DETAILED ACTIONNotice 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/Restriction
Claims 1-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 6, 2026.
Claim Objections
Claim 16 is objected to because of the following informalities:
In Claim 16, line 2, remove the second instance of “a carbon scaffold comprising”.
Appropriate correction is required.
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.
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.
Claims 16-20, 22, and 33 are rejected under 35 U.S.C. 103 as being obvious over Sakshaug et al. (US 10147950 B2).
With regard to Claim 16, Sakshaug teaches a carbon scaffold comprising a carbon scaffold comprising a ID/IG < 0.8 (Col. 63, lines 23-26; in some embodiments R ranges from about 0 to about 1 or from about 0.50 to about 0.95. In other embodiments, R ranges from about 0.60 to about 0.90).
As set forth in MPEP 2144.05.I, in the case where the claimed range "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Sakshaug teaches a pore volume, wherein the pore volume comprises greater than 70% microporosity (Col. 80, Table 7, Samples 31 and 34).
Sakshaug teaches a silicon content of 40% to 60% by weight (Col. 106, Example 29, The resulting silicon content for the silicon carbon composite was 39-42%).
Sakshaug teaches a surface area less than 30 m2/g (Col. 48, lines 49-53; the composite material has a surface area below 30 m2/g, for instance below 20 m2/g, for instance below 10 m2/g, for instance below 5 m2/g, for instance below 2 m2/g, for instance below 1 m2/g).
Sakshaug is silent to a Z of less than 10, wherein Z = 1.875 x [(M1100 -M)/M1100] x 100[[%]] and a φ of greater than or equal to 0.1, wherein φ = (Max peak height dQ/dV in Regime I)/ (Max peak height dQ/dV in Regime III), wherein dQ/dV is measured in a half-cell coin cell, and Regime I is 0.8V-0.4V and Regime III is 0.15V-0V.
However, the production method disclosed by the prior art and of the instant invention are substantially identical and thus would produce substantially identical products. See MPEP 2112.02.I.
Sakshaug teaches a process for preparing silicon-carbon composite particles comprising providing a mixture of solid carbon precursor materials and pyrolyzing the mixture at a temperature of 650 °C to 1100 °C in the presence of nitrogen gas to obtain a pyrolyzed carbon material (Fig. 1; Col. 25, lines 35-48; The porous carbon material can be achieved via pyrolysis of a polymer produced from precursors materials as described above… The temperature can be varied, for example, the pyrolysis temperature can vary… from 650° C. to 750° C., from 750° C. to 850° C., from 850° C. to 950° C., from 950° C. to 1050° C., from 1050° C. to 1150° C., from 1150° C. to 1250° C. The pyrolysis can be accomplished in an inert gas, for example nitrogen, or argon).
Sakshaug teaches activating the pyrolyzed carbon material at a temperature of 650 °C to 1100 °C in the presence of carbon dioxide gas, steam, or combinations thereof, to obtain an activated carbon material (Fig. 1; Col. 58, lines 60-63; The surface area of the composite material may be modified through activation. The activation method may use steam, chemical activation, CO2 or other gasses. Methods for activation of carbon material are well known in the art).
Sakshaug teaches comminuting the activated carbon material to obtain porous carbon scaffold particles (Col. 25, lines 54-62; Either prior to the pyrolysis, and/or after pyrolysis, the porous carbon particle may be subjected to a particle size reduction. The particle size reduction can be accomplished by a variety of techniques known in the art, for example by… grinding, ball milling, jet milling, water jet milling, and other approaches known in the art).
Sakshaug teaches heating the porous carbon scaffold particles to a temperature of 1100 °C to 3000 °C in the presence of nitrogen (Col. 96, Table 17; 1300 N2 gas, 1500 N2 gas, 1700 N2 gas) and heating the porous carbon scaffold particles to a temperature of 400 °C to 525 °C in the presence of silane gas (Col. 30, lines 35-45; In a preferred embodiment, silicon is created within the pores of the porous carbon by subjecting the porous carbon particles to silane gas at elevated temperature and the presence of a silicon-containing gas, preferably silane…The temperature and time of processing can be varied… for example between 400 and 500° C).
In this regard, Sakshaug teaches a Z of less than 10, wherein Z = 1.875 x [(M1100 -M)/M1100] x 100[[%]] and a φ of greater than or equal to 0.1, wherein φ = (Max peak height dQ/dV in Regime I)/ (Max peak height dQ/dV in Regime III), wherein dQ/dV is measured in a half-cell coin cell, and Regime I is 0.8V-0.4V and Regime III is 0.15V-0V.
Once a reference teaching a product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 4380, 483-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
With regard to Claim 17, Sakshaug teaches the composite wherein the carbon scaffold pore volume comprises greater than 80% microporosity (Col. 80, Table 7, Samples 31 and 34).
With regard to Claim 18, Sakshaug teaches the composite wherein the ID/IG is less than 0.7 (Col. 63, lines 23-26; in some embodiments R ranges from about 0 to about 1 or from about 0.50 to about 0.95. In other embodiments, R ranges from about 0.60 to about 0.90).
As set forth in MPEP 2144.05.I, in the case where the claimed range "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to Claim 19, Sakshaug is silent to a Z of less than 5.
However, the production method disclosed by the prior art and of the instant invention are substantially identical and thus would produce substantially identical products. See MPEP 2112.02.I.
Sakshaug teaches the process for preparing silicon-carbon composite particles (see Claim 16 rejection). In this regard, Sakshaug teaches a Z of less than 5.
Once a reference teaching a product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 4380, 483-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
With regard to Claim 20, Sakshaug teaches the composite wherein the surface area is less than 10 m2/g (Col. 48, lines 49-53; the composite material has a surface area… for instance below 10 m2/g, for instance below 5 m2/g, for instance below 2 m2/g, for instance below 1 m2/g).
With regard to Claim 22, Sakshaug teaches the composite further comprising Al, Cr, Mn, Fe, Co, Ni, Ca, Ti, V, Mo, or W, or combinations thereof (Col. 66, lines 65-67, The composite material may also incorporate an electrochemical modifier selected to optimize the electrochemical performance of the non-modified composite; Col. 67, lines 10-12, the electrochemical modifier is selected from iron, tin, silicon, nickel, aluminum and manganese, lines 48-55, the electrochemical modifier comprises titanium. …In yet other embodiments, the electrochemical modifier comprises molybdenum; Col. 72, lines 23-31 and 51-52, the unmodified composite material comprises… less than 3 ppm calcium… less than 1 ppm vanadium, less than 0.5 ppm chromium… less than 0.25 ppm cobalt… less than 1 ppm tungsten).
With regard to Claim 33, Sakshaug is silent to the composite further comprising a ΔID/IG of 0.1 to 0.7, wherein ΔID/IG = ([ID/IG]Dv50>1 - [ID/IG]Dv50<1).
However, the production method disclosed by the prior art and of the instant invention are substantially identical and thus would produce substantially identical products. See MPEP 2112.02.I.
Sakshaug teaches the process for preparing silicon-carbon composite particles (see Claim 16 rejection). In this regard, Sakshaug teaches the composite further comprising a ΔID/IG of 0.1 to 0.7, wherein ΔID/IG = ([ID/IG]Dv50>1 - [ID/IG]Dv50<1).
Once a reference teaching a product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 4380, 483-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDUL-RAHMAN YUSUF WALEED SMARI whose telephone number is (571)270-7302. The examiner can normally be reached M-Th 7:30-5, F 7:30-4.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, 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.
/ABDUL-RAHMAN YUSUF WALEED SMARI/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736