DETAILED ACTION
Election/Restrictions
Newly submitted claims 33-34 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the claims to the different species recite the mutually exclusive characteristics of such species – the original claims recite a size distribution being in a range of 10 nm to 30 nm for the crystalline Si domains (claims 7 and 22), whereas claims 33-34 recite a size distribution being in a range of 40 nm to 50 nm.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 33-34 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Newly submitted claims 28-32 are directed to an invention that is independent or distinct from the invention originally claimed for at least the following reasons: the claims to the different species recite the mutually exclusive characteristics of such species – the original claims recite a size distribution being in a range of 10 nm to 30 nm for the crystalline Si domains (claims 7 and 22), whereas the newly added invention encompassing claims 28-32 requires a size distribution being in a range of 40 nm to 50 nm.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 28-32 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Status of Claims
Claims 1-3, 5-7, 16, 19-22 and 28-34 are pending, wherein claims 1, 7, 16 and 22 are amended, and claims 28-34 are newly added. Claims 28-34 are withdrawn. Claims 1-3, 5-7, 16 and 19-22 are being examined on the merits in this office action.
Remarks
Applicant’s amendments and arguments have been entered. A reply to the Applicant’s remarks/arguments is presented after addressing the claims.
Any rejections and/or objections made in the previous Office Action and not repeated below, are hereby withdrawn in view of Applicant’s amendments or/and arguments.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. References cited in the current Office action can be found in a prior Office action. Reference not previously cited can be found per the attached PTO-892 for this Office action.
Claim Objections
Claims 1 and 16 are objected to because of the following informalities:
A claim in a utility application or patent typically has three main parts: preamble, transitional phrase, and claim body. See CFR 1.75 and MPEP 608.01(M), § 2111.03. In claims 1 and 16, a transitional phrase does not exist.
Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Furuya et al. (US 20160141600 A1, hereafter Furuya) in view of Choi et al. (US 20180342757 A1, hereafter Choi) and Oh et al. (KR 102185490 B1, whose English equivalent US 20210184204 A1 is being employed for citation purposes, hereafter referred to as Oh).
Regarding claim 1, Furuya teaches a composition formed of a Si/SiO2 composite network with crystalline (“crystals”, [0047]) Si domains embedded within an amorphous SiO2 matrix (See, e.g., “dispersed”, etc. in [0046]; “amorphous” in [0043] and [0048]).
Furuya is silent as to the Si/SiO2 composite network having a nanoporous structure. In the same field of endeavor, Choi discloses a similar structure, wherein silicon is dispersed in silicon dioxide ([0034], L3), and the structure (“first core 111”, [0032] and Fig. 1) has a porous structure for the benefit of increasing the contact area between an electrolyte and an electrode such that lithium ions can be rapidly diffused ([0037]) as well as others (See, e.g., [0038]) . It would have been obvious to one of ordinary skill in the art to have modified Furuya such that a porous structure of Si/SiO2 composite network is employed in a Li-ion battery, as taught by Choi, in order to achieve benefits/advantages stated above. Furthermore, although Choi appears silent as to a nanoscale porous structure, one of ordinary skill in the art would readily appreciate that the pores are generally on a nanoscale, as exemplified by Oh. Oh teaches a similar anode material comprising silicon and silicon oxide with pore size on a nanoscale (See, at least, Abstract). As such, it would have been obvious to one of ordinary skill in the art to have further modified Furuya in view of Choi such that a nanoporous structure is employed, as taught by Oh, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. MPEP § 2144.07.
The recitation “for use as an anode material for a Li-ion battery” reflects only a preamble statement of an intended use of the claimed composition, which does not limit the scope of the claim. See MPEP § 2112.
The recitation “the anode material … generated by magnesiothermic reduction of a SiO2 constituent in a silicon-containing precursor having an intrinsic porous or layered structure, wherein the precursor is reduced to form a Si/SiO2 composite network with crystalline Si domains embedded within an amorphous SiO2 matrix” represents a product-by-process limitation. However, even 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. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. In the instant case, Furuya as modified teaches all the claimed structural/composition limitations as claimed and thus the claim is met.
Moreover, the limitation “the nanoporous structure buffers Si volume expansion during cycling” represents function, characteristic or property of the nanoporous structure as claimed. Since Furuya as modified teaches the same nanoporous structure as claimed, the above-stated function, characteristic or property is expected to be present. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (See MPEP § 2112.01, I.).
Regarding claims 2-6, Furuya as modified teaches the composition of claim 1, and the claim limitations recited in claims 2-6 are associated with the process to produce the composition. Again, the determination of patentability is based on the product itself. The patentability of a product does not depend on its process of production. See MPEP § 2113.
Regarding claim 7, Furuya as modified teaches the composition of claim 1, wherein the crystalline Si domains have a size distribution in a range of 1 nm to 50 nm ([0047], Furuya). The claimed range of 10 nm to 30 nm lies inside the range of 1 nm to 50 nm. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 16, Furuya in view of Choi and Oh teaches an anode for a Li-ion battery (See, e.g., “negative electrode”, “… to a current collector when an electrode is produced”, etc., [0044], Furuya) comprising a Si/SiO2 composite network with crystalline (“crystals”, [0047], Furuya) Si domains embedded within an amorphous SiO2 matrix (See, e.g., “dispersed”, etc. in [0046]; “amorphous” in [0043], Furuya). As to “the Si/SiO2 composite network having a nanoporous structure”, referring to the rejection of claim 1, which is incorporated here.
The recitation “the Si/SiO2 composite network is generated by magnesiothermic reduction of a SiO2 constituent in intrinsically porous diatomite or intrinsically layered montmorillonite” represents a product-by-process limitation. However, even 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. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113.
Moreover, the limitation “the nanoporous structure buffers Si volume expansion during cycling” represents function, characteristic or property of the nanoporous structure as claimed. Since Furuya as modified teaches the same nanoporous structure as claimed, the above-stated function, characteristic or property is expected to be present. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (See MPEP § 2112.01, I.).
Regarding claims 19-21, Furuya as modified teaches the anode of claim 16, and the claim limitations recited in claims 19-21 are associated with the process to produce the composition. Again, the determination of patentability is based on the product itself. The patentability of a product does not depend on its process of production. See MPEP § 2113.
Regarding claim 22, Furuya as modified teaches the composition of claim 16, wherein the crystalline Si domains have a size distribution in a range of 1 nm to 50 nm ([0047], Furuya). The claimed range of 10 nm to 30 nm lies inside the range of 1 nm to 50 nm. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Response to Arguments
Applicant's arguments filed Sep. 1, 2026 have been fully considered but they are not persuasive.
Applicant's arguments are based on the claims as amended. The amended claims have been addressed in the new rejections above. In addition:
In response to the argument with respect to the size of silicon particles, it is noted that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments, consult Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.1989).
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 ZHONGQING WEI whose telephone number is (571)272-4809. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727
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