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
This application is a Continuation of application S.N. 18/128,910 (filed 03/30/2023, now abandoned), which application is a Continuation of PCT/US2021/052995 (filed 09/30/2021),
which application claims priority from Provisional Application US 63/085,788 (filed 09/30/2020), and also claims priority from Provisional Application US 63/129,363 (filed 12/22/2020).
Amendment(s)
The Preliminary Amendment filed 12/10/24 is entered.
Claims 59-76 are pending.
The substitute specification filed 12/10/24 is entered.
Drawings
The Drawings filed 08/26/24 are approved by the examiner.
Information Disclosure Statement
The IDS statement filed 10/10/24 has been considered. An initialed copy accompanies this action.
The examiner will consider information which has been considered by the Office in a parent application (other than an international application; see subsection I., above) when examining: (A) a continuation application filed under 37 CFR 1.53(b), (B) a divisional application filed under 37 CFR 1.53(b), or (C) a continuation-in-part application filed under 37 CFR 1.53(b). A listing of the information need not be resubmitted in the continuing application unless the applicant desires the information to be printed on the patent.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892 or by applicant on form PTO-1449, they have not been considered.
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.
Claim Construction
Applicant’s discussion of the claim terminology “porous carbon scaffold” at para 0024 and 0031 of instant PGPUB 2025/0096242 A1 is noted. Likewise, the instant definition of the claim terminology “microporosity” (i.e. less than 2nm) at para 0002 and para 0014 is noted. Lastly, as no special technical definition for the claim terminology “domains” is present in the instant specification, the terminology is given it’s normal meaning in the art (i.e. a discrete group or region of atoms).
Claims 59-76 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,046,744 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the above listed claims of US ‘744 are drawn to passivated silicon-carbon composites possessing a specific combination of physical and/or chemical properties relating to Si content, porosity, surface area, bonding, and “Z” and “φ” ranges. The issued claims recite identical or overlapping ranges of Si content, “Z” and “φ”, surface area, D50. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The issued claims further recite silicon domains impregnated in the volume of carbon pore space, and also teaches additional carbonaceous layer partially covering the Si domains. While the issued claims do not specifically recite that the domains comprise Si-R bonds (e.g. Si-H), the examiner submits that the issued claims would inherently possess at least some bonding as instantly claimed as such appears to be the inherent result of either the hydrosilylation or CVD passivation process (see instant PGPUB para 0148, 0229-30, 0237), both of which are disclosed in the issued patent. The reference, in fact, describes such in the disclosure supporting the claim terminology (e.g. embodiment 84). Those portions of the specification which provide support for the reference claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application (as distinguished from an obvious variation of the subject matter disclosed in the reference patent or application). In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970).
Claims 59-76 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 59-72 of copending Application No. 18/128,921 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the above listed claims of US application ‘921 are drawn to passivated silicon-carbon composites possessing a specific combination of physical and/or chemical properties relating to Si content, porosity, surface area, bonding, and “Z” and “φ” ranges. The issued claims recite identical or overlapping ranges of Si content, “Z” and “φ”, surface area, D50. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The issued claims further recite silicon domains impregnated in the volume of carbon pore space, and also teaches additional carbonaceous layer partially covering the Si domains. The copending application specifically recites that the domains comprise Si-R bonds (i.e. Si-H) (claim 69).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Instant claims 59-76 are allowable over the prior art of record. While the prior art discloses passivated silicon-carbon composite materials, the prior art of record does not possess with inherent certainty or fairly suggest a passivated silicon-carbon composite material requiring the instantly recited combination Si content, “Z” and “φ”, surface area, D50, and Si domain properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK T KOPEC whose telephone number is (571)272-1319. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at 5712707733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK KOPEC/Primary Examiner, Art Unit 1762
MK
July 2, 2026
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