DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 11, 2026 has been entered.
Status of Claims
Claims 1-9 and 11-20 are pending, wherein claims 1 and 8-9 are amended. Claims 1-9 and 11-20 are being examined on the merits in this office action.
Remarks
Applicant’s amendments and arguments have been entered. A reply to the Applicant’s remarks/arguments is presented after addressing the claims.
Any rejections and/or objections made in the previous Office Action and not repeated below, are hereby withdrawn in view of Applicant’s amendments or/and arguments.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. References cited in the current Office action can be found in a prior Office action.
Claim Interpretations
The recitation “the pore volume comprises greater than 80% [of] microporosity” is interpreted in light of the instant specification:
As used in herein, the percentage "microporosity," "mesoporosity" and "macroporosity" refers to the percent of micropores, mesopores and macropores, respectively, as a percent of total pore volume. For example, a carbon scaffold having 90% microporosity is a carbon scaffold where 90% of the total pore volume of the carbon scaffold is formed by micropores.
Claim Rejections - 35 USC § 103
Claims 1-9 and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sakshaug et al. (US 20170170477 A1, hereafter Sakshaug).
Regarding claim 1, Sakshaug teaches a lithium-silicon battery (e.g., [0003], [0044], [0272]) comprising an anode (e.g., [0287]) comprising a silicon-carbon composite (See, at least Abstract, [0003]) and a conductive additive comprising polyacrylonitrile (PAN) (See at least [0109]) for providing a porous substrate ([0110]). Note that although Sakshaug does not expressly use the term “conductive additive” to characterize PAN, it does implicitly teach a conductive additive PAN (PAN is a conductive polymer, see indicated in [0285], [0502], etc.).
Sakshaug further teaches that the silicon-carbon composite comprises a carbon scaffold (e.g., [0003], L5-6: “a porous scaffold, for example a carbon …”) comprising a pore volume, wherein the pore volume comprises greater than 80% of microporosity (e.g., “the porous carbon scaffold comprises 80-95% micropores”, [0179], L12-14),
and that the silicon-carbon composite comprises:
i) a silicon content of 30% to 60% by weight ([0328], L7); and
iii) a surface area less than 30 m2/g ([0297], L5).
Sakshaug further teaches the surface area of the silicon-carbon composite may be “below 10 m2/g” ([0297]) and a silicon content may be 40-50% ([0328]). These ranges overlap the instantly claimed ranges of less than 30 m2/g and from 30% to 60% by weight, respectively. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
The instantly claimed ii) “a Z of less than 5, wherein Z = 1.875 x [(M1100 — M)/M1100] x 100, wherein M1100 is a mass of the silicon-carbon composite at 1100 °C and M is the minimum mass of the silicon-carbon composite between 800 °C and 1100 °C when the silicon-carbon composite is heated under air from about 25 °C to about 1100 °C, as determined by thermogravimetric analysis” represent characteristics or properties of the silicon-carbon composite. Since Sakshaug teaches the same silicon-carbon composite as instantly claimed, including the claimed composition, structure, silicon content and surface area, the claimed characteristics or properties are necessarily present. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01. The applicant's product and that of the prior art are identical or substantially identical, the burden shifts to the applicant to overcome the rejection by providing evidence that the prior art product does not necessarily or inherently possess a relied-upon characteristic of the applicant's claimed product. See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). See MPEP § 2112.
The following limitation about [Symbol font/0x66]
iv) a [Symbol font/0x66] of greater than or equal to 0.12, wherein [Symbol font/0x66] is a parameter associated with a differential capacity curve (dQ/dV vs V) for the anode when embodied in a half-cell coin cell such that [Symbol font/0x66] = (Max peak height dQ/dV in Regime I)/(Max peak height dQ/dV in Regime III), in which Regime I is 0.8 V-0.4V and Regime III is 0.15V-0V.
represents a characteristic or property of the “half-cell coin cell” comprising an anode comprising the claimed silicon-carbon composite. The said characteristic or property results from an intended-use of the anode comprising the claimed silicon-carbon composite in a half-cell coin cell having a structure and composition as amended. The said intended-use means that the anode comprising the claimed silicon-carbon composite is intended to be used as one of electrodes of for “a half-cell coin cell”. However, a statement of intended use in an apparatus claim does not distinguish over the prior art apparatus. See MPEP § 2112. Since Sakshaug teaches a similar anode comprising a silicon-carbon composite to that as claimed, as addressed above, the claimed characteristic or property of “[Symbol font/0x6A] greater than or equal to 0.15” when the silicon-carbon composite is used in “a half-cell coin cell” as claimed is reasonably expected. Products of identical chemical composition cannot have mutually exclusive properties.
Note that in apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967). In the instant case, the use of the silicon-carbon composite of Sakshaug is capable of performing the intended-use, i.e., the silicon-carbon composite included in the anode is capable of being used in a half-cell coin cell.
Still as to the claimed “[Symbol font/0x66]”, note that the applicant's product and that of the prior art are identical or substantially identical, the burden shifts to the applicant to overcome the rejection by providing evidence that the prior art product does not necessarily or inherently possess a relied-upon characteristic of the applicant's claimed product. See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). See MPEP § 2112.
Regarding claim 2, Sakshaug teaches the lithium-silicon battery of claim 1, wherein the porous carbon scaffold comprises 80-95% micropores ([0179], L12-14), overlapping the instantly claimed “greater than 90%” and reading on “greater than 90% of the carbon scaffold pore volume is microporosity”. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 3, Sakshaug teaches the lithium-silicon battery of claim 1, wherein the silicon-carbon composite comprises a surface area less than 10 m2/g ([0297], L6).
