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 .
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-5,7-9,13-14,16,20,23,25,28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3,7-8,11-13,15,18-20,24,27 of copending Application No. 18258986. Although the claims at issue are not identical, they are not patentably distinct from each other because both copending application and present application discloses a porous silicon carbon composite which comprises a silicon particle, fluorine containing magnesium compound and carbon.
Claims 1-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3,7-8,11-13,15,18-20,24,27 of copending Application No. 18246274. Although the claims at issue are not identical, they are not patentably distinct from each other because both copending application and present application discloses a porous silicon carbon composite which comprises a silicon particle, fluorine containing magnesium compound and carbon.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
1. Claim(s) 1,3,7,8-9,13,25,28 is/are rejected under 35 U.S.C. 102(a) as being anticipated by Liu et al. (CN109286014A as cited in the IDS dated 12/11/2024).
As to claim 1, Liu et al. discloses a porous silicon-carbon composite, which comprises a silicon particle, fluorine- containing magnesium compound, and carbon (paragraph 0008,0029,0030).
As to claim 3, Liu et al. discloses, wherein the fluorine- containing magnesium compound comprises magnesium fluoride (MgF2) (paragraph 0030).
As to claim 7, Liu et al. discloses wherein the content of magnesium (Mg) in the porous silicon-carbon composite is 0.5% by weight to 20% by weight based on the total weight of the porous silicon-carbon composite (paragraph 0029-0030).
As to claim 8, wherein, in an X-ray diffraction analysis, has an IB/IA of greater than 0 to 1, the IB/IA being a ratio of the diffraction peak intensity (IB) for an MgF2 (111) crystal plane to the diffraction peak intensity (IA) for an Si (220) crystal plane is inherent since Liu et al. discloses the same composition desired by the applicant (paragraph 0008,0029,0030). “Products of identical chemical composition can not have mutually exclusive properties. ”A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658(Fed. Cir. 1990)
As to claim 9, Liu et al. discloses which further comprises a silicon oxide compound (paragraph 0022).
As to claim 13, Liu et al. discloses wherein the porous silicon- carbon composite comprises a silicon composite and a carbon layer on its surface, the silicon particle and fluorine-containing magnesium compound are present in the silicon composite, and the carbon is present on a part or the entirety of the surfaces of the silicon particle and fluorine- containing magnesium compound to form a carbon layer (paragraph 0032).
As to claim 14, wherein the molar ratio (O/Si) of oxygen atoms to silicon atoms present in the porous silicon-carbon composite is 0.01 to less than 1 is inherent since applicant teaches the same composition desired by the applicant. “Products of identical chemical composition can not have mutually exclusive properties.”A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658(Fed. Cir. 1990).
As to claim 25, Liu et al. discloses a negative electrode active material, which comprises the porous silicon- carbon composite of claim 1 (paragraph 0046).
As to claim 28, Liu et al. discloses a lithium secondary battery, which comprises the negative electrode active material of claim 25 (paragraph 0046).
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.
2. Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. in view of Yoo et al. (KR20150026925).
Liu et al. discloses the porous silicon carbon composite described above. Liu et al. fail to disclose wherein the porous silicon- carbon composite comprises pores inside thereof, and the porosity of the pores in the porous silicon-carbon composite is 0.1% by volume to 40% by volume based on the volume of the porous silicon-carbon composite. Yoo et al. teaches wherein the porous silicon- carbon composite comprises pores inside thereof, and the porosity of the pores in the porous silicon-carbon composite is 0.1% by volume to 40% by volume based on the volume of the porous silicon-carbon composite for the purpose of preventing reduced mechanical strength of electrode material (paragraph 0076).
Therefore, it would have been obvious to one having ordinary skill in the art at the time applicant's invention was made to provide Liu et al. with wherein the porous silicon- carbon composite comprises pores inside thereof, and the porosity of the pores in the porous silicon-carbon composite is 0.1% by volume to 40% by volume based on the volume of the porous silicon-carbon composite for the purpose of preventing reduced mechanical strength of electrode material (paragraph 0076).
3. Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN109286014A).
Liu et al. discloses the porous silicon carbon composite described above. Liu et al. fail to disclose wherein the crystallite size of the magnesium fluoride (MgF2) as measured by an X-ray diffraction analysis is 2 nm to 35 nm. Liu et al. discloses porous silicon carbon composite magnesium fluoride (paragraph 0030). It would have been obvious to one having ordinary skill in the art at the time applicant's invention was made to wherein the crystallite size of the magnesium fluoride (MgF2) as measured by an X-ray diffraction analysis is 2 nm to 35 nm for the purpose of providing optimal results in absence of unexpected results.
4. Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. in view of Oh et al. (WO2019108050).
Liu et al. discloses the porous silicon carbon composite described above. Liu et al. fail to disclose which further comprises magnesium silicate, and the magnesium silicate comprises an MgSiO3 crystal, an Mg2SiO4 crystal, or a mixture thereof. Oh et al. teaches further comprising magnesium silicate, and the magnesium silicate comprises an MgSiO3 crystal, an Mg2SiO4 crystal, or a mixture thereof for the purpose of improving battery performance (paragraph 0031).
Therefore, it would have been obvious to one having ordinary skill in the art at the time applicant's invention was made to provide Liu et al. with further comprising magnesium silicate, and the magnesium silicate comprises an MgSiO3 crystal, an Mg2SiO4 crystal, or a mixture thereof for the purpose of improving battery performance (paragraph 0031).
5. Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. in view of Lee et al. (KR20190022365).
Liu et al. discloses the porous silicon carbon composite described above. Liu et al. fail to disclose wherein the content of carbon (C) is 3% by weight to 80% by weight based on the total weight of the porous silicon-carbon composite. Lee et al. teaches wherein the content of carbon (C) is 3% by weight to 80% by weight based on the total weight of the porous silicon-carbon composite for the purpose of providing high capacity (paragraph 0087,0186).
Therefore, it would have been obvious to one having ordinary skill in the art at the time applicant's invention was made to Liu et al. with wherein the content of carbon (C) is 3% by weight to 80% by weight based on the total weight of the porous silicon-carbon composite for the purpose of providing high capacity (paragraph 0087,0186).
Allowable Subject Matter
Claim 20,23 are allowed.
The following is an examiner’s statement of reasons for allowance: The prior art fail to teach or suggest a process for preparing a porous silicon-carbon composite, which comprises: a first step of obtaining a silicon composite oxide powder using a silicon-based raw material and a magnesium-based raw material; a second step of etching the silicon composite oxide powder using an etching solution comprising a fluorine (F) atom-containing compound; a third step of filtering and drying the composite obtained by the etching to obtain a porous silicon composite; and a fourth step of forming a carbon layer on the surface of the porous silicon composite by using a chemical thermal decomposition deposition method. Applicant teaches that mass production is possible through a continuous process with minimized steps.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE J RHEE whose telephone number is (571)272-1499. The examiner can normally be reached Monday-Friday (10-6:30).
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/JANE J RHEE/ Primary Examiner, Art Unit 1724