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 1-19 are pending.
Claims 8-11 are elected with traverse.
Claims 1-7, 12-19 are withdrawn.
Election/Restrictions
Claims 1-7, 12-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/13/2026.
Applicant's election with traverse of Claims 8-11 in the reply filed on 3/13/2026 is acknowledged. The traversal is on the ground(s) that 1) the claims of Group III and Group IV all depend from independent claim 8 of Group II, 2) both Group III and Group IV are directed to the inventive use of the electrolysis cell according to Group II, and 3) examination of the sets of claims would not present a serious search and/or examination burden on the Examiner. This is not found persuasive because the technical feature of Claim 1 fails to provide a contribution over the prior art as described in the previous restriction office action. Also, by virtue of the fact that Claims 8-11 have been rejected as shown below, it shows that the claims lack the same or corresponding special technical feature. The requirement is still deemed proper and is therefore made FINAL.
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 8, 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/293,093 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of application ‘093 is a combination of Claims 1 and 8 of the instant disclosure. Claim 8 of instant disclosure states that the middle chamber is optional, while Claim 1 of application ‘093 does not leave the middle chamber as optional but definitely includes it in the claim language. Hence, even though the claims at issue are not identical, claim 1 of application ‘093 reads on claim 8 (dependent on claim 1) of instant application.
Similarly, claim 8 of application ‘093 includes the limitation of claim 11 from instant disclosure.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 8, 9, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Bhavaraju et al (US 20120085657 A1) in view of Suarez et al (US 20100181189 A1), and in view of Tanaka et al (US 20210054514 A1).
Regarding Claim 8, and Claim 10,
Bhavaraju teaches an electrolysis cell in Figure 2 and 5. Figure 5 is a non-limiting embodiment (Paragraph 0047). Bhavaraju also teaches that the electrochemical cell may also comprise one or more fluid inlets and/or outlets. In some embodiments, the fluid inlets allow specific chemicals and fluids to be added to one or more desired places within the cell. For instance, the fluid inlets may allow a chemical to be added to the anolyte compartment, the catholyte compartment, the first anolyte space, and/or the second anolyte space. In other embodiments, the fluid inlets and outlets may allow fluids to flow through one or more compartments or spaces in the cell. In still other embodiments, these inlets and outlets are also used to interconnect one or more of the cell's compartments (Paragraph 0038). The annotated figure 5 below shows the components of the electrolytic cell as claimed in Claim 8 – i.e. at least one anode chamber KA <11> having at least one inlet ZKA <110>, at least one outlet AKA <111>, and an interior IKA <112> comprising an anodic electrode EA<113>, - at least one cathode chamber KK <12> having at least one inlet ZKK <120>, at least one outlet AKK <121>, and an interior IKK <122> comprising a cathodic electrode EK <123>,
- and optionally at least one interposed middle chamber KM <13> having at least one inlet ZKM <130>, at least one outlet AKM <131> and an interior IKM <132>, where IKA <112> and IKM <132> are then divided from one another by a diffusion barrier D <14>, and AKM <131> is connected by a connection VAM <15> to the inlet Z. <110>, such that liquid can be passed from IKM <132> into IKA <112> via the connection VAM <15>, where
- in the cases in which the electrolysis cell E <1> does not comprise a middle chamber KM <13>, In <112> and IKK <122> are divided from one another by a dividing wall W <16> according to Claim 1
- in the cases in which the electrolysis cell E <1> comprises at least one middle chamber KM <13>, IKK <122> and IKM <132> are divided from one another by a dividing wall W <16> according to Claim 1
wherein the alkali metal cation-conducting solid-state ceramics encompassed by the dividing wall W <16> directly contact the interior IKK <122> on the SKK side <161> via the surface OKK <163>, and
in the cases in which the electrolysis cell E <1> does not comprise a middle chamber KM <13>, the alkali metal cation-conducting solid-state electrolyte ceramics encompassed by the dividing wall W <16> directly contact the interior IKA <112> on the SA/MK <162> side via the surface OA/MK<164>,
- in the cases in which the electrolysis cell E <1> comprises at least one middle chamber KM <13>, the alkali metal cation-conducting solid-state electrolyte ceramics encompassed by the dividing wall W <16> directly contact the interior IKM <132> on the SA/MK <162> side via the surface OA/MK<164>.
