DETAILED ACTION
Examiner’s Comments
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 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.
Regarding the limitation(s) “comprises silicon particles” in claim 1, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants’ specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, this simply means that the particles must include the element Si, but _not_ that they are pure Si (in fact, pure Si particles would have an O/Si ratio of infinity). The Examiner notes that this is explicitly supported by Paragraph 0032 of the specification PGPUB:
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Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1 – 5, 7 – 10, 12, 17, 24 and 27) in the paper filed March 17, 2026 is acknowledged. Claims 19 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. The requirement is still deemed proper and is therefore made FINAL.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
No double patenting rejections have been currently made, but the Examiner notes that the following references all disclose O/Si ratios reading on the ratio recited in claim 1.
Application Number
PGPUB
Claim with O/Si ratio
18/850,765
2025/0226387
1
18/849,352
2025/0233131
1
18839,191
2025/0158061
1
18/839,165
2025/0158038
3
18/715,307
2025/0038181
11
18/258,986
2024/0047660
1
18/253,093
2023/0420651
14
In all of the above, the Examiner notes that these Applications would read on claim 1 while the properties recited in claims 2 – 5, 8 -10, 12, 17, 24 and 27 would be deemed matters of routine optimization for the same reasons as set forth in the 102 and 103 rejections below (claim 7 would not be subject to any double patenting rejection). However, no double patenting rejections have been made at this time as there is sound reasoning that any amendment or argument that would overcome the 102 and 103 rejections below would also overcome any potential double patenting rejection. That being said, Applicants are asked to carefully review the above identified applications when considering any response, as there may be potential double patenting issues remaining (though unlikely).
Claim Objections
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 depends from both claims 1 and 8. Claim 1 already recites the added O/Si ratio and claim 8 already recites that the composite is a ‘silicon-carbon composite’. As such, claim 9 does not add any new subject matter as compared to claim 8 and is, essentially, a duplicate claim to claim 8. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(g)(1) During the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 1, 2, 8, 9, 12, 17, 24 and 27 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Oh et al. (U.S. Patent App. No. 2021/0184204 A1, publication date of 6-17-2021, and WO 2019/108050 A1, publication date of 6-6-2019). The following rejection will use the paragraphs in PGPUB ‘204 A1 as this is the English language equivalent of WO ‘050 A1.
The Examiner notes that PGPUB ‘204 A1 is the English language equivalent of WO ‘050 A1. The Examiner further notes that the PGPUB currently qualifies as prior art under 102(a)(1)/(a)(2) separate from the WO document, though could be removed by a statement under 35 USC 102(b) … but WO ‘050 A1 is published more than 1 year prior to even the potential effective foreign filing date of December 23, 2021 should the foreign priority claim choose to be perfected. I.e. WO ‘050 A1 cannot be removed by a statement under 102(b) even if the foreign priority date is perfected.
Regarding claim 1, Oh et al. disclose a porous silicon structure (WO Abstract and PGPUB Abstract; plus see Paragraphs 0010 – 0010), which comprises silicon particles (ibid), wherein the molar ratio (O/Si) of oxygen atoms to silicon atoms encompasses 0.01 – 0.35 (ibid, noting that SiOx is, essentially, where x = the O/Si molar ratio; e.g. SiO is a 1:1 ratio of silicon atoms to oxygen atoms and would be a molar ratio of 1.00; SiO2 is a 2:1 molar ratio and would be a ratio of 2.0 (i.e. same as the ‘x’). In the instant case, Oh et al. clearly discloses that x values of 0.01 – 0.35 are encompassed within the taught range:
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Regarding claim 2, Oh et al. disclose a substantially similar process and the fact that these particles are porous particles (see citations above). The Examiner also notes that claim 2 is open to a single ‘clumping’ of a particle with another. Finally, the Figures in Oh et al. appear to disclose just such a ‘clumping’ aspect. As such, the Examiner deems that there is sound basis that the silicon particles are “interconnected to each other” within the scope of the claim, even if not explicit.
Regarding claims 8, 9 and 12, Oh et al. disclose carbon meeting the claimed limitations (Paragraph 0036).
Regarding claim 17, Oh et al. disclose the claimed properties (at least Paragraphs 0032 and 0041).
Regarding claims 24 and 27, Oh et al. disclose the nominal secondary battery/negative electrode limitations (Title; Abstract; and at least Paragraph 0001).
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1, 2, 8 – 10, 12, 17, 24 and 27 are rejected under 35 U.S.C. 103(a) as being unpatentable over Oh et al. as applied above.
