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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-13) in the reply filed on 12/19/2025 is acknowledged. The traversal is on the ground(s) that it would not be burdensome to search for all of the different inventions or more than one of the different inventions cited in the Restriction Requirement. The examiner respectfully points out that this is not found to be persuasive because the groups require different search strategies or search queries.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/19/2025.
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.
Claims 2-3 are 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.
Claim 2 recites the porous carbon/silicon oxide composite of claim 1, “further including a metal or non-metal element M dispersed in said SiOx or coated on a surface of said SiOx particle or coating” (lines 1-2) and later recites “and M is present as individual M atoms embedded in the SiOx particle or coating, as a domain or phase comprising multiple M atoms that are dispersed in the SiOx” (lines 4-6). It is unclear how the option of M coated on a surface of said SiOx particle or coating would be interpreted alongside the limitation of M as a domain or phase comprising multiple M atoms that are dispersed in the SiOx. To advance prosecution, the limitation will be interpreted as “and M is present as individual M atoms embedded in the SiOx particle or coating, as a domain or phase comprising multiple M atoms that are dispersed in or on the SiOx.” Appropriate correction is required.
Claim 3 is dependent on claim 2 and therefore is also indefinite.
Claim Objections
Claim 2 is objected to because of the following informalities: there is no period at the end of the claim. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
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 1-7, 9-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al (CN115621433A, published 2023-01-17).
Evidentiary support is provided by Zhou et al “Research Progress of Silicon Suboxide-Based Anodes for Lithium-Ion Batteries” Front. Mater., Vol 7., 21 Jan 2021, and Mason et al (US 20210276875 A1, published 2021-09-09).
Regarding claim 1, Wang teaches a carbon aerogel composite material (machine translation [n0005], [n0008]-[n0009]) wherein the carbon aerogel is used as a matrix, and silicon suboxide formed from a mixture of silicon and silicon dioxide, wherein the silicon suboxide corresponds to SiOx (0 < x < 2), as evidenced by Zhou et al in their Abstract and p2 left col para 3, is deposited in the pores of the carbon aerogel.
Thus, Wang teaches a porous carbon/silicon oxide composite (i.e., carbon aerogel composite material) comprising: (a) a porous carbon structure host (i.e., the carbon aerogel functioning as a matrix) having pores; and (b) a silicon oxide SiOx coating or particle residing in at least one of said pores, where (0 < x < 2) (i.e., silicon suboxide).
Wang also discloses that the molar ratio of silicon to silica in the mixture of silicon to silica is 0.8-1.2:1, and the total mass ratio of the mixture of silicon and silica to the carbon aerogel is 1: (1.2-3) ([n0020]). The molar ratio of silicon to silica in the mixture of silicon to silica can be used to calculate the corresponding range of subscript x of the silicon suboxide SiOx as follows:
Si/SiO2 = (0.8-1.2)/1
Thus the molar fraction of Si to the mixture of silicon and silica, i.e. Si/(Si + SiO2), will range from 0.8/1.8 to 1.2/2.2, or 0.44 – 0.55, and the molar fraction of SiO2 to the mixture of silicon and silica, i.e. SiO2/(Si + SiO2), will range from 1/1.8 to 1/2.2, or 0.45 – 0.56. Consequently, the range of subscript x of the silicon suboxide can be calculated as a weighted average of the molar fractions of silicon and silica, resulting in a value of x ranging from (0.55)*(0) + (0.45)*(2) to (0.44)*(0)+(0.56)*(2), i.e. silicon suboxide has a subscript x with a range of 0.9 to 1.12, or Si0.9-SiO1.12.
The weight fraction of SiOx in the porous carbon/silicon oxide composite can be calculated as the weight fraction of the silicon suboxide SiOx to that of the silicon suboxide and the carbon aerogel, or 1/(1+3) to 1/(1+1.2) or 25% to 45%, which overlaps with the claimed range.
