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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONF {MATION NO.
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`12/ 177,442
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`07/22/2008
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`P. Subramanya Herle
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`PESL—108US
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`4442
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`EXAMINER
`RATNERPRESTIA —
`”3’20” —
`7590
`52473
`PO. BOX 980
`LAIos, MARIAI
`VALLEY FORGE, PA 19482-0980
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`PAPER NUMBER
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`ART UNIT
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`1727
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`MAIL DATE
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`02/13/2013
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL—90A (Rev. 04/07)
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`

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`Office Action Summary
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`Application No.
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`Applicant(s)
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` 12/177,442 HERLE, P. SUBRAMANYA
`Examiner
`Art Unit
`MARIA J. LAIOS
`1727
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1)IZI Responsive to communication(s) filed on 02 October 2012.
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`2a)IZI This action is FINAL.
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`2b)|:l This action is non-final.
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`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)|Zl Claim(s) 1 68-17and 19-34 is/are pending in the application.
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`5a) Of the above claim(s) _ is/are withdrawn from consideration.
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`6)I:l Claim(s)_ is/are allowed.
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`7)|Xl Claim(s) 1 68-17and 19-34 is/are rejected.
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`8)I:l Claim(s)_ is/are objected to.
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`9)I:I Claim((s)
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`are subject to restriction and/or election requirement.
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`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway
`program at a participating intellectual property office for the corresponding application. For more information, please see
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`httn:,I/www usntq. quwua'ertslanr events/
`h/index.'s or send an inquiry to PPeredback us Emmi.
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`Application Papers
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`10)|:| The specification is objected to by the Examiner.
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`11)|Xl The drawing(s) filed on 22 July 2008 is/are: a)IXI accepted or b)I:I objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)|:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)|:| All
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`b)|:l Some * c)I:I None of:
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`1.I:I Certified copies of the priority documents have been received.
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`2.|:l Certified copies of the priority documents have been received in Application No. _
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`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) IZI Notice of References Cited (PTO-892)
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`2) E Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| Date 20120712 20121220.
`US. Patent and Trademark Office
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`3) I] Interview Summary (PTO-413)
`Paper No(s)/Mai| Date.
`4) D Other:
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`PTOL-326 (Rev. 09-12)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20130209
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`

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`Application/Control Number: 12/177,442
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`Page 2
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`Art Unit: 1727
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`DETAILED ACTION
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`1.
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`This office action is in response to the amendment filed 10/2/2012. Claims 1, 6 and 17
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`have been amended. Claims 2—5, 7 and 18 are cancelled. Claims 1, 6, 8—17 and 19—34 are
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`currently pending.
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`2.
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`The text of those sections of Title 35, US. Code not included in this action can be found
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`in a prior Office action.
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`Claim Rejections - 35 USC § 103
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`3.
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`The previous rejections of 7/3/2012 are Withdrawn because the claims have been
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`amended.
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`4.
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`Claims 1, 6, 8—17, 19—26, 28—34 are rejected under 35 USC. 103(a) as being unpatentable
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`over SugnauX et al. (US 2004/0131934) in view of Kawakami et al. (US 2006/0127773 A1).
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`As to claims 1, 6, 8-10, 14, 15, 16, 17, 19, 29 and 31, SugnauX et al. discloses a battery
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`comprising a positive electrode; a negative electrode; an electrolyte (paragraphs 71—72). The
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`electrolyte includes a lithium salt and a solvent (paragraph 87). The electrodes comprise an
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`active material, a conductive material and a binder (paragraph 74, 80) on a current collector
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`(figure 4).
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`An electrochemical cell having an electrode active material with porosity and comprises
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`nanoparticles and micro particles (paragraph 19). The electrode (50) comprises nanoparticles
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`(41) in contact with microparticles (53), binder particles (42), and electrically conductive
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`particles (55) all on a current collector (54). SugnauX et al. discloses the active material
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`Application/Control Number: 12/177,442
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`Page 3
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`Art Unit: 1727
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`comprises oxides of selected from the group consisting of Group IB, IIA, IIB, IIIA, IVA, IVB,
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`VA, VB, VITB, VIIB and VIII elements of the Periodic Table of Elements, and blends thereof
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`(paragraph 49) and specifically teaches titanium dioxide (paragraph 87—applies to claims 15, 16,
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`29). However Sugnaux does not disclose nanoparticles of tin, aluminum, or silicon.
