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 .
Election/Restrictions
Applicant’s election of Group I (claims 1-27) in the reply filed on 4/21/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant’s election without traverse of Group I (claims 1-27) in the reply filed on 4/21/2026 is acknowledged.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-27 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2023/0136818).
As to claim 1, Kim discloses a solid ion conductor ([0010]-[0015], discussed throughout) represented by Formula 1 and having an argyrodite crystal ([0010]-[0015], discussed throughout) structure:
Li7-2a-b-cMaPS6-a-b-cOaX1bX2c Formula 1
wherein, in Formula 1, M is zinc (Zn), cadmium (Cd), mercury (Hg), or a combination thereof,
wherein X1 and X2 are each independently chlorine (Cl), bromine (Br), iodine (I), a pseudohalogen, or a combination thereof, and
wherein 0<a<0.5, 0<b<2, 0<c<2, and 1<b+c<3 ([0016]-[0021], [0097], discussed throughout, the compound is MZPSOX represented by MaZnbPcSdOeXf wherein M is Li and X is one or more selected from F, Cl, Br or I). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 2, Kim discloses wherein, in Formula 1, 0.02≤a≤0.1 ([0016]-[0021], [0097], discussed throughout, the compound is MZPSOX represented by MaZnbPcSdOeXf wherein M is Li and X is one or more selected from F, Cl, Br or I). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 3, Kim discloses wherein, X1bX2c is ClbBrc or ClbIc, and 0<b<2, 0<c<2, 1<b+c<3, and b>c ([0016]-[0021], [0097], discussed throughout, the compound is MZPSOX represented by MaZnbPcSdOeXf wherein M is Li and X is one or more selected from F, Cl, Br or I). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 4, Kim discloses wherein, 1<b+c<2 ([0016]-[0021], [0097], discussed throughout, the compound is MZPSOX represented by MaZnbPcSdOeXf wherein M is Li and X is one or more selected from F, Cl, Br or I). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 5, Kim discloses wherein, 1<b/c≤50 ([0016]-[0021], [0097], discussed throughout, the compound is MZPSOX represented by MaZnbPcSdOeXf wherein M is Li and X is one or more selected from F, Cl, Br or I). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 6, Kim discloses wherein, 1<b/c≤20 ([0016]-[0021], [0097], discussed throughout, the compound is MZPSOX represented by MaZnbPcSdOeXf wherein M is Li and X is one or more selected from F, Cl, Br or I). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 7, Kim discloses wherein, in Formula 1, M is Zn ([0016]-[0021], [0097], discussed throughout, the compound is MZPSOX represented by MaZnbPcSdOeXf wherein M is Li and X is one or more selected from F, Cl, Br or I). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 8, Kim discloses wherein, a compound represented by Formula 1 is a compound represented by Formula 2:
Li7-2a-b-cZnaPS6-a-b-cOaClbBrc Formula 2
wherein, in Formula 2, 0<a<0.5, 0<b<2, 0<c<1, and 1≤b+c<2 ([0016]-[0021], [0097], discussed throughout, the compound is MZPSOX represented by MaZnbPcSdOeXf wherein M is Li and X is one or more selected from F, Cl, Br or I). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 9, Kim discloses wherein, 1<b/c≤50 ([0016]-[0021], [0097], discussed throughout, the compound is MZPSOX represented by MaZnbPcSdOeXf wherein M is Li and X is one or more selected from F, Cl, Br or I). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claims 10 and 11, Kim does not specially state wherein, in the solid ion conductor, a ratio of peak intensity (IB) at a diffraction angle (2θ) of 29.07±0.5° to a peak intensity (IA) at 2θ of 30.09°±0.5°, i.e., IB/IA, is <0.1 in an X-ray diffraction (XRD) spectrum using CuKα rays (claim 10) and wherein, IB/IA<0.07 (claim 11). However, when Chen is the same structure as the instant claimed invention (see claim 1 above) then the same material would yield the same properties (see MPEP 2112).
