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 Amendment
The amendment filed 06/22/2026 has been entered. Claims 1-20 remain pending in the application, with claims 11-20 withdrawn as a non-elected invention. Applicant's amendments to the claims have overcome each and every 112(b) rejection previously set forth in the non-final office action; these rejections are therefore withdrawn.
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 5 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. Claim 5 recites a range “1.5≤ID/IG≤0.8” which is indeterminate since a value cannot simultaneously be greater than 1.5 and less than 0.8.
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 and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Tabuchi et al. 2006 (US 20060166098 A1), in view of Yuge et al. 2013 (JP 2013187097 A).
Regarding claim 1, Tabuchi teaches a silicon carbon composite material (composite particle C, 0009), wherein: the silicon carbon composite material comprises a core and a carbon coating layer, and at least one part of a surface of the core is covered by the carbon coating layer (Fig. 5); and the core comprises a carbon matrix and SiOx particles, (carbon particles, Fig. 5), and wherein 0.9<x<1.7 (0016).
Tabuchi does not teach that the carbon matrix of carbon particles is continuously distributed and comprises N channels, wherein a size of the SiOx particle is 0.1 nm to 0.9 nm, and N>1 and N is an integer.
However, Yuge et al. teach an analogous silicon carbon composite material, which is pertinent to the field of endeavor as Tabuchi since both references teach materials for use in lithium-ion batteries, to optimize the performance of lithium cycling. Yuge teaches a composite material comprising silicon oxide SiOx (0≤x≤1.5)([0023]) and a carbon nanohorn structure (a continuous carbon matrix) comprising integral N channels (Fig. 1), wherein the diameter of the SiOx particles is 0.3 nm or more and 30 nm or less ([0023]) and the particles are filled in the channels (Fig. 1). 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).
It would be obvious to one skilled in the art to combine the teachings of Tabuchi and Yuge by using the continuous carbon matrix taught by Yuge as a substitute for the carbon particulate matrix taught by Tabuchi and by modifying the particle size of SiOx to be as taught by Yuge; one would be motivated to do so because Yuge teaches that the nanohorn matrix allows the resulting composite material to see minimal loss due to resistance during the lithium insertion and deinsertion process (0036), since the nanohorn assembly exhibits a template effect that reduces degradation from the cycling process (0034), and Yuge teaches that the particle size of the SiOx allows it to be embedded in the nanohorn aggregate structure (0023). Furthermore, one skilled in the art would expect reasonable success and predictable performance by such a combination since Tabuchi teaches that the coating of a silicon-carbon composite improves the cycle life of the product, and reduces deterioration of the product (0013). One skilled in the art would therefore arrive at the claimed invention with reasonable prediction of success.
Regarding claim 2, Tabuchi and Yuge teach the invention as applied to claim 1. Tabuchi further teaches the proportion of the weight of the composite particle (C) to the total weight of the composite particle (C) and the carbon material (D) falls within the range of 60 wt. % to 99.5 wt. % (0015) and thus the carbon material D comprises a mass percentage ranging from 0.5 wt% to 40 wt%, which overlaps with the claimed range of 10 to 40 wt%. As set forth in MPEP 2144.05, in the case where the claimed range "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. 1990).
Regarding claim 6, Tabuchi and Yuge teach the invention as applied to claim 1. While they do not explicitly teach the NMR peak ratios as claimed, the courts have held that when chemical compositions are physically the same, properties must be the same; see MPEP 2112.01(II). In the instant case, the composition of the silicon-carbon composite materials suggested by the prior art are identical to the claimed invention, and it is known in the art that the NMR spectrum and resulting ratios between peaks would necessarily follow from the chemical composition; therefore one skilled in the art would arrive at the claimed range of values for a ratio of strength Isi-c of the Si-C peak to strength Isi-o of the Si-O peak from the combination of teachings of Tabuchi and Yuge.
Regarding claim 7, Tabuchi and Yuge teach the invention as applied to claim 1. Tabuchi further teaches an average interplanar spacing d(002) in the range of 0.3354 to 0.35 nm (0040). While Tabuchi and Yuge do not explicitly teach that the thickness of the carbon coating layer is 5 nm to 20 nm as claimed, Tabuchi teaches that the relative amount of carbon material used as the coating (B) is a result effective variable that is critical to maintaining cycle performance without pulverizing the silicon particles (0053); therefore one skilled in the art would find it obvious to optimize the amount of carbon coating within the wt% range taught by Tabuchi and thereby arrive at the claimed thickness of the coating layer, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Therefore one skilled in the art would arrive at the claimed invention prior to the effective filing date.
Regarding claim 8, Tabuchi and Yuge teach the invention as applied to claim 1. Tabuchi further teaches that the silicon carbon composite material may further comprise at least one of elements N, P, B, Cl, Br, and I (0034).
Regarding claim 9, Tabuchi and Yuge teach the invention as applied to claim 1. Tabuchi further teaches that the particle size of the coated composite particle A (corresponding to the composite material of the present invention) ranges from 0.1 to 30 microns (0058), which overlaps with the claimed range of 50 nm to 2 microns. As set forth in MPEP 2144.05, in the case where the claimed range "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. 1990).
