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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application No. 62/464167, 15/906776, and 17/369058, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Claim 5 contain matters not supported by the prior-filed application. Therefore, effective filing date for claim 5 is 8/6/2021.
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.
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.
Claim(s) 1-10, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Do et al. (WO 2016/057369 A2, hereinafter Do, previously cited) in view of Jin et al. (“Facile Fabrication of Dual Modified Carbon Network Enabling Improved Electronic and Ionic Conductivities for Fast and Durable Li2TiSiO5 Anode,” ChemElectroChem, Vol. 6, No. 12, pp. 3020-3029, 3/18/19, hereinafter Jin).
Re Claim 1. Do teaches a composite (Fig. 2A & 2B), comprising:
Graphene (item 230, para. 68); and
nanoparticles (item 210, para. 73 & 74) of an anode active material for an electrochemical device, wherein said nanoparticles are conformally coated and networked by said graphene (Fig. 2A & 2B).
Do discloses that the anode active material comprises titanium (para. 74), but fails to specifically teach that the anode active material comprises Li2TiSiO5 (LTSO), niobium oxides, titanium niobium oxides, or a combination thereof.
The research of Jin encompasses LTSO modified with carbon nanotubes for anodes. Jin discloses that the anode active material comprises LTSO (abstract).
In view of Jin, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Do to employ LTSO, since Jin teaches the advantage of using it, which is to achieve high cycling stability and rapid charge/discharge (Conclusion).
Re Claim 2. The combination teaches wherein individual said nanoparticles, rather than multi- particle particulates, are conformally coated with said graphene (Do, Fig. 2B).
Re Claim 3. The combination teaches wherein each of said nanoparticles is uniformly and conformally coated with said graphene (Do, Fig. 2B).
Re Claim 4. The combination teaches wherein each of said nanoparticles is coated with amorphous carbon with sp2-carbon content along with said graphene (Do, para. 65).
Re Claim 5. The combination teaches that nanoparticles is present in a range from 5 wt% to 90 wt% of the composite (Do, para. 28), and graphene is in a range of 10 to 40 wt% of the composite (Do, para. 26), which makes a weight ratio of said graphene to said nanoparticles of the anode active material is in a range from 1:9 to 1:0.125.
Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) See MPEP 2144.05, I.
Re Claim 6. The combination teaches wherein said graphene (Do, Fig. 2A & 2B, item 230) comprises solution-exfoliated (a product-by-process limitation) graphene.
[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. See MPEP 2113.
Re Claim 7. The combination teaches amorphous carbon with sp2-carbon content (Do, para. 65).
Re Claims 8 and 9. Do in view of Jin does not explicitly disclose that the amorphous carbon is an annealation product of ethyl cellulose, or detailed process of annealing.
However, how the amorphous carbon is made or detailed process of annealing does not affect the patentability of the claimed composite.
Re Claim 10. Do in view of Jin does not explicitly disclose that the atomic structure of said composite is maintained during or/and after lithiation.
However, since Do in view of Jin and the claimed composite employ substantially similar materials, it is reasonable to believe that the claimed properties (atomic structure of said composite being well-maintained during or/and after lithiation) would have naturally flowed following the teachings of Do in view of Jin. See MPEP 2112.01 & In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2145 & Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)
Re Claim 12. Do in view of Jin does not explicitly disclose that the d-spacing along the [010] orientation of said composite is 0.648 nm.
However, since Do in view of Jin and the claimed composite employ substantially similar materials, it is reasonable to believe that the claimed properties (the d-spacing along the [010] orientation of said composite being 0.648 nm) would have naturally flowed following the teachings of Do in view of Jin.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Newly cited reference, Jin addresses the new limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
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.
The rejections above rely on the references for all the teachings expressed in the text of the references and/or one of ordinary skill in the art would have reasonably understood from the texts. Only specific portions of the texts have been pointed out to emphasize certain aspects of the prior art, however, each reference as a whole should be reviewed in responding to the rejection, since other sections of the same reference and/or various combinations of the cited references may be relied on in future rejections in view of amendments.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN E YOON whose telephone number is (571)270-5932. The examiner can normally be reached Monday-Friday 9 AM- 5 PM.
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/KEVIN E YOON/Primary Examiner, Art Unit 1735
2/4/2026