DETAILED ACTION
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 Amendment
This office action is responsive to the amendment filed on 08/11/25. The applicant has overcome the objections. However, applicant’s amendment has not yet satisfactorily overcome the 35 USC 112 rejections and the prior art rejections. Refer to the aforementioned amendment for specific details on applicant's rebuttal arguments and/or remarks. Therefore, the present claims are now finally rejected over the same art/grounds of rejection as formulated hereinbelow and for the reasons of record:
Claim Disposition
Claims 1, 4-16 and 19-29 are under examination; and claims 2-3 and 17-18 have been cancelled.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6-7 and 21-22 are still rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 6 and 21 recite the broad recitation “less than 1 micron”, and the claim also recites “less than 100 nanometer, or less than 10 nanometer” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 7 and 22 recite the broad recitation “1 µm to 20 µm”, and the claim also recites “3 µm to 10 µm”, “3 µm to 15 µm” “3 µm to 8 µm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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.
Claim Rejections - 35 USC § 103
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.
Claims 1, 4-9, 11-16, 19-24 and 26-29 are rejected under 35 U.S.C. 102a1 as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Son et al 2019/0207221.
As to claims 1, 4, 8, 16, 19, 23:
Son et al disclose that it is known in the art to make a silicon electrode for use in an electrochemical cell comprising a porous silicon composite material including a porous core including a porous silicon composite secondary particle, and a shell (covering/coating/layer) (i.e., a carbonaceous coating/layer, or graphene coating/layer) (0063; 0076; 0083; 0108; 0110-0113) disposed on a surface of the porous core and surrounding the porous core wherein the porous silicon composite secondary particle includes an aggregate of silicon composite primary particles each including silicon, a silicon suboxide, and a first graphene (carbon-based coating) on a surface of the silicon-based particle, wherein the shell includes a second graphene (carbon-based coating) (Abstract; 0013-0019; 0026; 0029-0036; 0063; 0064-0078; 0082-0083; 0108; 0110-0114; see CLAIMS 1-3, 41-43, 46-49; see FIGURES 1A-B, 9B, 10B & 11B). Son et al disclose the single continuous region of silicon (0064-0078; 0082-0083; see FIGURES 1A-B, 9B, 10B & 11B).
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(emphasis added→) Son et al disclose that the graphene used as the carbon-based coating may be in the form of a film, a particle, a matrix, or a combination thereof (0071; 0076; 0072-0076); and/or the carbon-based material can include carbon fiber (0184).
Examiner’s note: as to the conductivity of the carbon-based coating and the carbon-based coating comprising one or both of 0D and 1D carbon(s) (as recited in claims 3-4 and 18-19): MPEP 2112.01 Composition, Product, and Apparatus Claims: I. PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See also In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971); Northam Warren Corp. v. D. F. Newfield Co., 7 F. Supp. 773, 22 USPQ 313 (E.D.N.Y. 1934). Further, products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed characteristics (i.e. the specific first/second potentials and respective states of charge (SOC), and their particular relationship), are necessarily present in the prior art material. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 [R-3] Composition, Product, and Apparatus Claims. See also In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) “From the standpoint of patent law, a compound and all its properties are inseparable.”
As to claims 5, 20:
Son et al disclose that the graphene used as the carbon-based coating may be in the form of a film, a particle, a matrix, or a combination thereof (0071; 0076; 0072-0076); and/or the carbo-based material can include carbon fiber (0184).
As to claim 6, 21:
Son et al disclose the thickness of the shell (covering/coating) ranges from about 10-1000 nm (0079; 0094; 0104; 0108). More particularly, Son et at depict in Figures 9B and 10B, supra, that the thickness of the shell (covering/coating) ranging from 30-50 nm, or 30-100 nm (see FIGURES 9B & 10B, supra). Thus, such thickness has been disclosed/shown with sufficient specificity.
As to claim 7, 22:
Son et al teach that the silicon particles have a size or dimension of about 3-10 µm, or about 3-9 µm, or about 5-10 µm (0079; 0100; 0107; 0114).
As to claim 9, 24:
Son et al teach silicon particles (Abstract; 0013-0019; 0026; 0029-0036; 0063; 0064-0078; 0082-0083; 0108; 0110-0114). As to the apparent method limitation, i.e. the silicon particles [is] derived from quartz, it is noted that a method limitation incorporated into a product claim does not patentable distinguish the product because what is given patentably consideration is the product itself and not the manner in which the product was made. Therefore, the patentability of a product is independent of how it was made. As a result, the process steps of a product-by-process claim do not impart any significant property or structure to the claimed end product. And, if there is any different, the difference would have been minor and obvious. Determination of patentability of a product-by-process claim is based on the scope of the product itself. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe 777 F.2d 695, 698, 227 USPQ 964,966 (Fed Cir. 1985) and MPEP 2113.
As to claims 11-14, 26-29:
The teachings of Son et al relate to silicon particles encompassing elemental silicon and/or pure silicon (0077-0082; 0134-0141; 0153-0158; 0166-0170; see Preparation Example 1: 0284-0289, and Preparation Examples 2-8: 0290-0292 & Table 1). In this case, Son et al implicitly teach that the content of elemental silicon and/or pure silicon is more than 75 %.
As to claim 15:
Son et al disclose silicon electrode for use in a lithium-ion battery (0003; 0026; 0108; 0373; see CLAIM 43).
As per MPEP 2112 Requirements of Rejection Based on Inherency; Burden of Proof: "V. ONCE A REFERENCE TEACHING PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS MADE THE BASIS OF A REJECTION, AND THE EXAMINER PRESENTS EVIDENCE OR REASONING TENDING TO SHOW INHERENCY, THE BURDEN SHIFTS TO THE APPLICANT TO SHOW AN UNOBVIOUS DIFFERENCE ....[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, or prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same... [footnote omitted]." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433- 34 (CCPA 1977)).
