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 .
Examiner’s Comments
Applicants’ response filed on 3/10/2026 has been fully considered. Claims 11-27 are withdrawn and claims 1-27 are pending.
Election/Restrictions
Applicant’s election of Group I, claims 1-10 in the reply filed on 3/10/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 11-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected process, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/10/2026.
Claim Objections
Claims 1 and 6 are objected to because of the following informalities:
The phrase “at least a particulate” in line 1 of claim 1 should be changed to the phrase “each particulate”.
The phrase “said carbon matrix” in line 3 of claim 1 should be changed to the phrase “said porous carbon matrix”.
The phrase “carbon shell” in line 3 of claim 1 should be changed to the term “shell”.
The phrase “the nanowires” in line 4 of claim 1 should be changed to the phrase “the semiconductor nanowires”.
The phrase “the particulate” in line 6 of claim 1 and lines 1-2 of claim 6 should be changed to the phrase “each particulate”.
Appropriate correction is required.
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 1-8 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 1 recites the limitation “the semiconductor material” in lines 6-7 of claim 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation “the catalytic metal” in line 7 of claim 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation “the carbon” in line 8 of claim 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation “the semiconductor” in lines 1-2 of claim 2. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 2, the structure of the Markush group for the semiconductor is improper. The phrase “or a combination thereof” in line 3 of claim 2 should be changed to the phrase “and combinations thereof”.
Regarding claim 3, the structure of the Markush group for the catalytic metal is improper. The phrase “or a combination thereof” in lines 3-4 of claim 3 should be changed to the phrase “and combinations thereof”.
Claim 4 recites the limitation “said carbon” in lines 1-2 of claim 4. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 4, the structure of the Markush group for the carbon is improper. The phrase “or a combination thereof” in line 4 of claim 4 should be changed to the phrase “and combinations thereof”.
Claim 5 recites the limitation “said semiconductor material” in lines 1-2 of claim 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation “the porous particulates” in lines 3 of claim 6. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 7, the structure of the Markush group for the ion-conducting polymer is improper. The phrase “or a combination thereof” in line 13 of claim 7 should be changed to the phrase “and combinations thereof”.
Regarding claim 8, the structure of the Markush group for the electron-conducting polymer is improper. The phrase “or a combination thereof” in lines 11-12 of claim 8 should be changed to the phrase “and combinations thereof”.
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 1-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Fang et al (US 2016/0285084 A1).
Regarding claim 1, Fang discloses porous carbon/semiconductor nanowires (secondary particles of Si particles with silicon nanowires wrapped with exfoliated graphite flakes; paragraphs [0043] and [0048]) where each particulate has: a particle size from 1 µm to 30 µm (secondary particles having a particle size from 1 µm to 30 µm; paragraph [0048]), a porous carbon matrix or shell (exfoliated graphite flakes; paragraph [0043]), semiconductor nanowires encapsulated by the shell (Si particles having silicon nanowires wrapped with exfoliated graphite flakes; paragraphs [0043] and [0045]) where the semiconductor nanowires have a diameter of 2-20 nm (silicon nanowires have a diameter of 2-20 nm; paragraph [0045]) and pores adjacent to the semiconductor nanowires (secondary particles having pores where silicon nanowires can grow; paragraph [0019]) where an amount of semiconductor nanowires (large number of silicon nanowires enabling an anode active material to deliver higher specific capacity at low and high charge /discharge rates; paragraph [0115]) and the semiconductor nanowires and a catalytic metal forming an eutectic point in a phase diagram (catalyst metal-coated mixture exposed to a high temperature environment from 300 °C to 2,000 °C leading to silicon nanowires emanating or extruding from silicon particles; paragraph [0045]).
The diameter of the silicon nanowires overlaps the claimed range for the diameter of the semiconductor nanowires.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to provide a larger number of smaller silicon nanowires which are preferred features when used an anode active material of a lithium-ion battery (paragraph [0044]). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Fang does not disclose the porous carbon/semiconductor nanowires comprising the semiconductor nanowires occupying a weight fraction from 1% to 99% of each particulate.