As to claim 12, Kim discloses wherein, wherein 0.02≤a≤0.1, 1<b+c<2, b>c, and 1≤b/c≤20 ([0016]-[0021], [0097], discussed throughout, the compound is MZPSOX represented by MaZnbPcSdOeXf wherein M is Li and X is one or more selected from F, Cl, Br or I). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 13, Kim discloses wherein, the solid ion conductor is Li5.36Zn0.02PS4.38O0.02Cl1.4Br0.2, Li5.3Zn0.05PS4.35O0.05Cl1.4Br0.2, Li5.2Zn0.1PS4.3O0.1Cl1.4Br0.2, Li5.36Zn0.02PS4.38O0.02Cl1.2Br0.4, Li5.3Zn0.05PS4.35 0.05Cl1.2Br0.4, Li5.2Zn0.1PS4.3O0.1Cl1.2Br0.4, Li5.36Zn0.02PS4.38O0.02Cl1.3Br0.3, Li5.3Zn0.05PS4.35O0.05Cl1.3Br0.3, Li5.2Zn0.1PS4.3O0.1Cl1.3Br0.3, Li5.36Zn0.02PS4.38O0.02Cl1.24Br0.36, Li5.3Zn0.05PS4.35O0.05Cl1.24Br0.36, Li5.2Zn0.1PS4.3O0.1Cl1.24Br0.36, Li5.36Zn0.02PS4.38O0.02Cl1.46Br0.14, Li5.3Zn0.05PS4.35O0.05Cl1.46Br0.14, Li5.2Zn0.1PS4.3O0.1Cl1.46Br0.14, Li5.36Zn0.02PS4.38O0.02Cl1.52Br0.08, Li5.3Zn0.05PS4.35O0.05Cl1.52Br0.08, Li5.2Zn0.1PS4.3O0.1Cl1.52Br0.08, Li5.26Zn0.07PS4.33O0.07Cl1.4Br0.2, Li5.56Zn0.02PS4.58O0.02Cl1.2Br0.2, Li5.5Zn0.05PS4.55O0.05Cl1.2Br0.2, Li5.46Zn0.07PS4.53O0.07Cl1.2Br0.2, Li5.4Zn0.1PS4.5O0.1Cl1.2Br0.2, Li5.66Zn0.02PS4.68O0.02Cl1.2Br0.1, Li5.6Zn0.05PS4.65O0.05Cl1.2Br0.1, Li5.56Zn0.07PS4.63O0.07Cl1.2Br0.1, Li5.5Zn0.1PS4.6O0.1Cl1.2Br0.1, Li5.76Zn0.02PS4.78O0.02Cl1.0Br0.2, Li5.7Zn0.05PS4.75O0.05Cl1.0Br0.2, Li5.66Zn0.07PS4.73O0.07Cl1.0Br0.2, Li5.6Zn0.1PS4.7O0.1Cl1.0Br0.2, Li5.36Cd0.02PS4.38O0.02Cl1.4Br0.2, Li5.3Cd0.05PS4.35O0.05Cl1.4Br0.2, Li5.2Cd0.1PS4.3O0.1Cl1.4Br0.2, Li5.36Cd0.02PS4.38O0.02Cl1.2Br0.4, Li5.3Cd0.05PS4.35O0.05Cl1.2Br0.4, Li5.2Cd0.1PS4.3O0.1Cl1.2Br0.4, Li5.36Cd0.02PS4.38O0.02Cl1.3Br0.3, Li5.3Cd0.05PS4.35O0.05Cl1.3Br0.3, Li5.2Cd0.1PS4.3O0.1Cl1.3Br0.3, Li5.36Cd0.02PS4.38O0.02Cl1.24Br0.36, Li5.3Cd0.05PS4.35O0.05Cl1.24Br0.36, Li5.2Cd0.1PS4.3O0.1Cl1.24Br0.36, Li5.36Cd0.02PS4.38O0.02Cl1.46Br0.14, Li5.3Cd0.05PS4.35O0.05Cl1.46Br0.14, Li5.2Cd0.1PS4.3O0.1Cl1.46Br0.14, Li5.36Cd0.02PS4.38O0.02Cl1.52Br0.08, Li5.3Cd0.05PS4.35O0.05Cl1.52Br0.08, Li5.2Cd0.1PS4.3O0.1Cl1.52Br0.08, Li5.36Hg0.02PS4.38O0.02Cl1.4Br0.2, Li5.3Hg0.05PS4.35O0.05Cl1.4Br0.2, Li5.2Hg0.1PS4.3O0.1Cl1.4Br0.2, Li5.36Hg0.02PS4.38O0.02Cl1.2Br0.4, Li5.3Hg0.05PS4.35O0.05Cl1.2Br0.4, Li5.2Hg0.1PS4.3O0.1Cl1.2Br0.4, Li5.36Hg0.02PS4.38O0.02Cl1.3Br0.3, Li5.3Hg0.05PS4.35O0.05Cl1.3Br0.3, Li5.2Hg0.1PS4.3O0.1Cl1.3Br0.3, Li5.36Hg0.02PS4.38O0.02Cl1.24Br0.36, Li5.3Hg0.05PS4.35O0.05Cl1.24Br0.36, Li5.2Hg0.1PS4.3O0.1Cl1.24Br0.36, Li5.36Hg0.02PS4.38O0.02Cl1.46Br0.14, Li5.3Hg0.05PS4.35O0.05Cl1.46Br0.14, Li5.2Hg0.1PS4.3O0.1Cl1.46Br0.14, Li5.36Hg0.02PS4.38O0.02Cl1.52Br0.08, Li5.3Hg0.05PS4.35O0.05Cl1.52Br0.08, Li5.2Hg0.1PS4.3O0.1Cl1.52Br0.08, or