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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12/12/2025 and 12/22/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Response to Amendment
The amendment filed on 12/12/2025 has been entered. Claims 3 and 7 are amended, Claim 23 is newly added and Claims 3-7 and 23 are pending.
Claim Rejections - 35 USC § 112
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 4-5 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. Amended independent claim 3 requires “wherein the second material comprises lithium fluoride and wherein the third material comprises lithium carbonate” in Lines 12 and 13 and Claims 4 and 5 list groups of materials for the second and third materials respectively which encompass lithium fluoride and lithium carbonate and thus both claims 4 and 5 fail to further limit the subject matter of claim 3 upon which it depends. 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.
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.
Claims 3-7 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 20140065488 A1), hereinafter "Lee". Lee et al. is analogous prior art to the claimed invention because it pertains to the same field of endeavor, namely negative electrode active materials.
In regard to Claims 3-6, Lee et al. discloses a method for manufacturing a negative electrode active material, the method comprising the steps of forming a first mixture by mixing a first material, a second material comprising halogen, and a third material comprising oxygen and carbon; and heating the first mixture (Lee, Abstract, Examples). Lee et al. also discloses wherein the first material comprises graphite (Lee, [0010]), wherein the additional materials comprise a lithium compound which comprises at least one selected from lithium fluoride and lithium carbonate and may reasonably include both based on properties of the materials and design incentives known to the skilled artisan. Lee et al. further discloses wherein the heating is performed in a reduction atmosphere including nitrogen, argon, hydrogen, or a mixed gas thereof, or under vacuum. (Lee, [0057]).
Finally, Lee et al. discloses after heat treatment the lithium compound decomposes and is present in the particle surface in the form of lithium oxide (Li.sub.2O), lithium fluoride (LiF), and lithium carbonate (Li.sub.2CO.sub.3) (Lee, [0063]) and a specific example wherein a region comprising oxygen is detected on a particle surface of the negative electrode active material (Lee, [0103, 0111]). While Lee et al. is silent as to the EDX analysis, Lee discloses XRD analysis and the presence of the species on the surface of the particles due to the lithium compounds decomposition, which would necessarily be detectable under EDX analysis as well.
In regard to Claim 7, Lee et al. discloses the method for manufacturing a negative electrode active material according to claim 3. Lee et al. also discloses specific examples where the heating is performed for 1 hour in a rare gas atmosphere (Lee, Examples 4-7) and wherein the heating is performed at a temperature range of 500 to 2500°C (Lee, [0056]), which overlaps the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the current invention to have selected the overlapping portion of the ranges disclosed by the reference, as overlapping ranges have been held to be a prima facie case of obvious. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.
In regard to Claim 23, Lee et al. discloses the method for manufacturing a negative electrode active material according to claim 3. The skilled artisans of Lee et al. must provide the lithium compound in a specific weight ratio with the graphite in order to achieve the desired results and Lee et al. discloses that the lithium compound which may include both lithium carbonate and lithium fluoride is provided in a range of 0.1-50 parts by weight per 100 parts by weight of the graphite first material (Lee, [0066]), which overlaps the claimed range and amounts to nothing more than a result effective variable to be optimized by the skilled artisan. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the current invention to have selected the overlapping portion of the ranges disclosed by the reference, as overlapping ranges have been held to be a prima facie case of obvious. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.
Response to Arguments
Applicant’s arguments with respect to claim 3 have been considered but are moot because the new ground of rejection has been changed from a 35 U.S.C 102(a)(1) rejection to a 35 U.S.C. 103 rejection and relies on a different prior art reference. While the amendment to claim 3 overcomes the previous rejection, Lee et al. (US 20140065488 A1) discloses the limitations provided in amended claim 3, 7 and newly added claim 23 as discussed above.
Further, it is acknowledged that Applicant requests that the double patenting rejection be held in abeyance. However, the double patenting rejection will be withdrawn if and when the requirements are met.
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.
Claims 3 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of copending Application No. 18/004,700 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 3 and 7 of the current application disclose the mixing of identical materials, according to the same method, at the same temperature and duration, under the same atmospheric conditions, to form the same final product as is disclosed in claim 20 of the reference application, with the exception of the simple substitution of silicon for carbon. Both silicon and carbon are standard classes of negative electrode active materials in lithium ion battery technology and would amount to nothing more than an obvious variation to one of ordinary skill in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 KENNETH MAX OTERO whose telephone number is (571)272-2559. The examiner can normally be reached M-F Generally 7:30-430.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Buie-Hatcher can be reached at (571) 270-3879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.M.O./Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/Supervisory Patent Examiner, Art Unit 1725