons as outlined above.
US 11335903 B2 contains claims substantially similar to the above referenced patents, including limitations relating to both Z and φ, and as a result a similar double patenting rejection is made.
1-7, 10-11, and 14-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. US 11335903 B2 and Hayner. Although the claims at issue are not identical, they are not patentably distinct from each other because US 11335903 B2 contains every limitation of the instant claims except those disclosed in Hayner. Claim 23 is rejected in view of Park, for similar reasons outlined above. Claim 24 is rejected in view of Yilmaz, for similar reasons outlined above.
US 11335903 B2 contains claims substantially similar to the above referenced patents, including limitations relating to both Z and φ, and as a result a similar double patenting rejection is made.
Claims 1-7, 10-11, and 14-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. US 11639292 B2 in view of Hayner. Although the claims at issue are not identical, they are not patentably distinct from each other because US 11639292 B2 contains every limitation of the instant claims besides those disclosed in Hayner. Claim 23 is rejected in view of Park, for similar reasons outlined above. Claim 24 rejected in view of Yilmaz, for similar reasons outlined above.
US 11639292 B2 contains claims substantially similar to the above referenced patents, including limitations relating to both Z and φ, and as a result a similar double patenting rejection is made.
Claim 1-7, 10, 14-17 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/246,472 (reference application) in view of Hayner, and in the case of claim 23-24, Park/Yilmaz. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of 18/246,472 contain all the limitations instantly claimed besides those disclosed in other references.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, 18/246,472 discloses a process, the process including a silicon-carbon composite, a carbon scaffold (claim 1), a silicon content of 40-60% by weight, a surface area within the claimed range, and the claimed Z and φ values (claim 8). Limitations of the instant claims 2-7 are found in claims 3-5 and 13, limitations for claim 10 in claim 8, limitations for claims 14 and 15 in claim 19 (claim 19 discloses an overlapping z value), and limitations for claims 16 and 17 in claim 8 (which discloses an overlapping φ value). 18/246,472 does not disclose a volumetric capacity at least 5% greater than a second lithium-based energy storage device comprising a graphite electrode, but this would have been obvious in view of Hayner (see above).
Claim 20, provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/246,472 (reference application), Hayner, and Sakshaug (US 20170170477 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of 18/246,472 contain all the limitations instantly claimed, besides those disclosed by Sakshaug.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 20. It further would have been obvious based on known references, such as prior art of record Sakshaug (US 20170170477 A1), to incorporate the silicon-carbon composite in a battery anode, as Sakshaug discloses a carbon-silicon composite material similar to that disclosed by the instant claim 1 except for lacking the claimed Z and φ values, (see [0016]-[0018], [0042], [0172] and [0179]), and incorporating said material in a lithium ion battery [0044] anode [0291], and as a result claim 20 is are also rejected.
Claim 23, provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/246,472 (reference application) and Park (see above). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of 18/246,472/Hayner contain all the limitations instantly claimed, besides those disclosed by Park.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 23, provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/246,472 (reference application) and Yilmaz (see above). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of 18/246,472/Hayner contain all the limitations instantly claimed, besides those disclosed by Yilmaz.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-7, 10, 12, 14-17, 20, and 23-24 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/042,178 (reference application), in view of Hayner and in the case of claims 20, Sakshaug, and in the case of claim 23, Park, and in the case of claim 24, Yilmaz. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of 18/042,178 contain all the limitations instantly claimed, excepting those contained by other references.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Application No. 18/042,178 contains similar limitations and as a result the same claims as are rejected in view of 18/246,472 are similarly rejected under provisional nonstatutory double patenting in view of 18/042,178. Claim 12 of 18/042,178 additionally discloses the limitations of instant claim 18, and so that claim is also rejected.
Claim 1-7, 10, 12, 14-17, 19-2, and 23-24 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/486,984 (reference application), and Hayner, and in the case of claims 2, Sakshaug, and in the case of claim 23, Park, and in the case of claim 24, Yilmaz. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of 18/486,984 contain all the limitations instantly claimed, excepting those contained by other references.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Application No. 18/486,984 contains similar limitations and as a result the same claims as are rejected in view of above references and as a result a similar rejection is made under provisional nonstatutory double patenting. Claim 8 of 18/486,984 also contains the limitations of instant claim 19, which is rejected.
