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 . The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. The RCE is accepted.
Claims 1-4, 9-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 9 and 16 are unclear in how the density and the pore sizes vary. Are two separate runs compared? Are multiple particles within a batch compared? If a single batch of material has a bulk density of (for example) 1.6 g/cc, how are b and y calculated?
Claims 1, 9, 14, 16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Szaloky 20180013134 taken with Oh et al. 6515845 and optionally in view of Repik et al. 2933454, Cai et al. 20120300364 and Nikova et al. 20140120339.
Szaloky teaches, especially in figure 6 and paragraphs 94-106, 151 and 294, porous carbon material having density of 0.344. Note the discussion of the packing of the articles, which suggests that this is bulk density. In so far as it is not explicitly identified as such, arriving at the claimed bulk density is obvious to achieve the desired electrolyte infiltration; see paras 94-100.
This differs in not teaching the claimed pore sizes.
Oh teaches in col. 2 that pore sizes of 5nm are suitable for organic electrolytes. Thus, forming the claimed size pores in the material of Szaloky is obvious to provide effective molecular mobility and/or the desired results extensively discussed by Szaloky.
The intended use of claims 14 and 20 do not limit the material.
In so far as the pore structure is not explicitly described in the claimed terms, Repik teaches in columns 2 and 6 the roles of the various pore sizes and how they are measured, Cai teaches in fig. 2 a representation of pore structure and Nikova teaches, especially in paras. 101 and 127-135, that NOVOLAC resins create the claimed pores. Thus, no differences are seen in the pores.
Claims 1, 2, 9, 10, 14, 16, 17, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Cordoneanu et al. 20090093561, alone or in view of Repik et al. 2933454, Cai et al. 20120300364, Nikova et al. 20140120339, Szaloky 20180013134 and Oh et al. 6515845
Cordoneanu teaches, especially in para 14 and table 2, carbonized materials having bulk density of 0.131 and 0.133 and pores of 5-100 microns. Micropores and mesopores are also discussed. While the features claimed are not discussed, forming a pore distribution which would conform to the claimed ratio is obvious to create the desired characteristics as discussed in para 15. While not described in the same manner, no difference is seen since the pore distribution is the same as claimed- especially since both the reference and the specification start with polymers. See also paragraph 33. The teaches of wall pores being microporous is noted, however are encompassed by the variation of ‘about’ 3nm.
The intended use of claims 14 and 20 do not limit the material.
In so far as the pore structure is not explicitly described in the claimed terms, Repik teaches in columns 2 and 6 the roles of the various pore sizes and how they are measured, Cai teaches in fig. 2 a representation of pore structure and Nikova teaches, especially in paras. 101 and 127-135, that NOVOLAC resins create the claimed pores. Slazoky has been discussed above and Oh teaches in figs. 3 and 6 actual micrographs of pores and col.1-2 which discuss pore size versus impregnation issues. Thus, no differences are seen in the pores.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 9-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12304817. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim common subject matter in that the pore and density ranges overlap.
Even though the present material is not described as a ‘foam’ the claims encompass one and the similarity of the synthesis (phenol-formaldehyde resin and hexamine in glycol) implies that a foam is formed.
Applicant's arguments filed 1/6/26 have been fully considered but they are not persuasive.
Previous remarks are incorporated. The PTO does not have facilities to test the materials of the prior art to ascertain the properties. The above rejections supply teachings and motivations as to why the claimed materials are obvious to create. Applicant should show actual differences.
The claim structure implies that multiple products are made and compared to each other. Perhaps a recitation should be made about what forms would have what densities so that a comparison to the prior art can be made -perhaps in various dependent claims, noting that the form must be consistent with ‘plurality of particles’ which would appear to exclude monoliths made from particles sintered with a binder. While the pore connections/interrelationships are not explicitly disclosed in the references, the action of 3/29/24 cited several references showing pore structure, noted above.
/STUART L HENDRICKSON/Primary Examiner, Art Unit 1736
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