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 11/7/25 have been fully considered but they are not persuasive. No amendment has been filed. The double patenting rejections still apply and are not argued.
Applicant’s arguments are directed to the teaching found in paragraph 42 of Ito. Applicant asserts that the 1-20 micron range disclosed in paragraph 42 of Ito refers to the hard carbon and not the sodium particles as claimed. Applicant further asserts that paragraph 42 actually teaches away from the equivalence of particle size for the hard carbon and sodium. The Examiner respectfully disagrees. Applicant is focusing only on certain words of paragraph 42 and not the entire teaching. It is true that paragraph 42 states “it is unnecessary to equalize the particle sizes of all the active materials.” But it is also true that “the average particle size only needs to be equal to the average particle size of the negative-electrode active material contained in conventionally-known negative-electrode active materials and is not particularly limited” while establishing in paragraph 41 that sodium iron manganese oxide is known negative-electrode active material.
The Ito reference still anticipates the claims but obviousness-type rejections are added as this is an appropriate circumstance for a USC 102/103 rejection. From MPEP 2131.03 II: A 35 U.S.C. 102 and 103 combination rejection is permitted if it is unclear if the reference teaches the range with "sufficient specificity." The examiner must, in this case, provide reasons for anticipation as well as a reasoned statement regarding obviousness. Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993) (expanded Board). For a discussion of the obviousness of ranges see MPEP § 2144.05.
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 1-12, 14-17, and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,132,190 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim encompasses all of the limitations of the instant claims.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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 1-12, 14-17, and 19-21 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ito (WO 2012/132813 A1). Corresponding US Application 2014/0017574 is used for translation and citation purposes.
Regarding claims 1-12, 14, and 15, Ito discloses a composition comprising: sodium active particles consisting essentially of sodium iron manganese oxide (paragraph 41). Ito discloses the sodium active particles can be used as a counter electrode to hard carbon particles, that both particles have the same size, and that the hard carbon has a size of 1-20 microns (paragraph 42). This can be considered an explicit teaching of sodium iron manganese oxide sized 1-20 microns or it would have been obvious to one having ordinary skill in the art at the time of invention to utilize sodium iron manganese oxide sized 1-20 microns when the counter electrode is hard carbon since the hard carbon is 1-20 microns and Ito discloses optimizing sizes of the particles for the specific application/materials. The claimed system does not change the properties or scope of the product. “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 I.
Regarding claims 16 and 17, Ito discloses a composition comprising: sodium active particles consisting essentially of sodium iron manganese oxide (paragraph 41). Ito discloses the sodium active particles can be used as a counter electrode to hard carbon particles, that both particles have the same size, and that the hard carbon has a size of 1-20 microns (paragraph 42). This can be considered an explicit teaching of sodium iron manganese oxide sized 1-20 microns or it would have been obvious to one having ordinary skill in the art at the time of invention to utilize sodium iron manganese oxide sized 1-20 microns when the counter electrode is hard carbon since the hard carbon is 1-20 microns and Ito discloses optimizing sizes of the particles for the specific application/materials. The claimed system does not change the properties or scope of the product. “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 I.
Regarding claims 19-21, Ito discloses a composition comprising: sodium active particles consisting essentially of sodium iron manganese oxide (paragraph 41). Ito discloses the sodium active particles can be used as a counter electrode to hard carbon particles, that both particles have the same size, and that the hard carbon has a size of 1-20 microns (paragraph 42). This can be considered an explicit teaching of sodium iron manganese oxide sized 1-20 microns or it would have been obvious to one having ordinary skill in the art at the time of invention to utilize sodium iron manganese oxide sized 1-20 microns when the counter electrode is hard carbon since the hard carbon is 1-20 microns and Ito discloses optimizing sizes of the particles for the specific application/materials. The claimed system does not change the properties or scope of the product. “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 I.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IMRAN AKRAM whose telephone number is (571)270-3241. The examiner can normally be reached M-F 9a-5p.
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, Basia Ridley can be reached at 571-272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IMRAN AKRAM/Primary Examiner, Art Unit 1725