DETAILED ACTION
Application 14/890295, “A METAL ACCUMULATION INHIBITING AND PERFORMANCE ENHANCING SUPPLEMENT AND A SYSTEM FOR DELIVERING THE SUPPLEMENT”, is the national stage entry of a PCT application filed on 5/30/14 and claims priority from a provisional application filed on 5/31/13.
This Office Action on the merits is in response to communication filed on 6/9/26.
First Inventor to File Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/27/26 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 41-48, 52-55 and 59-66 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding independent claims 41, 52 and 61, the claims fail to provide a clear-cut indication of the scope of the subject matter embraced by the claim and are thus indefinite.
The claims as worded are drawn to a system having at least one performance article [which may take various forms such as a cell container, a negative electrode, a porous insulating sheet, an electrolyte or an encapsulating article] having included therewith a supplement and/or a migratory compound, wherein the quantity of the component is claimed as a critical characteristic, but is characterized by the effect produced by the presence of the system/battery, thereby rendering the quantity to be ambiguous. Moreover, the factor for comparison and evidencing that a sufficient quantity of compound/supplement present includes a broad range of possible improved behaviors of the battery such as reduction in material build-up at the negative electrode, elevated electric potential, reduction in gas evolution, reduction in water consumption, reduction in corrosion, and reduction in self discharge. It is noted that the named properties include those that were known as desirable in the art at the time of invention, such as inhibition of undesirable metal accumulation (see previously presented art rejections). The scope of the structure of the invention not being unambiguously defined, the claims as worded are not found to adequately set forth the metes and bounds of the claimed invention.
Additionally, claims 41, 52 and 61 define the claims using method steps, but it is not clear how the recited method steps further limit the claimed performance system having at least one performance article. For example, the claim 41 clause, “the treated cell confirming the portion of the negative electrode surface barrier-forming molecules formed the barrier over the surface of the at least one negative electrode, by an elevated electric potential of the at least one negative electrode relative to the at least one positive electrode, as demonstrated when the treated cell is at the end of charge or is in a full state of charge, when the at least one positive electrode and the at least one negative electrode of the treated cell are receiving the flow of the electric current from the electric power source, when there is an electric potential upwards of 2.25 volts across the at least one positive electrode and the at least one negative electrode of the treated cell, and when compared to an electric potential of at least one negative electrode relative to at least one positive electrode of an electrochemical cell having facility to be compared or that is adapted to be compared, in use, to the treated cell, and that is substantially equivalent to the treated cell, but that does not include the at least one performance article therewith, the elevated electric potential confirming the supplement or the migratory compound, individually or in the combination, as included with the at least one performance article, comprise the negative electrode surface barrier-forming molecules and the negative electrode surface barrier-forming molecules include the hydrophilic head-aspect and the at least one gas-attracting hydrophobic tail, and the upwards of 2.25 volts between a positive electrode and a negative electrode electric potential elevating quantity of the supplement or of the migratory compound, or of the combination thereof, as included with at least one performance article is an active concentration and an effective treatment quantity, and thereby provide at least one performance enhancement” is defined at least in part method, but it is not clear what structural limitations are implied by the recitation.
Similarly, claims 52 (e.g. “shaking and producing the foam quantity, while also…”) and 61 (e.g. “shaking and producing the foam quantity, and to confirm the one or more negative electrode surface barrier-forming molecules… by providing the negative electrode surface barrier-forming article with a property of inducing a foam… soaking for a period of time… [etc.]”) include clauses having method limitations for which the implied structure is not readily determinable.
In making this determination the Office has considered at least the following factors as suggested by MPEP 2173.05(g): (1) whether there is a clear-cut indication of the scope of the subject matter covered by the claim; (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained; and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim.
In this case, there is not a clear-cut indication of the scope of subject matter because boundaries of the invention are largely defined in a qualitative fashion, rather than in quantitative or other well-defined manner and are primarily defined only by results obtained, such as enhancement of performance, inhibition of metal accumulation, generation/producing of foam (as to claim 52 and 61) of an electrochemical cell which includes the performance article.
