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
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
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.
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Claims 41-43, 45, 47-59, 64-67, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 7, 10-25 of U.S. Patent No. 11,165,054. Although the claims at issue are not identical, they are not patentably distinct from each other because Application No. 11,165,054 contains substantially similar subject matter and anticipatory or overlapping ranges. Specifically, Patent No. 11,165,054 claims a particulate material comprising a plurality of composite particles, wherein the composite particles comprise: (a) a porous carbon framework comprising micropores and/or mesopores, and (b) a plurality of elemental nanoscale silicon domains located within the micropores and/or mesopores of the porous carbon framework, wherein the particulate has a total pore volume P1 and PD50 and PD90 pore diameter, a weight ratio of silicon to the porous carbon framework in the composite, a total oxygen content of the composite, particle size distribution span, as well as a specific capacity on lithiation that are overlapping the claimed ranges. Patent No. 11,165,054 also claims a rechargeable metal-ion battery contains the said particulate material.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claim 68 is allowable over prior art.
Claims 41-67 would be allowable pending resolution of double patenting rejections recited above.
Closest prior art Thompskins et al. (US2014/0272592) discloses a particulate material comprising a plurality of composite particles, wherein the composite particles comprise a porous carbon framework (carbon matrix) comprising micropores and mesopores and a plurality of nanoscale elemental silicon domains (electrochemical modifier, para 0288) located at least within the micropores of the porous carbon framework (para 0451), wherein the micropores and mesopores (para 0185-188) have a total pore volume as measured by gas adsorption of P1 cm2/g having a value of at least 0.75 and up to 2 (para 0170-72) and wherein the PD50 pore diameter as measured by gas adsorption is no more than 1.5 nm (para 0171), wherein the weight ratio of silicon to the porous carbon framework in the composite particles is in the range from (0.5xP1 to 1,3xP1): 1 (para 0015, 0288). Also see para 0019, para 0049, 0050, 0158-162, 0170, 0171, 0182, 0219-220, 0232, and 0451. Thompkins, however, does not suggest the composite particle's characteristics such as diameters D10, D50 and D90, pore sizes, volume-based particle distribution as well as the oxygen content as defined in the claims, and a person of ordinary skill in the art would have had no reason to arrive at the claimed invention based on the broad disclosure of Thompkins, when particles within these particle size ranges, porosity, pore diameter distribution and the percentage of unoxidized silicon as recited are ideally suited for use in anodes for metal-ion batteries, due to their dispersibility in slurries, their structural robustness, their capacity retention over repeated charge-discharge cycles, and their suitability for forming dense electrode layers of uniform thickness without structural degradation.
Conclusion
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/HAIDUNG D NGUYEN/Primary Examiner, Art Unit 1761
6/13/2026
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