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 .
DETAILED ACTION
This Office Action is in response to the communication filed on 12/14/25. Applicant’s arguments have been considered but are not found persuasive. Claims 1-15 are pending. This Action is FINAL, as necessitated by amendment.
Note in the “Telephone Interview Summary with Examiner” filed on 12/14/25, Applicant states the Examiner provided a definition of “3D network”. Examiner disagrees. The Examiner stated “3D network” may be given the broadest reasonable interpretation. The Examiner did not provide a specific definition for “3D network”. Examiner notes Figure 6 is a 2D illustration. Furthermore, see the Interview Summary Record of 11/5/25.
Claims Analysis
All amended claims must be marked up correctly in any subsequent response in order to avoid receiving a notice of non-compliant amendment.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,728,486 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because both require a nanoporous carbon composite comprising a nanoporous carbon phase, an active electrode material, one or more additives and micro-cracks distributed throughout the nanoporous carbon composite.
Note the terminal disclaimer filed on 9/2/25 was “disapproved” in the communication of 9/10/25 as the request was not accompanied by the required fee. The Office communication of 9/10/25 states “Please make corrections as suggested above and also resubmit the TD”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 has been amended to recite the micro-cracks “are interconnected through the nanoporous carbon phase to form a 3D interconnected network for facilitating electrolyte diffusion”, which is not supported by the specification as filed.
[0056] of the present specification discloses micro-cracks distributed among the active electrode particles. [0058] discloses the scale of micro-cracks is a function of the size of solid ingredients, chemical composition of PI, composition of NCC, and carbonization condition. For example, when the mass ratio of PI in NCC is sufficiently low to form only a thin binding layer between the particles in the solid ingredients, such that some parts of the particles are more nearly in physical contact with each other, the scale of micro-cracks is in the order of particle sizes. When the mass ratio of PI in NCC is sufficiently high such that the PI forms a continuous phase to encapsulate individual particles in the solid ingredients, there may not be obvious micro-cracks in NCC. However, when a small percentage of short activated carbon fibers with average length in the range of 0.2-1.0 mm is incorporated to limit the NCC shrinkage while the PI composition in NCC is relatively high, the scale of micro-cracks may reach hundreds of microns. In such a case, the micro-cracks tend to occur on the interfaces of fiber due to relatively weak binding of the nanoporous carbon phase to the fiber surfaces. [0060] of the present specification teaches facilitating the micro-crack growth on the fiber interface. None of the cited paragraphs provide support for “the micro-cracks are interconnected through of the nanoporous carbon phase to form a 3D interconnected network” of amended claim 1. Examiner requests Applicant identify the section of the specification that provides support for presently amended claim 1.
Figure 6 of the present specification does not provide support for the limitation the micro-cracks “are interconnected through the nanoporous carbon phase to form a 3D interconnected network for facilitating electrolyte diffusion”. Figure 6 is a 2D illustration and does not show micro-cracks interconnected through the nanoporous carbon phase. Furthermore, Figure 6 depicts an illustration of a monolithic NCC electrode disposed on a current collector. At least claim 1 is not directed toward a monolithic NCC electrode. Claim 1 is directed toward a nanoporous carbon composite.
[0021] of the present specification discloses the micro-cracks are distributed throughout the nanoporous carbon composite. Distributed throughout is not equated to interconnected throughout. [0057] states the micro-cracks of NCC are formed during the carbonization due to shrinkage of the nanoporous carbon phase, while overall shrinkage of NCC is obstructed by the solid ingredients. See also [0058]. [0059] of the present specification teach the micro-cracks are desirable for NCC to facilitate the electrolyte diffusion within the electrode. [0066] discloses micro-cracks derived 3D network in NCC may effectively reduce the electrolyte diffusion resistance.
Neither the cited sections of the specification nor Figure 6 provide support for the limitation the micro-cracks “are interconnected through the nanoporous carbon phase to form a 3D interconnected network for facilitating electrolyte diffusion”.
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) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park US 2022/0255053 A1.
Park teaches an electrode including a metal current collector and an active material layer on the current collector. The active material layer may include islands of material separated by cracks, where the islands may include silicon (active material), pyrolyzed binder (carbon phase), and conductive additives (one or more additives). At least a portion of the additives bridge the cracks of the active material layer and the additives may include between 1% and 40% of the active material layer. The active material layer may include between 20% to 95% silicon. The conductive additives may include carbon nanotubes and/or graphene sheets. The conductive additives may include metal, such as one or more of: gallium, indium, copper, aluminum, lead, tin, and nickel. The metal may include a transition metal, and/or one or more semiconductors. The conductive additives may include long narrow filaments with an aspect ratio of 20 or greater (Abstract). The electrode material may be a silicon-carbon composite [0030]. See Figures 3 and 4 wherein the active material layer 301/401 includes the islands 307/407 and the cracks 305/405. The cracks are bounded by a surface of the long narrow filaments of the conductive additive (Figure 4). The Figures clearly show the cracks are interconnected to form a three dimensional network. [0031-033] teaches the pyrolyzed binder may be PAI (polyamide-imide) or PI (polyimide).