a combination thereof ([0016]-[0021], [0097], discussed throughout, the compound is MZPSOX represented by MaZnbPcSdOeXf wherein M is Li and X is one or more selected from F, Cl, Br or I). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 14, Kim does not specially state wherein, an ionic conductivity of the solid ion conductor represented by Formula 1 at 25° C. is 3.0 mS/cm or more. However, when Chen is the same structure as the instant claimed invention (see claim 1 above) then the same material would yield the same properties (see MPEP 2112).
As to claim 15, Kim does not specially state wherein, an ionic conductivity retention rate of the solid ion conductor is 70% or more after 10 days under dry conditions in an air atmosphere having a dew point of less than −60° C. However, when Chen is the same structure as the instant claimed invention (see claim 1 above) then the same material would yield the same properties (see MPEP 2112).
As to claim 16, Kim does not specially state wherein, when the solid ion conductor is exposed to the atmosphere, an amount of H2S generated is less than 5 cm3/g. However, when Chen is the same structure as the instant claimed invention (see claim 1 above) then the same material would yield the same properties (see MPEP 2112).
As to claim 17, Kim discloses a solid electrolyte comprising the solid ion conductor of claim 1 ([0010]-[0014], discussed throughout).
As to claim 18, Kim discloses an electrochemical cell ([0010]-[0014], discussed throughout), comprising:
a positive electrode layer including a positive electrode active material layer ([0010]-[0014], discussed throughout);
a negative electrode layer including a negative electrode active material layer ([0010]-[0014], discussed throughout); and
an electrolyte layer between the positive electrode layer and the negative electrode layer([0010]-[0014], discussed throughout),
wherein at least one of the positive electrode layer, the negative electrode layer, and the electrolyte layer includes the solid ion conductor of claim 1([0010]-[0014], discussed throughout).