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Bhavaraju teaches that the cation-conductive membrane 56 (i.e. a dividing wall) can comprise virtually any known or novel alkali cation-conductive membrane that is capable of selectively transporting specific alkali cations (e.g., Na+, Li+, K+, etc.) from the anolyte compartment 52 to the catholyte compartment 54. Some non-limiting examples of suitable cation-conductive membranes include any known or novel type of NaSICON membranes (Paragraph 0035). Bhavaraju does not teach that the dividing wall W <16> encompasses a frame element R <2> composed of two opposite parts R1 <201> and R2 <202>, with at least two alkali metal cation-conducting solid- state electrolyte ceramics FA <18> and FB <19> disposed therebetween, wherein R1 <201> is directly contactable via the surface OKK <163>, wherein R2 <202> is directly contactable via the surface OA/MK <164>, wherein the frame element R <2> forms an edge element RR <20> and a separating element RT <17>, wherein the edge element RR <20> at least partly bounds the surfaces OKK <163> and OA/MK <164>, and wherein the separating element RT <17> lies between alkali metal cation-conducting solid- state electrolyte ceramics encompassed by the dividing wall W <16> and separates these from one another, such that the alkali metal cation-conducting solid-state electrolyte ceramics encompassed by the dividing wall W <16> are directly contactable both via the surface OKK <163> and via the surface OA/MK<164>, wherein R1 <201> and R2 <202> are secured to one another by at least one securing element BR <91> at the edge element RR <20>, and R1 <201> and R2 <202> are secured to one another by at least one securing element BT <92> at the separating element RT <17>.
Suarez teaches a membrane scaffold that is intended for use in an electrochemical cell ("a dividing wall comprising one side SKK having the surface OKK and, opposite the side SKK, a side SA/MK having the surface OA/MK") (Paragraph [0002]; Fig. 1; Fig. 4). The membrane scaffold is formed from a thermoplastic plate with an orifice which houses a disposed ion-conductive ceramic membrane, preferably an alkali ion selective ceramic material, such that there is at least more than one ceramic/orifice, such as 1 to 8 ceramics ("at least two alkali metal cation- conducting solid-state electrolyte ceramics" & "such that the alkali metal cation-conducting solid-state electrolyte ceramics encompassed by the dividing wall are directly contactable both via the surface OKK and via the surface OA/MK") (Paragraphs [0027]-[0029]).
Suarez is silent with respect to the thermoplastic plate being formed from two opposing parts which are secured together by at least one securing element.
Tanaka teaches a separating membrane-gasket-protecting member (Paragraph [0001]). Figures 2A-2D illustrate the member and figure 3 illustrates an electrolysis vessel including 3 of the members (Paragraphs [0125]-[0134]). The member illustrates in figures 2A-2D includes a top frame member and a bottom frame member with an ion permeable separating membrane between the two frame members (Paragraphs [0126]). The frame members are provided with a frame shaped base body and a frame shaped lid member in order to hold the gasket (Paragraph [0126]). Hence, the frame parts R1 and R2 are secured using sealing members such as gasket and O-ring (Paragraph 0143; securing elements). This configuration results in an improved tolerance to pressures inside the electrolysis vessel while suppressing bad effects during heat and mechanical pressuring of the separating membrane (Paragraph [0105]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the thermoplastic plates of Suarez to include a base body and a lid member protecting and holding a gasket allowing for an improved tolerance to pressures inside the electrochemical cell while suppressing bad effects during heat and mechanical pressuring of the ceramic. Furthermore, one of ordinary skill in the art would recognize that this configuration forms a frame member composed of two opposing parts, both of which are directly contactable via the outer surfaces OKK and OA/MK- Additionally, the spaces of the thermoplastic plate between the ceramics/orifices are considered the separating elements and the spaces at the top of the thermoplastic plate are considered the edge elements, both of which are secured together.
Regarding Claim 9,
Bhavaraju teaches an example of a conventional 2 compartment electrolytic cell as illustrated in Figure 1. The electrolytic cell comprises an anolyte compartment, and a catholyte compartment that are separated by a NaSICON membrane (Paragraph 0005, 0008, 0009). This configuration does not comprise a middle chamber. When this configuration of Bhavaraju is combined with the membrane frame details of Suarez and Tanaka (as described in rejection of Claim 8 above), then it forms the electrolysis cell which does not comprise a middle chamber (of claim 9). Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have a 2 compartment cell with the framed dividing wall in order to be able to produce a variety of different chemicals and to perform various chemical processes (Paragraph 0005).
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Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Bhavaraju in view of Suarez and Tanaka, and further in view of Horn et al (US 20210301407 A1).
Regarding Claim 10,
Bhavaraju teaches that the fluid inlets and outlets may allow fluids to flow through one or more compartments or spaces in the cell. In still other embodiments, these inlets and outlets are also used to interconnect one or more of the cell's compartments (Paragraph 0038). Bhavaraju does not specifically teach that the connection VAM is formed within the electrolysis cell.
However, Horn teaches an electrolysis cell with a connection between the middle chamber and the cathode chamber such that the connection VAM is within the electrolytic cell by a perforation in the diffusion barrier (shown in figure 2). Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the connection within the electrolytic cell in order to improve the process for electrolytic preparation of sodium alkoxide (Paragraph 0023).
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUHANI JITENDRA PATEL whose telephone number is (571)272-6278. The examiner can normally be reached Monday-Friday 8:00 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maria Veronica D. Ewald can be reached on 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUHANI JITENDRA PATEL/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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