Regarding claim 10, Tabuchi and Yuge teach the invention as applied to claim 1. Further, a product-by-process limitation of “wherein the silicon carbon composite material is prepared by…” of claim 10 is noted. It is considered that while the product of the reference is made by a different process, the product made and disclosed is the same as being claimed. "[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 difference 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. In the instant case, Tabuchi teaches a silicon carbon composite material (composite particle C, 0009), wherein the silicon carbon composite material comprises a core and a carbon coating layer, and at least one part of a surface of the core is covered by the carbon coating layer (Fig. 5); and the core comprises a carbon matrix and SiOx particles, (carbon particles, Fig. 5), and wherein 0.9<x<1.7 (0016). Yuge teaches a composite material comprising silicon oxide SiOx (0≤x≤1.5)([0023]) and a carbon nanohorn structure (a continuous carbon matrix) comprising integral N channels (Fig. 1), wherein the diameter of the SiOx particles is 0.3 nm or more and 30 nm or less ([0023]) and the particles are filled in the channels (Fig. 1). The combination of teachings of Tabuchi and Yuge thus arrives at the claimed invention of claim 1, and one would be motivated to combine these teachings because Yuge teaches that the nanohorn matrix allows the resulting composite material to see minimal loss due to resistance during the lithium insertion and deinsertion process (0036), since the nanohorn assembly exhibits a template effect that reduces degradation from the cycling process (0034), and Yuge teaches that the particle size of the SiOx allows it to be embedded in the nanohorn aggregate structure (0023). Therefore the composition as suggested by the prior art is identical to the claimed composition, regardless of the manner of obtaining the composition.
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Tabuchi and Yuge, as applied to claim 1, and in further view of Yang et al. 2007, Nanowindow-Regulated Specific Capacitance of Supercapacitor Electrodes of Single-Wall Carbon Nanohorns, Journal American Chemical Society 10 January 2007; 129 (1): 20–21, herein referred to as Yang.
Regarding claim 3, Tabuchi and Yuge teach the invention as applied to claim 1. They do not explicitly teach the property of the specific surface area as claimed, falling within the range of 800 m2/g to 1400 m2/g.
However, Yang teaches a material comprising carbon nanohorns (line 3) wherein oxidation of the nanohorn structure creates a “holey” structure that drastically increases the specific surface area (paragraph 1) (“The oxidation treatment remarkably increases the micropore surface area and micropore volume due to the hole opening of SWNHs,” page 1 col. 2). Yang reports a SSA of the opened nanohorn structures having a value of 1045 m2/g (Table 1) for nanohorn size of about 2-3 nm (p. 1 col. 2 bottom), falling within the claimed region. Since Yuge teaches nanohorns of comparable size (2-5 nm, 0019) subjected to hole opening treatment (0049) and Yang teaches the advantage of having a surface area falling within the claimed range as increasing the porosity of the SWNH and therefore guest molecules can access the internal spaces (paragraph 1) and Yuge teaches the silicon particles being filled in the nanohorns (Fig. 1), it would be obvious to one skilled in the art to modify the structure taught by Yuge to arrive at the surface area taught by Yang and therefore arrive at the claimed surface area.
Regarding claim 4, Tabuchi, Yuge, and Yang teach the invention as applied to claim 3. Tabuchi further teaches a BET specific surface area of the composite particle C (corresponding to the composite material claimed) ranging from 0.1 to 10 m2/g (0042), overlapping with the claimed range of 5 to 20 m2/g. As set forth in MPEP 2144.05, in the case where the claimed range "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. 1990).
Regarding claim 5, Tabuchi, Yuge, and Yang teach the invention as applied to claim 3. Tabuchi further teaches that the R value, corresponding to the ratio of 1360 to 1580 cm-1 peaks (0125), is approximately 0.8 (0137), falling within the claimed ratio of 0.8-1.5. Here the value of 1360 cm-1 is interpreted to meet the limitation of the ID peak value, and 1580 is interpreted to meet the limitation of the IG peak value.
Response to Arguments
Applicant’s arguments filed on 6/22/2026, regarding rejections previously set forth under 35 U.S.C. 103 over claim 1, see Remarks page 7 regarding the limitation of a carbon coating on the carbon matrix with SiOx particles, and claim 2, Remarks page 8 regarding the limitation of the mass percentage of a carbon matrix with respect to the core, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the combination of teachings of Tabuchi and Yuge. THIS ACTION IS THEREFORE MADE NONFINAL. While applicant has argued that the variables claimed in the present invention are not disclosed by the prior art to be result effective variables of the field of endeavor, this is not found to be the case in view of the teachings of Tabuchi as set forth above.
Applicant's arguments regarding the rejections made under 35 U.S.C. 112(b) with respect to claim 1 has been fully considered and is found persuasive; therefore this rejection and the rejections of dependent claims have been withdrawn. However, applicant’s arguments regarding the rejections made under 35 U.S.C. 112(b) with respect to claims 3-6 have been fully considered but they are not persuasive. As discussed above, evidence of record (Liu 2014, provided on the IDS filed on 12/18/2024) suggests that the claimed parameters have specific or variable meanings to one of ordinary skill in the art, therefore these limitations remain indefinite. The rejections set forth in the previous Office action are therefore maintained.
Conclusion
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/Eileen Moudou/ Examiner, Art Unit 1738
/MICHAEL FORREST/ Primary Examiner, Art Unit 1738
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