These enhanced properties are conditional limitations dependent on various aspects of a system and it is unclear what other elements of the battery [or electrochemical cell] may play a role in attainment of the properties. A skilled artisan at the time of invention would not have known what structure is set forth because the quantity of the compound/component included in the performance system is defined only by implication, leaving excessive ambiguity.
Response to Arguments
Applicant’s arguments filed on 5/7/26 have been fully considered, but are not persuasive. Applicant presents the following arguments.
Applicant argues that the amendment changing claims to read “… at least one positive electrode and the at least one negative electrode arranged for and thereby receiving a flow of electric current from an electric power source…” resolves issues of indefiniteness. In response, this amendment is found to clarify this limitation compared to the previous language reciting “and the electric current is thereby received by the at least one positive electrode…, which is now removed from the claims. However, the claims remain indefinite for at least the reasons currently included in the indefiniteness rejection.
There is no need to define the quantity of the supplement except for the purpose of defining the composition of the supplement in a way that is not anticipated by any prior art. In response, under US patent prosecution process, claims must be definite in order to be patentable. 35 U.S.C. 112 (pre-AIA ), second paragraph requires that “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention”. As described in MPEP 2173, “The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent. A secondary purpose is to provide a clear measure of what the inventor or a joint inventor regards as the invention so that it can be determined whether the claimed invention meets all the criteria for patentability”. Therefore, there is a need for the claims to adequately define the quantity of the supplement in a manner that will allow the public to determine the boundaries of what would constitute infringement on the patent. The examiner is tasked with determining whether or not claims are sufficiently definite, and issuing rejections in instances where the claims do not distinctly claim applicant’s invention.
The recited claim limitations are equivalent to placing on a scale and taking note of a mass, weight or concentration of the mass, weigh or concentration of claimed constituents. The examiner respectfully disagrees, and find that a skilled artisan would not have known the quantity of supplement/compound in a sufficiently clear manner to determine the metes and bounds of applicant’s claimed invention.
The claims as worded include structural elements as set forth on pages 18-20 and 22 of the remarks and therefore the claims are structurally definite. In response, the judgement of whether or not a claim is definite does not hinge upon whether or not the claim language includes structural features.
Regarding the assertion that the claims make improper use of conditional limitations leading to ambiguity, the Examiner has conflated whether a condition will occur with when a condition will occur as it pertains to a condition of usage. In response, the Examiner has made his best attempt to explain why the claims as a whole are indefinite. The characterization of certain features as “conditional limitations” is intended to convey that certain property enhancement recited in the claims are found to be dependent on the system as a whole; therefore, it cannot be readily determined if certain recited property enhancements are in fact due to the presence of some amount of supplement or compound.
Applicant recites MPEP 806.05(e) in support of an argument of definiteness of the claimed invention. In response, MPEP 806.05(e) is regarding restriction guidelines, not indefiniteness analysis. It is not immediately clear why applicant points to this section of the rejection in support of the argument against indefiniteness. Applicant appears to now traverse the restriction requirement; however, the restriction was made Final in the 12/5/18 Non-Final Rejection.
The Examiner uses the word “battery” in the rejections; however, the word “battery” is not included in the claims or specification oft the instant application. In response, this argument has been previously presented and is responded to, such as in item (i) of the 12/6/24 Advisory Action and item 4d of the 7/8/25 Final Rejection. It is not immediately clear to the Examiner why the distinction between “electrochemical cell” and “battery” argued by applicant is germane to the determination of patentability and the ground(s) of rejection set forth in the body of the rejections.