While the Examiner maintains that Oh et al. anticipates the claimed limitations for the reasons recited above, the Examiner notes that Oh et al. disclose a wide range of x, and, as such, a wide range of O/Si ratios. In addition, the Examiner acknowledges that the preferred range for Oh et al. is an O/Si ratio of 0.5 – 2.0 (see Paragraph 0026). However, Applicants are reminded that a reference is valid for the _entirety_ of what it discloses, not just that which are its ‘preferred embodiments’ (noting the phrasing ‘may have’:
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The Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the O/Si (i.e. ‘x’ value in SiOx) through routine experimentation, especially given the teaching in Oh et al. regarding the acceptability of ‘x’ values meeting the claimed range as being suitable for the disclosed invention. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Therefore, in the event that it is shown that Oh et al. fails to anticipate the claimed invention, it would have still been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Oh et al. to utilize O/Si (‘x’) values meeting the claimed ranges as taught by Oh et al. above, as these are clearly taught as suitable O/Si (‘x’) values for the disclosed invention.
The additional claim limitations (other than claim 10) are met for the reasons set forth above.
Regarding claim 10, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the porosity percentage as claimed through routine experimentation, especially given the teaching in Oh et al. regarding the requirement that the composite include pores (see citations above). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 1 – 5, 8 – 10, 12, 17, 24 and 27 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kogetsu et al. (U.S. Patent App. No. 2007//0099436 A1) in view of Choi et al. (U.S. Patent App. No. 2018/0342757 A1), as evidenced by Oh et al. (WO ‘050 A1). See Oh et al. (US ‘204 A1) for paragraph citations of Oh et al. (WO ‘050 A1).
Regarding claims 1 and 2, Kogetsu et al. disclose a silicon structure (Title; Abstract), which comprises silicon particles (ibid and Paragraph 0070), wherein the molar ratio (O/Si) of oxygen atoms to silicon atoms encompasses 0.01 – 0.35 (Paragraph 0028).
Kogetsu et al. fail to disclose porous particles that are, essentially, formed from particles that are interconnected (e.g. secondary particles formed from an agglomeration of secondary particles).
However, Choi et al. teaches that porous silicon structures formed from an agglomeration of primary particles (thereby meeting the limitations of claim 2) are old in the art as it facilitates Li ions being able to interact with the silicon atoms and achieve good battery characteristics (entire disclosure, but especially Paragraphs 0001 – 0016).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Kogetsu et al. to utilize a porous structure also meeting the limitations of claim 2 as taught by Choi et al., as such a structure allows for good intercalation of lithium ions and, hence, good battery properties.
Regarding claim 3, Choi et al. disclose that the claimed limitations for higher capacity (Paragraph 0036).
Regarding claims 4 and 5, Kogetsu et al. disclose surface oxide layers formed from the core metal (i.e. silicon) wherein the oxygen amount is greater than the O/Si ratio of 0.2 – 0.9 overall (see Paragraph 0058). Regarding claim 5, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the weight percentage of oxygen through routine experimentation, especially given the teaching in Kogetsu et al. regarding the desire to control the overall O/Si ratio to a range of 0.2 – 0.9 and that the metal oxide surface layer would have a (slightly) higher oxygen amount (i.e. all the sources of oxygen are taught and a skilled artisan would be well versed in controlling the overall oxygen amount given the criticality of this element expressed in Kogetsu et al. above). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 8, 9 and 12, Kogetsu et al. disclose carbon meeting the claimed limitations (at least Paragraphs 0046 and 0070).
Regarding claim 10, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the porosity percentage as claimed through routine experimentation, especially given the teaching in Choi et al. regarding the requirement that the composite include pores (see citations above). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 17, Choi et al. disclose encompassing particle sizes (at least Paragraphs 0058, 0079 and 0084) and BET surface area (at least Paragraphs 0040 and 0069).
Regardless, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the D50 particle size as claimed, the specific gravity as claimed, and the BET surface area as claimed through routine experimentation, especially given the teaching in Choi et al. noted above, and the knowledge in the art as exemplified by Oh et al. (Paragraph 0032) that specific gravities for silicon particles in identical end uses are commensurate to those claimed. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 24 and 27, Kogetsu et al. disclose the nominal secondary battery/negative electrode limitations (Title; Abstract; and at least Paragraph 0001).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: claim 7 requires a silicon particle possessing the claimed O/Si ratio, while also meeting the combination of specific pore limitations and BET surface area limitations. While the prior art recognizes porous silicon for insuring good lithium intercalation, the combination of all these required limitations is deemed to lack sufficient specificity in the prior art. As such, the Examiner deems that the prior art fails to anticipate nor render obvious the totality of the limitations of claim 7.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
May 14, 2026
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