Regarding claim 2, Wang teaches the porous carbon/silicon oxide composite of claim 1 and further teaches the limitations of claim 2. The limitation regarding M does not require direct coating of M on surface of said SiOx particle or coating, thus Wang’s teaching that the silicon-based anode material can further include a carbon coating layer covering the carbon aerogel composite material reads on element C selected as M to coat on a surface of said SiOx particle or coating ([n0006]). Additionally, the limitations of claim 2 recite that “M occupies from 0% to 30% by weight of the SiOx particle or coating” and includes “0%,” therefore Wang’s teaching inherently satisfies the claim regardless of whether element C as M is present or not on the surface of the SiOx particle or coating.
Regarding claim 3, Wang teaches the porous carbon/silicon oxide composite of claim 2, and as pointed out in addressing the limitations of claim 1, Wang teaches the weight fraction of SiOx in the composite is 25% to 45%, which overlaps with the claimed range of 1% to 90%.
Regarding claim 4, Wang teaches the porous carbon/silicon oxide composite of claim 1, and Wang teaches the carbon aerogel (i.e., porous carbon structure host) has porosity of 20% to 60% ([n0018]), which is within the claimed range of a porosity level from 0.5% to 99%.
According to evidentiary reference Mason, in accordance with conventional IUPAC terminology, the term "micropore" is used herein to refer to pores of less than 2 nm in diameter, the term "mesopore" is used herein to refer to pores of 2-50 nm in diameter, and the term "macropore" is used to refer to pores of greater than 50 nm diameter ([0051]). Wang teaches that the pores in the carbon aerogel include micropores, mesopores, and macropores ([n0018]), therefore Wang teaches that the pores have a pore size from 2 nm to greater than 50 nm diameter, which overlap with the claimed range of the pores having a pore size of 5 nm to 5 µm.
Regarding claim 5, Wang teaches the porous carbon/silicon oxide composite of claim 1, and Wang further teaches that through pores exist in the carbon aerogel that function to allow gaseous silicon-containing materials to penetrate and deposit effectively ([n0019]). Through pores indicate a continuous porous region passing through the carbon aerogel and would thus structurally correspond to interconnected pores within the carbon aerogel. The through pores provide structure that is capable of performing the intended use of facilitating entry and infiltration of silicon oxide vapor in the pores. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have also held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114).
Wang also teaches the carbon aerogel (i.e., porous carbon structure host) has porosity of 20% to 60% ([n0018]), which is within the claimed range of a porosity level from 0.5% to 99%.
Regarding claim 6, Wang teaches the porous carbon/silicon oxide composite of claim 1, and Wang further teaches the composite is in a particulate form having a particle size 1-25 μm ([n0007]), with a specific embodiment teaching SiOx/porous carbon composite material with a particle size of D50 = 12 ± 2 μm ([n0038]), wherein the ranges taught are within the claimed range.
Regarding claim 7, Wang teaches the porous carbon/silicon oxide composite of claim 1, and Wang teaches the porous carbon structure host comprises a carbon aerogel ([n0005]) which is a claimed species.
Regarding claim 9, Wang teaches the porous carbon/silicon oxide composite of claim 1, and Wang further teaches the composite is in particle form ([n0007]). Wang further teaches that the silicon-based anode material can further include a carbon coating layer covering the carbon aerogel composite material ([n0006]), which reads on the composite particle further coated with a layer of carbon.
Regarding claims 10-11, Wang teaches the porous carbon/silicon oxide composite of claim 9. Because claim 9 only requires one of the claimed species, Wang’s teaching of a coating with a layer of carbon inherently satisfies the limitations of claims 10-11.
Claim Rejections - 35 USC § 103
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.
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.
Claims 8, 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al (CN115621433A, published 2023-01-17) as applied to claim 1 and in further view of Son et al (US 20180083272 A1, published 2018-03-22).
