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 .
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.
Response to Election/Restrictions
Applicant’s election without traverse of Group II claims 1-10 in the reply filed on 12/23/2025 is acknowledged.
Claims 11-20 are withdrawn as non-elected Groups.
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 1-10 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.
The term of in communication with outside” recited in claim is vague and unclear, because it is not clear to what the term “communication” refers to. The terms “communication” and “outside” not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriated corrections are required.
The measurement parameters for determine “size of the SiOx particles” recited in claim 1, “specific surface area” recited in claim 3-4, Raman Spectrogram recited in claim 5, and “Si-C peak and Si-O peak” in NMR recited in claim 5 are unclear. One skilled person is aware that the method significantly influences the obtained these particle size value, specific surface area, Raman, NMR peak strength. No measurement method could be found in the instant specification as filed.
All other claims depend directly or indirectly from the rejected claims and are, therefore, also rejected under 35 USC § 112(b) for the reasons set forth above.
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 1-6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Yuge et al. (JP 2013-187097 A and English translation, applicants submitted in IDS).
Regarding claim 1, Yuge et al. teach a silicon carbon composite material comprising silicon oxide SiOx (0≤x≤1.5)([0023]) and a carbon nanohorn (the claimed carbon matrix). Carbon nanohorn aggregates having openings (the claimed N channels ) which would expect to communication with outside. By adsorbing the SiOx precursor inside the carbon nanohorn aggregates having the openings. The diameter of SiOx is 0.3-30 nm. The SiOx and carbon nanohorn are formed the instant claimed core and SiOx is covered by a carbon layer (claims 1-8).
The size of SiOx and x values overlap the instant claimed ranges. The references differ from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges or “close” range, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claim 2, Yuge et al. teach 5%wt SiOx-CNHox with graphite (Examples 1-2).
The differences in concentration will not support the patentability of subject matter, this is a case of prima facie obviousness, as one having ordinary skill in the art at the time the invention was made, given the general conditions taught by Yuge et al.
Regarding claims 3-6, although Yuge et al. do not specifically disclose the physical properties for the carbon matrix and silicon carbon composite, the combined reference of Yuge et al. teach all of the claimed reagents, composite and method of making thereof, the physical properties of the resulting composition (i.e., specific surface area, Raman spectrogram, NMR peak and ratio of strength, carbon coating layer 5-20 nm and a carbon atom interlayer spacing) would necessarily follow as set forth in MPEP 2112.01(II).[1]
Regarding claim 10, a product-by-process limitation of “wherein the silicon carbon composite material is prepared by…” of claim 10 is noted. It is considered while the product of the reference is made by a different process, the product made and disclosed is the same as being claimed. see "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802,218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yuge et al. as applied to claim 1 above, and further in view of Hu et al. (CN 111755683 A and English translation, applicants submitted in IDS).
Regarding claim 7, although Yuge et al. do not specifically disclose the thickness layer and a carbon atom interlayer spacing d002 as per applicant claim 7, Hu et al. teach silicon carbon composition comprising a coated carbon layer having a thickness 10-1000 nm which overlaps the instant claimed ranges (Abstract).
The references differ from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges or “close” range, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the thickness of the coated carbon layer taught by Hu et al. in the silicon carbon composite taught by Yuge et al. to obtain the invention as specified in the claim 1, motivated by the fact that it is stabilize the structure of silicon in the charging and discharging process, relieve the expansion and achieve the effect of improving the electrochemical performance, a carbon material with high conductivity and high specific surface area is urgently needed ([0008]-[0009]).
Since both of Yuge et al. and Hu et al. teach silicon carbon composites comprising a coated carbon layer, one would have a reasonable expectation of success.
Since the combined the combined reference of Yuge et al. and Hu et al. teach all of the claimed reagents, composite and method of making thereof, the physical properties of the resulting composition (i.e., carbon coating layer 5-20 nm and a carbon atom interlayer spacing) would necessarily follow as set forth in MPEP 2112.01(II).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yuge et al. as applied to claim 1 above, and further in view of Kim et al. (US 2020/0388846 A1).
Regarding claim 9, although Yuge et al. do not specifically disclose the silicon carbon composite comprising other element as per applicant claim 8, Kim et al. teach a silicon carbon composite comprising a heteroatom such as B, P and N (claims 3-4).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the heteroatom such as B taught by Kim et al. in the silicon carbon composite taught by Yuge to obtain the invention as specified in the claim 8, motivated by the fact that the resulting silicon carbon composite improves the electrical conductivity and lifetime characteristic of the battery by comprising the amorphous silicon-carbon composite, and a lithium secondary battery ([0012]).
Since both of Yuge et al. and Kim et al. teach silicon carbon composites for lithium battery, one would have a reasonable expectation of success.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yuge et al. as applied to claim 1 above, and further in view of Yue et al. (CN 103474667 A and English translation, applicants submitted in IDS).
Regarding claim 9, although Yuge et al. do not specifically disclose a particle size of the silicon carbon composite 50-2 µm as per applicant claim 9, Yue et al. teach a silicon carbon composite having a particle diameter is 2 µm ([00017]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the particle diameter of 2 µm taught by Yue et al. in the silicon carbon composite taught by Yuge et al. to obtain the invention as specified in the claim 1, motivated by the fact that it improves the ion conductivity, the organic cracking carbon layer is the outermost coating of the silicon-carbon composite negative electrode material. The silicon-carbon composite negative electrode material has excellent cycle performance and multiplying power charging and discharging performance and relatively low volume expansion effect Abstract).
Since both of teach Yuge et al. and Yue et al. silicon carbon composites, one would have a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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YUN . QIAN
Examiner
Art Unit 1738
/YUN QIAN/ Primary Examiner, Art Unit 1738
[1][1] “Products of identical chemical composition cannot 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).