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 .
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.
Status of Application
Claims 1-15 are pending and presented for examination. Claims1-12 were elected with traverse. In the response dated 2 January 2026 which is acknowledged and entered. As such claims 12-15 are WITHDRAWN by the Examiner as non-elected.
The traversal is that inter alia there was inadequate analysis of Yang’s contribution over the prior art vis a vis their disclosed nano-silicon versus that instantly claimed in claim 12 et seq. It is firstly noted that claim 12 et seq., are product-by-process claims, so they are examined on the merits of the particular nano-silicon product made, Applicants have not shown how these nano-silicon succinctly differ and as will be presented via other references presented infra, that the nano-silicon negative electrodes differ enough to not make a contribution over the prior art.
The traversal continues that there was no showing that the invention of Group I lacks novelty or inventive step and that no search burden exists. The latter point is immaterial as search burden is not a requirement for lack of unity restrictions (and the groups have different status in the art as one is a method of making and the other is a product so a search burden clearly exists there anyways). To the former point, the proposed novel process conditions recited in claim 1 of which claim 12 incorporates via the product-by-process aspect are not claimed in such a manner that shows the product actually is different, both groups recite nano-silicon and the prior art of record makes nano-silicon. As such, THIS RESTRICTION REQUIREMENT IS MADE FINAL.
Priority
Acknowledgement is made of applicant's request for foreign priority under 35 U.S.C. §119(a)-(d). Certified copies of the priority documents have been received.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6 and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “hot” in claims 6 and 11 are a relative term which renders the claim indefinite. The term “hot” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purposes of compact prosecution the term “hot” is being construed as a temperature of at least 90 C as laid out in the instant examples.
Claim Rejections - 35 USC § 102
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.
Claims 1-5 and 7-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US PG Pub No. 20240076192 to Entwhistle et al. (hereinafter, “Entwhistle at __”). This reference was effectively filed on 2 September 2022 which is before the earliest effective filing date for the instantly claimed application for PCT/JP2022/035121 of 21 September 2022. While the foreign priority benefit claim to JP2021-152868 is acknowledged (filed 21 September 2021), a certified English translation of such has not been submitted so it is not at present the earliest effective filing date for prior art purposes.
As to claims 1-5 and 7, Entwhistle discloses a method for producing nano-silicon (Entwhistle at “Abstract”) comprising:
Conducting a reduction treatment on an aluminosilicate (halloysite) which has been dealuminated via spray-drying to have an alumina content of ~10 wt. % (Entwhistle at [0047]) via a magnesiothermic reduction wherein the ratio of Mg:Si is 1.5-2.5:1 (Entwhistle at [0066]) with silica being 90% of the halloysite it would follow then that the Mg is present at approximately 10x that versus the aluminum atoms such that it is 15-25:1; and
Conducting an acid treatment on a reduced aluminosilicate obtained in step a ([0105]).
Turning to claim 9, Entwhistle discloses HCl is used to treat the material (Id.).
Concerning claim 8, the aluminosilicate is mixed with Mg powder and NaCl ([0056]) and then thermal reduction in an argon atmosphere is performed ([0032]).
As to claim 10, 1 M HCl can be utilized ([0105]).
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over CN105905908A to Yang et al. (hereinafter, “Yang at __”; cited by Applicants with citations to the attached machine English translation).
Regarding claims 1-7, Yang discloses a method for producing nano-silicon (Yang at “Title”) comprising:
Conducting a reduction treatment on an aluminosilicate (halloysite) which has been dealuminated via reacting the halloysite with hot sulfuric acid at a concentration of 1-3 M at a temperature of 80-150 C for 1-24 hours (Yang at 1-2), this overlaps the conditions instantly disclosed which cause dealumination to a degree between 3 and 40% (Instant Specification at [0052]-[0053] shows these conditions (heating at 90 C for 5-14 hours) reach roughly 15% of the alumina content and since the conditions broadly overlap and results in an overlap of ranges a prima facie case of obviousness exists) and subjecting such to magnesiothermic reduction (Yang at 2) and the atomic ratio of silica:magnesium powder is 1:0.5-1:1.5 and the silica is present at approximately 6.67% that of the alumina it would follow that the ratio of alumina to Mg would be (1:0.5/0.067-1.5/0.067) 1:~14.9~-22.4; and
Conducting an acid treatment on a reduced alumnoslicate obtained in step a (acid washed, 2).
As to claim 8, the dealuminated halloysite is mixed with Mg powder and NaCl under an argon atmosphere (1) and then thermally reduced under the argon atmosphere.
As to claim 9, acid washing is performed with HCl (2).
Concerning claim 10, the HCl has a 1-3M which overlaps that range claimed and is thusly prima facie obvious (Id.).
With respect to claim 11, Yang discloses a method for producing nano-silicon comprising:
Obtaining an aluminosilicate in which ac content of alumina is controlled to 3-40% by exposing such to hot sulfuric acid (Yang at 2 discloses temperatures of 100 C with sulfuric acid from a finite group along with times of 1-24 hours which as discussed in the rejection of claim 1 is prima facie obvious for covering alumina contents between 3 and 40%) which is subjected to metallothermic reduction and then an acid wash is performed on such after said treatment (Id.).
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
“Synthesis of nano-sized silicon from natural halloysite clay and its high performance as anode for lithium-ion batteries” to Zhou et al. (cited and provided by Applicants) completely removes the alumina such that a content of 3-40% would not be present after the hot sulfuric acid step.
Conclusion
Claims 1-11 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD M RUMP whose telephone number is (571)270-5848. The examiner can normally be reached Monday-Thursday 06:45 AM to 04:45 PM.
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RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/ Primary Examiner, Art Unit 1759