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 .
Claim Interpretation
With respect to the limitation of D50: DS50 is typically considered a median or average particle size in a particle size distribution. D50 represents the particle size at which 50% of the particles in the sample are smaller and 50% are larger, effectively marking the midpoint of the cumulative particle size distribution. It is also referred as the median diameter or median particle size. Consequently, under broadest reasonable interpretation, average particle size will mee the limitation of D50.
With respect to inorganic composition of claim 4, under broadest reasonable interpretation, the composition may comprise of only claimed powder alone or with any other type of inorganic particulate (consistent with limitation of P2 and P3), and due to 112(b) rejection below, may contain some organic component.
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.
Claim 4 is 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.
Instant claim 4 is directed to an inorganic composition containing inorganic powder according to claim 1. The claim lacks proper written description since specification does not provide any direction as to what this inorganic composition really is. Using PG Pub 2024/0158609 for ease of write up, instant specification teaches following:
[0008] “… An inorganic composition containing the inorganic powder…”
[0067] “… The inorganic composition according to the present embodiment includes the inorganic powder according to the above-described embodiment…. By forming an inorganic composition in which a small amounts of this inorganic powder is added…”
[0068] “… In one embodiment, the inorganic composition may further contain an inorganic powder (2)… having D50 that is 10 microns or larger and 100 microns or smaller and/or inorganic powder (3)….”
While this paragraph states additional particulates, the paragraph does little with respect to the type of the additional particulates P2 and P3.
[0069] “The types … of the inorganic powder P2 … and inorganic powder P3… are not particularly limited, and they can be selected from among those indicated as examples of inorganic powder P1….”
[0070-0071] discloses content of the P1 particulates (inventive particles), P2 and P3.
The description of the inorganic composition in itself is broad and under broadest reasonable interpretation any inorganic component will meet the claim. However, what render the claim indefinite is the definition of [0075]. Specifically, the claims also include claims 5 and 6 wherein liquid resin material encapsulates the inorganic powder of claim 1.
[0075] states that inorganic composition according to the present embodiment … can be used to produce semiconducting encapsulating material for use in electronic devices. Because it can provide a resin composition with excellent flowability and can prevent the increase of aggregated particles in the resin composition.
Consequently, it is unclear as to what the inorganic composition really is and how inorganic it truly is. For example, encapsulating powder in a resin and pyrolyzing it renders the resin as a carbon source. Pyrolyzed polymers, which decompose in still considered organic because even in the case of complete carbonization, the residue is still a carbon allotrope.
It is unclear how many interpretations of “inorganic composition” really are, and in case of [0075] fine line between resin composition and inorganic composition is not clear.
The examiner suggests cancellation of claim 4.
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.
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.
Claims 1, 3-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xu (US 2011/0223491 from ISR).
With respect to claim 1, Xu discloses inorganic powder having following particle size distribution (see Figure 6):
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Wherein the average particle diameter (D50) is in a range of 1-3 microns (Abstract). Per figure 6, the composition comprises two peaks. First peak attributed to smaller particle size and second peak attributed to the higher particle size.
With respect to the half width:
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The particle size diameter is from 0.25 to about between 0.7-0.8 microns which is less than 0.5 microns.
With respect to claim 3, Xu discloses the second peak:
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The half width peak is between 3 and 3.5 microns.
With respect to claim 4, Xu teaches composite comprising titanium dioxide with soluble lithium source to form composite particulate lithium titanate [0030]
With respect to claim 5, Xu teaches organic composition comprising particles of claim 1 and water-soluble resin such as phenolic resins, furfural resins, cellulose based resins and the like. [0034].
With respect to claim 6, the water-soluble resin is dissolved in water and mixed with particles of claim 1 such that the resin is uniformly dispersed onto particle thereby encapsulating the particle [0035].
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Anguchamy (US 2014/0370387) in view of evidence provided in Graphene in Inorganic Chemistry.
With respect to claim 1, Anguchamy discloses composite silicon composition comprising silicon-silicon oxide and carbon. The mixture meets the limitation of an inorganic composition of instant claim 4 (Abstract). Graphene is exfoliated into sheets and it is milled together with silicon and silicon oxide (Abstract).
The composite particle of Anguchamy has bimodal particle size distribution [0069] and BET of 12-35 m2/g [0069]. Additionally multiple peaks will be attributed to silicon oxide, silicon and graphene (See XRD spectrum in figures). Particles of Anguchamy have bimodal distribution, which inherently means that there will be at least two peaks. BET meets the limitation of instant claim 2.
While the width of the half-maximum is not explicitly recited, Figure 4 discloses silicon-silicon oxide component of the composite particle are under 500 nm, which is equivalent to 0.5 microns, consequently the half-width of particulates having diameter of 50 nm will inherently be less than 0.5 microns. Similarly, in Figure 6, scale of 800 nm spectrum 2 and spectrum 3 arrows are silicon oxide and silicon respectively both of which are much smaller than 900 nm or 0.9 microns. With graphite included D50 is 1.3 to 1.5 BET in a range of 16.2-24.1 (see examples 24, 25 and 27).
It is important to note that while graphene is a carbon allotrope a form of elemental carbon, it is classified as inorganic because it is a pure, crystalline form of an element arranged in a specific atomic structure rather than a compound containing multiple different elements. In Chemistry, organic compounds are typically defined as molecules containing carbon-hydrogen bonds (Graphene in Inorganic Chemistry).
With respect to claim 5, the composite article is incorporated into polymer such as polyimide [0098]. Polyimide is mixed with composite particle to form homogeneous slurry, which means that the composite material was at least to some degree adsorbed onto the particle due to its porosity. NMP was removed using vacuum to form an electrode [0098].
In the light of the above disclosure, under broadest reasonable interpretation, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed that practicing teachings of Anguchamy, one would arrive at instant invention. The modality of the particulate filler would have been attributed to 3 compounds, silicon, silicon oxide and graphene each one of these having its own particle size as shown in Figures. Anguchamy further states that BET and particle size can be adjusted as required since BET increased with smaller particles, which have higher surface area.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 June 17, 2026
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