However, it would have been obvious to one of ordinary skill in the art to adjust the amount of semiconductor nanowires to occupy a weight fraction from 1% to 99% of each particulate because doing so provide an anode active material to deliver higher specific capacity at low and high charge /discharge rates (paragraph [0115]).
Fang does not disclose the porous carbon/semiconductor nanowires comprising the pores having a non-zero residual pore volume Vp unoccupied by the carbon or semiconductor nanowires and the semiconductor nanowires having a total volume Vn where a ratio of Vp/Vn is from 0.01 to 10.
However, it would have been obvious to one of ordinary skill in the art to adjust the pores such that a ratio of Vp/Vn is from 0.01 to 10 because doing so allows space for the silicon nanowires to grow and allows entry of liquid electrolyte (paragraph [0019]).
Regarding claim 2, Fang discloses the porous carbon/semiconductor nanowires of claim 1 as noted above and Fang discloses the porous carbon/semiconductor nanowires comprising the semiconductor nanowires comprising a material of Si (silicon nanowires; paragraph [0045]).
Regarding claim 3, Fang discloses the porous carbon/semiconductor nanowires of claim 1 as noted above and Fang discloses the porous carbon/semiconductor nanowires comprising a catalyst metal selected from Cu. Ni, Co, Mn, Fe, Ti, Al, Ag, Au, Pt, Pd and combinations thereof (catalytic metal selected from Cu. Ni, Co, Mn, Fe, Ti, Al, Ag, Au, Pt, Pd and combinations thereof; paragraph [0022]).
Regarding claim 4, Fang discloses the porous carbon/semiconductor nanowires of claim 1 as noted above and Fang discloses the porous carbon/semiconductor nanowires comprising graphite (exfoliated graphite flakes; paragraph [0043]).
Regarding claim 5, Fang discloses the porous carbon/semiconductor nanowires of claim 1 as noted above and Fang discloses the porous carbon/semiconductor nanowires comprising semiconductor nanowires and a catalytic metal forming an eutectic point during a nanowire formation procedure (catalyst metal-coated mixture exposed to a high temperature environment from 300 °C to 2,000 °C leading to silicon nanowires emanating or extruding from silicon particles; paragraph [0045]).
Regarding claim 6, Fang discloses the porous carbon/semiconductor nanowires of claim 1 as noted above and Fang discloses the porous carbon/semiconductor nanowires comprising an ion-conducting polymer permeating into the pores (binder of PVDF; paragraph [0133]).
The coating of PVDF onto the secondary particles would result in some of the PVDF permeating into the pores of the secondary particles.
Since PVDF is the same as one of Applicant’s preferred materials for the ion-conducting polymer, the binder of PVDF would inherently have a lithium-ion conductivity greater than 10-8 S/cm.
Regarding claim 7, Fang discloses the porous carbon/semiconductor nanowires of claim 6 as noted above and Fang discloses the porous carbon/semiconductor nanowires comprising the ion-conducting polymer selected from PVDF (binder of PVDF; paragraph [0133]).
Regarding claim 9, Fang discloses a battery electrode containing multiple porous carbon/semiconductor nanowire particles of claim 1 (secondary particles used as an anode active material for a lithium-ion battery; paragraphs [0044] and [0048]).
Regarding claim 10, Fang discloses a lithium ion battery comprising multiple porous carbon/semiconductor nanowire particles of claim 1 as an anode active material (secondary particles used as an anode active material for a lithium-ion battery; paragraphs [0044] and [0048]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Fang et al (US 2016/0285084 A1) in view of Shi et al (US 2009/0305135 A1).
Regarding claim 8, Fang discloses the porous carbon/semiconductor nanowires of claim 6 as noted above.
Fang does not disclose the porous carbon/semiconductor nanowires comprising an electron-conducting polymer selected from polyaniline.
However, Shi discloses a conductive nanocomposite comprising a conductive binder comprising polyaniline (paragraph [0129]) and a binder of PVDF (paragraph [0152]).
It would have been obvious to one of ordinary skill in the art to modify the porous carbon/semiconductor nanowires to substitute the PVDF of Fang for the polyaniline of Shi because doing so provides increased electrical conductivity of the nanocomposite (paragraph [0133] of Shi).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SATHAVARAM I REDDY/Examiner, Art Unit 1785
Prosecution Insights