DETAILED ACTION
Drawings
The Drawings filed 21 April 2023 are approved by the examiner.
Information Disclosure Statement
The information disclosure statement(s) (IDS) is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner and an initialed copy is attached.
Priority
Receipt is acknowledged of the certified copies of papers required by 37 CFR 1.55.
Citation Notation
The following citations are made for the convenience of the reader:
Citations to PG publications are made to paragraph number under the ¶ format. Citations to other publications made under the format “ col 1/2” or pp 1 are directed to column and line number or to a page - whichever is appropriate. It is noted that any reference to a figure or a table is also directed to any accompanying text in the specification or the document. Notwithstanding those citations, the reference(s) is (are) relied upon for the teachings as a whole.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 contains numerous instances of a lack of antecedent basis and/or clarity based on the components recited:
In step d) and l), claim 1 recites “dispersing nano-silicon, anionic surfactant, and silane” and “nano-silicon”; however, the nano-silicon, anionic surfactant, and silane components were previously recited - thus the preposition “the” should be added or there is an ambiguity regarding (additional) components being cited;
In step k), the phrase “a certain size” renders the claim indefinite because the phrase does not seem to be defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention (what are the metes and bounds of “certain”?);
In step m), it is noted that a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation a nano-silicon mixture, and the claim also recites (SiO2, SiC) which is the narrower statement of the limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2-18 are dependent on claim 1 thus inherit the same deficiencies.
Claims 2-4, 6-10, 12 recite components that have been previously recited - thus the preposition “the” should be added or there is an ambiguity regarding any (additional) components being cited (see “dried coffee grounds”, “tertiary distilled water”, “silicon”, “graphite”, “polyamic acid”, “vegetable oil” and “polyvinyl alcohol”). It is noted that applicant seems to remedy the discrepancy by the phrase “described above”; however, it is suggested that a standardized form be applied.
Claim 4 recites “the aqueous solution to lower the surface tension” – there is a lack of antecedent basis.
Claim 5 recites “the inorganic surface” – there is a lack of antecedent basis.
It is noted that a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance:
claim 5 recites the broad recitation alkoxysilane, and the claim also recites (methyltrimethoxysilane: (CH3O)3SiCH3) which is the narrower statement of the limitation.
claim 6 recites the broad recitation hydroxide solution, and the claim also recites (potassium hydroxide: KOH, sodium hydroxide: NaOH, calcium hydroxide: Ca(OH)2) which is the narrower statement of the limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 6 recites “the collection to the preparation”, “the above process”, “the activated carbonization process” and “the processes” – there is a lack of antecedent basis for each instances.
Claim 12 recites “screening them” – it is unclear as to what limitation “them” is being referenced.
Claim 16 recites “the high voltage pulse” – there is a lack of antecedent basis.
Claim 17 recites “the balls and the dispersion”, “the bottom” and “the first plate” – there is a lack of antecedent basis.
Claim 18 recites “the balls” – there is a lack of antecedent basis.
Claim Rejections - 35 USC § 102 & 103
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.
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) 13-15 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Gong (CN-113353911-A, a machine translation is provided), Cho or Liu "Biowaste-derived Si@SiO x /C anodes for sustainable lithium-ion batteries. Electrochimica Acta 403 (2022) 139580.
Gong or Liu discloses a silicon anode material in a lithium ion battery with silicon material located in the pores of a carbon made from a biomass such as ground coffee (Gong: abs, pg. 1-3, examples & Liu: abs, Fig 1 with accompanying text). It is noted that claim(s) 13-15 are product-by-process claim(s), requiring a specific synthetic route instead of the process as taught by the cited reference(s). Nevertheless, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself and there is no evidence that these differences in the processes would have resulted in a different product. Until such evidence is presented, it would therefore have been obvious to one of ordinary skill in the art that the reference product reads on the claimed product. 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.
Accordingly, the reference anticipates the material limitations of the listed claims.
With respect to the 103 portion of the rejection, in the alternative that any differences can be shown for the product of the product-by-process claims, as opposed to the product taught by Gong or Liu, such differences would have been obvious to one of ordinary skill in the art as a routine modification of the product and are recognized as being well within the purview of the skilled artisan to yield predictable results. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531,535, 173 USPQ 685,688 (CCPA 1972).
Allowable Subject Matter
Claims 1-12 and 16-18 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Zhang discloses a process of making a composite fiber via mixing nanometer grade coffee, a silicon dioxide, a silane coupling agent and a surfactant and applying heat treatment; and
Cho discloses a process of making an active material for a lithium secondary battery comprising a complex of activated/porous carbon and silicon with activated stemming a carbonization of ground coffee.
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764