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 the Claims
Claims 1-16 are pending wherein claim 1 is amended.
Status of Previous Rejections
The previous rejection of claims 1-16 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicant regards as the invention is withdrawn in view of the Applicant’s amendment to claim 1.
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.
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Claims 1, 3-6, 10-11 and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,590,355. Although the claims at issue are not identical, they are not patentably distinct from each other because:
In regard to instant claim 1, claim 1 of U.S. Patent No. 12,590,355 teaches an LaaCe-bSmcNidMe hydrogen storage alloy with overlapping contents of lanthanum, cerium, samarium, nickel and M (which is manganese or manganese and cobalt), thereby establishing prima facie evidence of obviousness. MPEP 2144.05 I. Additionally, the content of lanthanum, cerium and samarium sum to 1 in instant claim 1 as well as in claim 1 of U.S. Patent No. 12,590,355; the content of nickel plus manganese or nickel plus manganese plus cobalt sum to 5.13 to 5.40 in the instant invention relative to 5.10 to 5.35 in U.S. Patent No. 12,590,355; and the content of samarium plus manganese or samarium plus manganese plus cobalt in the instant invention sum to 0.55 to 1.2 relative to 0.10 to 0.65 in U.S. Patent No. 12,590,355 thereby establishing overlapping compositions and overlapping formulas met for those compositions.
In regard to instant claim 3, since the alloy in instant claim 1 is substantially similar to the alloy in claim 1 of U.S. Patent No. 12,590,355, this property would also be expected in the alloy disclosed in U.S. Patent No. 12,590,355. MPEP 2112.01 I.
In regard to instant claim 4, since the alloy in instant claim 1 is substantially similar to the alloy in claim 1 of U.S. Patent No. 12,590,355, this property would also be expected in the alloy disclosed in U.S. Patent No. 12,590,355. MPEP 2112.01 I.
In regard to instant claims 5 and 10-11, claim 4 of U.S. Patent No. 12,590,355 also discloses a hydrogen storage container.
In regard to instant claims 6 and 13-14, claim 5 of U.S. Patent No. 12,590,355 also discloses a hydrogen supply apparatus comprising the hydrogen storage container.
Allowable Subject Matter
Claims 2, 7-9, 12 and 15-16 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.
In regard to claim 2, the lower limit for the lanthanum in U.S. Patent No. 12,590,355 is 0.60 whereas the upper limit for lanthanum in claim 2 is 0.40 and therefore the combination of claim 1 and claim 2 would distinguish from U.S. Patent No. 12,590,355.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3-6, 10-11 and 13-14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jessee Roe whose telephone number is (571)272-5938. The examiner can normally be reached Monday thru Friday 7:30 am to 4 pm.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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