CTNF 18/022,971 CTNF 92217 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Election/Restrictions 08-25-01 AIA Applicant’s election without traverse of Group I, claims 1-3, 5-7, 16 and 19-22 in the reply filed on Jan. 23, 2026 is acknowledged. 08-06 AIA Claim s 8-15 and 17-18 are canceled by Applicant. Claims 23-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention , there being no allowable generic or linking claim. Election was made without traverse in the reply filed on Jan. 23, 2026 . Information Disclosure Statement The information disclosure statement (IDS) submitted on Feb. 23, 2023 has been considered by the examiner. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-12-aia AIA (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claim Rejections - 35 USC § 103 07-20-fti The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. 07-23-fti The factual inquiries set forth in Graham v. John Deere Co. , 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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. 07-20-02-fti This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a). Claim Rejections - 35 USC § 102/103 07-27-aia AIA Claim s 1-6 are rejected under 35 U.S.C. 102( 1) or 102(2 ) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Furuya et al. (US 20160141600 A1, hereafter Furuya ) . Regarding claim 1 , Furuya teaches a composition formed of a Si/SiO 2 composite network with crystalline (“crystals”, [0047]) Si domains embedded within an amorphous SiO 2 matrix (See, e.g., “dispersed”, etc. in [0046]; “amorphous” in [0043]). 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 is generated by magnesiothermic reduction of a 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. Regarding claims 2-6 , Furuya 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 16 , Furuya teaches an anode for a Li-ion battery (See, e.g., “negative electrode”, “… to a current collector when an electrode is produced”, etc., [0044]) comprising a Si/SiO 2 composite network with crystalline (“crystals”, [0047]) Si domains embedded within an amorphous SiO 2 matrix (See, e.g., “dispersed”, etc. in [0046]; “amorphous” in [0043]). The recitation “the Si/SiO 2 composite network is generated by magnesiothermic reduction of a SiO 2 constituent in diatomite or 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. Regarding claims 19-21 , Furuya teaches the composition 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 . Claim Rejections - 35 USC § 103 07-21-aia AIA Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Furuya . Regarding claim 7 , Furuya 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]). 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) . 07-21-aia AIA Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Furuya . Regarding claim 22 , Furuya 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]). 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). Correspondence 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. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (571)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ZHONGQING WEI/Primary Examiner, Art Unit 1727 Application/Control Number: 18/022,971 Page 2 Art Unit: 1727 Application/Control Number: 18/022,971 Page 3 Art Unit: 1727 Application/Control Number: 18/022,971 Page 4 Art Unit: 1727 Application/Control Number: 18/022,971 Page 5 Art Unit: 1727 Application/Control Number: 18/022,971 Page 6 Art Unit: 1727 Application/Control Number: 18/022,971 Page 7 Art Unit: 1727 Application/Control Number: 18/022,971 Page 8 Art Unit: 1727
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