As to claim 19, Kim is silent to wherein, an average particle diameter of the solid ion conductor is 2 μm or less. However, Kim discloses the use of particles within the size of 200 nm ([0156] and discussed throughout). It would have been obvious to one of ordinary skill within the art at the time of the effective filling date of the invention to have the inorganic particles from Kim be 200 nm as a mere combining prior art elements according to known methods to obtain predictable results (see MPEP 2143 I) or as a mere change in size (see MPEP 2144.04).
As to claim 20, Kim discloses wherein, the positive electrode layer includes the solid ion conductor, and an amount of the solid ion conductor is in a range of 2 parts by weight to 70 parts by weight based on 100 parts by weight of a total weight of the positive electrode layer ([0010]-[0014], discussed throughout).
As to claim 21, Kim discloses wherein, the electrochemical cell is an all-solid battery ([0010]-[0014], discussed throughout).
As to claim 22, Kim discloses wherein, the negative electrode layer ([0046]-[0053], discussed throughout) includes:
a negative electrode current collector ([0046]-[0053], discussed throughout); and
a first negative electrode active material layer including a negative electrode active material, disposed on the negative electrode current collector ([0046]-[0053], discussed throughout), and the negative electrode active material including at least one of a carbon-based negative electrode active material ([0040], discussed throughout) and a metal or metalloid negative electrode active material ([0040], discussed throughout).
As to claim 23, Kim discloses wherein, the carbon-based negative electrode active material includes at least one of amorphous carbon and crystalline carbon ([0040], discussed throughout).
As to claim 24, Kim discloses wherein, the metal or metalloid negative electrode active material includes at least one of gold (Au), platinum (Pt), palladium (Pd), silicon (Si), silver (Ag), aluminum (Al), bismuth (Bi), tin (Sn), and zinc (Zn) ([0040], discussed throughout).
As to claim 25, Kim discloses further comprising a second negative electrode active material layer between the negative electrode current collector and the first negative electrode active material layer and/or between the electrolyte layer and the first negative electrode active material layer, and the second negative electrode active material layer is a metal layer including lithium or a lithium alloy ([0040], discussed throughout; this is because the negative electrode can have lithium or lithium alloy and the layer can be considered two layers; or [0045], as the intermediate layer can be considered part of the negative electrode layer; discussed throughout).
As to claim 26, Kim discloses does not specifically state wherein, a capacity retention rate of the electrochemical cell is 80% or more at a 100th cycle after charging and discharging with 4 V or more in a thermostatic bath at 25° C. However, when Chen is the same structure as the instant claimed invention (see claim 22 above) then the same material would yield the same properties (see MPEP 2112).
As to claim 27, Kim discloses wherein, the positive electrode layer includes a positive electrode active material, and the positive electrode active material is at least one of a lithium transition metal oxide having a layered crystal structure, a lithium transition metal oxide having an olivine crystal structure, and a lithium transition metal oxide having a spinel crystal structure ([0111], the positive electrode materials cited have the required crystal structures).
Claims 1, 2, 4-7, 10-12, 14-18 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (Argyrodite Solid Electrolyte with a Stable Interface and Superior Dendrite Suppression Capability Realized by ZnO Co-Doping, as cited within the IDS).
