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 without traverse of Species I and IA, in the reply filed on February 19, 2026 is acknowledged.
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 1-4, 8-15 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 6, 7 and 8 of U.S. Patent No. 11,545,723. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 3, 6, 7 and 8 of U.S. Patent No. 11,545,723 anticipate claims 1-4, 8-15 and 20 of the instant application.
Allowable Subject Matter
Claims 16-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Pub. No. 2013/018354 A1 to Joshi et al. teaches a composite electrolyte membrane 215 including an alkali ion-conductive electrolyte material 216 and a layer comprising an alkali compound 222 (see paragraph 38). Examples of the alkali ion-conductive electrolyte material 216 include NaSICON (see paragraph 39). The alkali compound 222 may comprise an alkali metal amalgam or alloy or intermetallic compound, wherein the alkali metal amalgam or alloy or intermetallic compound may comprise an alkali metal and metals known to form such amalgam or alloy or intermetallic compound from that specific alkali metal (see paragraph 44).
WO 2017/190135 A1 to Hu et al. teaches a metal alloy layer disposed on a substrate, wherein the metal alloy may be a sodium alloy, and wherein the substrate may be a NaSICON solid-state electrolyte material (see paragraphs 69, 72, 81 and 86). The metal alloy may be formed by first forming a metal and/or metalloid layer on at least a portion of a surface of the substrate, and contacting the metal and/or metalloid layer with molten sodium (see paragraph 100). Examples of the metal include tin. Examples of the metalloid include silicon and germanium (see paragraphs 74).
The alloy formation of Hu is a chemical reaction, and as such, Joshi and Hu fail to teach the claimed electrochemical reaction.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHAN J ESSEX whose telephone number is (571)270-7866. The examiner can normally be reached Monday - Friday, 8:30 am - 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (571) 272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHAN J ESSEX/Primary Examiner, Art Unit 1727
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