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, claims 1-21 in the reply filed on 7/3/26 is acknowledged.
Claim 22 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 7/3/26.
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11824198. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims substantially encompasses the claims of US ‘198 and/or obvious variant of one another with slight optimization of ranges.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10622624 in view of Kim (US 2014/0087268). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims substantially encompasses the claims of US ‘624, except for the limitation requiring second amorphous carbon comprising heterogeneous element. The examiner is taking the position that one of the multiple graphene layers corresponds to the claimed second amorphous carbon.
Kim teaches silicon particles having silicon oxide layer on their surfaces further coated with graphene. Kim teaches that doping the graphene with nitrogen or phosphorus improves the electrostatic interactions between the silicon particles having the silicon particles with graphene [0031, 0034].
Therefore, it would have been obvious to the ordinary skilled in the art to dope the graphene with nitrogen or phosphorus for the purpose of achieving a uniform graphene coating on the silicon particles.
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 1-21 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.
Claims 1-6 and 13 recites “heterogeneous element”. The examiner is unclear what chemical element would be considered to be “heterogeneous”. Or alternatively, is the combination of amorphous carbon with elements listed in Group 15 and 17 of the periodic Table is considered to be “heterogeneous”? For the purpose of this examination, the examiner is taking the position that elements that are in Group(s) 15 and/or 17 would consider to be heterogeneous.
Claim 4 recites the second amorphous carbon is on the second carbon flakes. It appears that this recitation is not further limiting as second amorphous carbon would already be on the second carbon flakes. Additionally, claim 4 also recites, the second amorphous carbon is spaced apart from the silicon by the second carbon flakes. It appears this doesn’t further limit the claim as the second carbon flakes is on the silicon suboxide, which is on the silicon. Therefore, the second amorphous carbon is already spaced apart from the silicon by the second carbon flakes. Additionally, claim 4 recites the heterogeneous element in the second amorphous carbon is adjacent to the silicon. The examiner is unclear how the heterogeneous element is adjacent to the silicon when the silicon suboxide and second carbon flakes is present. Does the term adjacent means to be “near”? Clarification is needed for the overall structure of claim 4.
Claim 7 recites that the first amorphous carbon is on the first carbon flakes. It appears that this recitation is not further limitation. This is because first carbon-based coating layer, which comprises first amorphous carbon, which is on the silicon-containing composite, would already be on the first carbon flakes. Claim 7 further recites the first amorphous carbon is spaced apart from the silicon by the first carbon flakes. It appears that this limitation doesn’t further limit the claim as the first amorphous carbon is already on the silicon-containing composite structure, there the first amorphous carbon would already be spaced apart from the silicon by the first carbon flakes. Clarification is needed for the overall structure of claim 7.
Claim Rejections - 35 USC § 102
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.
Claims 1-7, 9-10, and 16-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Son et al. (US 2019/0207221).
Regarding claims 1-2, Son discloses a composite anode active material [0207] comprising a silicon-containing composite structure (11), a first carbon-based coating layer (12) on the silicon-containing composite structure and comprising first amorphous carbon [0089], and second amorphous carbon within the silicon-containing composite structure (all Figs, [0131]), wherein the silicon-containing composite structure comprises porous silicon secondary particles (10, 31), first carbon flakes (10B) [0076], on the porous silicon secondary particles, the porous silicon secondary particles each comprising an agglomerate of plurality of silicon composite particles, wherein the silicon composite primary particles, wherein the silicon composite primary particles comprise silicon, a silicon suboxide on the silicon, and second carbon flakes on the silicon suboxide (Abstract, [0076]), wherein the second amorphous carbon is in pores of the porous silicon secondary particles (All Figs, [0083], [0131]), and the second amorphous carbon comprises a heterogeneous element of nitrogen and phosphorus ([0089], [0109], claim 22), (All Figs).
Regarding claims 3 and 6, please see [0083] [0086], [0108-0109], and [0131].
Regarding claims 4 and 7, please see all Figs.
Regarding claim 5, please see [0108-0109].
Regarding claim 9, please see [0113].
Regarding claim 10, Son discloses that the first carbon and second carbon flakes are graphene (Abstract) and the first and second amorphous carbon include pitch carbon, soft carbon, hard carbon, mesophase carbon pitch carbide, carbon fiber, or a combination thereof [0111].
Regarding claim 16, please see [0114].
Regarding claim 17, Son explicitly discloses that the composite anode active material is used in lithium battery. The instant specification discloses that the generation of the lithium compound is after being the assembled into a lithium battery and undergoing cycling (PGPUB: [0079]). Thereby, Son’s LiPF6 in the electrolyte or other materials [0250] will generate LiF. Therefore, the LiF adjacent to the active material would read upon the claimed lithium compound.
Regarding claim 18-19, please see [0007], 0241-0242, and Fig. 12A.
Regarding claim 20, please see [0247].
Regarding claim 21, Son discloses Cu metal film [0221] and PP or PE as claimed [0242].
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.
Claims 8 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Son et al. (US 2019/0207221)
Regarding claim 8, Son discloses a composite anode active material as claimed, however, fails to explicitly disclose the composite has a porosity of 30% or less or that it is non-porous as presently claimed.
However, a person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation.
Additionally, a person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention was made to optimize the porosity of the composite anode active material to be less than 30%, since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed amount is critical and has unexpected results. In the present invention, one would have been motivated to optimize the porosity on what the end use of the composite anode active material for.
Regarding claim 11, although Son discloses first and second flakes and first and second amorphous carbon, Son fails to explicitly disclose a mixing ratio relationship as claimed. However, a person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation and absence of evidence to the criticality of the claimed relationship.
Regarding claim 12, Son discloses the composite anode active material has a non-spherical form [0099] and discloses the shape and size of the silicon as claimed [0166-0170]. Son fails to explicitly disclose the specific surface area of the composite anode active material as claimed.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the specific surface area within the limits known in the art based on the desired end use of the material since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA) 1980.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Son et al. (US 2019/0207221) in view of Hwang et al. (US 2017/0047584).
Regarding claim 13-14, Son discloses a first carbon-based coating layer, however, fails to disclose a second carbon-based coating layer as claimed.
Hwang discloses a carbon composite comprising silicon-containing composite, wherein a second shell is formed of a carbon, which may be a carbonized polymer [0070, 0152]). It is well-known in the art that carbonizing polymers results in an amorphous carbon and thereby is free of a heterogeneous element. Further, it is known in the art that carbon is either soft or hard. It would have been obvious to one of ordinary skill in the art that Hwang’s carbon is either soft or hard, thereby meeting the claim limitation.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite anode active material to additionally comprise of a second carbon-based coating layer, as suggested by Hwang, in order to increase the mechanical strength of the porous silicon-carbon composite [0071].
Regarding claim 12, Son discloses the composite anode active material has a spherical form [0099]. Son fails to explicitly disclose the specific surface area of the composite anode active material as claimed.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the specific surface area within the limits known in the art based on the desired end use of the material since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA) 1980.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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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.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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