DETAILED ACTION
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 Group I in the reply filed on 04/20/2026 is acknowledged. The grounds of the traversal is not clear or disclosed and as such it is treated as an election without traverse. The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 07/07/2023, 10/18/2023, 12/14/2023, 02/16/2024, 07/12/2024, 09/26/2024, 01/15/2025, 03/04/2026, and 05/12/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 132 - Figure 3B, 3C. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: Reference numeral 132 from Figures 3B, 3C are not mentioned or disclosed in the specification. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 15, 22, 26, 36-38 and 41 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.
Claim 22 recites the limitation "the external casing" in Line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 37-38 recites the limitation "the one or more polymers" in Lines 24-25 and 27-28. There is insufficient antecedent basis for this limitation in the claim.
Claim 15, 26, 36 and 41 contains the trademark/trade name Teflon. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe PTFE and, accordingly, the identification/description is indefinite.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5, 9-22, 44-47 and 52-54 are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al. (US 20230387548 A1), hereinafter "Jang". Jang et al. is analogous prior art to the claimed invention because it pertains to the same field of endeavor, namely polymeric materials in electrochemical cells.
In regard to Claim 1, Jang et al. discloses a battery, comprising an electrochemical cell comprising an anode, cathode and a porous separator (Jang, [0037, 0064]) wherein the porous separator is directly ionically coupled or indirectly ionically coupled to the anode and the cathode (Jang, [0077]). Jang et al. also discloses a polymer system comprising a continuous polymer network structurally coupled to the anode and the cathode, wherein the continuous polymer network would reasonably form a plurality of continuous pathways between the anode and the cathode based on the permeation of the material into the pores of the anode, cathode and porous separator as disclosed in Jang (Jang, [0058-0059, 0106, 0213, 0216, 0221]).
Further, although the polymer system is not explicitly described as a support system, it would be obvious to the skilled artisan that injecting the polymerizable liquid into the battery cell, permeating into pores/holes of the polymer separator layer, anode active layer, and cathode active layer and curing the polymer as disclosed in Jang (Jang, [0213]), would also reasonably create a support system.
In regard to Claim 2, Jang et al discloses the battery as recited in claim 1. Jang et al. also discloses an embodiment with a lithium anode (Jang, [0001]).
In regard to Claim 3, Jang et al discloses the battery as recited in claim 1. Jang et al. also discloses wherein the anode and the cathode each independently comprise a plurality of holes/pores (perforations) which are able to be permeated with the polymerizable liquid (Jang, [0213]).
In regard to Claim 5, Jang et al discloses the battery as recited in claim 1. Jang et al. also discloses an anode current collector electrically coupled to the anode, and a cathode current collector electrically coupled to the cathode (Jang, [0039, 0065]).
In regard to Claims 9 and 14, Jang et al discloses the battery as recited in claim 1. Jang et al. also discloses that the polymerizable liquid/monomers/curable oligomers are impregnated into the pores/holes of the separator, anode, and cathode and then they are cured, polymerized, and/or crosslinked and that this may be achieved by injecting the liquid into a cell (Jang, [0079]), this action would reasonably result in the material penetrating the hole/pores as well as coating the material on the exterior portion and wherein each continuous pathway comprises a plurality of covalently bonded components extending an entire distance between the anode and the cathode.
Further, once the material is polymerized and/or crosslinked it would be obvious to the skilled artisan that a continuous network of polymer would be formed wherein the portions of the continuous polymer network present in the interior volume of the anode and cathode are covalently bonded to the portions of the continuous polymer network on the exterior portion of the anode and cathode.
In regard to Claim 10-13, Jang et al discloses the battery as recited in claim 1. Jang et al. also discloses a specific example where the polymer network includes LiTFSI (Jang, [0228]), LLZO (Jang, [0207]), LGPS (Jang, [0205]), and NASICON (Jang, [0208]) all of which are compounds listed in the current application for being specifically selected for the continuous polymer network for their properties including being ionically conductive, ionically conductive to lithium ions, not ionically conductive to polysulfides and electrically non-conductive (Original Specification, [0108]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide any of these compounds for the continuous polymer network as disclosed in Jang as their properties would be well known to the skilled artisan and as doing so would amount to nothing more than a simple substitution of one known element for another to obtain predictable results.
