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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/09/2026 has been entered.
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 1, 3, and 5-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, and 7-11 of copending Application No. 18024184. Although the claims at issue are not identical, they are not patentably distinct from each other because they both recite substantially the same structure of a negative electrode.
It would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of the ranges including the D/G band intensity ratio, the amount of graphene, and the amount of SWCNT disclosed by claims 1-3, 5, and 7-11 of copending Application No. 18024184 because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, and 5-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-9 of copending Application No. 18021404. Although the claims at issue are not identical, they are not patentably distinct from each other because they both recite substantially the same structure of a negative electrode.
It would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of the ranges including the D/G band intensity ratio, the amount of graphene, and the amount of SWCNT disclosed by claims 1-3 and 5-9 of copending Application No. 18021404 because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Examiner Note
Claims 1, 3, and 5-10 would be allowable if the nonstatutory double patenting rejections above are overcome.
The closest prior art of record includes Hayner (US 2021/0359295 A1), Oh ‘52 (KR20200100252 A, Machine Translation), and Oh (US 2022/0209228 A1).
Hayner discloses a negative electrode ([0067][0081][0082]), comprising:
a current collector ([0082]); and a negative electrode active material layer ([0082], slurry) disposed on at least one surface of the current collector,
wherein the negative electrode active material layer comprises 1) a negative electrode active material comprising a plurality of Mg-containing silicon oxide ([0033]-[0041], 120 [0041]), 2) a conductive material comprising a plurality of graphene and single-walled carbon nanotubes (SWCNTs) ([0045]-[0048][0067][0073][0083][0095][0115]-single walled carbon nanotubes included in nanotube selection 110), and 3) a binder ([0067]).
Oh ‘52 discloses a graphene containing material ([0082]) and further discloses wherein in D peak intensity of D band at 1360 ± 50 cm-1 and the peak G band at 1580 ± 50 cm-1 (See Fig. 3 and Table 1) and further discloses that the charge/discharge capacity and capacity retention rate are related to an optimal D/G ratio which can range from 1.25-1.7.
Oh discloses that the amount of Mg in silicon oxide composite for a lithium oxide battery should be in the range of 2-15 wt % ([0019]) and furthermore the amount of Mg effects capacity, efficiency and charging properties (see Table 1 and Table 2 [0133]).
No teaching, suggestion, or motivation can be found to modify the prior art to have a conductive coating of graphene and single walled carbon nanotubes on Mg-containing silicon particles, wherein the range required for D/G band intensity ratio for the graphene is 1.3 to less than 1.5 in combination with the amount of graphene ranging from 0.2 wt% to 1.5 wt% based on a total weight of the negative electrode active material layer on the plurality of Mg-containing silicon oxide particles. As noted in Applicant’s specification having this narrow range of both weight of graphene and graphene with a D/G band intensity ratio from 1.3 to less than 1.5 leads to better results for capacity (See Examples 1-5, 7 and 8) in Table 1 than Comparable Examples and Example 6 and 9 (see Applicant’s arguments filed 11/13/2025).
Response to Arguments
Applicant argues that the required range of the D/G band intensity ratio of claim 1 overcomes the double patenting rejections of copending Application No. 18021404 and copending Application No. 18024184.
The overlapping scope between the claimed range of the D/G band intensity ratio of instant application claim 1 and claim 2 of copending Application No. 18021404 is large. Furthermore claim 2 of copending Application No. 18021404 has an endpoint of a range of the D/G band intensity ratio which lies directly within the claimed range of claim 1. Therefore the double patenting rejection as set forth above in maintained.
The overlapping scope between the claimed range of the D/G band intensity ratio of instant application claim 1 and claim 2 of copending Application No. 18024184 is large. Furthermore claim 2 of copending Application No. 18024184 has an endpoint of a range of the D/G band intensity ratio which lies directly within the claimed range of claim 1. Therefore the double patenting rejection as set forth above in maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVINA PILLAY whose telephone number is (571)270-1180. The examiner can normally be reached Monday-Friday 9:30-6:00.
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DEVINA PILLAY
Primary Examiner
Art Unit 1726
/DEVINA PILLAY/ Primary Examiner, Art Unit 1726
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