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 with traverse of Group I and the species of the inert configuration, which reads on claims 1-7 and 10-13, in the reply filed on 11/26/2025 is acknowledged. The traversal is on the ground(s) that the Examiner has not set forth proper reasons why there is a search and/or examination burden.
This is not found persuasive because the Office action explained that there may be a serious search and/or examination burden if the inventions have acquired a separate status in the art in view of their different classification or the inventions require a different field of search. Section 1 of the restriction requirement shows that the inventions have different classification, and therefore the Examiner has shown reasons why there is burden as to the Groups I through III. As to the species election, applicants’ arguments are also unpersuasive as the Examiner would have to employ different search queries in order to find the activated state species as this would require the examiner to search for at least an oxidizer in the internal pores, while that would not be the case if the inert state was elected.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8, 9 and 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions/species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/26/2025. Please note that the Examiner is interpreting claims 8 and 9 as requiring the presence of the oxidizer.
Drawings
The drawings are objected to because the numbering of the drawings sheets is not in accordance with 37 CFR 1.84(t) because “1/X” etc. is not proper numbering.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 6, 11 and 13 are objected to because of the following informalities:
In claim 6, the phrase “of an internal surface” is objected to grammatically. The objection can be overcome by changing the phrase to “on an internal surface” which is how the claim will be interpreted.
In claim 11, the phrase “a ratio of particles to polymeric binder” is objected to grammatically. The objection can be overcome by changing the phrase to “a ratio of the plurality of metal or metalloid fuel particles to the polymeric binder” which is how the claim will be interpreted.
In claim 13 on line 2, the phrase “A composite” is objected to as the letter ‘a’ should not be capitalized.
In claim 13, the phrase “each particles being a metal or metalloid fuel with” is objected to grammatically. The objection can be overcome by changing the phrase to “each particle being a metal or metalloid fuel particle with” which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-12 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.
In claim 1, the phrase “wherein when the composite ink is configured to be free of an oxidizer when the composite ink is in an inert state” renders the claim indefinite because there are two “when” statements that do not make sense together because a “when” statement should be followed by a “then” statement. Also, the limitations of when the composite ink “is configured to be free of an oxidizer” when in the inert state does not make sense because either the ink has the oxidizer or not, and the inert state is dependent on the presence of the oxidizer and not the other way around. This rejection can be overcome by changing the phrase to “wherein the composite ink is free of an oxidizer when the composite ink is in an inert state” which is how the claim will be interpreted.
In claim 6 on line 2, the phrase “the pore” lacks antecedent basis in the claims. The rejection can be overcome by changing the phrase to “each internal pore” which is how the claim will be interpreted.
Claim Rejections - 35 USC § 102
Claims 1-3, 6 and 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Subramanian et al. (7,942,988).
With regard to claims 1-3, 6 and 12, Subramanian et al. teach a fuel system that includes a flexible fuel that reads on applicants’ composite ink and includes porous silicon particles having mean pore sizes in the range of from 4-7 nm, which read on applicants’ plurality of metalloid fuel particles having a plurality of internal pores and being nano-porous, and a polymeric binding material, which reads on applicants’ polymeric binder that is permeable to a desired solvent (col. 3, lines 28-45). There is no metal oxide present and the particle have a hydrogen terminated surface, which means it will inherently have hydrogen termination on an internal surface of the pores (col. 4, lines 28-31). The flexible fuel may be shaped by melting the polymeric binding material, which means the flexible fuel reads on a solid ink, and can be formed without the addition of an oxidizer, which reads on applicants’ inert configuration (col. 5, lines 34-47).
With regard to claims 10 and 13, there may also be an oxidizer mixed with methanol solvent that acts as a carrier for carrying the oxidizer into the pores of the silicon particles, which with the plastic mass of Example 1 reads on applicants’ kit including oxidizer solution and desired solvent (col. 4, lines 54-65 and col. 6, lines 19-26 and 43-45).
With regard to claim 11, the mixture of Example 1 formed into a plastic mass has a ratio of porous silicon powder to PTFE polymeric binder of 10:1, which would be a weight ratio of approximately 91%:9% (col. 6, lines 18-26).
Claims 1, 2, 11 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abe et al. (JP 2004-010434), machine translation included.