In regard to Claims 15-17, Jang et al discloses the battery as recited in claim 1. Jang et al. also discloses a specific examples wherein the continuous polymer network comprises polyacrylates (tetra(ethylene glycol) diacrylates and PEGDA) and wherein some or all of the polyimide is at least partially crosslinked.(Jang, Examples 6 and 9). Further Jang discloses and example with an injected mixture which forms the polymer network and in the mixture the polymer (PEGDA) is 10 wt% of the mixture wherein the mixture is 10wt% of the cell and thus the wt% of the polymer is present in an amount of about 1 wt% of a total weight of the battery (Jang, Example 6) and would amount to nothing more than a result effective variable which is easily optimized by the skilled artisan to include different wt%.
In regard to Claim 18, Jang et al discloses the battery as recited in claim 1. In regard to Claim 18 and the following limitations: "wherein the polymer support system exerts a positive pressure on an internal volume of the electrochemical cell, and wherein the positive pressure is characterized by a magnitude of at least about one atmosphere (atm)" Jang does not specifically address the limitations in regard to the positive atmospheric pressure rating, Jang teaches method steps and structure, which are substantially similar as those instantly claimed absent any clear and convincing evidence and/or arguments to the contrary.
The examiner notes the original specification does not provide any specific measurement methods, equipment or calculations of how they arrived at the atm rating and instead on mechanical equivalence where the tensile strength is described as being equivalent to the effect that would be produced by applying an external pressure, such as 1 atm to the cell. Considering no special methods are apparent in the instant disclosure that would make any properties of the underlying components and structures unique and as a prima facie case of obviousness has been set forth on the record, and because the USPTO does not possess the laboratory facilities to test and compare the prior art to the claimed invention, the burden shifts to applicant to demonstrate otherwise. Therefore, a PHOSITA at the time of filing would have readily known of and could readily envision the use of a polymer network that has the same positive pressure and behavior.
In regard to Claims 19 and 20, Jang et al discloses the battery as recited in claim 1. Jang et al. also discloses one or more external components at least partially surrounding the electrochemical cell which is a pack enclosing the electrochemical cell (Jang, [0037]).
With respect to the limitations of claim 21, it is noted that the limitations are directed to non-selected options of parent claim 20. For example, claim 20 explicitly recites that "wherein the one or more external components are selected from the group consisting of” (emphasis added). Accordingly, the limitations of claim 21 are reasonably considered to be optional limitations which depend upon the selection of an assembly recited in claim 20, and which in this case have not been selected because Jang discloses the use of a pack enclosing the electrochemical cell, as noted above.
With respect to the limitations of claim 22, it is noted that the limitations are directed to non-selected options of parent claim 20. For example, claim 20 explicitly recites that "wherein the one or more external components are selected from the group consisting of” (emphasis added). Accordingly, the limitations of claim 22 are reasonably considered to be optional limitations which depend upon the selection of an external casing enclosing the electrochemical cell recited in claim 20, and which in this case have not been selected because Jang discloses the use of a pack enclosing the electrochemical cell, as noted above.
In regard to Claims 44-46 and 52-54, Jang et al. discloses the battery as recited in claim 1. Jang et al. also discloses wherein the electrochemical cell is rolled into a cylindrical configuration (Jang, [0070]) and protected by an external component a pack enclosing the electrochemical cell) at least partially surrounding the electrochemical cell (Jang, [0037]).
Jang et al. also discloses the polymeric support system comprises a polymerizable liquid, monomers or oligomers which are injected into a formed cell (Jang, 0079]), which then infiltrates the pores/holes of the anode/cathode/porous separator and would reasonably at least partially coat the electrochemical cell components and which are then cured/crosslinked to create a continuous polymer network wherein the polymeric coating is coupled to at least some external surfaces of the electrochemical cell and wherein the polymeric coating is present in interstitial spaces of the rolled cylindrical configuration (Jang, Example 5, [0132, 0134]).
