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 .
Continued Examination
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 21, 2025 has been entered. Claims 1-20 are pending in this application, with claims 10-20 withdrawn from consideration as directed to a non-elected invention. Claims 1-9 are examined herein, and they remain unamended.
Rejections -- 35 U.S.C. 103
3. 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.
4. Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Sankaran et al. (US 2005/0258419) in view of Sekine et al. (US 2008/0038555).
Sankaran discloses nanoparticles including a silicon core coated with a passivation layer of silicon nitride; see Sankaran para. [0097]. While that particular embodiment of Sankaran has a dimension less than 20 nm, Sankaran para [0055] indicates that nanoparticles as large as 100 nm are within the scope of the prior art, i.e. overlapping the particle size recited in instant claims 1, 5 and 6.
Sankaran does not specify that “the nanoparticles are substantially spherical in shape” or that “the nanoparticles are substantially free of SiOx and SiOH surface species” as required by the instant claims. However,
a) With respect to a spherical shape, note that Sankaran forms the prior art nanoparticles in a plasma microreactor; see, for instance, Sankaran para [0068]. Sekine similarly is directed to forming particles in a plasma reactor, including silicon particles (see Sekine para [0025]). Sekine indicates it was known in the art, at the time of filing of the present invention, that particles produced in that manner will be spherical; see Sekine para [0069] and the Drawing figures therein. Given this disclosure of Sekine, one of skill in the art would expect that the nanoparticles of Sankaran (produced in a plasma microreactor) will in fact be substantially spherical as claimed.
b) With regard to SiOx and SiOH, the lack of disclosure of those species in Sankaran gives rise to an inference that they are either i) not present or ii) present in such a small amount that the prior art products would be “substantially free” of those species in accord with the claims.
Thus, the disclosure of Sankaran et al., combined with the teachings of Sekine et al., would have suggested a material as presently claimed to one of ordinary skill in the art.
5. Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Sankaran et al. in view of Sekine et al., as applied to claim 1 above, and further in view of Cui et al. (US 2016/0164081).
Sankaran and Sekine, discussed supra, do not disclose the conductive carbon covering or composite Si/carbon agglomerate as recited in the instant claims. Cui is directed to materials including silicon nanoparticles, i.e. is in a similar field of endeavor as Sankaran. Cui indicates it was known in the art, at the time of filing of the present invention, to form a carbon-containing coating upon such particles; see, for instance, Cui para. [0043]. With respect to the wt% of carbon recited in instant claim 8, the low end and high end of the claimed range differ by a factor of 100; it is therefore highly likely that any application of a carbon coating as disclosed by Cui on the particles would result in nanoparticles with a weight percentage carbon within the presently claimed range. Further, Cui uses these particles as an anode active material, implying that they are conductive. This disclosure of Cui would have rendered it obvious to include a conductive carbon covering or composite Si/carbon agglomerate with the Si nanoparticles suggested by Sankaran and Sekine.
Consequently, the combined disclosures of Sankaran et al., Sekine et al. and Cui et al. would have suggested a material as presently claimed to one of ordinary skill in the art.
Response to Arguments
6. Applicant’s response filed July 21, 2025 has been fully considered, with the following effect:
i) The terminal disclaimer filed on September 21, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent 11,749,798 has been reviewed and is accepted. The terminal disclaimer has been recorded. This obviates any potential conflict between the present claims and those of the ‘798 patent.
ii) With regard to the rejections based on prior art, Applicant asserts that one of skill in the art would not have arrived at nanoparticles as claimed (particularly those with “an average particle size of 70 nm or more”) using the technology of Sankaran. Specifically, Applicant asserts that the plasma system used by Sankaran is so different from that used in the present application such that the prior art system would not be capable of creating particles of a size as claimed. Applicant suggests that the low power and short residence time employed by Sankaran would be unable to result in nanoparticles of 70 nm or more, and indicates that Sankaran discusses a case where the residence has “probably” limited the size of the produced particles. However, the actual data of Sankaran (e.g. Fig. 4) suggests that increasing the silane concentration results in larger particles. While the embodiments measured by Sankaran do not include particles of the claimed size, it is reasonable to consider that further increasing of the silane concentration would result in even larger particles being produced.
Applicant further asserts that Sankaran cannot be modified or scaled up to produce larger particles. Applicant states that in theory one could try to work around a limitation of power/residence time by further reducing the pressure and increasing the voltage, but then concludes that “this approach would be difficult”, and speculates that with such an approach “reactions occurring inside the reactor may change” or “the higher voltage can generate defects on the surface of the electrodes” or “generate a breakdown on the walls of the reactor”. However, a) these statements all involve speculation and are not supported by any data or other probative evidence, and b) it is well--settled that arguments presented by applicant cannot take the place of factually supported objective evidence. See, e.g., In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965), or In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). In the present case, Applicant is effectively asserting that Sankaran is inoperable in terms of producing nanoparticles of a certain size, and examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding inoperability of the prior art; see MPEP 716.01 (c)(II).
Conclusion
7. All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction or lack of unity of invention would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114.
Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE WYSZOMIERSKI whose telephone number is (571) 272-1252. The examiner can normally be reached on Monday thru Friday from 8:30 am to 5:00 pm Eastern time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks, can be reached on 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/GEORGE WYSZOMIERSKI/Primary Examiner, Art Unit 1733 October 14, 2025