Regarding claim 4, Sakshaug teaches the lithium-silicon battery of claim 1, wherein the silicon-carbon composite comprises a silicon content of 40% to 50% by weight ([0328], L7), anticipating the instantly claimed 40% to 60% by weight.
Regarding claim 5, Sakshaug teaches the lithium-silicon battery of claim 1, and the instantly claimed “the silicon-carbon composite comprises a Z less than 4” represents a characteristic or property of the silicon-carbon composite. Since Sakshaug teaches the same silicon-carbon composite as instantly claimed, the claimed characteristic or property is necessarily present. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.
Regarding claim 6, Sakshaug teaches the lithium-silicon battery of claim 1, and the instantly claimed “the [Symbol font/0x6A] is greater than or equal to 0.2” represents a characteristic or property of “a half-cell coin cell” comprising the anode comprising the silicon-carbon composite. Since Sakshaug teaches the same silicon-carbon composite as instantly claimed, the claimed characteristic or property is necessarily present. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.
Regarding claim 7, Sakshaug teaches the lithium-silicon battery of claim 1, wherein the silicon-carbon composite further comprises a Dv50 ranging from 500 nm to 5 µm ([0188], L10), overlapping the instantly claimed from 5 nm to 20 microns. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claims 8-9, Sakshaug teaches the lithium-silicon battery of claim 1, and the limitations recited in claims 8-9 represent characteristics or properties of the lithium-silicon battery. Since Sakshaug teaches the same lithium-silicon battery, as addressed above, the claimed characteristics or properties are necessarily present. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.
Regarding claim 11, Sakshaug teaches the lithium-silicon battery of claim 1, wherein the anode comprises a binder ([0288], L14).
Regarding claim 12, Sakshaug teaches the lithium-silicon battery of claim 1, wherein the anode comprises the silicon-carbon composite at a concentration, for example, ranging from 45% to 55%of the electrode ([0288]), reading the instantly claimed from 5% to 95% of the dry weight of the anode.
Regarding claim 13, Sakshaug teaches the lithium-silicon battery of claim 1, and further discloses that a desired porosity of the carbon can be obtained by various methods as known in the art (See at least [0116]). Since the carbon is a part of the anode, a desired porosity of the anode as claimed can be accordingly obtained by tuning the porosity of the carbon. One of ordinary skill in the art would readily arrive at the claimed porosity of from 10% to 50% through routine experimentation or optimization within prior art conditions, as taught by Sakshaug (at least [0116]). See MPEP § 2144.05 IIA.
Regarding claims 14-15, Sakshaug teaches the lithium-silicon battery of claim 1, and further teaches the lithium-silicon battery comprises a cathode (See, at least, [0425], [0291], [0291]). The capacity ratios as claimed in claims 14-15 represent characteristics or properties of the lithium-silicon battery (See also 112 rejections above). Since Sakshaug teaches the same lithium-silicon battery as claimed, the claimed characteristics or properties are necessarily present. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.
Regarding claim 16, Sakshaug teaches the lithium-silicon battery of claim 1, wherein the lithium-silicon battery comprises an electrolyte such as LiPF6 at 1 M ([0438]), anticipating the instantly claimed from 0.9 M to 2 M.
Regarding claim 17, Sakshaug teaches the lithium-silicon battery of claim 1, wherein the lithium-silicon battery comprises an electrolyte, such as FEC at a concentration of 10% (at least, [0562]), anticipating the instantly claimed 0.1% to 30%.
Regarding claims 18-20, Sakshaug teaches the lithium-silicon battery of claim 1, and the limitations recited in claims 18-20 represent characteristics or properties of the lithium-silicon battery. Since Sakshaug teaches the same lithium-silicon battery as claimed in claim 1, the claimed characteristics or properties are necessarily present. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.
In addition, the claimed limitations in claims 18-20 appears to involve an operation of the lithium-silicon battery (“operating voltage window”). Note that the manner of operating the device does not differentiate an apparatus claim from the prior art. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In the instant case, Sakshaug teaches all the claimed structural limitations of the lithium-silicon battery and therefore teaches the inventions as claimed in claims 18-20.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11174167 (‘167) in view of Sakshaug. The Sakshaug reference is applied for the same reasons stated in the rejection above.
Claims 1-4 and 6-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 16-17 and 19-21 of U.S. Patent No. 11498838 B2 (‘838) in view of Sakshaug. The Sakshaug reference is applied for the same reasons stated in the rejection above. Note that the instantly claimed “Z” is a characteristic or property of the silicon-carbon composite. The “Z” is necessarily present because ‘838 teaches the same silicon-carbon composite as instantly claimed.
Claims 1-7 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9-16 and 19-20 of U.S. Patent No. U.S. Patent No. 11639292 B2 (‘292) in view of Sakshaug. The Sakshaug reference is applied for the same reasons stated in the rejection above.
Response to Arguments
Applicant's arguments and Affidavit filed Jan. 23, 2026 have been fully considered but they are not persuasive.
In response, Applicant's arguments are based on the claims as amended. The amended claims have been addressed in the new rejections above. In particular,
Applicant argues that Sakshaug does not describe or suggest the use of a “conductive additive” comprising polyacrylonitrile (PAN) and/or polyamideimide (PAI). In response, Sakshaug does teach a conductive polymer PAN (reading on “conductive additive”), as addressed above in the rejections.
Correspondence
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/ZHONGQING WEI/
ZHONGQING WEI, Ph.D.Primary Examiner, Art Unit 1727
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