DETAILED ACTION
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 .
The preliminary amendment was accepted. Claims 1-7 are cancelled. Claims 8-27 are new.
Information Disclosure Statement
No Information Disclosure Statement was submitted.
Drawings
The drawings submitted on 3/4/24 have been accepted.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The term “a peak … not near 2θ = 28°” in claims 8-27 is a relative term which renders the claim indefinite. The term “is not near 2θ = 28°” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically, 2θ = 22° can be interpreted as 2θ = 28° in contrast to and 2θ = 50°. Appropriate corrections are required.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 8-19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kohki et al. (WO2017038320).
Regarding claim 8, the Kohki et al. reference discloses a silicon monoxide powder comrpsiing a silicon monoxide wherein in an X-ray diffraction spectrum comprises broad peaks due to an amorphous phase near 2θ = 22° and 2θ = 50° and a peak due to a crystal phase of silicon is not near 2θ = 28° (Fig.4)
The limitation, “measured by X-Ray diffraction by using a Cu-Kα ray is a product-by-process claims. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since SiO component is the same as to that of the Applicant’s, Applicant’s process is not given patentable weight in this claim.
Regarding claim 9, the Kokhi reference discloses SiO (Fig. 4).
The recited limitation, “wherein “X” is in the range of 0.8≤x≤1.2 when the silicon monoxide is represented by the composition formula of SiOx” is “intended use” limitation, and it has been held that 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 satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Regarding claim 10, the Kokhi reference discloses a silicon monoxide.
The limitation, “is produced by oxidizing a metal silicon powder as a raw material by using the reaction heat of oxygen gas with a flammable gas in an air steam as an energy source,” is product-by-process claim limitation. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since SiO component is the same as to that of the Applicant’s, Applicant’s process is not given patentable weight in this claim.
Regarding claim 11, the Kokhi reference discloses a silicon monoxide.
The limitation, “is produced by oxidizing a metal silicon powder as a raw material by using the reaction heat of oxygen gas with a flammable gas in an air stream as an energy source, is product-by-process claim limitation. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since SiO component is the same as to that of the Applicant’s, Applicant’s process is not given patentable weight in this claim.
Regarding claim 12-15, the Kokhi reference disclose the silicon monoxide powder is coated with a conductive film on a surface (C-coated).
Regarding claim 16-19, the Kokhi reference disclses the silicon monoxide is doped with lithium (Comparative Examples 1 and 2).
Claim(s) 8-11 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wenhui et al. (CN109796017).
Regarding claim 8, the Wenhui et al. reference discloses a silicon monoxide powder comprising a silicon monoxide wherein in an X-ray diffraction spectrum comprises broad peaks due to an amorphous phase near 2θ = 22° and 2θ = 50° and a peak due to a crystal phase of silicon is not near 2θ = 28° (Fig.1)
The limitation, “measured by X-Ray diffraction by using a Cu-Kα ray is a product-by-process claims. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since SiO component is the same as to that of the Applicant’s, Applicant’s process is not given patentable weight in this claim.
Regarding claim 9, the Wenhui reference discloses SiO (Fig. 1).
The recited limitation, “wherein “X” is in the range of 0.8≤x≤1.2 when the silicon monoxide is represented by the composition formula of SiOx” is “intended use” limitation, and it has been held that 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 satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Regarding claim 10, the Wenhui reference discloses a silicon monoxide.
The limitation, “is produced by oxidizing a metal silicon powder as a raw material by using the reaction heat of oxygen gas with a flammable gas in an air steam as an energy source,” is product-by-process claim limitation. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since SiO component is the same as to that of the Applicant’s, Applicant’s process is not given patentable weight in this claim.
Regarding claim 11, the Wenhui reference discloses a silicon monoxide.
The limitation, “is produced by oxidizing a metal silicon powder as a raw material by using the reaction heat of oxygen gas with a flammable gas in an air stream as an energy source, is product-by-process claim limitation. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since SiO component is the same as to that of the Applicant’s, Applicant’s process is not given patentable weight in this claim.
Claim Rejections - 35 USC § 102/103
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 20-27 is/are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kohki et al. (WO2017038320).
Regarding claims 20-27, the Kohki et al. reference discloses the invention is used as a negative electrode active material for a lithium-ion battery. The lithium-ion battery comprises a positive electrode with a separator and non-aqueous electrolyte. Since the comparative examples have performance results (Table) , it would have been inherent that the comparative examples were also used as a negative electrode active material for a lithium-ion battery. The lithium-ion battery comprises a positive electrode with a separator and non-aqueous electrolyte.
In alternative, it would have been obvious to provide the comparative examples in the same constant environment as the invention. That is, to provide the comparative examples in a negative electrode active material for a lithium-ion battery, the lithium-ion battery comprises a positive electrode with a separator and non-aqueous electrolyte to prevent error by keeping the product as the only variable in testing different products. A patent claim can be proved obvious merely by showing that the combination of elements was obvious to try. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. KSR v. Teleflex
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HELEN OI CONLEY whose telephone number is (571)272-5162. The examiner can normally be reached 8:30 am - 5:00 pm.
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, Nicholas Smith can be reached at 5712728760. 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.
/Helen Oi K CONLEY/Primary Examiner, Art Unit 1752
Prosecution Insights