With regard to claims 1, 2, 11 and 12, Abe et al. teach a mixture, which reads on applicants’ composite ink, having an aqueous solution of binders, which reads on applicants’ polymeric binder permeable to a desired solvent as the claim does not limit the solvent that can be used, with a powdery activated carbon, which reads on applicants’ plurality of metalloid fuel particles as carbon can release energy upon burning [0011]. The powdery activated carbon has pores, which reads on applicants’ plurality of internal pores [0016]. There is no metal oxide or oxidizer in the mixture and Example 1 in Table 1 has a weight ratio of approximately 94% activated carbon to 6% polymeric binder [0019] and [0021].
Claims 1-3, 6 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhou et al. (US 2013/0252101).
With regard to claims 1-3, 6 and 12, Zhou et al. teach a composition, which reads on applicants’ composite ink, having nanoporous silicon structures, which reads on applicants’ plurality of metalloid fuel particles having a plurality of internal pores, mixed with a binder that may be PVDF, which reads on applicants’ polymeric binder permeable to a desired solvent as the claim does not limit the solvent that can be used [0006] and [0055]. There is no metal oxide or oxidizer in the composition. Since the nanoporous silicon is formed by etching silicon with hydrofluoric acid, the etched particles will inherently possess hydrogen termination on the internal surfaces of the pores.
Claim Rejections - 35 USC § 103
Claim 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Subramanian et al. (7,942,988).
With regard to claim 4, Subramanian et al. teach all of the limitations of claim 1 above. They also teach that the average pore size is from 4-7 nm (col. 3, lines 30-33).
This value overlaps with the range claimed, which means a prima facie case of obviousness exists.
It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 5, Subramanian et al. teach pore volumes of up to “about 0.5 cc/g”, wherein the term “about” would include amounts slightly above this value (col. 3, lines 30-33). The density of solid silicon in cc/g is approximately 0.429. They also teach that porosity can be adjusted to tailor the reaction rate (col. 5, lines 18-20); however, Subramanian et al. does not specifically teach the porosity claimed.
It would have been obvious to one having ordinary skill in the art to have made the pore volumes slightly higher than 0.5, such as 0.525, as suggested by the reference in order to increase the reaction rate of the fuel. This pore volume would be approximately a porosity of 55%, i.e. = 0.525/(0.525+0.429). One of ordinary skill would understand that a higher porosity would have a higher surface area and would lead to a higher reaction rate.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Abe et al. (JP 2004-010434).
Abe et al. teach all of the limitations of claim 1 above. They also teach that the particles have a specific surface area of 1400 m2/g and a median pore size of 30 Angstroms, but they do not specifically teach the average pore diameter and porosity claimed.
It would have been obvious to one having ordinary skill in the art to have made the median pore diameter the same as the average pore diameter so that the pore distribution of sizes was consistent and would lead to predictable properties for the carbon. An average pore size of 30 Angstroms is 3 nm.
Given the values of specific surface area, median pore size and the density of solid activated carbon being 0.476 cc/g, this would mean the activated carbon of Abe et al. would have a porosity of approximately 69%, i.e. pore volume Vp = (3 x 10-9 m x 1400 m2/g)/4 and using this in the equation porosity = Vp/(Vp + carbon solid volume).
Claims 4, 5, 7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al. (US 2013/0252101).
With regard to claims 4 and 7, Zhou et al. teach all of the limitations of claim 1 above. They also teach that the nanoporous silicon particles can have a mean diameter of 100 nm or less and the pores can have a mean diameter of 1 to 200 nm [0047]. This overlap with the ranges of claims 4 and 7, which means a prima facie case of obviousness exists.
It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 5, Zhou et al. teach that silicon with high porosity is beneficial for stabilizing the electrode structure [0040]; however, they do not specifically teach the porosity claimed.
It would have been obvious to one having ordinary skill in the art to have made the porosity of the nanoporous silicon any high amount, including from 55 to 75% as claimed, such that the porosity was sufficiently high to provide the proper stability when employed in a lithium ion battery.
With regard to claim 11, Zhou et al. teach that the binder can be present at 5-25 wt% of a composition including the nanoporous silicon structures [0055]; however, they do not specifically teach the binder amount when the composition only has the nanoporous silicon structures and the binder.
It would have been obvious to one having ordinary skill in the art to have added the binder to the nanoporous silicon in the same proportion as taught as the reference, i.e. 5-25 wt% binder with 95-75 wt% nanoporous silicon, in order to form an electrode as much active material as possible, while not making the binder so small that the electrode was not cohesive. The Examiner notes that the weight percent of binder and nanoporous silicon would then overlap with the range for the ratio of weight percentages claimed, and therefore a prima facie case of obviousness exists.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm (variable one work-at-home day).
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/Gerard Higgins/Primary Examiner, Art Unit 1785