Regarding claim 8, Wang teaches the porous carbon/silicon oxide composite of claim 1 and Wang further discloses the heat vaporized mixture of silicon and silicon dioxide is deposited in the carbon aerogel upon cooling to generate the silicon suboxide ([n0009]) but does not explicitly teach “wherein the composite comprises at least a discrete, oxygen-free Si domain or phase dispersed in a SiOx matrix wherein the Si domain has a dimension from 2 nm to 500 nm.”
In a similar field of endeavor, Son teaches a silicon carbon composite which can be used in a negative active material layer (anode active material layer) [0092], wherein the composite includes at least one silicon oxide ([0098]), wherein the at least one silicon oxide includes a silicon oxide of the Formula SiOx, wherein 0 < x < 2, a thermal treatment product of a silicon oxide of the Formula SiOx, wherein 0 < x <2, or a combination of at least one of the foregoing, wherein the thermal treatment product of SiOx can be a structure including silicon (Si) arranged in a matrix of silicon oxide (Son: [0101]-[0102]), thereby reading on the limitation of a composite comprising at least a discrete, oxygen-free Si domain or phase dispersed in a SiOx matrix. Son also generally teaches that silicon oxide (SiOx wherein 0 < x < 2) can be disposed on silicon ([0082]) and also teaches the silicon can assume the form of particles with an average diameter of about 10 nm to about 500 nm ([0081]), thereby teaching the composite comprises at least a discrete, oxygen-free Si domain or phase dispersed in a SiOx matrix wherein the taught Si domain has a dimension with a range which overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
Son teaches that their invention results in reduced volume expansion and reduced or prevented disintegration of silicon, improved conductivity of the negative active material (anode), and improved high-rate characteristics of a lithium battery ([0160]). Given that Wang also discloses the need to improve rate performance, conductivity, and material expansion performance for lithium-ion batteries ([n0022], [n0023]), one of ordinary skill in the art would have found it obvious to have modified Wang’s porous carbon/silicon oxide composite to utilize Son’s configuration of the composite comprising at least a discrete, oxygen-free Si domain or phase dispersed in a SiOx matrix wherein the Si domain has a dimension of about 10 nm to about 500 nm for the benefit of reduced volume expansion, reduced or prevented disintegration of silicon, improved conductivity of the negative active material (anode), or improved high-rate characteristics of a battery.
Regarding claim 12, Wang teaches an anode for a lithium battery ([n0001]) wherein said anode comprises the porous carbon/silicon oxide composite of claim 1 ([n0058]). Wang teaches use of a binder and a conductive additive (conductive carbon black) in the anode material ([n0058]) but does not comment on whether they can be optional components.
In the same field of endeavor, Son teaches preparing a porous silicon carbon composite as an anode material for a lithium battery using a conducting agent, binder, and solvent, and discloses that at least one of the conducting agent, the binder, and the solvent may be omitted depending on the use and structure of a lithium battery ([0159], [0169]); therefore, the binder and the conducting agent are optional. Thus, the prior art teaches that omission of the conductive additive and a binder is obvious when the features are not desired; see MPEP 2144.04 II, A.
Regarding claim 13, the combination above teaches the anode of claim 12, and Wang further teaches a lithium battery utilizing the anode of claim 12 and comprising an assembly in the following order: positive electrode shell, electrode sheet, electrolyte, separator, electrolyte, lithium sheet, nickel foam, and negative electrode shell ([n0058]), thereby also teaching a cathode and a separator between the anode and cathode. Ions of the electrolyte are expected to pass through the separator during the operation of the battery and be in ionic contact with the anode and the cathode, thereby teaching an electrolyte in ionic contact with the anode and cathode.
Claim 1, 3, 6, 8-13 is rejected under 35 U.S.C. 103 as being unpatentable over Son et al (US 20180083272 A1, published 2018-03-22) in view of Wang et al (CN115621433A, published 2023-01-17).