The conductive structural additives may comprise between 1 and 40% by weight of the anode composition, with between 50% and 99% silicon by weight. The fibrous (1D) particles may have an aspect ratio of at least 4, but may be higher than 10, higher than 20, or higher than 40, for example, and may comprise a tubular or fiber-like conductive structure with nanoscale size in two-dimensions, where carbon-based examples comprise carbon nanotubes, carbon nanofibers (CNF), and vapor grown carbon fibers (VGCP). Other fibrous structures are possible, such as metals, metal polymers, metal oxides. The active material may comprise 3D conductive structural additives, where the material is not limited to nanoscale in any one dimension. In a 3D additive example, one dimension of the structure may be at least 4×, at least 10×, or at least 20× that of the other two dimensions, where none of the dimensions are of nanoscale size. Examples of 3D conductive structural additives may be “chunks” of carbon, metal, metal polymer, or semiconductors [0034-0036]. The silicon active material powder may have a particle size of 5-30 mm [0027].
The cracks in the active material layers may range from sub-micron size (less than 1 micron) to several microns across, as shown by the various dimensions shown in the SEM images, and even above 10 microns. In addition, the cracks may extend partway through the thickness of the active material layers or may extend all the way down to the current collectors [0045]. The additives 409 are large enough that a least a portion of the additives extend from within islands 407 and bridge across the cracks 405 [0047]. A total solid content of the binder is 15-30% [0027].
Park does not explicitly teach an average pore size of the nanoporous carbon phase is in a range of 0.5 nm to 4 nm. However, the invention as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made because Park teaches at [0039] and [0042] the active material is mixed with a binder/resin (such as PI, PAI), solvent and conductive and structural additive. The mixture is then pyrolyzed by heating to 500-1000°C such that carbon precursors (PI binder/resin) are partially or completely converted. One of skill would have found the claimed average pore size of the nanoporous carbon phase obvious in view of the teaching of Park that a precursor material such as PI or PAI is mixed with the components of the active material and then pyrolyzed by heating to 500-1000°C such that carbon precursors (PI or PAI) are partially or completely converted.
Note the present specification teaches the nanoporous carbon phase (derived from PI) is obtained by heating the PI precursor at a temperature range of 700-1000°C (pyrolysis). See also at least claim 12 of the presently claimed invention. One of skill would have reasonably expected the PI carbon precursor of Park pyrolyzed by heating to 500-1000°C to have the same or similar average pore size as that of the PI precursor of the present invention heated at a temperature range of 700-1000°C.
The claims contain product-by-process limitations that have not been given patentable weight. "[E]ven 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).
Response to Arguments
Applicant's arguments filed 12/14/25 have been fully considered but they are not persuasive.
Applicant asserts, in Park’s teaching, the three dimensional network is formed by physical cross-linking of the cracks. Further, the pyrolyzed binder in one island is isolated and discontinued from the pyrolyzed binder outside of the island. In other words, the carbon phase derived from the pyrolyzed binder becomes discontinuous due to the island formation”. However, Applicant does not provide support for these assertions. It is unclear how Applicant concludes Park teaches “the three dimensional network is formed by physical cross-linking of the cracks”. It is unclear how Applicant concludes “the pyrolyzed binder in one island is isolated and discontinued from the pyrolyzed binder outside of the island”.
Applicant argues “In FIG. 3 of Park’s patent application, the active material layer seems less than 100 mm thick”. It is unclear how this argument is applicable to at least claim 1 that is directed toward “a nanoporous carbon composite”. Applicant cites [0045] and [0046] of Park but does not provide any specific arguments attempting to distinguish the claimed invention over Park. Furthermore, Examiner has previously addressed these sections of Park (see below). Again, Figure 6 of the present application is a 2D illustration.
Applicant’s arguments regarding “conventional carbon composites” are not found persuasive as no support is provided for the arguments. It is unclear if Applicant is asserting Park teaches a carbon aerogel material. If this is the case, Examiner requests Applicant identify the relevant section of Park. Furthermore, Examiner requests Applicant identify the relevant section of Park that teaches the “carbon phase is a rigid phase”, as asserted by Applicant. Both the present invention and Park teach the carbon phase is derived from a polyimide that is pyrolyzed.
Applicant’s arguments regarding the chemical composition or corresponding molecular structure of PI or PAI resin are not found persuasive and have been previously addressed (see below).
To clarify the record, Examiner suggested the Applicant amend the claims to be commensurate in scope with Applicant’s arguments regarding the morphology of the nanoporous carbon composite. Furthermore, any claim amendment must find support in the specification as filed. The added limitation to claim 1 does not find support in the specification as filed. As stated above, Figure 6 is a 2D illustration that does not provide support for the micro-cracks are interconnected through the nanoporous carbon phase to form a 3D interconnected network. Paragraph 56 discloses the micro-cracks form a 3D network. It is unclear how Applicant concludes the disclosure of the micro-cracks form a 3D network provides support for the micro-cracks are interconnected through the nanoporous carbon phase. Furthermore, Park discloses the active material layer may include islands of material separated by cracks. Park is not limited to any specific embodiment. Examiner further notes Figure 4 of Park is a 3D illustration.
