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 .
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.
Claim(s) 1, 2, 5, 6, 8-10, 14-16 and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being
anticipated by Korean Patent Publication No. 10-2091941 to Soo (referring to enclosed machine
translation, "Soo"). Regarding claims 1, 2, 5, 6, 9, 10, 14, and 16, Soo discloses particles made by
chemical vapor deposition of amorphous silicon onto the surface of graphite plates/flakes, followed by
spheronization to create spherodized particles comprising agglomerations of the graphite flakes having
silicon in the regions between the flakes, and in some embodiments some silicon on the outer surface of
the particles. Soo at paragraphs [0050] and [0056].
Regarding claims 8 and 18, the thickness of the silicon coating ranges from 20-500nm, a range
that is fully enclosed by the recited range, thus anticipating the recited range. Id. at paragraph [0075].
Claims 1 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Korean Patent
Publication No. KR 20200023870 to Jang eg al. ("Jang"). Jang discloses deposition of silicon onto
graphite to create composite graphite-silicon particles where the silicon is dispersed as micron thick
layer within the interior of the graphite/between the layers/flakes making up the graphite portion of the
composite, and also on the surface of the graphite. Jang at paragraphs [0029] - [0031].
Further regarding claim 11, Jang discloses that the particle size of the composite particles is less
than 20 microns, which the Office finds to sufficiently overlap with the recited range of 1 to 20 microns
as to anticipate the range. Id. at paragraph [0030].
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.
Claim(s) 3 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Soo. Soo is
applied as described above. As noted above the thickness of the silicon layer ranges from 20 to 500
microns. The spheronization process compacts the coated graphite flakes together. Accordingly, the
Office finds that there will at least two flakes where the silicon coating of one flake is in contact with the
silicon coating of the other particle, thus defining the shortest distance between the two flakes, thus
ranging from 40-1000nm. Because this range overlaps with the recited range, it renders that range
obvious.
Claims 4, 7, 12, 13, 17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over
Jang. Jang is applied as described above. Regarding claims 4, 7, and 17, Jung does not expressly disclose
the amount of silicon filling the space in the interior of the graphite, or on the surface of the graphite.
However, Jung does disclose that the silicon is included in order to improve the capacity of the graphite
particle when used as an anode active material. Jang at paragraph [0004]. Thus, the person of ordinary
skill in the art at the time of invention would have had reason to maximize the inclusion of silicon into
the interior spaces of the graphite, as well as on the surface of the graphite as a means of maximizing
the capacity gains that adding silicon provides.
Regarding claims 12 and 19, Jung discloses incorporation of 10-70% silicon relative to the total
weight of the graphite-silicon composite. Jang at paragraph [0017]. Because this range fully
encompasses the recited range, it is found to render that range obvious.
Regarding claims 13 and 20, Jung discloses a specific surface area of its composite particles to
range from 1-20 m²/g. Jang. At paragraph [0013]. Because this range substantially overlaps with the
recited range, it is found to render the range obvious.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,218,355. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘355 patent recite all-solid batteries that include materials including all limitations recited in the claims of the present application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT P MCCONNELL whose telephone number is (571)270-7531. The examiner can normally be reached 9am to 5pm M-F.
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/WYATT P MCCONNELL/Examiner, Art Unit 1727
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