Regarding claim 1, Son teaches a porous carbon/silicon oxide composite (Fig. 1A and [0069] teach a composite cluster 11) comprising: (a) a porous carbon structure host having pores (first graphene 10a forms a shell on an aggregate of a plurality of silicon composite particles 10 including silicon and silicon oxide disposed on the silicon [0071]; Fig. 1A shows graphene 10a and graphene 10b as a porous carbon material enclosing the silicon composite particles 10); and (b) a silicon SiOx coating or particle residing in at least one of said pores (Openings and spaces in the graphene layers correspond to pores, therefore the spaces occupied by silicon composite particles 10 within the porous carbon structure host 10a correspond to the location(s) of at least one pore as shown in Fig. 1A; the silicon composite particles can include a silicon oxide of the Formula SiOx wherein 0< x <2 [0011]), where 0 < x < 2. Son also teaches the porous carbon/silicon oxide composite can be used as a negative active material for a lithium battery ([0160]).
In the same field of endeavor, Wang discloses a molar ratio of silicon to silica in the mixture of silicon to silica is 0.8-1.2:1 for silicon oxide disposed in a porous carbon matrix, wherein the porous carbon/silicon oxide composite is used for an anode material. Wang also teaches the total mass ratio of the mixture of silicon and silica to the carbon aerogel is 1: (1.2-3) (machine translation [n0020]).
The molar ratio of silicon to silica in the mixture of silicon to silica can be used to calculate the corresponding range of subscript x of the silicon suboxide SiOx as follows:
Si/SiO2 = (0.8-1.2)/1
Thus the molar fraction of Si to the mixture of silicon and silica, i.e. Si/(Si + SiO2), will range from 0.8/1.8 to 1.2/2.2, or 0.44 – 0.55, and the molar fraction of SiO2 to the mixture of silicon and silica, i.e. SiO2/(Si + SiO2), will range from 1/1.8 to 1/2.2, or 0.45 – 0.56. Consequently, the range of subscript x of the silicon suboxide can be calculated as a weighted average of the molar fractions of silicon and silica, resulting in a value of x ranging from (0.55)*(0) + (0.45)*(2) to (0.44)*(0)+(0.56)*(2), i.e. silicon suboxide has a subscript x with a range of 0.9 to 1.12, or Si0.9-SiO1.12. The weight fraction of SiOx in the porous carbon/silicon oxide composite can be calculated as the weight fraction of the silicon suboxide SiOx to that of the silicon suboxide and the carbon aerogel, or 1/(1+3) to 1/(1+1.2) or 25% to 45%, which overlaps with the claimed range.
Wang teaches their prepared silicon-based anode material has a significant improvement in rate performance and expansion performance when applied in lithium-ion batteries ([n0003]), and also discloses that the mass ratio of silicon and silica (i.e., silicon oxide) to the carbon aerogel can make the composite material have physical and chemical properties, including overall capacity and first efficiency, that align more with battery application standards ([n0020]). A person of ordinary skill in the art would have been motivated to modify Son’s porous carbon/silicon oxide composite to utilize Wang’s taught composition for the silicon oxide and the mass ratio of the silicon oxide to the porous carbon matrix given that Wang teaches their composite has the advantages of physical and chemical properties, including overall capacity and first efficiency, that align more with battery application standards and also the benefits of significant improvement in rate performance and expansion performance when applied in lithium-ion batteries ([n0003]), which Son also teaches as an application for the porous carbon/silicon oxide composite.
Regarding claim 2, the combination above teaches the porous carbon/silicon oxide composite of claim 1. The limitation regarding M does not require direct coating of M on surface of said SiOx particle or coating, thus Son’s teaching that the silicon-based anode material can further include a carbon coating layer covering the carbon aerogel composite material reads on element C selected as M to coat on a surface of said SiOx particle or coating that is within the composite ([0146], [0148]). Additionally, the limitations of claim 2 recite that “M occupies from 0% to 30% by weight of the SiOx particle or coating” and includes “0%,” therefore Son’s teaching inherently satisfies the claim regardless of whether element C as M is present or not on the surface of the SiOx particle or coating.
