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 .
Response to Arguments
Applicant's arguments filed 24 December 2025 have been fully considered but they are not persuasive.
Applicant argues that Huang fails to disclose modified metal coordination complexes that comprise capping groups as claimed.
However, Huang teaches that the composition comprises metal-coordination complexes, preferably chromium [00135], and that the metal ion can be associated with a coordination anion such as sulphate [00138]. In the instant claims the first method step is providing a formulation comprising the components and the metal coordination complex includes chromium and sulphates. As Huang teaches the same metal coordination complex it is unclear how this differs from the instant claims.
Applicant further discuses how the approach in Huang is not uniform in content. Which does not appear to be included in the claims, but as Huang teaches the same components being provided it is unclear how it would be different from the instant claims.
Applicant discusses how in Huang most of the metal-ligand complex is immediately depleted by the polymeric binder and therefore an excess must be added which differs from the instant method. However, as noted above Huang teaches the same metal coordination complex with the same sulfate and the same chromium metal. Further, there does not appear to be anything in any claim related to relative amounts of the components being added. Accordingly, the rejections of record are maintained as Huang teaches the same metal coordination complex.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6 January 2026 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 4, 5, 8-11, 15, 19, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huang et al. (WO 2017165916, hereinafter referred to as “Huang”).
As to Claim 1: Huang teaches a conductive material comprising a first active material, a second active material, a metal-coordination complex, a binder, and a liquid carrier [0010-0014] and that the liquid carrier can be removed (i.e., curing the liquid formulation) [0014]. Huang further teaches that the active material can be silicon [0049] and the metal coordination complex can be chromium which has a counter ion such as a sulphate [0135-0138].
As to Claim 2: Huang teaches the method of claim 1 (supra). Huang further teaches that the polymeric binder can form dative bonds with the metal-coordination complex [0061].
As to Claim 4: Huang teaches the method of claim 1 (supra). Huang further teaches that the various materials and precursors can be mixed [0073].
As to Claim 5: Huang teaches the method of claim 1 (supra). Huang further teaches that the metal-coordination complex can be made in advance of the mixture [0175].
As to claim 8: Huang teaches the method of claim 1 (supra). Huang further teaches an example wherein the metal-coordination complex is formed at a pH of 3.7 [0177].
As to Claims 9 and 10: Huang teaches the method of claim 1 (supra). Huang further teaches that the ligand can be carboxylate (i.e., carboxylic acid) [0144] and the binder can be polyacrylic acid [0061].
As to Claim 11: Huang teaches the method of claim 9 (supra). Huang further teaches that the metal ion can be associated with a counter ion such as an acetate [0138].
As to Claim 15: Huang teaches the method of claim 1 (supra). Huang further teaches that the active material preferably has a surface comprising nitrogen [0118].
As to Claims 19 and 20: Huang teaches the method of claim 1 (supra). Huang further teaches that the polymeric binder can be polyacrylic acid [0061].
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 1-2,4-5,8-11,15 and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/486,582 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are drawn to methods comprising providing liquid formulations comprising a liquid carrier, an active material, a polymeric binder, and a modified metal coordination complex, and curing the liquid formulation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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/Andrew J. Oyer/ Primary Examiner, Art Unit 1767