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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 7/14/2026 is acknowledged.
Claim 6 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/14/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 regards a production method of porous silicon clathrate electrode active material where the material is used for a cathode active material of a lithium-ion battery. The claim language is not further limiting to a production method of a porous silicon clathrate electrode active material because it is only directed to an intended use of the material. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Krishna et al US 2015/0376016).
Krishna teaches a method for producing a type 2 silicon clathrate, the method comprising:
Providing a composition including silicon clathrate particles containing a type I silicon clathrate and a type II silicon clathrate where the phase fraction of the silicon clathrate is about 80 wt% to 95 wt% type II silicon clathrate and 3 wt% to 10 wt% type I silicon clathrate; and
Etching the type II silicon clathrate to remove at least a part of the type I silicon clathrate in the silicon clathrate particles (see [0009-0010],[0039-0040], and [0044-0046]).
Krishna further teaches where the sodium clathrate produced is in the form of a powder (i.e. particles) (see [0063]).
Krishna does not teach that removing the type I silicon clathrate forms pores in the silicon clathrate particles or increases pores in the silicon clathrate particles.
However, where applicant claims a process in terms of a function, property or characteristic and a process of the prior art is the same as that of the claim but the function is not explicitly disclosed, the examiner may make a rejection under both 35 USC 102 and 103. Here, Krishna teaches a process that is identical to the claimed invention including providing particles comprising both type I silicon clathrate and type II silicon clathrate in comparable proportions to the invention and removing the type I silicon clathrate by etching with hydrofluoric acid like the invention. Absent evidence to the contrary, an artisan would reasonably expect that etching the type I silicon clathrate in a particle comprising a mixture of type I and type II silicon clathrate in the same ranges as the invention would produce or increase pores in Krishna’s silicon clathrate particles by removing the type I silicon clathrate.
Regarding claim 3, Krishna teaches a method where in (b) the silicon clathrate are brought into contact with an acid solution comprising hydrofluoric acid (see [0040]).
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Krishna.
Regarding claim 2, Krishna teaches a method where the proportion of mass of the type I silicon clathrate as to a total mass of the composition containing silicon clathrate particles is 3% or more and 10 wt% or less (see [0046]). 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.Cir. 1990). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method as taught by Krishna where the wt% of the type I silicon clathrate is in any range overlapping with 3 wt% to 10 wt% including the claimed range.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Krishna and in further view of Zhan et al (CN 102400217).
Krishna teaches a method where the silicon clathrate is rinsed with an alcohol to remove residual sodium impurity to prevent the sodium from a violent reaction with the acids, followed by etching with acid containing HF (see [0040] and [0063]). Krishna does not teach a method where the solvent of the hydrogen fluoride solution is a mixed solvent of water and organic solvent.
Zhan teaches a method for producing porous silicon comprising a step of etching with a mixed solution of HF acid (i.e., HF in water) and organic solvent (see Abstract). Zhan teaches that organic solvent in the etchant solution eases surface tension (see [0003]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform a method comprising etching of silicon clathrate with HF etchant solution as taught by Krishna where the etching solution comprises HF with a mixed solvent including organic solvent as taught by Zhan to improve surface tension and thereby improve contact of the silicon clathrate with the etching solution.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A Merkling can be reached at (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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