DETAILED ACTION
Final
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 .
Response to Amendment
The amendment filed on 07/08/2026 is entered and acknowledged by the Examiner. Claims 4-5 have been canceled. Claims 1-3 and 6-7 are currently pending in the instant application.
The rejection of claims 4-5 under 35 U.S.C. 102(a)(1) as anticipated by the article to Orthner is withdrawn in view of Applicant’s amendment.
The rejection of claims 1 and 6-7 under 35 U.S.C. 102(a)(1) as anticipated by the article to Orthner is maintained for the reasons of record.
The rejection of claims 2 and 3 under 35 U.S.C. 103 as being unpatentable over Orthner in view of Kim (US 2019/0140262 A1) is maintained for the reasons of record.
Information Disclosure Statement
The information disclosure statements (IDS) filed on 06/05/2026 and 09/01/2026 are in compliance with the provisions of 37 CFR 1.97 and have been considered by the examiner. An initialed copy accompanies this Office Action.
Response to Arguments
Applicant's arguments filed on 07/08/2026 have been fully considered but they are not persuasive.
At page 4-5 of the remark, Applicant argues that Orthner generally characterizes its material as an amorphous silicon-carbon composite without demonstrating that the material possesses the specific atomic-scale silicon-carbon structure required by claim 1. Thus, Orthner does not disclose the specific silicon-carbon composite structure recited in independent claim 1. The Examiner respectfully disagrees with the Applicant’s remark. As stated in the previous Office action at pages 4-5, Orthner discloses a method of preparing a silicon-carbon (Si-C) composite as described by the Applicant (See paragraphs [0012] to [0017]) with an average particle size D50 within the claimed range, i.e., < 200 nm, and having the same utility, i.e., as a negative plate for a secondary lithium battery, as claimed and described by the Applicant (See claims 6-7 and paragraphs [0018]). Therefore, the same or substantially same material, i.e., atomic-scale silicon-carbon structure required by claim 1, would be obtained from the same method.
Moreover, the obtained same or substantially same material inherently have the same or similar 29Si NMR spectrum required by claim 1 because same or substantially same material must have the same or similar properties, i.e., resonance peak. It has been held that “[p]roducts of identical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (fed. Cir. 1990). See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." The Examiner notes that the USPTO is not equipped to perform laboratory testings and experimental benchworks to measure the properties of the resulting composition. The burden is on the applicant to prove otherwise. Applicant has not shown that the Si-C composite of Orthner does not yield the 29Si NMR spectrum as claimed. Based on this rationale, the rejection of over Orthner is maintained.
At pages 6-8 of the remark, Applicant argues that Kim does not cure the deficiency of Orthner to obtain the claimed Si-C structure and 29Si NMR spectrum. The Examiner respectfully disagrees with the Applicant’s remark for the same reasons as set forth above. Based on this rationale, the rejection of over Kim is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 KHANH TUAN NGUYEN whose telephone number is (571)272-8082. The examiner can normally be reached M-F 9:00 AM to 5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KHANH T NGUYEN/Primary Examiner, Art Unit 1761
