DETAILED ACTION
Notice to Applicant
In the amendment dated 2026-09-29, the following has occurred: Claims 1 and 3 have been amended.
Claims 1-13 are pending; claims 5-9 and 13 remain withdrawn. Claims 1-4 and 10-12 are examined herein. This is a Final Rejection.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 1-4 and 10-12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 has been amended to require “A composite anode material, comprising a silicon-oxygen material, and a carbon coating layer […] and a physical adsorption-desorption isotherm of the silicon-oxygen material after removal of carbon in the composite anode material is of a type IV or type V, a mass percentage of oxygen in the silicon-oxygen material after removal of carbon in the composite anode material ranges from …”. The claim is indefinite for the following reasons:
The claim appears to be directed towards a composite with SiOx and carbon, but the plain reading of the claim also appears to require removal of the carbon. Does the material have carbon or not? If it does, what does a subsequent generic process of removing carbon have to do with the physical features of the starting claimed composite? Presumably the composite could be turned into any number of other chemical structures with enough energy and chemical manipulation. How would any of those subsequent process steps—which here are very broadly defined—necessarily limit the starting material which is here being claimed?
In other words, if the removal process changes the base substrate, such that its resulting isotherm type is different after removal of the carbon, it is not clear if, or how, or why a limitation pertaining to a hypothetical removal process should necessarily affect the positive structural features of the composite material comprising SiOx and carbon. Is the claim directed towards a composite with some features or towards a carbon-free material that has been changed by the removal process to produce a specific isotherm?
Applicant appears to assert that use of a type IV or type V SiOx material as a base substrate that is then coated with carbon does not necessarily produce a type IV or type V base substrate upon removal of the carbon.1 It is unclear why not—whether the “feedstock,” or base material, is irrelevant, or whether a particular kind of feedstock that is not type IV or type V is required instead, or whether the process of removal itself is critical to the resulting type IV or type V isotherm. The claim is directed towards any kind of removal. Does any kind of removal produce the resulting features or only certain kinds?
Similarly, it is unclear how to interpret a limitation about the percentage of oxygen after removal of carbon from a composite material, when the claim is directed towards a composite that ostensibly contains the carbon being removed. To what extent does this limitation actually limit the positive structural features of the claimed composite? to what extent does the process of removal matter?
The claim as written is contradictory. It is unclear what is being claimed: a product of a process, a mixed product and process, a product that has some implied necessary features based on a hypothetical, broadly claimed removal process? Claim 1 is therefore indefinite, and the dependent claims are rejected for depending on it.
Response to Arguments
The claims are now rejected for being indefinite. Applicant has argued that the prior art does not teach a particular isotherm for a composite material after removal of carbon. The claims are indefinite because it is unclear how or why these additional limitations further limit the claims. Applicant appears to be arguing that the prior art does not measure the isotherm after the removal of carbon from a desired composite material. It is not clear whether this argument for differentiating the instant claims hinges on a theory of change—wherein the claimed material is somehow made different by the removal of carbon—or a theory of implicit structural difference—wherein the removal of carbon does not change the underlying structure but reveals what was underneath the carbon the whole time.
The former argument would appear to be tied to a mixed product and process that is not patentable subject matter under § 101. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F. 3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). The manner of operating a device does not differentiate an apparatus claim from the prior art. See MPEP § 2114.
If Applicant is advancing the latter argument, it is not clear why Applicant thinks that using a type IV or type V material as a feedstock does not produce the claimed invention. Applicant has not identified a critical difference in either the materials or the process of making the materials that could account for why the previously proposed prior art combination, using a type IV or type V isotherm base material, coated in carbon, would not produce the claimed features. Instead, Applicant appears to be pointing to some kind of process that can be performed on the claimed composite material after its formation. But what this has to do with the claimed composite is unclear. There is no theory of the case, so to speak, to account for what the critical difference is between the supposedly inventive composite, and what would have been obvious to one of ordinary skill in the art based on the cited prior art.
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 Michael Dignan, whose telephone number is (571) 272-6425. The examiner can normally be reached from Monday to Friday between 10 AM and 6:30 PM. If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Tiffany Legette, can be reached at (571)270-7078. Another resource that is available to applicants is the Patent Application Information Retrieval (PAIR). Information regarding the status of an application can be obtained from the (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAX. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, please feel free to contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). Applicants are invited to contact the Office to schedule an in-person interview to discuss and resolve the issues set forth in this Office Action. Although an interview is not required, the Office believes that an interview can be of use to resolve any issues related to a patent application in an efficient and prompt manner.
/MICHAEL L DIGNAN/Examiner, Art Unit 1723
1 See Remarks at top of p. 9.
