DETAILED ACTION
In reply to Applicant’s telephonic inquiry on May 16, 2026 regarding the omission of newly added claim 11, this office action supersedes the office action mailed May 5, 2026.
The text of those sections of Title 35, U.S. Code not included in this action can
be found in a prior Office action.
Election/Restrictions
Claims 9-10 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 July 16, 2025.
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “is configured to induce the diffusion controlled reaction, thereby creating a non-equilibrium state that suppresses multi-phase transitions and extending a region of a single-phase intercalation transition”, in claim 1. The phrase “is configured” is equivalent to the word “means”, and the terms “to induce, creating, that suppresses, and extending” are equivalent to “function”.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim limitation “the carbon-metal-based anode material nanocomposite is configured to induce the diffusion controlled reaction, thereby creating a non-equilibrium state that suppresses multi-phase transitions and extending a region of a single-phase intercalation transition, such that alkali ions are stored via the single-phase intercalation transition into the metal-based anode material particles” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Here, no association can be found in the specification between the structure, i.e. the carbon-metal-based anode material composite, and the multiple functions, i.e. suppression of multi-phase transitions, extension a region of a single-phase intercalation transition, and storing alkali ions into the metal-based anode material particles”. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
In addition, the entire “thereby” clause is deemed indefinite because of the phrases “multi-phase transitions” and “region of a single-phase intercalation transition”. It cannot be ascertained where those transitions occur in the metal-based anode material particles, and how that results in “alkali ions” being stored in the “single-phase intercalation transition” of the material particles.
Other claims are deemed indefinite in view of their dependence on claim 1
Claim Rejections - 35 USC § 102
Claims 1, 3-6 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JIAO et al. ("Bismuth Nanorod Networks Confined in Robust Carbon Matrix as Long-Cycling and High-Rate Potassium-lon Battery Anodes")¹
Claims 1 and 3: Jiao teaches an anode comprising a carbon matrix and Bi-
nanoparticles (abstract). Jiao states that Bi-based anode is capable of diffusion
controlled reaction ("DCR") just as Bi-Sb based alloy anode (Jiao, page 1, right column).
Thus, the anode of Jiao is capable of DCR. With regards to the mean-plus-function limitations (see the reasoning in the rejection under 35 USC 112 above), as the anode of Jiao is capable of DCR and is able to store alkali ions (Jiao, page 2, left column); the steps between the DCR to the alkali ion storage are not given patentable weight because the anode of Jiao performs the same ways as claimed, namely, capable of DCR and storing of alkali ions. Therefore, the claims are anticipated by Jiao. The burden is on Applicant to show that the process steps within the “thereby” clause requires a product patentably different from the anode of Jiao.
Claim 4: The anode taught by Jiao is capable of storing alkali ions, i.e. potassium
(Jiao, page 2, left column) which are alkali ions and thus the anode of Jiao stores alkali
ions.
Claim 5. The carbon-metal based anode of Jiao has a structure in which the
alloy-based particles are dispersed and embedded in the carbon matrix; wherein the
carbon content is well within the claimed range of 1:99 to 99:1 (Jiao, page 6, left
column).
Claim 6: The metal (Bi) particles of Jiao having a diameter of
about 20-40 nm (Page 2, right column) which anticipates part of the claimed range of
to 30 nm.
Claim 11: The metal in the anode of Jiao is Bismuth (entire document).
Claim Rejections - 35 USC § 103
Claim 6 is further rejected under 35 U.S.C. 103 as being unpatentable over JIAO.
The metal (Bi) particles of Jiao having a diameter of about 20-40 nm (Page 2,
right column) which overlaps the claimed range of 0.5 to 30 nm and thus the range as a
whole would have been prima facie obvious.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Jiao in
view of KR 10-1478160 ("KR'160").
Jiao teaches the claimed anode as discussed above. However, Jiao does not
state the source of the carbon matrix. KR'160 teaches carbon-metal
nanoparticle composite comprising a graphene base and metal nanoparticles dispersed
therein and the metal nanoparticles include Bi and Sb (KR'160, claims 1-3). In light of
KR'160 teaching, the POSITA would have found it obvious to modify the process of Jiao
with that of KR'160 in order to arrive at a graphene matrix for the carbon matrix because
graphene shows excellent stability and thus improve the mechanical property of the
anodes (KR'160, , translation copy, page 5, 1st paragraph).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in
this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE
MONTHS from the mailing date of this action. In the event a first reply is filed within
TWO MONTHS of the mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory period, then the
shortened statutory period will expire on the date the advisory action is mailed, and any
nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be
calculated from the mailing date of the advisory action. In no event, however, will the
statutory period for reply expire later than SIX MONTHS from the mailing date of this
final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOA (Holly) LE whose telephone number is (571)272-1511. The examiner can normally be reached Monday to Friday, 10:00 am to 7:00 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, Alicia Chevalier can be reached at 571-272-1490. 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.
HOA (Holly) LE
Primary Examiner
Art Unit 1788
/HOA (Holly) LE/Primary Examiner, Art Unit 1788
Prosecution Insights