Lastly, Jang et al. also discloses a specific example where the polymer network includes LiTFSI (Jang, [0228]), LLZO (Jang, [0207]), LGPS (Jang, [0205]), and NASICON (Jang, [0208]) all of which are compounds listed in the current application for being specifically selected for the continuous polymer network for their properties including being ionically conductive, ionically conductive to lithium ions, not ionically conductive to polysulfides and electrically non-conductive (Original Specification, [0108]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Jang et al. (US 20230387548 A1), hereinafter "Jang" as applied to claim 1 above, in view of Hamano et al. (US 20020018930 A1), hereinafter "Hamano". Jang et al. and Hamano are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely electrochemical cells.
In regard to Claim 4, Jang et al discloses the battery as recited in claim 1. While Jang et al. discloses a cell with a continuous polymer system and does not disclose the use of metal-based compressive support structures it is silent as to a battery that explicitly excludes metal-based compressive support structures.
However, this is a known configuration to the skilled artisan as it is disclosed in Hamano et al. which discloses a lithium ion secondary battery having excellent charge and discharge characteristics in which electric connection between electrodes can be maintained without requiring a strong armor metal case, so that it can be made into thin forms having large energy density (Hamano, Abstract) as opposed to a conventional battery using a compressive metal case to press the electrode body and maintain contact among the positive electrode, separator and negative electrode (Hamano, [0007]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a battery which excludes metal-based compressive structures as taught in Hamano et al. as a variation of the battery disclosed in Jang et al. as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Hamano and as doing so would amount to nothing more than a variation of it for use in the same field based on design incentives or other market forces, as the variations are predictable to one of ordinary skill in the art.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al. (US 20230387548 A1), hereinafter "Jang" as applied to claim 1 above, in view of Gozdz et al. (US 5554459 A), hereinafter "Gozdz". Jang et al. and Gozdz are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely electrochemical cells.
In regard to Claims 6-8, Jang et al discloses the battery as recited in claim 1. While Jang et al. also discloses injecting a polymeric liquid into a cell which permeates into pores/holes of the polymer separator layer, anode active layer, and cathode active layer (Jang, [0213]), and the skilled artisan would understand that the current collectors would also come into contact with the polymerizable liquid in the cell, Jang is silent as configuring the collectors to contain the polymer in an interior volume. However, the skilled artisan would be aware of mesh or expanded metal grid collectors as disclosed in Gozdz et al. wherein the anode current collector and the cathode current collector are each independently configured to beneficially provide pathways for solvent penetration within an interior volume thereof (Gozdz, Page 1 Col 1, Page 1 Col 2 -Page 2 Col 3).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide expanded metal grid current collectors as taught in Gozdz as the current collectors of Jang, as the skilled artisan of Jang would recognize during the infiltration of the polymeric liquid wherein the continuous polymer network penetrates the anode, the porous separator, and the cathode as disclosed in Jang, the open grid current collectors would reasonably be configured to contain portions of the continuous polymeric network within an interior volume thereof and thus the continuous polymer network would reasonably penetrate the anode current collector and the cathode current collector as taught in Gozdz and as doing so would be obvious to try for the skilled artisan and as doing so would amount to nothing more than applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Claims 23 and 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al. (US 20230387548 A1), hereinafter "Jang" as applied to claim 1 above, in view of Wynn et al. (US 20200152926 A1), hereinafter "Wynn". Jang et al. and Wynn are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely electrochemical cells.
In regard to Claims 23 and 25-27, Jang et al discloses the battery as recited in claim 1. Jang et al. also discloses the anode/separator/cathode assembly is protected by a casing or package (Jang, [0037]), the skilled artisan would be well aware of nonmetallic external components or external components that at least partially surround the electrochemical cell that comprises at least one non-metallic material such as the package of Jang, a module, pouch, tray, chassis etc. as disclosed in the current application (Original specification, [0181-0184]).
Further, as evidenced by Wynn et al. a battery pack cover which is an external component that partially surrounds the electrochemical cell which is a fiber reinforced body which may include a crosslinked polymer including epoxy (Wynn, Abstract, [0008]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to providing an external member with this nonmetallic configuration with a crosslinked polymer as taught in Wynn to a battery pack including the cells taught in Jang et al. would be obvious to the skilled artisan and would amount to nothing more than the use of known technique to improve similar devices (methods, or products) in the same way.
