CTNF 18/385,008 CTNF 94608 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. DETAILED ACTION 07-30-03-h AIA Claim Interpretation Claim 2 recites “…wherein the nano silicon primary particles have a full width at half maximum FWHM (111) at a (111) plane of about 0.3 degree ( o ) to about 7 degree ( o ) by an X-ray diffraction using a CuKα ray”. The disclosure recites “A particle diameter of the nano silicon primary particles may be about 10 nm to about 1,000 nm, e.g., about 20 nm to about 150 nm…If the particle diameter of the nano silicon primary particles is within the ranges, it may have the suitable full width at a half maximum, FWHM(111) of about 0.3 degree (°) to about 7 degree (°)” (P35; PGPUB US20240222604A1). Therefore, it the nano silicon primary particles have a diameter in a range of 10 nm to 1,000 nm the limitations of claim 2 will be met. Claim 6 recites “The negative active material for a rechargeable lithium battery as claimed in claim 1, wherein the negative active material for the rechargeable lithium battery is prepared by : adding a Na source to a nano silicon liquid to prepare a mixed liquid; drying the mixed liquid to prepare a dried product; mixing the dried product with an amorphous carbon precursor to prepare a mixture; and heat-treating the mixture” and claim 7 recites “The negative active material for a rechargeable lithium battery as claimed in claim 6, wherein the Na source comprises NaOH, Na 2 CO 3 , or combinations thereof”. Claims 6-7 are interpreted as product-by-process claims. Product-by-Process claims/limitations are NOT limited to the manipulations of the recited steps, only the structure implied by the steps. Determination of patentability is based solely on the defined product limitations. If a product/structure of the negative active material of claim 1 appears to be identical or substantially similar to that claimed, the burden shifts to Applicant to come forward with evidence establishing that the claimed process steps impart distinctive structural characteristics to the claimed product resulting in an unobvious difference between the claimed product and the prior art product. Therefore, where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness can be established even though the products are produced by a different process and thus the limitations of claims 6-7 will be met. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 2 and 4 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. 07-34-03 AIA The term “ about ” in claim s 2 and 4 is a relative term which renders the claim indefinite. The term “ about ” is 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 (e.g. to avoid infringing upon Applicant’s invention). Therefore, the claims are indefinite . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim (s) 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Uchiyama et al. (US 20200365898) . Regarding claim 1 , Uchiyama teaches a negative active material for a rechargeable lithium battery, the negative active material comprising: a silicon-carbon composite, or negative active material particles comprising: secondary particles 13 in which nano silicon primary particles 12 are agglomerated, and an amorphous carbon coating layer, or a conductive layer 14 that may comprise carbon black (a type of amorphous carbon) on a surface of each of the secondary particles, or composite particles 13 (P22.44-45; Fig. 1); and sodium silicate 11 (P31-32.36-38; Fig 1). Regarding claim 2 , Uchiyama teaches a diameter of the nano silicon primary particles, or silicon particles 12 is 200 nm or less (P26). As noted in the claim interpretation, if a silicon particle has a diameter of “about 10 nm to about 1,000 nm” it will be interpreted as having a full width at a half maximum, FWHM(111) of about 0.3 degree (°) to about 7 degree (°)”. Furthermore, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Regarding claim 3 , Uchiyama teaches the sodium silicate 11 is on a surface of the nano silicon primary particles 12 (P22.31-36; Fig. 1). Regarding claim 4 , Uchiyama teaches the silicon-carbon composite 10 has an average particle diameter of 3 to 20 µm, falling within the claimed range of about 30 µm or less. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05- I Regarding claim 5 , Uchiyama teaches the silicon-carbon composite further includes crystalline carbon, or graphite may be included (P44-45) Regarding claim 6 , Uchiyama teaches all of the positively recited structure of the claimed product, or negative active material of claim 1 (P22.31-32.36; Fig 1). As noted in the claim interpretation, the determination of patentability is based upon the product structure itself. The patentability of a product does not depend on its method of production or formation. 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 MPEP 2113 Therefore, absent any evidence to the contrary, since a substantially identical product has been recited serving the same function as the claimed compound, one of ordinary skill in the art would not expect the process to impart any property not appreciated by the Uchiyama. Regarding claim 7 , Uchiyama teaches all of the positively recited structure of the claimed product, or negative active material of claim 1 (P22.31-32.36; Fig 1). As noted in the claim interpretation, the determination of patentability is based upon the product structure itself. The patentability of a product does not depend on its method of production or formation. 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 MPEP 2113 Therefore, absent any evidence to the contrary, since a substantially identical product has been recited serving the same function as the claimed compound, one of ordinary skill in the art would not expect the process to impart any property not appreciated by the Uchiyama. Regarding claim 8 , Uchiyama teaches a rechargeable lithium battery, comprising: a negative electrode including the negative active material of claim 1; a positive electrode; and an electrolyte (P16.38). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amanda Rosenbaum whose telephone number is (571)272-8218. The examiner can normally be reached Monday-Friday 9:00 am-5 pm. 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, Nicholas A. Smith can be reached at (571) 272-8760. 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. /Amanda Rosenbaum/Examiner, Art Unit 1752 /Helen Oi K CONLEY/Primary Examiner, Art Unit 1752 Application/Control Number: 18/385,008 Page 2 Art Unit: 1752 Application/Control Number: 18/385,008 Page 3 Art Unit: 1752 Application/Control Number: 18/385,008 Page 4 Art Unit: 1752 Application/Control Number: 18/385,008 Page 5 Art Unit: 1752 Application/Control Number: 18/385,008 Page 6 Art Unit: 1752 Application/Control Number: 18/385,008 Page 7 Art Unit: 1752 Application/Control Number: 18/385,008 Page 8 Art Unit: 1752
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