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 .
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 1-2 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 11721805 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-2, 11721805 teaches an active material comprising a silicon clathrate II type crystal phase, and having a composition represented by NaxSi136, wherein 0 ≤ x ≤ 10 (claim 1).
The examiner notes that 11721805 fails to explicitly teach the silicon clathrate II wherein the “x” satisfies 2.30≤x≤2.50 (instant claims 1-2).
However, 11721805’s range for “x” demonstrates an overlap in ranges taught. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a Prima facie case of obviousness exists (MPEP 2144.05). Additionally, “the use of patents as references is not limited to what the patentees describe as their own inventions or the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain” (MPEP 2123).
Regarding claim 6, 11721805 teaches an anode layer comprising the active material according to claim 1 (claim 2).
Information Disclosure Statement
The information disclosure statements (IDS) submitted on April 12, 2024, November 05, 2024, and October 15, 2025 have been considered by the examiner.
The information disclosure statement filed April 12, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over U.S Pre-Grant Publication No. 2015/0380724, hereinafter Chan (IDS dated 04/12/2024).
Regarding claims 1-2 and 6-7, Chan teaches a rechargeable battery including the anode, a cathode, and an electrolyte in contact with the anode and cathode (Abstract) (instant claim 7). The anode includes a Type II clathrate have the formula MxX136 where 0<x<24, X is Si, and M is Na (Abstract and [0032]) (instant claim 6).
The examiner notes that Chan fails to explicitly teach the silicon clathrate II wherein the “x” satisfies 2.30≤x≤2.50 (instant claims 1-2).
However, Chan’s range for “x” demonstrates an overlap in ranges taught. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a Prima facie case of obviousness exists (MPEP 2144.05). Additionally, “the use of patents as references is not limited to what the patentees describe as their own inventions or the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain” (MPEP 2123).
Regarding claim 3, Chan teaches the active material according to claim 1, wherein the active material includes a void inside a primary particle (“a cage structure is formed by Si. When “x” equals 0, no guest ion is present in the cage” (Abstract). One of ordinary skill in the art would appreciate that a cage structure encloses a cavity (or void) therefore as long as “x” is less than 24, there are voids present in the cage structure of the primary particle. The Type I and Type II clathrates of Fig 2A and 2B have voids within the primary particles).
Regarding claim 4, Chan teaches the active material according to claim 1, wherein, as peaks of the silicon clathrate II type crystal phase, peak “A” at a position of 2θ = 20.09 ̊± 0.05 ̊ and peak “B” at a position of 2θ = 31.72 ̊± 0.05 ̊ are observed in X-ray diffraction measurement using a CuKa ray, and when an intensity of the peak “A” is regarded as IA, an intensity of the peak “B” is regarded as IB, and a maximum intensity in 2θ = 22 ̊to 23 ̊ is regarded as IM, IA/IM and IB/IM are respectively more than 1 (The XRD spectra of Fig 3 all have peaks at both 20 and 31 that are higher than the peak between 22-23, therefore overlapping with the claimed ranges of instant claim 4. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a Prima facie case of obviousness exists (MPEP 2144.05)).
Regarding claim 5, Chan teaches, as mentioned above, a rechargeable battery including the anode, a cathode, and an electrolyte in contact with the anode and cathode (Abstract). The anode includes a Type II clathrate have the formula MxX136 where 0<x<24, X is Si, and M is Na (Abstract and [0032]). Fig. 3 represents the powder XRD pattern of the Type I silicon clathrate, Type II silicon clathrate, and unreacted diamond cubic Si.
The examiner notes that Chan fails to explicitly teach the active material according to claim 4, wherein the IA/IM satisfies 1.02 < IA/IM and the IB/IM satisfies 1.03 < IB/IM.
However, as mentioned above, “the use of patents as references is not limited to what the patentees describe as their own inventions or the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain” (MPEP 2123). Chan teaches overlapping ranges for both the value of “x” in instant’s NaxSi-136 and for the peaks at 20, ̊ 22-23 ̊, and 30 ̊ for each spectra in Fig 3. The type II silicon clathrates of Chan and the instant specification were prepared in similar manners through the thermal decomposition of NaSi Zintl compunds, creating an alloy with Na, Si and Li, and removing excess lithium and sodium (Chan [0029] and claims 18-22 and instant specification [0060]) for the purpose of improving and maintaining the battery’s charge and discharge cycles (Chan [0004-0005] and instant specification [0005-0006]). A chemical composition and its properties are inseparable, therefore, the active material NaxSi136 at an “x” value of 2.30-2.50 will have the same XRD properties as claimed (MPEP 2112.01).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mia K Holbrook whose telephone number is (571)272-9253. The examiner can normally be reached Monday - Friday 7:30-5.
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, Miriam Stagg can be reached at (571) 270-5256. 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.
/M.K.H./Examiner, Art Unit 1724
/MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724
Prosecution Insights