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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group II in the reply filed on June 15, 2026 is acknowledged. Claims 1, 2, 4, 8, 9, 13-15, 17, 19, 30 and 31 are withdrawn from consideration.
Claim Suggestions
In claims 25 and 26, it is suggested that “specific surface” be amended to “specific surface area.”
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 20 and 23-29 are 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.
Claim 20 (via its dependency on claim 1) recites “the transition temperature” in lines 6 and 7 of claim 1. This limitation lacks proper antecedent basis.
Claim 20 recites a material “which can be obtained” according to the method of claim 1. The use of “can be” is considered to be indefinite because it is not clear if the limitations are being positively recited or not.
Claims 20 and 28 recite “the half cell test” in line 3 of both claims. There is insufficient antecedent basis for this limitation in the claims.
Claim 28 recites “the transition temperature” in lines 13 and 14. This limitation lacks proper antecedent basis.
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 20 and 23-27 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. Claims 1 and 20 inconsistently recite the Si : carbon ratio; claim 20 (40-99%) fails to properly further limit the >80% range of 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.
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.
Claims 20 and 23-29 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al (US 20150162617).
Regarding claims 20, 28, and 29, Liu et al. teaches an anode for a battery comprising a silicon-carbon composite material that comprises an aggregate of Si nanoparticles inside a carbon shell (abstract). Regarding claims 20 and 28, the product is made by a process comprising mixing Si and a carbon compound (e.g., glucose), hydrothermally treating the mixture at 180-220C (corresponding to claimed step A), and calcining the mixture at 350-400C for 2-4 hours and then 750-850C for 2-5 hours (corresponding to claimed step B and optionally step A since the calcining is two-part) ([0032]). The ratio of Si nanoparticles to the carbon source is 1:20 to 1:1 by weight ([0034]). The diameter of the Si nanoparticles is 20-200 nm ([0032]). The diameter of core-shell composite particles is 50-500 nm ([0030]). Regarding claim 24, the composite particles have at least two Si particles per composite particle (Figure 1).
Liu is not anticipatory of the claimed range of Si content in the composite (40-99%) as recited in claims 20 and 28 (a first interpretation of claim 20, if the claimed range is considered to be 40-99%; see 112(d) rejection above).
However, the invention as a whole would have been obvious to one skilled in the art at the time of filing because the range of Liu (Si nanoparticles : carbon source being 1:20 to 1:1 by weight ( 4.8%-50% Si)) overlaps with the claimed range (40-99% Si in composite). In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (In re Wertheim, 191USPQ 90; In re Woodruff, 16 USPQ2d 1934).
Liu further does expressly not teach that the composite particles have a D90 of less than 50 microns (claims 20 and 28) and a D10 of more than 500 nm (claim 23). However, the disclosure of the diameter of core-shell composite particles being 50-500 nm renders obvious the claimed values. The claimed ranges appear to overlap with the range disclosed in Liu.
Liu further does not disclose that the D90 of the original silicon nanoparticles is between 50 and 500 nm (claim 1). However, as noted above, it teaches that the diameter of the silicon particles is 20-200 nm. It can be ascertained that the D90 would be less than 200 nm, if all the particles are within the range of 20-200 nm (the reference is silent as to “average” diameter, etc). Accordingly, the range is rendered obvious.
Although Liu does not teach the coulombic efficiency and specific charging capacity limitations of claims 20 and 28, as well as the specific discharging capacity of claim 27, it is submitted that such properties would be present when values disclosed in the reference are within the claimed ranges, as the product would then be substantially identical to the claimed product.
It is noted that the instant claims are product-by-process claims. The disclosure of Liu teaches steps sufficiently corresponding to the claimed steps (claims 1 and 28) as noted above, and Liu renders obvious the claimed Si content as well as the D90 of the initial Si particles. It is noted that the patentability of a product does not depend on its method of production. If the product in a 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). Furthermore, 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). See also MPEP §2113.
