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.
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Claim 1-23 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3,11-13,15,18-20,24,27 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-based composite, which comprises silicon particles and a fluoride.
Claim 1-23 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 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-based composite, which comprises silicon particles and a fluoride.
Claim 1-23 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-1-5,7-9,13-14,16,20,23,25,28 of copending Application No. 18253093. 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-based composite, which comprises silicon particles and a fluoride.
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) 1-3,11-13,21-23 is/are rejected under 35 U.S.C. 102(a) as being anticipated by Liu et al. (CN109286014A).
As to claim 1, Liu et al. discloses a porous silicon-based composite, which comprises silicon particles and a fluoride (paragraph 0008,0029,0030).
As to claim 2, Liu et al. discloses wherein the fluoride comprises a metal fluoride (paragraph 0029-0030).
As to claim 3, Liu et al. discloses wherein the metal fluoride comprises fluorine-containing magnesium compound, and the fluorine-containing magnesium compound comprises magnesium fluoride (MgF2), magnesium fluoride silicate (MgSiF6), or a mixture thereof (paragraph 0030).
As to claim 11, wherein when the porous silicon- based composite is subjected to an X-ray diffraction analysis, it has an IB/IA, as a ratio of the diffraction peak intensity (IB) corresponding to an MgF2 (111) crystal plane of the magnesium fluoride to the diffraction peak intensity (IA) of an Si (220) crystal plane, of greater than 0 to 1.0 is inherent since applicant discloses 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 12, Liu et al. discloses wherein the porous silicon-based composite further comprises a silicon oxide compound (paragraph 0022).
As to claim 13, Liu et al. discloses wherein the silicon oxide compound is SiOx (0.5 < x < 2) (paragraph 0022).
As to claim 21, Liu et al. discloses a porous silicon-based-carbon composite, which comprises the porous silicon- based composite of claim 1 and carbon (paragraph 0008).
As to claim 22, Liu et al. discloses a negative electrode active material, which comprises the porous silicon-based composite of claim 1 and a carbon-based negative electrode material (paragraph 0046).
As to claim 23, Liu et al. discloses lithium secondary battery, which comprises the negative electrode active material of claim 22 (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) 4,6 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-based composite described above. Liu et al. fail to disclose wherein the porous silicon-based composite comprises pores on its surface, inside, or both, and the porosity of the porous silicon-based composite is 10% by volume to 80% by volume based on the volume of the porous silicon-based composite. Yoo et al. teaches wherein the porous silicon-based composite comprises pores on its surface, inside, or both, and the porosity of the porous silicon-based composite is 10% by volume to 80% by volume based on the volume of the porous silicon-based composite for the purpose of preventing the reduction of mechanical strength (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 Liu et al. with wherein the porous silicon-based composite comprises pores on its surface, inside, or both, and the porosity of the porous silicon-based composite is 10% by volume to 80% by volume based on the volume of the porous silicon-based composite for the purpose of preventing the reduction of mechanical strength (paragraph 0076).
As to claim 6, Liu et al. fail to disclose wherein when the surface of the porous silicon-based composite is measured by a gas adsorption method (BET plot method), it comprises micropores of 2 nm or less; mesopores of greater than 2 nm to 50 nm; and macropores of greater than 50 nm to 250 nm, and the total volume of the mesopores is 30% by volume to 80% by volume based on the total volume of the entire pores.
Yoo et al. teaches wherein when the surface of the porous silicon-based composite is measured by a gas adsorption method (BET plot method), it comprises micropores of 2 nm or less; mesopores of greater than 2 nm to 50 nm; and macropores of greater than 50 nm to 250 nm, and the total volume of the mesopores is 30% by volume to 80% by volume based on the total volume of the entire pores for the purpose of preventing the reduction of mechanical strength (paragraph 0076, 0200).
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 when the surface of the porous silicon-based composite is measured by a gas adsorption method (BET plot method), it comprises micropores of 2 nm or less; mesopores of greater than 2 nm to 50 nm; and macropores of greater than 50 nm to 250 nm, and the total volume of the mesopores is 30% by volume to 80% by volume based on the total volume of the entire pores for the purpose of preventing the reduction of mechanical strength (paragraph 0076, 0200).
3. Claim(s) 5,8-10,14-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. in view of Oh et al. (WO20191008050).
Liu et al. discloses the porous silicon-based composite described above. Liu et al. fail to disclose wherein the porous silicon-based composite has a pore volume of 0.1 cc/g to 0.9 cc/g. Oh et al. teaches wherein the porous silicon-based composite has a pore volume of 0.1 cc/g to 0.9 cc/g for the purpose of preventing rapid deterioration of the lifespan due to volume expansion and contraction of lithium (paragraph 0022,0009).
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-based composite has a pore volume of 0.1 cc/g to 0.9 cc/g for the purpose of preventing rapid deterioration of the lifespan due to volume expansion and contraction of lithium (paragraph 0022,0009).
Liu et al. fail to disclose wherein the porous silicon-based composite further comprises a metal silicate. Oh et al. teaches wherein the porous silicon-based composite further comprises a metal silicate for the purpose of suppressing expansion and contraction of silicon thereby 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 wherein the porous silicon-based composite further comprises a metal silicate. Oh et al. teaches wherein the porous silicon-based composite further comprises a metal silicate for the purpose of suppressing expansion and contraction of silicon thereby improving battery performance (paragraph 0031).
