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 with traverse of claims 1-7 and 13-20 in the reply filed on 05/18/2026 is acknowledged. The traversal is on the ground(s) that the species are obvious variants known to those skilled in the art. Particularly, Applicant states that lithium metal powder is recognized by one of ordinary skill in the art as an alloy or stabilized lithium metal powder. Moreover, Applicant states that the rheology modifier being conductive or improves stability is a variant known to those skill in the art. Since Applicant admits the species are obvious variants of each other, the arguments are found persuasive therefore, the restriction from 03/24/2026 is withdrawn.
Status of Claims
Claims 1-20 are currently pending in the application and are being examined on the merits in this Office Action.
Claim Objections
Claims 1 and 15 are objected to because of the following informalities:
In claim 1, it is suggested to amend “percent” to - -weight %- -.
In claim 1, it is suggested to amend “hydrocarbons” to - -cyclic hydrocarbons- -.
In claim 15, it is suggested to amend “acyclic hydrocarbons” (repeated twice) to- -cyclic hydrocarbons- -.
Appropriate correction is required.
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 and 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 35 of U.S. Patent No. 11,735,765. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite identical compositions.
Allowable Subject Matter
Claims 1-20 are allowed over the “closest” prior art of record Nelson (U.S. Patent Application Publication 2005/0239917).
The following is an examiner’s statement of reasons for allowance:
The prior art neither teaches nor render obvious all the limitations as recited in independent claims 1 and 15. In particular, the limitation “a composition comprising on a solution basis of about 10 to about 50 percent of a lithium metal powder, about 0.1 to about 20 percent of a polymer binder, wherein the polymer binder is compatible with the lithium metal powder and is selected from the group consisting of unsaturated elastomers, saturated elastomers, polyacrylic acid, polyvinylidene chloride and polyvinyl acetate, about 0.1 to about 30 percent of a rheology modifier, wherein the rheology modifier is compatible with the lithium metal powder and the polymer binder, and about 50 to about 95 percent of a non-polar solvent, wherein the solvent is compatible with the lithium metal powder and with the polymer binder and wherein the solvent is selected from the group consisting of cyclic hydrocarbons, acyclic hydrocarbons, and aromatic hydrocarbons.” Nelson, the closest prior art, teaches a composition with similar components and ranges however, Nelson teaches a lithium metal powder in the composition in a solution basis at the most at 4.7% with 88% of a GBL solvent which is a polar solvent (see Office Action from parent App. No. 16/359,707 filed on 01/03/2023, pages 3-6) . Independent claims 1 and 15 recite a non-polar solvent of about 50 to 95 percent and consisting of cyclic hydrocarbons, acyclic hydrocarbons, and aromatic hydrocarbons. As indicated in the declaration from 12/23/2021, page 3-4, from parent App. No. 16/359,707, a stability study was conducted to compare the composition between 5% of lithium metal powder with GBL (as taught by Nelson) and 10% of lithium metal powder with a non-polar solvent (claimed invention). The composition as taught by Nelson resulted in a runway reaction (see figure 2) and the claimed invention no self-heating or runway reaction was observed (see figure 3).
Pertinent Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Yokovleva et al. (U.S. Patent Application Publication 2009/0061321). Yokovleva teaches a composition with SMLP, SBR, p-xylene (Example 7) and can further contain a host material such as carbon black (claim 5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAN ROLDAN whose telephone number is (571)272-5098. The examiner can normally be reached Monday - Thursday 9:00 am - 7:00 pm.
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/CHRISTIAN ROLDAN/Primary Examiner, Art Unit 1723
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