Regarding claims 25 and 26, which recite specific surface area limitations, it is submitted that the specific surface area of the composite material and the Si nanoparticles contained therein would have been recognized as a result-effective variable by one skilled in the art. This is because surface area is known to affect reaction rate and electrochemical activity. It has been held that the discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 205 USPQ 215 (CCPA 1980).
Claims 20 and 23-29 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al (US 20150162617) in view of Ay et al (US 20200006759).
Regarding claims 20, 28, and 29, Liu et al. teaches an anode for a battery comprising a silicon-carbon composite material that comprises an aggregate of Si nanoparticles inside a carbon shell (abstract). Regarding claims 20 and 28, the product is made by a process comprising mixing Si and a carbon compound (e.g., glucose), hydrothermally treating the mixture at 180-220C (corresponding to claimed step A), and calcining the mixture at 350-400C for 2-4 hours and then 750-850C for 2-5 hours (corresponding to claimed step B and optionally step A since the calcining is two-part) ([0032]). The ratio of Si nanoparticles to the carbon source is 1:20 to 1:1 by weight ([0034]). The diameter of the Si nanoparticles is 20-200 nm ([0032]). The diameter of core-shell composite particles is 50-500 nm ([0030]). Regarding claim 24, the composite particles have at least two Si particles per composite particle (Figure 1).
Liu is not anticipatory of the claimed range of Si content in the composite (40-99%) as recited in claim 28.
However, the invention as a whole would have been obvious to one skilled in the art at the time of filing because the range of Liu (Si nanoparticles : carbon source being 1:20 to 1:1 by weight ( 4.8%-50% Si)) overlaps with the claimed range (40-99% Si in composite). In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (In re Wertheim, 191USPQ 90; In re Woodruff, 16 USPQ2d 1934).
Liu does not expressly teach the composite contains over 80% silicon as recited in claim 20, by virtue of its dependency on claim 1 (in another interpretation of claim 20).
However, Ay et al. teaches a similar carbon-silicon composite having an Si weight percentage of 80% or more (abstract).
It would have been obvious to one skilled in the art to use this ratio in Liu et al. as the amount of silicon in the composite particle would have a direct effect on capacity. Accordingly, the range in claim 1 is rendered obvious.
Liu further does expressly not teach that the composite particles have a D90 of less than 50 microns (claims 20 and 28) and a D10 of more than 500 nm (claim 23). However, the disclosure of the diameter of core-shell composite particles being 50-500 nm renders obvious the claimed values. The claimed ranges appear to overlap with the range disclosed in Liu.
Liu further does not disclose that the D90 of the original silicon nanoparticles is between 50 and 500 nm (claim 1). However, as noted above, it teaches that the diameter of the silicon particles is 20-200 nm. It can be ascertained that the D90 would be less than 200 nm, if all the particles are within the range of 20-200 nm (the reference is silent as to “average” diameter, etc). Accordingly, the range is rendered obvious.
Although Liu does not teach the coulombic efficiency and specific charging capacity limitations of claims 20 and 28, as well as the specific discharging capacity of claim 27, it is submitted that such properties would be present when values disclosed in the reference are within the claimed ranges, as the product would then be substantially identical to the claimed product.
As set forth above, it is noted that the instant claims are product-by-process claims. 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). See also MPEP §2113.
Regarding claims 25 and 26, which recite specific surface area limitations, it is submitted that the specific surface area of the composite material and the Si nanoparticles contained therein would have been recognized as a result-effective variable by one skilled in the art. This is because surface area is known to affect reaction rate and electrochemical activity. It has been held that the discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 205 USPQ 215 (CCPA 1980).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan Crepeau whose telephone number is (571) 272-1299. The examiner can normally be reached Monday-Friday from 9:30 AM - 6:00 PM EST.
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 phone number for the organization where this application or proceeding is assigned is (571) 272-1700. Documents may be faxed to the central fax server at (571) 273-8300.
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/Jonathan Crepeau/
Primary Examiner, Art Unit 1725
June 26, 2026
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