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 .
Priority
This application is a continuation-in-part of U.S. Application No. 17/857,516, filed July 5, 2022, pending (now US 11,728,476), which is a continuation of U.S. Application No. 16/744,818, filed January 16, 2020, now Patent No. 11,380,890, which is a continuation-in-part of U.S. Application No. 15/413,021, filed January 23, 2017, now Patent No. 10,622,620, which is a continuation of U.S. Application No. 13/799,405, filed March 13, 2013, now Patent No. 9,553,303, which is a continuation-in-part of U.S. Application No. 13/601,976, filed August 31, 2012, now abandoned, which claims the benefit of U.S. Provisional Application No. 61/530,881, filed September 2, 2011. Said U.S. Application No. 13/601,976 is also a continuation-in-part of 13/008,800, filed January 18, 2011, now Patent No. 9,178,208, which claims the benefit of U.S. Provisional Application No. 61/295,993, filed January 18, 2010 and U.S. Provisional Application No. 61/315,845, filed March 19, 2010. Said U.S. Application No. 16/744,818 is also a continuation of U.S. Application No. 15/886,136, filed February 1, 2018, now Patent No. 10,541,412, which is a continuation of U.S. Application No. 14/821,586, filed August 7, 2015, now abandoned.
This application is also a continuation-in-part of U.S. Application No. 17/166,813, filed February 3, 2021, pending (now US 11,837,711), which is a continuation of U.S. Application No. 16/230,395 filed December 21, 2018, now U.S. Patent 10,957,898.
This application is also a continuation-in-part of Application No. 16/890,499, filed June 2, 2020, pending (now US 11,742,519), which claims the benefit of U.S. Provisional Application No. 62/857,768, filed June 5, 2019. This application is also a continuation-in-part of Application No. 16/890,692, filed June 2, 2020, pending (now US 11,817,578), which claims the benefit of U.S. Provisional Application No. 62/857,728, filed June 5, 2019. This application is also a continuation-in-part of Application No. 17/963,447, filed October 11, 2022, pending (now US 11,749,839), which is a continuation of U.S. Application No. 16/720,792 filed December 19, 2019, now Patent No. 11,469,447.
This application is also a continuation-in-part of Application No. 16/859,989, filed April 27, 2020 pending (now US 11,777,098).
Applicant should update the CON data at page 1 of the specification to reflect the above current data.
Claims 1-20 are pending.
Drawings
The Drawings filed 08/15/23 are approved by the examiner.
Information Disclosure Statement
The IDS statements filed 08/15/23 (2) have been considered. Initialed copies accompany this action.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-15) in the Reply filed 10/29/25 is acknowledged.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-31 of U.S. Patent No. 10,461,366. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the above listed claims of US ‘366 are drawn to composite materials (or article containing a layer of such) having a hard carbon continuous silicon particles dispersed therein (greater than 0% and less than 90%)(0.1 microns to 30 microns). The instant claims are broader in scope in failing to recite the additional storage device layers. Additionally, the instant claim limitations relating to surface area and additional conductive particles have been an obvious choice for the skill artisan. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 23-24 of U.S. Patent No. 9,178,208. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the above listed claims of US ‘208 are drawn to composite materials (or article containing a layer of such) having a hard carbon continuous silicon particles dispersed therein (greater than 0% and less than 90%)(0.1 microns to 30 microns). The instant claims are broader in scope in failing to recite the additional limitations of “wherein the film is self-supported”. Additionally, the instant claim limitations relating to surface area would have been an obvious choice for the skill artisan. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,728,476. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the above listed claims of US ‘476 are drawn to composite materials (or article containing a layer of such) having a hard carbon continuous silicon particles dispersed therein (greater than 0% and less than 90%)(0.1 microns to 30 microns). The instant claims are broader in scope in failing to recite the additional SiO and/or SiO2 component recited in the issued claims. Additionally, the instant claim limitations relating to surface area and additional conductive component would have been an obvious choice for the skill artisan. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim Rejections - 35 USC § 102 and/or 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim Construction
Applicant’s definition of the claim terminology “hard carbon” at para 0067 of instant PGPUB 2023/0387393 A1 is noted.
Claim(s) 1-4, 6-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thompkins et al 2013/0252082 A1.
Thompkins et al 2013/0252082 A1 discloses hard carbon materials useful in electrical devices such as Li ion batteries (anodes) (Abstract; 0004; 0028; 0091; 0292). The reference specifies a hard carbon layer having silicon particles (less than 1 micron to 100 microns)(0346) dispersed within the pore structure (0.01-95%) (0205; 0212; 0237; 0278) formed by carbonizing a polymer gel (0119; 0139; 0227). The disclosed microstructure meets each of the instantly recited “film”, “…substantially continuous” and any other article limitations. With respect to dependent claims 10-12, the reference teaches the addition of additional forms of carbon allotropes such as graphite and also lithium metal (0148; 0209).
The reference is anticipatory.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thompkins et al 2013/0252082 A1,
Thompkins is relied upon as set forth above. The reference differs from dependent claim 5 in failing to specify Si particles having the surface area as claimed. However, the examiner respectfully submits that the skilled artisan would have to utilize only routine testing in order to arrive at suitable physical properties such as surface area of the Si particles in order to tailor the electrical characteristics of the resultant material. In re "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
The remaining references listed on forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK T KOPEC whose telephone number is (571)272-1319. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at 5712707733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK KOPEC/Primary Examiner, Art Unit 1762
MK
January 5, 2026