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, see middle of p. 2, filed 10 December 2025, with respect to the rejection(s) of claim(s) 1-10 under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. In summary, Applicant correctly points out that an LDH-like separator and a layered double hydroxide (LDH)-like compound both have special definitions in the specification. In addition, the double patenting rejection over US 11545719 is withdrawn for the same reasons.
However, upon further consideration, a new ground(s) of rejection is made in view of:
US 20240222793 A1 18/604631
US 12519112 B2
US 20230231153 A1 18/180231
US 20230207888 A1 18/175751
US 12597677 B2
US 12614814 B2
US 12573719 B2
US 11532855 B2; all due to double patenting.
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. US 12519112 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim has an additional limitation of a central region with a lower mean porosity. The balance of the instant claim limitations are either explicitly in the reference claims, or implicitly (same materials having the same properties).
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim of U.S. Patent No. US 12597677 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims have additional limitations, such as the proportion of the LDH-like compound in the separator by weight. The balance of the instant claim limitations are either explicitly in the reference claims, or implicitly (same materials having the same properties).
Claims 1-10 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. US 12614814 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 1 is option (c) of instant claim 2. The balance of the instant claim limitations are either explicitly in the reference claims, or implicitly (same materials having the same properties).
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. US 12573719 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 1 closely overlaps with option (b) of instant claim 2. The balance of the instant claim limitations are either explicitly in the reference claims, or implicitly (same materials having the same properties).
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. US 11532855 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim contains the additional limitation of the mean porosity value. The balance of the instant claim limitations are either explicitly in the reference claims, or implicitly (same materials having the same properties).
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/604631 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 1 contains additional limitations of ionic conductivity values and adhesion force values. The balance of the instant claim limitations are either explicitly in the reference claims, or implicitly (same materials having the same properties).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/180231 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 1 contains the limitation of the direction of flattened pores. The balance of the instant claim limitations are either explicitly in the reference claims, or implicitly (same materials having the same properties).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/175751 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 1 contains the additional limitation of the electrolytic solution being an aqueous alkali metal hydroxide solution. The balance of the instant claim limitations are either explicitly in the reference claims, or implicitly (same materials having the same properties).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A SMITH whose telephone number is (571)272-8760. The examiner can normally be reached M-F 7:30am-3:30pm.
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, Srilakshmi Kumar can be reached at (571)272-7769. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A SMITH/Supervisory Primary Examiner, Art Unit 1752
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