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 .
Status of Application
Claims 1, 5, 6, 9 and 111 (12-19 and 21 withdrawn) are pending and presented for examination. Claims 1, 6 and 9 were amended via the instant amendment dated 30 April 2026 which is acknowledged and entered.
Response to Arguments
Applicant’s remarks dated 30 April 2026 (hereinafter, “Remarks at __”) are acknowledged and entered.
The rejection of claim 6 under 35 U.S.C. 112(b) is WITHRAWN as claim 6 no longer recites “such as”.
The rejection of claims 1, 6 and 11 under 35 U.S.C. 103 over Mah is WITHDRAWN over the instant amendment requiring the volume fraction of pores being about double that of the silicon volume fraction as Mah does not disclose such. Furthermore, Mah also does not expressly state a carbon coating of 100-500 nm.
The rejection of claims 1, 5, 6, 8 and 9 under 35 U.S.C. 103 over Sakshaug is WITHDRAWN over the instant amendment requiring the volume fraction of pores being about double that of the silicon volume fraction as Mah does not disclose such. Furthermore, Sakshaug also does not expressly state a carbon coating of 100-500 nm.
The rejection of claims 1, 5, 6 and 11 under 35 U.S.C. 103 over Park is WITHDRAWN over the instant amendment requiring the volume fraction of pores being about double that of the silicon volume fraction as Mah does not disclose such. Furthermore, Mah also does not expressly state a carbon coating of 100-500 nm. The dependent rejection of claim 9 over the same in further view of Spahr is WITHDRAWN as the base rejection was withdrawn. Applicants further argue Spahr discloses graphene graphitic carbon coated on SiOx particles which is materially different than Si-C (Remarks at 8) which is persuasive as sub-stoichiometric silica is different than “metallic” silicon.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5, 6, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US PG Pub No. 20170047584 to Hwang et al. (hereinafter, “Hwang at __”).
Regarding claims 1 and 6, Hwang discloses a Si/C composite comprising nanoscale silicon and carbon (diameters of 500 nm to 50 microns meets “nanoscale” as it overlaps nanometer and micrometer sizes which is prima facie obvious, see MPEP 2144.05, and CNT diameters are by definition “nanoscale”, Hwang at [0056], “Fig. 3” shows sub-micron sizes so this is also considered to meet “nanoscale”) wherein the weight ratio of Si:C is 50-95% Si and thusly 5-50% C ([0044]), the volume fraction of porosity is 50-300% that of the active (silicon) particles ([0055] which overlaps “about double”, and also would overlap ~20~70% of the overall porosity volume fraction), a polymer is pyrolyzed to provide the carbon ([0062]), and nanoscale (graphene) carbon sealing coating is provided (“Abstract”) which has a thickness of 0.3-300 nm which overlaps that range instantly claimed).
Turning to claim 5, Hwang discloses in numerous spots discussion of volume expansion control (Hwang at [0043]) but does not expressly state how much it is suppressed. Given the same base material disclosed, one of ordinary skill in the art would expect the same property of accommodation of swelling up to 300% to be present during the lithiaton-delithiation process absent evidence to the contrary though the Office cannot test for this. See MPEP 2112 V, "[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." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433-34 (CCPA 1977))". This also covers the effective surface area of 50-80% for claim 9.
Turning to claim 11, the material is used as an anode ([0014]).
Conclusion
Claims 1, 5, 6, 9 and 11 are finally rejected.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/Primary Examiner, Art Unit 1759
1 The status identifier for this claim is incorrect, it states (Withdrawn) it should read (Previously Presented).
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