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 .
DETAILED ACTION
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 1-2, 4-6, 10-14 and 17-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-7, 12-16 and 21 of U.S. Patent No. 12646717. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of claims 1, 4-6, 10-14 and 17-21 of the present application are fully anticipated by claims 1-2, 5-7, 12-16 and 21 of U.S. Patent No. 12646717.
Claim 1 is considered product-by-process claim. Claims 1-2, 5-7, 12-16 and 21 of U.S. Patent No. 12646717 teaches all of the positively recited structure of the claimed product - carbon material. The determination of patentability is based upon the product structure itself. The patentability of a carbon material does not depend on its method/ process of determination. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. (See MPEP § 2113). Claim 1 as written does not distinguish the carbon material of the instant application from the carbon material of the claims 1-2, 5-7, 12-16 and 21 of U.S. Patent No. 12646717.
Expectation E, dispersity D and gross area A are directed to compartment(s) used to determine X1, which are being interpreted as product-by-process limitations and does not distinguish the carbon material of the instant application from the carbon material of the claims 1-2, 5-7, 12-16 and 21 of U.S. Patent No. 12646717.
Regarding claims 3 and 16, claims 1-2, 5-7, 12-16 and 21 of U.S. Patent No. 12646717 teach the carbon material as disclosed above. Claims 1-2, 5-7, 12-16 and 21 of U.S. Patent No. 12646717 do not teach wherein the granulated particles satisfy the equation of claims 3 and 16, wherein R is a roundness determined with a flow-based particle image analyzer, and R1 is a roundness determined from a cross-sectional SEM image.
However, in the same field of endeavor, Matsumoto teaches a carbon material having a roundness (R), determined by flow-based particle image analysis, of 0.90 (Matsumoto, Title, Table 1, [0057]-[0061], e.g., the average degree of circularity is determined with flow type particle image analyzer; the average degree of circularity is 0.90 (see Ex. 2 and 3 of Table 1)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the carbon material having a roundness (R), determined by flow-based particle image analysis, of 0.90, for the purpose of optimizing interparticle interstices and/or load characteristics (Matsumoto, [0061]).
Claims 1-2, 5-7, 12-16 and 21 of U.S. Patent No. 12646717 in view of Matsumoto does not teach wherein the granulated particles satisfy the equation of claims 3 and 16, wherein R is a roundness determined with a flow-based particle image analyzer, and R1 is a roundness determined from a cross-sectional SEM image.
However, in the same field of endeavor, Suenaga teaches a carbon material having a roundness R1, determined from a cross-sectional SEM image, of 0.90 or more and 1.00 in a perfect circle (Suenaga, Title, [0019], e.g., "spherical" means that when the particle image of the graphite particles is observed in an SEM image, it has a rounded shape; preferably, the circularity is 0.9 or more (which is being interpreted as roundness R1 determined from a cross-sectional SEM image); by making such a configuration, the negative electrode active material layer formed can be densified; the "circularity" is a circle equivalent diameter that is the diameter of a circle having the same area as the projected area of the graphite particles, or the perimeter as a circle calculated by dividing it by the perimeter measured from the projected image of the graphite particles, and is 1.00 in a perfect circle).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the carbon material having a roundness (R1), determined from a cross-sectional SEM image, of 0.90 or more, with 1.00 being a perfect circle, for the purpose of densify (Suenaga, [0019]).
Claims 1-2, 5-7, 12-16 and 21 of U.S. Patent No. 12646717 in view of Matsumoto and Suenaga teaches wherein the granulated particles satisfies the equation of claims 3 and 16, wherein R is a roundness determined with a flow-based particle image analyzer (R is 0.90 (Matsumoto, (see Ex. 2 and 3 of Table 1))), and R1 is a roundness determined from a cross-sectional SEM image (R1 is 0.90-1.00 (Suenaga, [0019])).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAIXIA ZHANG whose telephone number is (571)272-5697. The examiner can normally be reached Monday and Tuesday 9-5.
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/HAIXIA ZHANG/Primary Examiner, Art Unit 1723
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