With respect to the limitations of claim 28, it is noted that according to the current application the limitations are directed to a crosslinked polymer which may be included in an external component comprising at least one non-metallic material, including a module, pouch, tray, chassis, battery pack etc. (Original specification, [0181-0184]) and basing the weight of the polymer in the external component (cover of the battery pack) taught in Wynn or protective package disclosed in Jang on the total weight of the battery is a wt% which would be a result effective variable that may be optimized by the skilled artisan based on design incentives and would amount to nothing more than choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Claims 29-43 are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al. (US 20230387548 A1), hereinafter "Jang" as applied to claim 1 above, in view of Mikhaylik et al. (US 20140255780 A1), hereinafter "Mikhaylik". Jang et al. and Mikhaylik are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely electrochemical cells.
In regard to Claims 29-38, Jang et al. discloses the battery as recited in claim 1. While Jang et al. discloses infiltrating a polymerizable liquid into the cell components of a formed battery cell (Jang, Example 8) which penetrate the electrodes and separator and then being cured/crosslinked/polymerized (Jang, [0213]) it is silent as to the cells having additional interpenetrating support members. Mikhaylik et al. discloses an electrochemical cell comprising anode, cathode, separator and electrolyte which uses polymeric interpenetrating supports (fibrils) which are electronically non-conductive with the benefit of mechanically reinforcing the electrochemical cell or electrochemical cell components (Mikhaylik, [0006-0007, 0021]).
These interpenetrating supports can be an agglomerate or formed in a matrix which would necessarily include both parallel and perpendicular arrangements based on the orientation of the cell components (Mikhaylik, [0056]) and are also provided in lithium ion conducting layers mixed with a polymer (Mikhaylik, [0065]) which are disposed in an interior volume of the electrochemical cell (Mikhaylik, [0008-0010]). These layers which form the interpenetrating supports comprise polymers including Polyimide and also include crosslinking these polymers (Mikhaylik, [0076-0077]). Mikhaylik also discloses a specific example, the fibrils were used in a 15 wt% based on the weight of the cathode (Mikhaylik, Example 1), which when calculated would fall to a range of less than 15% based on the weight of the battery, which overlaps the claimed range and is a result effective variable able to be optimized by the skilled artisan. Mikhaylik also combines the support system with the electrolyte material and includes a combination with LiTFSI (Mikhaylik, [0145]), which is known as not being ionically conductive to polysulfides.
Thus the beneficial interpenetrating supports taught in Mikhaylik comprise the fibrils and polymer layers and the skilled artisan of Jang et al. may reasonably provide the interpenetrating supports of Mikhaylik in the electrochemical cell of Jang to achieve the benefits such as mechanically reinforcing the electrochemical cell or electrochemical cell components and given the interpenetrating supports would be combined with the cell components before the injection of the polymerizable liquid in Jang and that the injection takes place in a formed cell, after crosslinking/curing as disclosed in Jang the supports as well as polymer network would reasonable also be bonded to the casing of the cell being injected and cured. This would be obvious to the skilled artisan and would likely increase the mechanical strength of the cell.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide the interpenetrating support structures disposed in an interior volume of the electrochemical cell as taught in Mikhaylik and mechanically or chemically couple them to an enclosure containing the electrochemical cell as doing so would give the skilled artisan the reasonable expectation of success and as doing so would amount to nothing more than applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
In regard to Claims 39-43, Jang et al. in view of Mikhaylik discloses the battery as recited in claim 29. While Jang et al. discloses infiltrating a polymerizable liquid into the cell components of a formed battery cell (Jang, Example 8), which penetrate the electrodes and separator and then being cured/crosslinked/polymerized (Jang, [0213]) it is silent as to the cells having additional interpenetrating support members.