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`Kawakami et al. discloses a secondary battery and teaches an electrode having an active
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`material (105), support material (104—titainium dioxide —paragraph 18), binder (103), conductive
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`material (102) (paragraph 49). The active material comprises particles of silicon or tin powder
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`having a size of 20 nm (paragraph 62, applies to claims 8 and 9) which is a lithium absorbing
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`nano—material (applies to claim 14, 19, 31). The tin or silicon particles are amorphous (paragraph
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`62—applies to claim 10) It would have been obvious to one of ordinary skill in the art at the time
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`of the invention to include the silicon or tin of Kawakami et al. because this would provide an
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`electrode with a long service lifetime and has a high capacity and a high energy density
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`(paragraph 13—14).
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`As to claim 11, Kawakami et al. teaches the conductive material can be an amorphous
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`carbon (paragraph 73).
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`As to claims 12 and 26, Sugnaux discloses electrodes employed have a mesoporous
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`framework structure (paragraph 68).
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`As to claims 13 and 28, Sugnaux discloses the active material which includes the
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`conductive material having a conductive material of carbon nanotubes (paragraph 53).
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`As to claims 20-25, Sugnaux et al. further discloses the porous electrode can be used as
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`the anode or the cathode (Paragraph 87—applies to claim 20, 23). Modified Sugnaux et al.
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`teaches the particles of silicon or tin powder having a size of 20 nm (paragraph 62).
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`Application/Control Number: 12/177,442
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`Page 4
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`Art Unit: 1727
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`As to claim 30, the electrodes are separated by a separator (3, figure 4).
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`As to claims 32-34, modified SugnauX discloses the electrode having an active material
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`with nanoparticles. the product—by—limitations of claims 33—34 are not given patentable weight
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`since the courts have held that patentability is based on a product itself, even if the prior art
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`product is made by a different process (In re Thorpe, 227 USPQ 964, 1985). Moreover, a
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`product—by—process limitation is held to be obvious if the product is similar to a prior art product
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`(In re Brown, 173 USPQ 685, and In re Fessman, 180 USPQ 324). Claims 33—34 as written does
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`not distinguish the product of the instant application from the product of the prior art.
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`5.
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`Claim 27 is rejected under 35 U.S.C. 103(a) as being unpatentable over SugnauX et al.
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`(US 2004/0131934) in view of Kawakami et al. (US 2006/0127773 A1) as applied to claim 17
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`above, and further in view of SugnauX (EP 1 207 572 A1).
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`As to claim 27, modified SugnauX et al. discloses the frame work of the electrode to have
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`a mesoporous structure but not a macro porous structure. SugnauX (572) teaches mesopores and
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`macropores (45 and 46) linked to inter—particular electrolyte channels (50). Linking means
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`between the particles are assured by the binder and conductive particles (48) that provide an
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`interconnecting network with micro particles. The percolating electron conduction network
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`occupies a small domain only at the external surfaces of the particles leaving the pores accessible
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`to the electrolyte (Paragraph 40). Since the network includes the mesopores the network is
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`mesoporous network and since the network also includes macropores the porous network is also
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`a macroporous network (applies to claim 27). It would have been obvious to one of ordinary
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`Application/Control Number: 12/177,442
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`Page 5
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`Art Unit: 1727
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`skill in the art at the time of the invention to include macropores because this would provide an
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`efficient ion conduction network for the electrolyte.
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`Response to Arguments
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`6.
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`Applicant’s arguments with respect to claims 1, 6, 17 have been considered but are moot
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`because the rejection has changed since the claims have been amended.
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`Conclusion
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`7.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
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`Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action. In the event a first reply is filed within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE—MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the date of this
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`final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to MARIA J. LAIOS whose telephone number is (571)272—9808.
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`The examiner can normally be reached on 11am—7pm Monday—Thursday.
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`Application/Control Number: 12/177,442
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`Page 6
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`Art Unit: 1727
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Barbara Gilliam can be reached on 571—272—1330. The fax phone number for the
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`organization Where this application or proceeding is assigned is 571—273—8300.
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
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`/MARIA J LAIOS/
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`Primary Examiner, Art Unit 1727
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