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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 18/524606, filed on November 30, 2023.
Information Disclosure Statement
The information disclosure statement filed June 28, 2024, November 15, 2024, January 21, 2026, and October 1, 2026 have been placed in the application file and the information referred to therein has been considered as to the merits (with the exception of the foreign language documents without a translation or statement of relevancy).
Drawings
The drawings received June 28, 2024 are acceptable.
Specification
The abstract of the disclosure is objected to because it is not a complete sentence. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
Claims 7 and 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites a full width at half maximum (FWHM) regarding a °. However, FWHM is either regarding a specific plane with respect to a specific 2Ɵ. Thus, the claim is unclear and indefinite.
Claim 13 recites pores with a particle diameter. It is unclear how a pore (which may have a pore diameter) represents a particle diameter. Thus, the claim is unclear and indefinite.
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.
(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) 1-3, 5-6, 10, and 16-17 is/are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by WO 2022/11828 or US 2023/0420636 (Drager et al.) (Note: Both US and WO references apply as prior art under different dates – 102(a)(1) for the WO reference; 102(a)(2) for the US reference. Thew US reference is relied upon as an English translation for the WO document, as both are associated with the same PCT.)
As to claim 1, Drager et al. teach a negative active material, comprising:
an inorganic supporter (porous particles) having pores which are filled with silicon (para 0012, 0016-0031);
additional silicon located on a surface of the inorganic supporter (para 0012);
and a carbon coating layer on the surface of the inorganic supporter and a surface of the additional silicon located on the surface of the inorganic supporter (para 0077).
As to claim 2, Drager et al. teach the inorganic supporter comprises Al2O3, ZrO2, SiO2, TiO2, SiC, or a combination thereof (silicon dioxide, aluminum oxide, zirconium oxide, silicon carbide taught (para 0017, 0030); silicon dioxide exemplified (para 0141-0147).
As to claim 3, Drager et al. teach of the carbon coating layer (para 0077). Although Drager et al. does not specifically state that the carbon comprises amorphous carbon, crystalline carbon, or a combination thereof; amorphous and crystalline carbons are the only options for carbon. Thus, Drager et al.’s teaching of carbon would necessarily be crystalline, amorphous, or a combination thereof.
As to claim 5, Drager et al. teach an interior wall of each of the pores is coated with a carbon-based material (para 0077).
As to claim 6, Drager et al. teach of carbon-based material (para 0077). Although Drager et al. does not specifically state that the carbon-based material comprises crystalline carbon, amorphous carbon, or a combination thereof; amorphous and crystalline carbons are the only options for carbon. Thus, Drager et al.’s teaching of carbon would necessarily be crystalline, amorphous, or a combination thereof.
As to claim 10, Drager et al. teach a total amount of the silicon is about 20 wt% to about 70 wt%, based on a total weight of the negative active material (35 wt% (example 2; para 0152)).
As to claim 16, Drager et al. teach the inorganic supporter has a pore volume of about 0.3 cm3/g to about 4.5 cm3/g (0.8 cm3/g (example 1; para 0146) (subscript is a typographical error, as a superscript correctly reflects the proper units)).
As to claim 17, Drager et al. teach a rechargeable lithium battery, comprising: a negative electrode (anode) comprising the negative active material of claim 1 (see the rejection to claim 1 for full details regarding the negative electrode, incorporated herein but not reiterated herein for brevity’s sake);
a positive electrode (cathode) (para 0107); and
an electrolyte (para 0107).
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.
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) 4, 8-9, 11-13, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Drager et al. (The teachings of Drager et al., as set forth above, and as applicable herein are incorporated herein but not reiterated herein for brevity’s sake.)
As to claim 4, Drager et al. teach of the carbon coating layer (para 0077).
Drager et al. does not specifically teach that the carbon coating layer comprises amorphous carbon.
However, Drager et al. recognizes the use of amorphous carbon used in silicon-containing materials (para 0007). The substitution of amorphous carbon for carbon in general would yield the predictable result of operating as materials used within silicon-containing materials within battery applications, wherein the substituted components and their functions were known in the art (as Drager et al. sets forth both known materials within the same context – as used within silicon-composite materials). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was effectively filed (as applicable to AIA applications) to substitute amorphous carbon for carbon in general, as the substitution would yield the predictable result of operating as materials used within silicon-containing materials within battery applications, wherein the substituted components and their functions were known in the art. “When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id . at ___, 82 USPQ2d at 1396.” See MPEP §2141(I).
As to claim 8, Drager et al. teach the silicon filled in the pores or the additional silicon located on the surface of the inorganic supporter has a particle diameter of less than 1000 nm and less than 100 nm (para 0071) (overlaps the claimed range of about 5 nm to about 100 nm, thus renders the claimed range obvious; MPEP §2144.05(I)).