Park teaches the cracks in the active material layers may range from sub-micron size (less than 1 micron) to several microns across, as shown by the various dimensions shown in the SEM images, and even above 10 microns. In addition, the cracks may extend partway through the thickness of the active material layers or may extend all the way down to the current collectors [0045]. Applicant has not addressed this teaching of Park. It is unclear how Applicant concludes [0046] of Park teaches the pyrolyzed binder does not form a continuous carbon phase throughout the composite.
Furthermore, Park teaches at [0039] and [0042] the active material is mixed with a binder/resin (such as PI, PAI), solvent and conductive and structural additive. The mixture is then pyrolyzed by heating to 500-1000°C such that carbon precursors (PI binder/resin) are partially or completely converted. One of skill would have found the claimed average pore size of the nanoporous carbon phase obvious in view of the teaching of Park that a precursor material such as PI or PAI is mixed with the components of the active material and then pyrolyzed by heating to 500-1000°C such that carbon precursors (PI or PAI) are partially or completely converted. Note the present specification teaches the nanoporous carbon phase (derived from PI) is obtained by heating the PI precursor at a temperature range of 700-1000°C (pyrolysis). See also at least claim 12 of the presently claimed invention. One of skill would have reasonably expected the PI carbon precursor of Park pyrolyzed by heating to 500-1000°C to have the same or similar average pore size as that of the PI precursor of the present invention heated at a temperature range of 700-1000°C. It is unclear how Applicant concludes the same or similar process results in Park having a nanoporous carbon composite with a different morphology than that of the presently claimed invention.
Applicant arguments rely mostly on the 2D figure of the present specification and the 3D figure of Park. The arguments are not found persuasive. Furthermore, the claims are not directed toward an active material layer on a current collector. At least claim 1 is directed toward a nanoporous carbon composite, unlike the much broader electrode comprising the nanoporous carbon composite. In addition, at least Figure 6 of the present specification does not show the top surface, therefore, Applicant cannot properly conclude “islands” are not present in the electrode of Figure 6. Applicant does not provide proper support and/or evidence to support the conclusions reached regarding the teachings of Park.
Applicant previously argued “depending on the molecular composition, the PI or PAI may comprise flexible polymer chain structures or rod-like rigid polymer chain structure like the one used in the present patent application”. Examiner notes this argument is not commensurate is scope with at least claim 1. Furthermore, this argument does not appear to be supported by evidence and/or by the present specification. Applicant argued “depending on the molecular composition of the binder and pyrolysis conditions, the morphology of the carbon derived from the pyrolyzed binder may be different, leading to different materials”. The assertion that the morphology “may” be different is not found persuasive and is not supported by evidence. Furthermore, the argument does not appear to be commensurate is scope with at least claim 1. Applicant argued “Park’s disclosure does not disclose the molecular composition of PI or PAI. Thus, Park’s teaching does not teach the morphology or property of the glassy carbon derived from the pyrolyzed binder”. It is unclear how Applicant reaches this conclusion. No support or evidence is provided against the obviousness rejection in view of Park. One of skill would have found the claimed average pore size of the nanoporous carbon phase obvious in view of the teaching of Park that a precursor material such as PI or PAI is mixed with the components of the active material and then pyrolyzed by heating to 500-1000°C such that carbon precursors (PI or PAI) are partially or completely converted.
Examiner noted [0046] of the present specification discloses the PI as carbon precursor is prepared from pyromellitic dianhydride (PMDA) and 1,4-phenylene diamine (PPD) in NMP solvent to produce a non-melting PI precipitate with a rigid chain structure, which remains in solid state before reaching the carbonization temperature at around 500-550°C. It is well known in the art that polyimides (PIs) are high-performance polymers characterized by repeating imide groups in their backbone, often formed by the reaction of diamines and dianhydrides. They are known for their excellent thermal stability, mechanical strength, and chemical resistance (Wikipedia printout for “Polyimide” and/or AI Overview when Google “polyimide molecular structure”). It is unclear how Applicant concluded Park teaches the PI or PAI precursors have a “flexible” morphology and/or do not have a “rod-like rigid” morphology.
Applicant asserted “Park’s pyrolyzed carbon is a product-by-process. Because Park neither describes composition of the starting material for the pyrolyzed carbon nor describe well the carbonation conditions, the morphology of pyrolyzed carbon is not defined. Thus, the nanoporous carbon phase in the present patent application does not infringe with Park’s pyrolyzed carbon even though the carbon preparation process in Park’s teaching is similar to that of the present patent application”. It is unclear what Applicant intended to argue and the assertions are not commensurate in scope with at least claim 1. Again, arguments made by Applicant have not been properly supported.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRACY DOVE whose telephone number is (571)272-1285. The examiner can normally be reached M-F 9:00-3:00.
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/TRACY M DOVE/ Primary Examiner, Art Unit 1725