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 .
Response to Amendment
The amendment filed on 04/29/2026 has been entered. Claim 26 has been amended, Claims 28-29 have been newly added, Claims 22-25 have been withdrawn from consideration and Claims 15-29 are pending.
Claim Objections
The objection to Claim 26 is withdrawn in view of the amendment filed 04/29/2026.
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 15-19, 21, and 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Feaver et al. (US 20190097222 A1), hereinafter "Feaver". Feaver et al. is analogous prior art to the claimed invention because it pertains to the same field of endeavor, namely silicon carbon composites.
In regard to Claims 15 and 29, Feaver et al. discloses silicon carbon composite particles, wherein the composite comprises carbon, silicon and an alkali metal or alkaline earth metal comprising lithium, sodium, potassium, or combinations thereof in a concentration within a range of 1-20% (Feaver, [0372]), which overlaps the clamed ranges.
Feaver et al. also discloses the silicon carbon composite particles have a pH which can be controlled by the skilled artisan, and in a specific embodiment falls within a range of between about 7 and 8 (Feaver, [0324]), 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 invention to have selected the overlapping portion of the ranges disclosed by the reference because 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 16, Feaver et al. discloses the silicon carbon composite particles of claim 15. Feaver et al. also discloses that in some embodiments, the average particle size Dv50 of the composite comprising carbon and porous silicon material is about 1 µm to about 20 µm (Feaver, [0375]), which significantly overlaps the claimed range.
In regard to Claim 17, Feaver et al. discloses the silicon carbon composite particles of claim 15. Feaver et al. also discloses a specific example wherein the silicon carbon composite particles have 55.5 wt% of silicon (Feaver, [0422]), obtained by silicon infiltration into the pore structure (Feaver, [0354]), which anticipates the claimed range.
In regard to Claim 18, Feaver et al. discloses the silicon carbon composite particles of claim 15. Feaver et al. also discloses the composites may be obtained by silicon deposited on the surface of the carbon material or incorporated in any number of other ways including infiltration into the pores (Feaver, [0354]) and that the porous nano-featured silicon has a characteristic thickness of nano features of less than 300 nm (Feaver [0471]), which anticipates the claimed range.
In regard to Claim 19, Feaver et al. discloses the silicon carbon composite particles of claim 15. Feaver et al. also discloses wherein the silicon carbon composite particles have a specific BET surface area of at most 20-80 m2/g (Feaver, [0012, 0508]), which anticipates the claimed range.
In regard to Claim 21, Feaver et al. discloses the silicon carbon composite particles of claim 15. Feaver et al. also discloses wherein the silicon carbon composite particles are used in an anode material of a lithium-ion battery (Feaver, [0274]).
In regard to Claims 26-28, Feaver et al. discloses the composite particles comprise carbon, silicon and an alkali metal or alkaline earth metal comprising lithium, sodium, potassium, or combinations thereof in a concentration within a range of 1-20% (Feaver, [0372]), which overlaps the claimed range.
Feaver et al. also discloses the silicon carbon composite particles have a pH which can be controlled by the skilled artisan, and in a specific embodiment falls within a range of between about 7 and 8 (Feaver, [0324]), 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 invention to have selected the overlapping portion of the ranges disclosed by the reference because 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.
Feaver et al. further discloses an anode material comprises the silicon carbon composite particles and are coated on a current collector (Feaver, Example 30).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Feaver et al. (US 20190097222 A1), hereinafter "Feaver" as applied to claim 15 above, in view of Costantino et al. (US 20200020935 A1), hereinafter "Costantino". Feaver and Costantino et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely silicon carbon composites.
In regard to Claim 20, Feaver et al. discloses the silicon carbon composite particles of claim 17. Feaver et al. also discloses the silicon carbon composite particles have a total pore volume (as determined by nitrogen gas sorption) of less than less than about 0.2 cc/g (Feaver, [0316-0317]) and that the material can have trapped porosity (Feaver, [0451]), but is silent as to the silicon carbon composite particles having a pore volume ‘P’ which is at least 100 vol%, based on the volume of the silicon obtained from silicon infiltration in the silicon carbon composite particles, wherein the pore volume ‘P’ of the silicon carbon composite particles resulting from the sum total of gas-accessible and gas-inaccessible pore volume.
However, the skilled artisan of Feaver already provides a silicon carbon composite wherein silicon infiltration in the silicon carbon composite particles would produce some measurable pore volume and the skilled artisan would be well aware of this variable reaching at least 100 vol%, based on the volume of the silicon as evidenced by Constantino.
Costantino et al. discloses a Si/C composite with 5 to 95% by weight of silicon (Costantino, [0314]) and that the silicon embedded within the porous carbon scaffold material can occupy between 30% and 70% of the total available pore volume within the porous carbon scaffold (Costantino, [00296]). Therefore, if Si occupies ≤ 70% of total pore volume then total pore volume/Si volume ≥ 1/0.7 which is 1.43, which necessarily satisfies pore volume P ≥ Vol of Si. Further, Costantino discloses that the remaining pore volume may be non-accessible to nitrogen sorption (i.e. P includes both gas accessible and inaccessible pore volume) (Costantino, [0297]).
Lastly, Costantino et al. discloses two specific examples wherein the Si wt% is greater than 30% and pore volume in cm3/g is given, wherein the density of Si is (2.336 g/cm3) and the calculation of pore volume ‘P’ from the current application (Original Specification [0059]) can be used to calculate pore volume/volume of silicon is 485 vol% and 497 vol% respectively (Costantino, Sample 6 and Sample 8), which overlap the claimed range of vol% of 100 or more. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide a vol% as taught in Constantino in the composite of Feaver as doing so would amount to nothing more than the skilled artisan optimizing a result effective variable and to have selected the overlapping portion of the ranges disclosed by the reference because 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 filed 04/29/2026 have been fully considered but they are not persuasive. Applicant's arguments amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant’s arguments regarding Claims 15 and 26, that the working examples in the prior art (Feaver et al.) do not use the alkali metal or alkaline earth metal disclosed in the general disclosure and thus the skilled artisan would not provide these materials in the composite, amounts to mere speculation. To the contrary, the skilled artisan would find it obvious to try an alkali metal in a composite for a lithium battery with the reasonable expectation of success. Further, it is noted, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments, In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971) see MPEP § 2123. Additionally, applicant’s arguments that the prior art is non enabling is a mere accusation and provides no evidence to the contrary to rebut the presumption of operability (see MPEP § 2121).
Lastly, applicant’s arguments in regard to claim 20, that the secondary reference uses a different process to achieve the pore volume in a silicon composite, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As discussed in the 35 U.S.C 103 rejection above, the skilled artisan of Feaver already provides a silicon carbon composite wherein silicon infiltration in the silicon carbon composite particles would produce some measurable pore volume and the skilled artisan would be well aware of this variable reaching at least 100 vol%, based on the volume of the silicon as evidenced by Constantino, wherein it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide a vol% as taught in Constantino in the composite of Feaver as doing so would amount to nothing more than the skilled artisan optimizing a result effective variable and to have selected the overlapping portion of the ranges disclosed by the reference because 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wegener et al. (US 20190305366 A1), hereinafter “Wegener” discloses silicon carbon composite particles, comprising an alkali metal (Wegener, Abstract, [0049]).
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 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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/K.M.O./Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/Supervisory Patent Examiner, Art Unit 1725
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