Mikhaylik et al. discloses an electrochemical cell comprising anode, cathode, separator and electrolyte which uses polymeric interpenetrating supports (fibrils) which are electronically non-conductive with the benefit of mechanically reinforcing the electrochemical cell or electrochemical cell components (Mikhaylik, [0006-0007, 0021]). Further, the beneficial interpenetrating supports taught in Mikhaylik comprise fibrils and polymer layers and the skilled artisan of Jang et al. may reasonably provide the interpenetrating supports of Mikhaylik in the electrochemical cell of Jang to achieve the benefits such as mechanically reinforcing the electrochemical cell or electrochemical cell components and given that the interpenetrating supports would be combined with the cell components before the injection of the polymerizable liquid in Jang and that the injection takes place in a formed cell, after crosslinking/curing as disclosed in Jang the supports as well as polymer network would reasonable also be bonded to an exterior of the electrochemical cell being injected and cured.
Further since the interpenetrating supports consist of fibrils and polymers combined in a matrix or layers some of the polymers used in the layers have different properties known to the skilled artisan such as an open state, wherein the open state is indicative that a corresponding portion of the electrochemical cell remains robust against mechanical failure (Mikhaylik, [0051]) and in a preferred list Mikhaylik discloses polyvinylchlorides as a polymer choice for the interpenetrating support layer and wherein the polymer may be crosslinked (Mikhaylik, [0073, 0076]), which is also on a preferred list of chemical anchors used in the current application (Original Specification, [0114]).
Mikhaylik also discloses a specific example, the fibrils were used in a 15 wt% based on the weight of the cathode (Mikhaylik, Example 1), which would when calculated would fall to a range of less than 15% based on the weight of the battery, which overlaps the claimed range and is a result effective variable able to be optimized by the skilled artisan. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide PVC as a polymer in the interpenetrating support layers combined with the cell components before assembly as taught in Mikhaylik to the cell components of Jang before the step of injection of polymerizable liquid in the formed cell which would reasonably result in at least one chemical anchor structurally coupled to an exterior of the electrochemical cell and as doing so would amount to nothing more than the use of known technique to improve similar devices (methods, or products) in the same way.
Claims 48-51 are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al. (US 20230387548 A1), hereinafter "Jang" as applied to claim 1 above, in view of Hopkins et al. (US 6709789 B1), hereinafter "Hopkins". Jang et al. and Hopkins are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely electrochemical cells.
In regard to Claims 48-51, Jang et al. discloses the battery as recited in claim 1. While Jang discloses an external component such as a pack or a housing it is silent as to the housing being transparent.
However, this is a feature of a housing that is known to the skilled artisan as evidenced by Hopkins which discloses a beneficial and optically transparent external component which excludes metallic materials and wherein one or more external components comprise at least one non-metallic material (Hopkins, [0074]) and therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide an optically transparent non-metallic housing based on design incentives or other market forces as doing so would provide the skilled artisan the reasonable expectation of success and as doing so would amount to nothing more than a simple substitution of one known element for another to obtain predictable results.
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, 4-5, 7-8, 14-17, 19-20, 22-23, 25, 29-30 and 44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 and 12-30 of U.S. Patent No. US 12009531 B1 (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of the reference patent requires precursors to the polymer network which are cured in claim 25 and amount to nothing more than an obvious variation of the claimed invention.
Claim 1 corresponds to claim 1 of the reference patent.
Claim 15 corresponds to claim 3 of the reference patent.
Claim 5 corresponds to claim 12 of the reference patent.
Claim 7 corresponds to claims 13-14 of the reference patent.
Claim 14 corresponds to claim 15 of the reference patent.
Claim 44 corresponds to claims 16-17 and 30 of the reference patent.
Claim 17 corresponds to claim 18 of the reference patent.
Claim 30 corresponds to claim 19 of the reference patent.
Claim 19 corresponds to claim 20 of the reference patent.
Claim 20 corresponds to claim 21 of the reference patent.
Claim 22 corresponds to claim 22 of the reference patent.
Claim 23 corresponds to claim 23 of the reference patent.
Claim 25 corresponds to claim 24 of the reference patent.
Claim 16 corresponds to claim 25 of the reference patent.
Claim 8 corresponds to claim 26 of the reference patent.
Claim 29 corresponds to claims 27-28 of the reference patent.
Claim 4 corresponds to claim 29 of the reference patent.
Conclusion
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/K.M.O./Examiner, Art Unit 1725
/JONATHAN CREPEAU/Primary Examiner, Art Unit 1725
Prosecution Insights