Liu et al. fail to disclose wherein the metal silicate comprises magnesium silicate, and the magnesium silicate comprises MgSiO3 crystals, Mg2SiO4 crystals, or a mixture thereof. Oh et al. teaches wherein the metal silicate comprises magnesium silicate, and the magnesium silicate comprises MgSiO3 crystals, Mg2SiO4 crystals, or a mixture thereof for the purpose of suppressing expansion and contraction of silicon thereby 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 wherein the metal silicate comprises magnesium silicate, and the magnesium silicate comprises MgSiO3 crystals, Mg2SiO4 crystals, or a mixture thereof for the purpose of suppressing expansion and contraction of silicon thereby improving battery performance (paragraph 0031).
As to claim 10, Liu et al. discloses wherein the content of metals in the porous silicon-based composite is 0.2% by weight to 20% by weight based on the total weight of the porous silicon-based composite (paragraph 0029-0030).
As to claim 14, Liu et al. discloses wherein the molar ratio (Mg/Si) of magnesium atoms to silicon atoms present in the porous silicon-based composite is 0.01 to 0.30 (paragraph 0022).
As to claim 15, Liu et al. fail to disclose wherein the content of silicon (Si) in the porous silicon-based composite is 30% by weight to 99% by weight based on the total weight of the porous silicon-based composite.
Oh et al. teaches oxygen content of 15-33wt% for the purpose of preventing rapid deterioration of the lifespan due to volume expansion and contraction of lithium (paragraph 0049,0009), therefore it would have been obvious to one having ordinary skill in the art at the time applicant's invention was made to provide wherein the content of silicon (Si) in the porous silicon-based composite is 30% by weight to 99% by weight based on the total weight of the porous silicon-based composite for the purpose of preventing rapid deterioration of the lifespan due to volume expansion and contraction of lithium (paragraph 0049,0009).
As to claim 16-19, Liu et al. fail to disclose wherein the silicon particles have a crystallite size of 1 nm to 30 nm in an X-ray diffraction analysis, wherein the molar ratio (O/Si) of oxygen atoms to silicon atoms present in the porous silicon-based composite is 0.01 to 0.90, wherein the porous silicon-based composite has an average particle diameter (D50) of 1 m to 20 m, and wherein the porous silicon-based composite has a specific gravity of 1.6 g/cm3 to 2.6 g/cm3 and a specific surface area 50 (Brunauer-Emmett-Teller method; BET) of 50 m2/g to 1,500 m2/g.
Oh et al. teaches wherein the silicon particles have a crystallite size of 1 nm to 30 nm in an X-ray diffraction analysis (table 1), wherein the molar ratio (O/Si) of oxygen atoms to silicon atoms present in the porous silicon-based composite is 0.01 to 0.90 (paragraph 0039), wherein the porous silicon-based composite has an average particle diameter (D50) of 1 m to 20 m (paragraph 0037), and wherein the porous silicon-based composite has a specific gravity of 1.6 g/cm3 to 2.6 g/cm3 and a specific surface area 50 (Brunauer-Emmett-Teller method; BET) of 50 m2/g to 1,500 m2/g (table 1) for the purpose of preventing rapid deterioration of the lifespan due to volume expansion and contraction of lithium (paragraph 0009).
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 silicon particles have a crystallite size of 1 nm to 30 nm in an X-ray diffraction analysis, wherein the molar ratio (O/Si) of oxygen atoms to silicon atoms present in the porous silicon-based composite is 0.01 to 0.90, wherein the porous silicon-based composite has an average particle diameter (D50) of 1 m to 20 m, and wherein the porous silicon-based composite has a specific gravity of 1.6 g/cm3 to 2.6 g/cm3 and a specific surface area 50 (Brunauer-Emmett-Teller method; BET) of 50 m2/g to 1,500 m2/g for the purpose of preventing rapid deterioration of the lifespan due to volume expansion and contraction of lithium (paragraph 0009).
4. Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN109286014A).
Liu et al. discloses the porous silicon based composite described above. Liu et al. fail to disclose wherein the crystallite size of the magnesium fluoride (MgF2) is 3 am to 35 nm. 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 crystallite size of the magnesium fluoride (MgF2) is 3 am to 35 nm in order to provide optimal value in absence of unexpected results.
5. Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. in view of Lee et al. (KR20140022365).
Liu et al. discloses the porous silicon based composite described above. Liu et al. fail to disclose a process for preparing the porous silicon-based composite of claim 1, which comprises: a first step of obtaining a silicon composite oxide powder using a silicon-based raw material and a metal-based raw material; and a second step of etching the silicon composite oxide powder using an etching solution comprising a fluorine (F) atom-containing compound.
Lee et al. teaches a process for preparing the porous silicon-based composite of claim 1, which comprises: a first step of obtaining a silicon composite oxide powder using a silicon-based raw material and a metal-based raw material; and a second step of etching the silicon composite oxide powder using an etching solution comprising a fluorine (F) atom-containing compound (paragraph 0046) for the purpose of producing a porous silicon carbon composite that can be mass-produced with high yield and high purity (paragraph 0005).
Therefore, it would have been obvious to one having ordinary skill in the art at the time applicant's invention was made to provide a process for preparing the porous silicon-based composite of claim 1, which comprises: a first step of obtaining a silicon composite oxide powder using a silicon-based raw material and a metal-based raw material; and a second step of etching the silicon composite oxide powder using an etching solution comprising a fluorine (F) atom-containing compound for the purpose of producing a porous silicon carbon composite that can be mass-produced with high yield and high purity (paragraph 0005).
Conclusion
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/JANE J RHEE/ Primary Examiner, Art Unit 1724