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 .
Status of Claims
Claims 1-25 are currently pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 10 & 18 each recite “an effective amount” of compound II and compound III respectively. However, it is unclear as to what an effective amount constitutes. Furthermore, the neither the claims nor the instant specification describes what function or results is to be achieved by “an effective amount”. While the instant specification discloses volume percentages for compound II and compound III, the specification does not associate any particular volume percentage to an effective amount.
Claims 11-17 & 19-25 are rejected as being dependent on claim 10 or 18.
The term “about” in claim 25 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purposes of examination, the term “about” is broadly interpreted as encompassing ±10% of the corresponding numerical value.
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 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 1-5 & 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Brown (US 2010/0239899 A1) in view of Clerici (US 4,902,591 A).
Regarding claims 1-5, 7-9, Brown teaches a lead-acid battery electrolyte composition comprising a chemical component having H9O4+ oxonium cations and a diluted mixture of a polar solvent consisting of water, and sulfuric acid, wherein the sulfuric acid dissociates into H+ cations and SO42-- anions and wherein the electrolyte has a specific gravity of 1.28 ([0004], [0013] & [0021]). Accordingly, Brown’s electrolyte composition is composed of a stoichiometrically balanced chemical composition of hydrogen (1+), triaqua-µ3-oxotri sulfate. Brown is silent as to the electrolyte composition comprising between 1 and 300 ionic salts selected from the group consisting of alkali metal salts and alkali earth metal salts and mixture thereof. Clerici teaches a lead-acid battery electrolyte composition comprising between 50 to 1500 ppm of a sodium salt, a potassium salt or a magnesium salt with an exemplary embodiment using 10-300 ppm (Col.1, L.65 to Col.2, L.6 & Col. 2, L.39-41; Example 2). It would have been obvious to one ordinary skill in the art, before the effective filing date of the present invention, to include a sodium salt in an amount of 10 ppm to 300 ppm in the battery electrolyte composition of Brown in order to inhibit the discharge of hydrogen and promote the reduction of oxygen at the negative electrode as taught by Brown (Col.2, L.7-12).
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.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,658,348. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 11,658,348 encompasses all of the limitations of claim 6 of the present invention.
Claims 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24 & 25 are rejected on the ground of nonstatutory double patenting as being unpatentable respectively over claims 9, 10, 11, 12, 9, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23 & 24 of U.S. Patent No. 11,658,348. Although the claims at issue are not identical, they are not patentably distinct from each other because, in the absence of any specific disclosure for an effective amount of compounds II and III within the instant specification, the broadest range as it relates to an amount of compounds II and III in the electrolyte composition would be considered effective, such that the amounts of the compounds II and III recited in the independent claims 9 & 17 of U.S. Patent No. 11,658,348 correspond to claimed effective amounts recited in independent claims 10 & 18 of the present invention.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHANAEL T ZEMUI whose telephone number is (571)272-4894. The examiner can normally be reached M-F 8am-5pm (EST).
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/NATHANAEL T ZEMUI/Examiner, Art Unit 1727