As to claim 9, Drager et al. teach an amount of the carbon coating layer is from the broad range of 1-50% (lowest lower limit present; highest higher limit present) (para 0077-0078 (note: other material is carbon)) based on a total weight of the negative active material (overlaps claimed about 1 wt% to about 30 wt%, thus renders the claimed range obvious; MPEP §2144.05(I)).
As to claim 11, Drager et al. teaches the carbon coating layer is from the broad range of 1-50% (para 0077-0087) and the amount of silicon within the silicon-containing material is 10-90% by weight (para 0063). Thus, Drager et al. renders obvious an amount of the inorganic supporter is about 5 wt% to about 70 wt%, based on a total weight of the negative active material (the balance of the remainder of the material left, which would at the very least overlap the claimed range of about 5 wt% to about 70 wt%, thus rendering the claimed range obvious; MPEP §2144.05(I)). (For non-limiting example, 30% carbon, 30% silicon would yield 40% inorganic supporter by weight.)
As to claim 12, Drager et al. teach the carbon coating layer has a thickness of about preferably less than 100 nm (para 0077) (overlaps claimed range of 1 nm to about 50 nm, thus renders the claimed range obvious; MPEP §2144.05(I)).
As to claim 13, Drager et al. teach each of the pores in the inorganic supporter is one of macropores (>50 nm) in 30% at most, mesopores (2-50 nm) in at least 50%, and micropores (<2 nm) (para 0048) (which overlaps the claimed range of a diameter of about 1 nm to about 100 nm as applied to each pore, thus renders the claimed range obvious; MPEP §2144.05(I)).
As to claim 15, Drager et al. teach do not teach the inorganic supporter in which the pores are filled with the silicon has a porosity of about 10 % to about 90 %.
However, Drager et al. set forth that porosity is a result effective variable that affects cycling stability (para 0061). It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the inorganic supporter in which the pores are filled with the silicon have a porosity of about 10 % to about 90 % , since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Drager et al., as applied to claim 1 above, in view of US 2020/0280060 (Kim et al.).
Drager et al. do not teach the silicon filled in the pores or the additional silicon located on the surface of the inorganic supporter has a full width at half maximum (FWHM) of about 0.5° to about 10°.
However, Kim et al., in the same field of endeavor (silicon-composite material (abs)) teach silicon with respect to the (111) plane has a full width at half maximum (FWHM) of 0.3-7° (2 theta) (para 0052). The motivation for having the FWHM of 0.3-7° is that cycle-life characteristics are improved (para 0052). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was effectively filed (as applicable to AIA applications) to have the FWHM of 0.3-7° (regarding silicon), in order to improve cycle-life characteristics. (Note: Kim et al.’s teaching overlaps the claimed range of a full width at half maximum (FWHM) of about 0.5° to about 10°, and thus renders the claimed range obvious; MPEP §2144.05(I)).)
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Drager et al., as applied to claim 1 above, in view of US 2023/0079476 (Yushin et al.).
Drager et al. do not teach each of the pores has a wall thickness of about 5 nm to about 150 nm.
However, Yushin et al. in the same field of endeavor (porous material infiltrated with silicon (para 0113), teaches that walls separating the pores should be from 1-100 nm (para 0113). The motivation for having walls separating the pores (pore wall thickness) being from 1-100 nm is to achieve a design that has good mechanical properties and cycle stability (para 0113). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was effectively filed (as applicable to AIA applications) to have walls separating the pores (pore wall thickness) from 1-100 nm in order to achieve a design that has good mechanical properties and cycle stability. (Note: Yushin et al.’s teaching overlaps the claimed range each of the pores has a wall thickness of about 5 nm to about 150 nm, and thus renders the claimed range obvious; MPEP §2144.05(I)).)
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 1-4, 7-15, and 17 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 and 12-17 of copending Application No. 18/756160 in view of Drager et al.
The pertinent copending claims are set forth below.
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Copending claims 1 and 3 reads on pending claim 1. The only difference is that the silicon is located within the pores of the porous support and that the carbon is also on the silicon on the surface. However, Drager teaches these limitations (para 0012, 0077).
Copending claim 4 reads on pending claim 3.
Copending claim 5 reads on pending claim 4.
Copending claim 7 reads on pending claim 7.
Copending claim 8 reads on pending claims 10-11.
Copending claim 9 reads on pending claim 8.
Copending claim 10 reads on pending claim 12.
Copending claim 12 reads on pending claim 9.
Copending claim 13 reads on pending claim 10.
Copending claim 14 reads on pending claim 15.
Copending claim 15 reads on pending claim 13.
Copending claim 16 reads on pending claim 14.
Copending claim 17 reads on pending claim 17.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Note: No other prior art is considered pertinent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENIA WANG whose telephone number is (571)272-4942. The examiner can normally be reached a flex schedule, generally Monday-Thursday 5:00 -7:30 (AM) and 9:45-3:15 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EUGENIA WANG/Primary Examiner, Art Unit 1759
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