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 .
Election/Restrictions
Applicant’s election without traverse of species c) claims 11 and 12 in the reply filed on January 27, 2026 is acknowledged.
Claims 3-5 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 27, 2026.
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, 2, 7, 9, and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 18 of copending Application No. 17/042,770 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are substantially similar to the instantly claimed invention. While the copending claims fail to expressly teach the presence of a conductive additive material, use of such conductive additive materials in anode active material is conventionally known and thus would have been obvious to employ. It is noted that the examples (e.g. Example 5) of the copending application utilize a carbon black conductive assistant when the porous amorphous silicon is utilized in a lithium ion battery (par. 60). Not only would it have been obvious to utilize such a conductive additive, but clearly Applicant has envisaged such a configuration and one or ordinary skill would have expected such a combination to yield predictable results and a reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented; however, it is noted that the claims have already been allowed and the issue fees have been paid February 25, 2026. Once the reference application is patented, the instant double patenting rejection would no longer be “provisional.”
Claim Rejections - 35 USC § 102
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 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 –
(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.
Claim(s) 1, 2, 6, 7, 9, and 11-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okada et al (WO 2020/194794; references made herein are with respect to EP 3950587, which is considered to be an English language equivalent of the international publication).
Regarding claims 1, 2, 11, and 12, Okada teaches a porous amorphous silicon (title) having a mean lamellar diameter and a mean column diameter of about 10 nm (par. 48). Regarding claims 7, 9, and 14, and further regarding claim 1, Okada teaches a lithium ion battery using the porous amorphous silicon, wherein a carbon black conductive assistant is added with the porous amorphous silicon particles (par. 62), thus constituting the instantly claimed “conductive additive.”
Regarding claims 6 and 13, Okada teaches that the porous amorphous silicon has a mean porosity of 50-99% (par. 39).
Claim(s) 1, 2, 6, 7, 9, and 11-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhao et al (“Layered amorphous silicon as negative electrodes in lithium-ion batteries,” of record in the IDS filed June 5, 2025).
Regarding claims 1, 2, 9, 11, and 12, Zhao teaches amorphous silicon powder for use as negative electrode in lithium-ion batteries (title and abstract). As can be seen in Figures 2a-c and 8b, the silicon particles contain lamellar protrusions that are less than 100 nm in diameter. Figure 2a further appears to show columnar protrusions having diameters less than 100 nm. Regarding claims 7 and 14 and further regarding claim 1, Zhao teaches that the silicon particles are mixed with graphite (page 295, second col.), thus constituting a conductive additive.
Regarding claims 6 and 13, Zhao teaches a void space (porosity) of 70% (page. 296).
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.
Claim(s) 8 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okada et al (WO 2020/194794; references made herein are with respect to EP 3950587, which is considered to be an English language equivalent of the international publication) as applied to claims 1 and 2 above, and further in view of Sakabe et al (“Porous amorphous silicon film anodes for high-capacity and stable all-solid-state lithium batteries,” of record in the IDS filed March 21, 2023).
Okada teaches a lithium-ion secondary battery anode material according to instant claims 1 and 2, as shown above.
Okada does not expressly teach that the anode active material is used with a solid electrolyte.
Sakabe, in a similar invention directed toward porous amorphous silicon anodes (title), teaches that use of silicon as an anode material exhibits better cycling performance in solid electrolytes than liquids. Specifically, silicon nanostructures can relieve deformation-induced stress and enhance cycling performance (abstract).
Regarding claims 8 and 15, it would have been obvious to one of ordinary skill in the art to utilize the porous amorphous silicon particles of Okada in a battery having a solid electrolyte in order to take advantage of the benefits of using silicon nanostructures, as taught by Sakabe.
Claim(s) 8 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al (“Layered amorphous silicon as negative electrodes in lithium-ion batteries,” of record in the IDS filed June 5, 2025) as applied to claims 1 and 2 above, and further in view of Sakabe et al (“Porous amorphous silicon film anodes for high-capacity and stable all-solid-state lithium batteries,” of record in the IDS filed March 21, 2023).
Zhao teaches a lithium-ion secondary battery anode material according to instant claims 1 and 2, as shown above.
Zhao does not expressly teach that the anode active material is used with a solid electrolyte.
Sakabe, in a similar invention directed toward porous amorphous silicon anodes (title), teaches that use of silicon as an anode material exhibits better cycling performance in solid electrolytes than liquids. Specifically, silicon nanostructures can relieve deformation-induced stress and enhance cycling performance (abstract).
Regarding claims 8 and 15, it would have been obvious to one of ordinary skill in the art to utilize the porous amorphous silicon particles of Zhao in a battery having a solid electrolyte in order to take advantage of the benefits of using silicon nanostructures, as taught by Sakabe.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLIN W SLIFKA whose telephone number is (571)270-5830. The examiner can normally be reached Monday-Friday, 9:00 AM-5:30 PM.
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/Colin W. Slifka/ Primary Examiner, Art Unit 1732