DETAILED ACTION
This is the first action on the merits for application 18/682611 filed February 9, 2024.
Claims 7-26 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 7-9 in the reply filed on July 24, 2026 is acknowledged.
Claims 10-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 24, 2026.
Claims 7-9 are considered on the merits herein.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over BOGART et al (US PG PUB 2020/0099043).
Regarding claim 7, BOGART et al teaches a secondary battery material (active component for an anode of a metal ion battery, abstract) comprising Si (silicon), O (oxygen), and C (carbon) (abstract, examples), wherein a content ratio x of O to Si satisfies 0.1 ≤ x ≤ 2 (table 3, .29, falling within the claimed range) and a content ratio y of C to Si satisfies 0.3 ≤ y ≤ 11 (paragraph [0074] teaches .1-1, overlapping and rendering obvious the claimed range, with example 1 of table 3 teaching the ratio to be .72).
BOGART et al does not expressly teach “a chemical shift value obtained from a 29Si-NMR spectrum, an integrated intensity A of a peak in a range of from -70 ppm to -90 ppm pertaining to Si (0 value) and an integrated intensity B of a peak in a range of from -90 ppm to -130 ppm pertaining to bond in SiO4 satisfy a following expression: Expression: 0.2 < A/B < 5”. Moreover, the specification does not detail what manufacturing process renders the claimed peaks. The material composition disclosed in BOGART is equivalent to that disclosed in the instant compositional listing, including an addition of nitrogen material in the same amount (see BOGART et al paragraph [0081] compared to instant application publication paragraph [0057]. The court has held that products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties (including the spectrum peaks and associated integrated intensities) are inseparable. Therefore, it is the position of the Examiner that since the prior art teaches the same composition, the properties Applicant claims are obviously present. The Applicant is strongly encouraged to demonstrate what causes the instant composition to feature the claimed peaks/intensity in the NMR spectrum claimed.
Regarding claim 8, BOGART et al teaches a volume average particle diameter (D50) of from 0.5 pm to 10 pm (paragraph [0121], with overlap rendering obvious the range).
Regarding claim 9, BOGART et al teaches a specific surface area (BET) is from 1 m2/g to 20 m2/g (paragraph [0136], with overlap rendering obvious the range).
Claim(s) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over ZHU et al (WO2020129467A1, wherein citations are made to the US PG PUB document 2022/0069296, an English equivalent and also equivalent to cited document JP2021/114483).
Regarding claim 7, ZHU et al teaches a secondary battery material (negative electrode active of a secondary battery, abstract) teaches forming a silicon material featuring 8-40 mass% silicon particle, 20-70 mass% solid polysiloxane, 3-60 mass% carbon source resin (paragraph [0089], wherein the carbon source resin is phenolic resin paragraph [0130]) which is mixed, fired at a high temperature of 1000-1180 degrees C (paragraph [0091]) in a nitrogen/inert environment (paragraph [0090]) and pulverized until the desired size (paragraph [0093]). This is identical to the processing steps shown in the instant application, stating the same materials (paragraph [0290] of the PG PUB), in the same process steps (paragraph [0292]-[0296]). Moreover, figure 2 shows a 29Si-NMR chemical shift spectrum featuring peaks at the claimed potions. The claimed ratio of the peak at -70 ppm to -90 ppm compared -90 ppm to -130 ppm would require the integrated area of the first peak to be between 20%-500% in size relative to the second peak. When considering figure 2, while an exact value explicitly disclosed, it is obvious the ratio of areas of these two peaks is well within the broad ratio claimed.
While ZHU et al does not specifically address the claim limitation proportion of materials, these are considered to be intrinsic and obvious, resulting from following the method steps taught by the reference(s), which are the same as those instantly disclosed, absent any clear and convincing evidence and/or arguments to the contrary. As a prima facie case of obviousness has been set forth on the record, and because the USPTO does not possess the laboratory facilities to test and compare the prior art to the claimed invention, the burden shifts to applicant to demonstrate otherwise.
Regarding claim 8, ZHU et al teaches the material having a volume average particle diameter (D50) of from 0.5 pm to 10 pm (paragraph [0046] and [0050]).
Regarding claim 9, ZHU et al teaches a specific surface area (BET) is from 1 m2/g to 20 m2/g (paragraph [0048] and [0050]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KOURTNEY SALZMAN CARLSON whose telephone number is (571)270-5117. The examiner can normally be reached 9AM-3PM EST M-F.
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, Allison Bourke can be reached at (303)297-4684. 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.
/KOURTNEY R S CARLSON/ Primary Examiner, Art Unit 1721 9/18/2026
Prosecution Insights