All in all, A REJECTION UNDER 35 U.S.C. 102/103 CAN BE MADE WHEN THE PRIOR ART PRODUCT SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT CHARACTERISTIC, PROPERTY OR FUNCTION Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102/103 rejection is appropriate for these types of claims as well as for composition claims. Refer to MPEP 2112 Requirements of Rejection Based on Inherency; Burden of Proof.
Claim Rejections - 35 USC § 103
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.
Claims 10 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Son et al 2019/0207221 as applied to claims 1 and 16 above, and further in view of Yang et al 2014/0147751.
Son et al are applied, argued and incorporated herein for the reasons manifested supra. However, the preceding reference does not expressly disclose the polycrystalline Si.
In this respect, in the same field of endeavor, Yang et al disclose that it is known in the art to make silicon-carbon composite electrode materials for lithium-ion batteries using polycrystalline Si as an electrode active material, and/or as an electrochemical active material (Abstract; 0009).
By compounding the above teachings, it would have been within the ambit of a skilled artisan to use the polycrystalline Si of Yang et al as the electrode silicon material of Son et al because Yang et al teach that the use of polycrystalline Si has, inter alia, the advantages of providing high reversible capacity, good cycle performance and good rate performance. Further, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. Stated differently, combining prior art elements according to known methods to yield predictable results is prima-facie obvious. KSR International Co. v. Teleflex Inc., 550 US- 82 USPQ2d 1385, 1396 (2007). KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
Response to Arguments
Applicant's arguments filed 08/11/25 have been fully considered but they are not persuasive.
The main contention of applicant’s argument is premised on the assertion that the limitations “wherein the coating comprises a carbon based coating, and wherein carbon used in the carbon based coating has conductivity above 10-3 S/cm” now incorporated into respective independent claims 1 and 16 are sufficient - by itself - to define patentable subject matter without positively stipulating the specific carbon-based material or carbon-based composition possessing such apparent characteristic or property. Hence, the issue in question here is whether or not the carbon-based material of Son et al also exhibits or possesses the claimed conductivity (i.e., above 10-3 S/cm). In this respect, and for the reasons of record, it is imperative to note that Son et al teach the graphene used as the carbon-based coating may be in the form of a film, a particle, a matrix, or a combination thereof (0071; 0076; 0072-0076); and/or the carbon-based material can include carbon fiber (0184) which is substantially the same (or read on) carbon-based material broadly claimed by the applicant. Note that nowhere in independent claims 1 and 16 can it be seen any specific carbon material per se, or a carbon material other than applicant’s broadly claimed “carbon-based coating”. In that, (emphasis added→) it is noted that the carbon based material of Son et al may be graphene which is employed as the carbon-based coating in the form of a film, a particle, a matrix, or a combination thereof (0071; 0076; 0072-0076); and/or the carbon-based material may include carbon fiber (0184). Nowhere in independent claims 1 and 16 can it be seen that graphene or other carbon-based materials taught by Son et al is/are fully precluded or excluded from being applicant’s broadly claimed “carbon-based” material/element/component. Therefore, as set forth in the 102/103 rejection under inherency, the burden of proof is now shifted to the applicant to prove otherwise. As per MPEP 2112 Requirements of Rejection Based on Inherency; Burden of Proof: "V. ONCE A REFERENCE TEACHING PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS MADE THE BASIS OF A REJECTION, AND THE EXAMINER PRESENTS EVIDENCE OR REASONING TENDING TO SHOW INHERENCY, THE BURDEN SHIFTS TO THE APPLICANT TO SHOW AN UNOBVIOUS DIFFERENCE ....[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, or prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same... [footnote omitted]." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433- 34 (CCPA 1977)).
As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). Although the prior art fails to disclose other physical properties or characteristics, in view of the substantially similar product/material being disclosed in the instant application, the examiner has a reasonable basis to suspect that the claimed product/material and the prior art’s product/material would be substantially the same. Since PTO does not have proper equipment to carry out the analytical test(s), the burden is shifted to the applicant to provide objective evidence demonstrating that the claimed product/material is necessarily different from the product/material of the prior art, and that the difference(s) is/are unobvious. In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Therefore, as set forth in MPEP, once a product appearing to be substantially identical is found, the burden shifts to the applicant to show an unobvious difference. "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) (The claims were directed to a zeolite manufactured by mixing together various inorganic materials in solution and heating the resultant gel to form a crystalline metal silicate essentially free of alkali metal. The prior art described a process of making a zeolite which, after ion exchange to remove alkali metal, appeared to be "essentially free of alkali metal." The court upheld the rejection because the applicant had not come forward with any evidence that the prior art was not "essentially free of alkali metal" and therefore a different and unobvious product.).
As to the 112 rejections, the broad recitation “less than 1 micron” and the narrower recitations of “less than 100 nanometer, or less than 10 nanometer” in claims 6 and 21; and
the broad recitation “1 µm to 20 µm” and “the narrower recitations of “3 µm to 10 µm”, “3 µm to 15 µm” “3 µm to 8 µm” in claims 7 and 22 make it difficult, not to say impossible, to ascertain the specific coating thickness and silicon particle diameter, respectively, intended by the applicant, thereby rendering the scope of those claims indefinite, ambiguous and vague. As per MPEP § 2173.05(c), the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. The claims are deemed indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 RAYMOND ALEJANDRO whose telephone number is (571)272-1282. The examiner can normally be reached Monday-Thursday (8:00 am-6:30 pm).
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, Barbara L. Gilliam can be reached at (571) 272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAYMOND ALEJANDRO/
Primary Examiner
Art Unit 1727