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 claims 1-8 and 16-20 in the reply filed on January 20, 2026 is acknowledged with appreciation. Accordingly, claims 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 1-8 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 19-20 of copending Application No. 17/906,770 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and the reference claims are directed to the same subject matter, which is a composite fiber comprising a porous silicon phase and a carbon phase wherein the silicon phase and the carbon phase form an intertwined network structure in the composite fiber such that each of the silicon phase and the carbon phase is interconnected and continuous throughout the composite fibers and wherein the silicon phase and the carbon phase together constitute at least 50 wt% of the composite fiber.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-3 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakshaug (US-2020/0152983).
Claim 1: Sakshaug teaches Si-C composite fibers comprising a silicon phase and a porous carbon phase; the silicon phase is also porous (Sakshaug, para. 0317). Sakshaug teaches making the composite fiber Park comprising infiltrating porous carbon fibers by chemical vapor deposition (“CVD”) of a silicon-based compound gas (e.g. silane, disilane, trisilane, tetrasilane, chlorosilane…) (Sakshaug, para. 0237 & 0251) to fill into the pores and onto the surface of the porous carbon (para. 0326). The method of Sakshaug is similar to the method described in the instant specification at paragraphs 0023-0025. In addition, Sakshaug states that the method provides advantages to “producing homogeneous silicon-composite particles” (para. 0250, emphasis added). Therefore, it is necessarily inherent that the silicon phase and the carbon phase form an intertwined network structure in the composite fiber such that each of the silicon phase and the carbon phase is interconnected and continuous throughout the composite fiber. With regards to the proportions of the silicon phase and carbon phase, Sakshaug teaches that the content of silicon in the composite fiber can range from 75% to 85% (para. 0337) which falls within the claimed range of at least 75 wt%, and carbon content of 30-40 wt% (para. 0378) which falls within the claimed range of 20 to 60 wt%, and based on the aforementioned proportions, the two phases constitute at least 50 wt% of the composite fiber. The silicon crystallites having an average size of 50 nm or less (para. 0537) which falls within the claimed range of 15 to 50 nm;
Claim 2: Sakshaug teaches the composite fiber having a surface area of 10 to 50 m2/g (para. 0348) which meets the claimed range of 0.1 to 0.45 m2/g; and a pore volume 0.01 to 0.2 cm3/g (para. 0340) which falls within the claimed range of up to 0.25 cm³/g. In particular, Composite samples 9, 58 and 59 with SSA of 10, 15, and 12 m2/g, respectively; and pore volume (PV) of 0.016, 0.026 and 0.02 cm3/g, respectively (Page 42, para. 0431, Table 7) fall within the claimed ranges of SSA and PV.
Claim 3: Sakshaug teaches the composite fiber having an average pore size of less than 100 nm (para. 0365) which meets the claimed range of 5 to 80 nm.
Claim 16: Sakshaug teaches an electrode active material comprising the composite fiber (Page 68).
Other Prior Art References
The electrode of Sakshaug produces lower capacity (less than 1000 mAh/g) than the claimed electrode.
PARK (US-2022/0293945): Park teaches a composite fiber comprising a porous silicon phase comprising elemental silicon; a porous carbon phase comprising elemental carbon (Park, para. 0015, 0024). With regards to the structure of the composite fiber, the method of Park comprises chemical vapor deposition of a silicon-based compound gas onto porous carbon based particle (Park, para. 0054-0064). The method of park is similar to the method described in the instant specification at paragraphs 0023-0025. In addition, Park states that the silicon-based compound gas (e.g. silane) filled in the pores and/or onto the surface of the porous carbon (Park, para. 0062). Therefore, it is necessarily inherent that the silicon phase and the carbon phase form an intertwined network structure in the composite fiber such that each of the silicon phase and the carbon phase is interconnected and continuous throughout the composite fiber. However, Park teaches against silicon crystallites having an average size of larger than 7 nm because it could easily cause cracks when making an electrode (i.e. anode) material (Park, para. 0038).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOA (Holly) LE whose telephone number is (571)272-1511. The examiner can normally be reached Monday to Friday, 10:00 am to 7:00 pm.
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HOA (Holly) LE
Primary Examiner
Art Unit 1788
/HOA (Holly) LE/Primary Examiner, Art Unit 1788