Regarding claim 3, the combination above teaches the porous carbon/silicon oxide composite of claim 1. As previously pointed out in addressing the limitations of claim 1, Wang teaches a molar ratio of silicon to silica in the mixture of silicon to silica is 0.8-1.2:1 for silicon oxide disposed in a porous carbon matrix, wherein the porous carbon/silicon oxide composite is used for an anode material, and also teaches the total mass ratio of the mixture of silicon and silica to the carbon aerogel is 1: (1.2-3) ([n0020]), which results in a weight fraction of SiOx in the porous carbon/silicon oxide composite of 25% to 45%, which overlaps with the claimed range.
Regarding claim 6, the combination above teaches the porous carbon/silicon oxide composite of claim 1 and wherein said composite is in a particulate form having an average particle diameter of about 200 nm to about 50 μm ([0085]), which overlaps with the claimed range.
Regarding claim 8, the combination above teaches the porous carbon/silicon oxide composite of claim 1, and Son further teaches the silicon carbon composite 11 includes a porous core 1 including a porous silicon composite secondary particle 12, wherein the porous silicon composite secondary particle incudes an aggregate of two or more silicon composite primary particles 10, and the silicon composite primary particles each include at least one silicon oxide ([0098], [0069]-[0071]; Fig. 1A), wherein the at least one silicon oxide includes a silicon oxide of the Formula SiOx, wherein 0 < x < 2, a thermal treatment product of a silicon oxide of the Formula SiOx, wherein 0 < x <2, or a combination of at least one of the foregoing, wherein the thermal treatment product of SiOx can be a structure including silicon (Si) arranged in a matrix of silicon oxide (Son: [0101]-[0102]), thereby reading on the limitation of a composite comprising at least a discrete, oxygen-free Si domain or phase dispersed in a SiOx matrix. Son also teaches the silicon can assume the form of particles with an average diameter of about 10 nm to about 500 nm ([0081]), which overlaps with the claimed range for an Si domain. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
Regarding claim 9, the combination above teaches the porous/silicon oxide composite of claim 1, and Son further teaches wherein the composite is a cluster (i.e., in a particle form) that is further encapsulated by or coated with a layer of carbonaceous material which can be graphene, amorphous carbon, graphite, pitch, fullerene, carbon fiber, carbon nanotubes, or a combination of the species ([0146], [0148]), which correspond to the claimed species of carbon and graphene.
Regarding claims 10-11, the combination teaches the porous carbon/silicon oxide composite of claim 9. Because claim 9 only requires one of the claimed species, Son’s teaching of a coating with a layer of carbon inherently satisfies the limitations of claims 10-11.
Regarding claim 12, the combination teaches the porous carbon/silicon oxide composite of claim 1. Son further teaches it may be used for a negative electrode, i.e. an anode, wherein the negative active material composition may include a porous silicon composite cluster, i.e. the porous carbon/silicon oxide ([0162]). Son teaches it may be used for a lithium battery ([0159]). Son also teaches the amounts of the negative active material, the conducting agent, the binder, and the solvent used to prepare the negative active material composition may be the same as those suitably used in lithium batteries and at least one of the conducting agent, the binder, and the solvent may be omitted depending on the use and structure of a lithium battery ([0169]); therefore, the binder and the conducting agent are optional.
Regarding claim 13, the combination teaches the porous carbon/silicon oxide composite of claim 12. Son teaches it can be used in a negative electrode in a lithium battery ([0169]) and further teaches a positive electrode (cathode) and a separator between the anode and the cathode ([0180]) and an electrolyte ([0185]). Fig. 2A of Son shows a separator 124 between positive electrode 123 and negative electrode 122 and teaches the separator may have a low resistance to migration of ions in an electrolyte and have a good electrolyte-retaining ability ([0180]); therefore, ions of the electrolyte are expected to pass through the separator and be in ionic contact with the anode and the cathode.
Conclusion
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/G.L.L./Examiner, Art Unit 1726
/BACH T DINH/Primary Examiner, Art Unit 1726 03/19/2026