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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
`www.uspto.gov
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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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`12/946,980
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`11/16/2010
`
`Hizuru Koshina
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`PESL—129US
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`1057
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`EXAMINER
`RATNERPRESTIA —
`07’0”“ —
`7590
`52473
`PO. BOX 980
`SCULLY, STEVENM
`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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`NOT *ICATION DATE
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`DELIVERY MODE
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`07/05/2013
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`ELECTRONIC
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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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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`ptocorrespondence @ratnerprestia.c0m
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`PTOL—90A (Rev. 04/07)
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`

`

`
`
`Applicant(s)
`Application No.
` 12/946,980 KOSHINA, HIZURU
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`1727STEVEN SCULLY first“
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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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`
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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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`-
`-
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`Status
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`1)I:I Responsive to communication(s) filed on
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lX| This action is non-final.
`a)I:| This action is FINAL.
`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)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
`5)|XI CIaim(s)1-_20is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:l Claim(s) _ is/are allowed.
`7)IZ| Claim(s)_1 2-0 is/are rejected.
`8)I:I Claim(s) _ is/are objected to.
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`9)|:l Claim((s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atents/init events"
`
`
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`h/index.‘s or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`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
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`b)I:I Some * c)I:I None of the:
`a)I:I All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.|: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)).
`* 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) E Notice of References Cited (PTO-892)
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`3) I] Interview Summary (PTO-413)
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`Paper NOISIIMa” Date —
`PTO/SB/08
`t
`St t
`I
`D'
`t'
`f
`2 IXI I
`)
`4) I:I Other:
`a emen (s)(
`Isc osure
`n orma Ion
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`Paper No(s)/Mai| Date 11/16/2010.
`US. Patent and Trademark Office
`PTOL-326 (Rev. 05-13)
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`Part of Paper No./Mai| Date 20130630
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`Office Action Summary
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`

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`Application/Control Number: 12/946,980
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`Page 2
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`Art Unit: 1727
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 102
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`1.
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`The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C.
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`102 that form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one year prior to the date of application
`for patent in the United States.
`Claims 1-20 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by
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`2.
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`Herle (US2009/0191458).
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`With respect to claims 1, 7, 14 and 20, Herle discloses an electrode of a non-
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`aqueous electrolyte secondary battery comprises a current collector and a mixture
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`comprising an electrode active material, a conductive material, and a binder on the
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`current collector. The electrode active material comprises a porous composite material
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`of the conductive material and a lithium absorbing nano-material. See abstract; [0023].
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`Regarding claim 20, it is the position of the Examiner that the composite mixture of the
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`prior art of the electrode active material and conductive material provides conductive
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`material disposed within the electrode active material rather than outside of the active
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`material.
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`With respect to claim 2, Herle discloses the nano-material is a nano-dimensional
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`material, a nanoparticle, or a nanotube. See [0049].
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`With respect to claims 3, 7, 15 and 16, Herle discloses the nano-material is one
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`of silicon, tin, silicon oxide or tin oxide. See [0048-0049].
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`With respect to claims 4 and 5, Herle discloses the conductive material may be,
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`for example, graphite, carbon black or acetylene black. See [0050].
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`

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`Application/Control Number: 12/946,980
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`Page 3
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`Art Unit: 1727
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`With respect to claim 6, Herle discloses the same conductive material as the
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`instant application. See [0050]. “[E]ven though product-by-process claims are limited
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`by and defined by the process, determination of patentability is based on the product
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`itself. The patentability of a product does not depend on its method of production. If the
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`product in the product-by-process claim is the same as or obvious from a product of the
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`prior art, the claim is unpatentable even though the prior product was made by a
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`different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir.
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`1985).
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`With respect to claims 9, 10 and 17, Herle discloses the nanoparticles are silicon
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`or tin nanoparticles. See [0049].
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`With respect to claims 11 and 12, Herle discloses a surfactant and organic
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`solvent included. See [0055].
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`With respect to claims 13 and 19, Herle discloses the electrode active material
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`additionally comprises absorbed lithium. See entire document.
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`With respect to claim 18, Herle discloses a separator. See [0044].
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`Conclusion
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`3.
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure. Gao et al. disclose composite materials of nano-dispersed
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`silicon and tin and lithium for use as an anode material for rechargeable batteries.
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`Contact/Correspondence Information
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`Application/Control Number: 12/946,980
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`Page 4
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`Art Unit: 1727
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to STEVEN SCULLY whose telephone number is
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`(571)270-5267. The examiner can normally be reached on Monday to Friday 11am to
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`7pm.
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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
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`for the 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
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`/Steven Scully/
`Examiner, Art Unit 1727
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`