As to claim 1, Chen discloses a solid ion conductor (abstract) represented by Formula 1 and having an argyrodite crystal (results and discussion) structure:
Li7-2a-b-cMaPS6-a-b-cOaX1bX2c Formula 1
wherein, in Formula 1, M is zinc (Zn), cadmium (Cd), mercury (Hg), or a combination thereof,
wherein X1 and X2 are each independently chlorine (Cl), bromine (Br), iodine (I), a pseudohalogen, or a combination thereof, and
wherein 0<a<0.5, 0<b<2, 0<c<2, and 1<b+c<3 (Results and discussed, Conclusion; the formula is Li6–2xZnxPS5–xOxBr (0 ≤ x ≤ 1.5); therefore given the X1 and X2 can both be the same element i.e. Br thus exhibiting overlapping ranges). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 2, Chen discloses wherein, in Formula 1, 0.02≤a≤0.1 (Results and discussed, Conclusion; the formula is Li6–2xZnxPS5–xOxBr (0 ≤ x ≤ 1.5)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 4, Chen discloses wherein, 1<b+c<2 (Results and discussed, Conclusion; the formula is Li6–2xZnxPS5–xOxBr (0 ≤ x ≤ 1.5)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 5, Chen discloses wherein, 1<b/c≤50 (Results and discussed, Conclusion; the formula is Li6–2xZnxPS5–xOxBr (0 ≤ x ≤ 1.5), this is because they can be the same compound). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 6, Chen discloses wherein, 1<b/c≤20 (Results and discussed, Conclusion; the formula is Li6–2xZnxPS5–xOxBr (0 ≤ x ≤ 1.5), this is because they can be the same compound). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 7, Chen discloses wherein, in Formula 1, M is Zn (Results and discussed, Conclusion; the formula is Li6–2xZnxPS5–xOxBr (0 ≤ x ≤ 1.5)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claims 10 and 11, Chen does not specifically state wherein, in the solid ion conductor, a ratio of peak intensity (IB) at a diffraction angle (2θ) of 29.07±0.5° to a peak intensity (IA) at 2θ of 30.09°±0.5°, i.e., IB/IA, is <0.1 in an X-ray diffraction (XRD) spectrum using CuKα rays (claim 10) and wherein, IB/IA<0.07 (claim 11). However, when Chen is the same structure as the instant claimed invention (see claim 1 above) then the same material would yield the same properties (see MPEP 2112).
As to claim 12, Chen discloses wherein, wherein 0.02≤a≤0.1, 1<b+c<2, b>c, and 1≤b/c≤20 (Results and discussed, Conclusion; the formula is Li6–2xZnxPS5–xOxBr (0 ≤ x ≤ 1.5), this is because they can be the same compound). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05).
As to claim 14, Chen does not specifically state wherein, an ionic conductivity of the solid ion conductor represented by Formula 1 at 25° C. is 3.0 mS/cm or more. However, when Chen is the same structure as the instant claimed invention (see claim 1 above) then the same material would yield the same properties (see MPEP 2112).
As to claim 15, Chen does not specifically state wherein, an ionic conductivity retention rate of the solid ion conductor is 70% or more after 10 days under dry conditions in an air atmosphere having a dew point of less than −60° C. However, when Chen is the same structure as the instant claimed invention (see claim 1 above) then the same material would yield the same properties (see MPEP 2112).
As to claim 16, Chen does not specifically state wherein, when the solid ion conductor is exposed to the atmosphere, an amount of H2S generated is less than 5 cm3/g. However, when Chen is the same structure as the instant claimed invention (see claim 1 above) then the same material would yield the same properties (see MPEP 2112).
As to claim 17, Chen discloses a solid electrolyte comprising the solid ion conductor of claim 1 (Results and discussion section 2.2).
As to claim 18, Chen discloses an electrochemical cell, comprising:
a positive electrode layer including a positive electrode active material layer;
a negative electrode layer including a negative electrode active material layer; and
an electrolyte layer between the positive electrode layer and the negative electrode layer,
wherein at least one of the positive electrode layer, the negative electrode layer, and the electrolyte layer includes the solid ion conductor of claim 1 (abstract and the figure of the abstract).
As to claim 21, Chen discloses wherein, the electrochemical cell is an all-solid battery (abstract).
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 1-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 5-22 of copending Application No. 17/909,477 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the solid ion conductor of application 17/909,477 and the instant have overlapping ranges (see MPEP 2144.05 I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN R OHARA whose telephone number is (571)272-0728. The examiner can normally be reached 7:30 AM-3:30 PM EST M-F.
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/BRIAN R OHARA/Examiner, Art Unit 1724
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