Claim 1-7, 10, 12, 14-17, 19-21, and 23 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/042,173 (reference application), and Hayner, and in the case of claims 20, Sakshaug, and in the case of claim 23, Park, and in the case of claim 24, Yilmaz. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of 18/042,173 contain all the limitations instantly claimed, excepting those contained by other references.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Application No. 18/042,173 contains similar limitations and as a result the same claims as are rejected in view of above references and as a result a similar rejection is made under provisional nonstatutory double patenting, also including claim 19 in view of claim 14
Allowable Subject Matter
Should the outstanding double patenting rejections made above be overcome with terminal disclaimers or through amendment, the subject matter of claim 1-7, 10-11, and 14-20, and 23-24 would be allowable. Below is examiner’s reasons for indicating allowable subject matter:
Claim 1 is related to a silicon-carbon composite particle according to several specific limitations. The closest prior art of record, Sakshaug (US 20170170477 A1), discloses a silicon-carbon composite particle ([0016] discloses silicon deposited into the pore volume of a porous carbon scaffold material, and as a result can be considered under broadest reasonable interpretation a silicon-carbon composite particle) meeting some of the claimed limitations, including a carbon scaffold material comprising a pore volume [0016], a silicon content of 30-60% by weight ([0042] discloses an overlapping weight %), a surface area falling within the claimed range [0172], and a microporosity falling within the claimed range [0179]. Sakshaug does not, however, disclose the Z or φ values as claimed.
Lacking any other information to the contrary, a prima facie case of obviousness would exist that the composite material of Sakshaug would possess Z and φ values as claimed, given that everything else about the material of Sakshaug and the instantly claimed material is identical or overlapping. However, applicant has provided an affidavit filed 06/24/2021 during the prosecution of now allowed application No. 16/996,694. Specifically, applicant’s affidavit provides data demonstrating that the composite material taught by Sakshaug would not possess the Z and φ as claimed. In the affidavit, applicant provides calculated Z and φ values for the 130 comparable composite materials described in Sakshaug (paragraph 5 of declaration, table 1). As can be seen in table 1, only two of the 130 materials of Sakshaug possess the claimed Z value (neither of which possess the claimed silicon content %), and none of the materials possessed the claimed φ value. As a result, it is clear that there is no prima facie case of obviousness that the material of Sakshaug would be expected to possess the claimed Z or φ values, while also possessing the rest of the claimed limitations.
Another prior art reference which has been found and is considered relevant to the instant application is Yilmaz (US 20240384398 A1). Yilmaz discloses a composite particle comprising a carbon scaffold with micropores, and silicon being present within said micropores (abstract). Yilmaz discloses ranges that encompass or overlap with claimed ranges, including a pore volume of 10-90% microporosity [0141], a silicon content of 30-80% by weight (claim 66), and a surface area which is preferably in the range of 2-15 m2/g [0121]. Yilmaz however does not disclose an embodiment wherein all these properties are present within the claimed range (see sample 1 and sample 2 in table 1, which both disclose a specific surface area outside the claimed range), nor does Yilmaz disclose the claimed Z and φ values. While normally a prima facie case of obviousness would exist that the claimed values would be present, applicant’s affidavit filed 06/24/2021 during the prosecution of now allowed application No. 16/996,694 overcomes any such prima facie case of obviousness in view of Yilmaz for the same reasons discussed above.
Further, no other prior reference has been found which, either alone or in combination with any other known prior reference, discloses the limitations of claim 1. For this reason claim 1 has been found to be free from prior art rejections.
Claims 2-7,10-11, and 14-20 and 23-24 depend from claim 1 and are therefore similarly free from prior art rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACKARY R COCHENOUR whose telephone number is (703)756-1480. The examiner can normally be reached 1-9:00PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Smith can be reached at (571) 272-8760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACKARY RICHARD COCHENOUR/Examiner, Art Unit 1752
/NICHOLAS A SMITH/Supervisory Primary Examiner, Art Unit 1752