DETAILED ACTION
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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 recites “the first electrode and the second electrode are provided in the pipe”. Claim 4 fails to further limit the subject matter of independent claim 1 upon which it depends, since claim 1 previously recites “a first electrode and a second electrode disposed in the pipe. In other words, claim 4 repeats the arrangement between the first electrode, second electrode, and the pipe previously recited in claim 1.
In addition, the terms “provided” and “disposed” do not have “special definitions” in applicant’s specification. See MPEP 2111.01.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 3, 4, and 7 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Fan (US 20210379602).
Regarding claims 1 and 4, Fan teaches an impurity processing device comprising:
a pipe 75 through which a treated liquid containing metal impurities flows (para 0025; see for example Fig. 2);
a cathode 41 (first electrode) and an anode 43 (second electrode) disposed in the pipe 75 (para 0022-0025; see for example Figs. 3 and 4); and
a power source 53 (power supply) structured to cause a “minimal electrical current” (i.e., current) (see para 0026) to flow between the cathode 41 (first electrode) and the anode 43 (second electrode) (para 0024).
Although it is acknowledged that Fan discloses “essentially no electrical current flows between these electrodes since the fresh water within gap 45 is a poor electrical conductor” (para 0024), Fan meets the limitations of the claim since power source 53 is mechanically structured to cause a “minimal electrical current” to flow between the electrodes (see para 0026).
Regarding claims 2 and 3, Fan further shows the cathode 41 (first electrode) is provided in the pipe 75 (see for example Fig. 2), and
the anode 43 (second electrode) is provided in a rod-shaped body inserted into the pipe 75, wherein the rod-shaped body is a hollow body, a solid body, or a cylindrical mesh (para 0022, 0029; see for example Figs. 2-4 and 8-10).
Regarding claim 7, Fan teaches causing a treated liquid containing metal impurities to flow through a pipe 75; and causing a current to flow to the treated liquid flowing through the pipe 75 (para 0021-0025; see for example Figs. 1-4).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, 3, 4, 5, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kawanishi (USP 20090169943) in view of Fan (US 20210379602).
Regarding claims 1, 4, 6, and 7, Kawanishi teaches an impurity processing device comprising:
causing a treated liquid containing metal impurities to flow through a pipe, the pipe is provided in a dope producing apparatus 10 (coating apparatus) (para 0054; see for example Fig. 1) including a co-casting device 111 (coating die) for applying the treated liquid to a coated material (para 0105-0106; see for example Fig. 3) and a tank 32 for storing the treated liquid (para 0054; see for example Figs. 1 and 2).
Kawanishi further teaches filtration devices 22, 27 for filtering coating solution in the pipe (para 0054; see for example Fig. 1). Thus, it is implicit that the coating solution contains impurities.
Kawanishi does not explicitly teach a power source including first and second electrodes.
However, Fan teaches an impurity processing device comprising a pipe 75 through which a treated liquid containing metal impurities flows; a cathode 41 (first electrode) and an anode 43 (second electrode) disposed in the pipe 75; and a power source 53 (power supply) structured to cause a “minimal electrical current” (i.e., current) to flow between the cathode 41 (first electrode) and the anode 43 (second electrode) and to the treated liquid through the pipe 75 (para 0022-0025; see for example Figs. 3 and 4), for the benefit of removing polarized contaminants (para 0026-0027, 0032). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the impurity processing device of Fan in the apparatus of Kawanishi, for the benefit of removing polarized contaminants.
Although it is acknowledged that Fan discloses “essentially no electrical current flows between these electrodes since the fresh water within gap 45 is a poor electrical conductor” (para 0024), Fan meets the limitations of the claim since power source 53 is mechanically structured to cause a “minimal electrical current” to flow between the electrodes (see para 0026).
Regarding claims 2 and 3, as mentioned above, Kawanishi an impurity processing device includes a power supply and electrodes.
However, Fan further shows, in the impurity processing device, that the cathode 41 (first electrode) is provided in the pipe 75 (see for example Fig. 2), and the anode 43 (second electrode) is provided in a rod-shaped body inserted into the pipe 75, wherein the rod-shaped body is a hollow body, a solid body, or a cylindrical mesh (para 0022, 0029; see for example Figs. 2-4 and 8-10), for the benefit of removing polarized contaminants (para 0026-0027, 0032). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the impurity processing device of Fan in the apparatus of Kawanishi, for the benefit of removing polarized contaminants.
Regarding claim 5, Kawanishi further teaches that the treated liquid is at least one of an electrode slurry containing a solvent and an electrode active material and an electrode slurry containing a solvent and a conductive assistant (see for example para para 0041-0052).
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.
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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of co-pending Application No. 17/801,182 in view of Fan (US 20210379602).
Claim 1 of co-pending Application No. 17/801,182 recites every structural limitation of instant claim 1 except for “a power supply structured to cause a current of 0.1 mA or more to flow between the first and second electrode.”
However, Fan teaches a power source 53 (power supply) structured to cause a current of 0.1 mA or more to flow between a cathode 41 (first electrode) and anode 43 (second electrode) (para 0024, 0026) (estimated from the max voltage 100 V, resistance of drinking water, and relationship I=V/R), for the benefit of removing polarized contaminants (para 0026-0027, 0032). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the power supply in the invention recited in claim 1 of co-pending Application No. 17/801,182, as taught by Fan, for the benefit of removing polarized contaminants.
The recitations “contained in a solid-liquid mixture for forming an electrode of an electric storage device” and “solid-liquid mixture” do not patentably distinguish the claimed apparatus recited instant independent claim 1 since the manner or method in which it is to be utilized is not germane to the issue of patentability of the machine itself (see MPEP 2115). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Claims 2-7 depend on claim 1.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES CAPOZZI whose telephone number is (571)270-3638. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAH-WEI YUAN can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES CAPOZZI/Primary Examiner, Art Unit 1717
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