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 Amendment
In view of the amendment the rejection of claims 1-7 under U.S.C. 102 is withdrawn.
New analysis follows
Response to Arguments
In response to applicants’ argument Gaben and Millipore Sigma do not disclose the mass concentration of sodium as described in the newly amended claim 1, the examiner agrees the exact concentration of sodium is not disclosed, however the inclusion of sodium as a stabilizer is a matter of routine optimization as discussed in the new rejection of claim 1 below.
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.
Claims 1-6 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Gaben (US20180375151) in view of Millipore Sigma (Safety Data Sheet for metaphosphoric acid).
Regarding claims 1-6 and 12 Gaben discloses an aqueous solution (i.e. water as a solvent)(¶[0186]) of a stoichiometric mixture (1:1 molar ratio) of metaphosphoric acid and lithium hydroxide (a solute). The disclosed solution is substantially similar to the coating liquid disclosed in the instant application a (example no. 6 ,¶[0090]) where the aqueous solution has a lithium to phosphorus molar ratio was 1.07(table 1). The solution of Gaben would necessarily and inherently have the following formulas (1), (2), and (3) satisfied
{I0/(I0 + I1 + I2)} ≤ 0.7 (1)
wherein in the above formula (1), I0 indicates an area of a signal from a Q0 unit of PO4 in a 31P-NMR spectrum, I1 indicates an area of a signal from a Q1 unit of PO4 in the 31P-NMR spectrum, and I2 indicates an area of a signal from a Q2 unit of PO4 in the 31P-NMR spectrum.
0.17≤ {I2/(I0 + I1 + I2)} (2)
I0< I2 (3)
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP §2112.01.
Millipore Sigma also discloses wherein the solute further includes sodium in a quantity to stabilize the metaphosphoric acid.
One of ordinary skill in the art would have recognized optimizing the mass% of sodium would improve stabilization of the metaphosphoric acid depending on the application.
Therefore, it would have been obvious to optimized the mass% of sodium to optimized stabilization of the metaphosphoric acid.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Furthermore the claim recites intended use limitations of a coating liquid. Intended use limitations are given weight to the extent that the prior art structure is capable of performing the intended use, in this case an aqueous solution of substantially similar components may act as a coating liquid. See MPEP § 2111.02, 2112.01 and 2114-2115. These limitations will be treated alongside structural limitations for compact prosecution.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Shigeru (JP2009178630 A, reference made to attached English translation), in view of Millipore Sigma (Safety Data Sheet for metaphosphoric acid).
Regarding claim 11, Shigeru discloses an aqueous solution of metaphosphoric acid (i.e. water as a solvent)(page 10-11 last 4 lines-first 6 lines). The disclosed solution is substantially similar to the coating liquid disclosed in the instant application a (example no. 5 ,¶[0129]) where the aqueous solution has no lithium resulting in a lithium to phosphorus molar ratio of 0(table 1). The solution of Shigeru would necessarily and inherently have the following formulas (1), (2), and (3) satisfied
{I0/(I0 + I1 + I2)} ≤ 0.7 (1)
wherein in the above formula (1), I0 indicates an area of a signal from a Q0 unit of PO4 in a 31P-NMR spectrum, I1 indicates an area of a signal from a Q1 unit of PO4 in the 31P-NMR spectrum, and I2 indicates an area of a signal from a Q2 unit of PO4 in the 31P-NMR spectrum.
0.17≤ {I2/(I0 + I1 + I2)} (2)
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP §2112.01.
Millipore Sigma also discloses wherein the solute further includes sodium in a quantity to stabilize the metaphosphoric acid.
One of ordinary skill in the art would have recognized optimizing the mass% of sodium would improve stabilization of the metaphosphoric acid depending on the application.
Therefore it would have been obvious to optimized the mass% of sodium to optimized stabilization of the metaphosphoric acid.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Furthermore the claim recites intended use limitations of a coating liquid. Intended use limitations are given weight to the extent that the prior art structure is capable of performing the intended use, in this case an aqueous solution of substantially similar components may act as a coating liquid. See MPEP § 2111.02, 2112.01 and 2114-2115. These limitations will be treated alongside structural limitations for compact prosecution.
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 KAREN J. ARMSTRONG whose telephone number is (703)756-1243. The examiner can normally be reached Monday-Friday 10 am-6 pm EST.
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/K.J.A./Examiner, Art Unit 1726 /RYAN S CANNON/Primary Examiner, Art Unit 1726
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