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 .
Claim Status
The claims filed on 12/04/2024 is entered and acknowledged by the Examiner. Claims 1-9 are currently pending in the instant application.
Priority
This application is a 371 of PCT/JP2019/033231 (filed on 08/26/2019). Acknowledgment is made of applicant’s claim for foreign priority based on an application filed in Japan on 08/27/2018.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 12/04/2024 is in compliance with the provisions of 37 CFR 1.97 and has been considered by the examiner. An initialed copy accompanies this Office Action.
Drawings
The drawings filed on 12/04/2024 have been considered.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015059859 A1 (hereinafter Shirakawa) as evidence by an article to “Fractal dimension determination of sol-gel powders using transmission electron microscopy images” (hereinafter Dobrescu).
Claim Interpretation: the claimed invention is drawn to a spherical SiO powder doped with an element M (Li, Mg, Al, P, and B) and coated with a conductive carbon film (See claims 1, 4-6, and 8). The doped SiO powder having a fractal dimension of 1.03 to 1.50 determined and calculated by a fractal dimension analysis (See claim 1). It should be noted that the invention is drawn to the doped SiO powder product and not by the way the fractal dimension is determined and calculated.
Shirakawa discloses a powder for negative electrode for lithium ion secondary battery (See Abstract). The powder comprises a silicon oxide (SiO) powder doped with lithium and coated with carbon (See Abstract). Shirakawa discloses that the SiO powder having an adjusted median diameter D50 of 3.0-30 µm (See top of unlabeled page 5). The lithium dopant fulfills the claimed element M. Shirakawa also discloses a content ratio of 0.8g of lithium (LiH) to 8.8g of silicon oxide (SiO) powder (See middle of unlabeled page 5), equates to 0.8/8.8 = 0.09. This ratio is within and satisfy the claimed M/O ratio 0.05≤M/O≤1. The carbon coating of Shirakawa is a known electrical conductive material and forms a carbon film on the SiO power that fulfills the claimed electrically conductive carbon film. Shirakawa discloses that the carbon coating content is in a range of 6-10 mass% (See middle of unlabeled page 4).
Shirakawa discloses a carbon-coated lithium-doped SiO power having the same structure and particle diameter as the claimed spherical particular SiO power; therefore, the SiO powder of Shirakawa obviously have the same or substantially same properties as the claimed spherical particular SiO power, i.e., a fractal dimension analysis of 1.03 to 1.50. The USPTO is not equipped to perform laboratory testings and experimental benchworks to measure the properties of the resulting SiO power. The burden is on the applicant to prove otherwise.
Shirakawa does not explicitly disclose how the fractal dimension analysis was calculated and determined as recited in claim 1. However, it should be noted that the calculation and determination by fractal dimension analysis does not distinguish over the product.
Moreover, Dobrescu discloses a fractal dimension of silicon oxide (SiO2) power can be determine by fractal dimension analysis (See Abstract).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to determine the fractal dimension, as evident by Dobrescu, of silicon oxide powder of Shirakawa. Any minor modification necessary to meet the claimed limitations to determine the fractal dimension analysis of silicon oxide powder of Shirakawa would have been within the purview of the skilled artisan.
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
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 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.
Conclusion
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.
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, 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.
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.
/KHANH T NGUYEN/Primary Examiner, Art Unit 1761
Prosecution Insights