The phrase “an effective treatment quantity” is definite because the claim states the function that is achieved and that only one effect is implied by the specification and the claims in compliance with MPEP 2173.05(c). In response, this section of the MPEP inter alia states, “The common phrase “an effective amount” may or may not be indefinite. The proper test is whether or not one skilled in the art could determine specific values for the amount based on the disclosure… The phrase “an effective amount” has been held to be indefinite when the claim fails to state the function which is to be achieved and more than one effect can be implied from the specification or the relevant art”. The underlined portions sets forth a condition under which the phrase “an effective amount” has been held to be indefinite, but the underlined portion does not suggest that this is the only reason that the term may be held indefinite. Clearly, the proper test is whether or not one skilled in the art could determine specific values for the amount based on the disclosure. In this case, the examiner finds that a skilled artisan could not determine the value based on the claim, including its ambiguity. Accordingly, the effective treatment quantity recited in claim 1 is an indefinite term. Moreover, claim 41 indicates that inclusion of the supplement/compound in “an active concentration and an effective treatment quantity thereby provides at least one performance enhancement, and goes on to list a plethora of possible enhancements in the last clause of claim 1, each of which could have different causes. Therefore, the claimed invention does not appear to satisfy the underlined segment because more than one effect is presented in the claimed invention.
The effective treatment quantity is definite at least because it is correlated to the production of a foam, as recited in the claims (e.g. claim 52 or 61). In response, firstly, the effective treatment quantity is not only coupled to a foam production, but is also contingent upon other factors, such as set forth in the last clause of claim 41 or 52, contributing to the claim’s ambiguity. Secondly, the “producing of a foam quantity” of claim 52 itself does not appear to be definite because a skilled artisan may to what degree the presence of bubbles in a shaken solution could be considered “a foam quantity” in the context of the claimed invention.
The Examiner has not specified an specific claim limitations which are confusing and ambiguous in scope. In response, the claims have been considered as a whole and finds the independent claims to be indefinite because the metes and bounds of the claimed invention cannot be readily determined by the claim language. It is noted that the rejection does specify specific examples of indefinite language, such as pointing out the structure implied by the recited method is not readily determinable.
“[T]he Examiner is either minded not to allow the present application or, unlike a person of ordinary skill in the art, does not understand the claims”. In response, it is conceded that the Examiner does not understand the claims. However, this is due to the ambiguity and indefiniteness of the claims, not due to a lack of familiarity with the art. As described in MPEP 2173.02 II, “In reviewing a claim for compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, the examiner must consider the claim as a whole to determine whether the claim apprises one of ordinary skill in the art of its scope and, therefore, serves the notice function required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, by providing clear warning to others as to what constitutes infringement of the patent.” Therefore, the Examiner is tasked with determining whether or not the skilled artisan would be able to adequately determine the scope of the claimed subject matter. Here, as the Examiner cannot understand the metes and bounds of the claims sufficiently to evaluate the claimed invention for patentability over the prior art, the Examiner determines that one of ordinary skill in the art would not be properly apprised of the scope of the claimed invention.
Applicant further presents arguments with respect to the 35 U.S.C. 102(1)(1) rejection of claims over Wimberly (USP 6458491) and 35 U.S.C. 103 rejections over Wimberly (USP 6458491) in view of Fraley (US 2015/0232583). In response, in some instances it is possible to make a reasonable, conditional interpretation of claims adequate for the purpose of resolving patentability issues to avoid piecemeal appellate review. In the interest of administrative and judicial economy, this course is appropriate wherever reasonably possible. See Ex parte Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993); Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984). In other instances, however, it may be impossible to determine whether claimed subject matter is anticipated by or would have been obvious over references because the claims are SO indefinite that considerable speculation and assumptions would be required regarding the meaning of terms employed in the claims with respect to the scope of the claims. See In re Steele, 305 F.2d 859, 862 (CCPA 1962).
In this case, as the Examiner cannot understand and determine the metes and bounds of the claims sufficient for a proper comparison with the art, the rejections under 35 U.S.C. 102a)(1) and 103 have been withdrawn. This withdrawal is not a withdrawal on the merits of the rejection but, rather, is a procedural withdrawal predicated upon the indefiniteness of the claims. Applicant’s arguments with respect to the rejections under 35 U.S.C. 102a)(1) and 103 are moot in view of the withdrawal of the rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMIAH R SMITH whose telephone number is (571)270-7005. The examiner can normally be reached on Mon-Fri: 9 AM-5 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, Milton Cano can be reached on 313-446-4937. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEREMIAH R SMITH/Primary Examiner, Art Unit 1723
Prosecution Insights