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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 4, 7, 9 and 10 are objected to because of the following informalities:
In claim 4, line 3, the list “comprise at least one material selected from rubber, plastic, glass, porcelain, metal” should recite “comprise at least one material selected from rubber, plastic, glass, porcelain, and metal”
In claim 7, line 9, the list “Roman indices I, II, III, IV, V” should be amended to recite “Roman indices I, II, III, IV, and V”
In claim 7, line 11, the list “w, x, y, z” should recite “w, x, y, and z”
In claim 7, line 11, the list “0 ≤ x < 2, 0 ≤ y < 2, 0 ≤ w < 2, 0 ≤ z <3” should recite “0 ≤ x < 2, 0 ≤ y < 2, 0 ≤ w < 2, and 0 ≤ z <3”
In claim 7, line 12, the list “w, x, y, z” should recite “w, x, y, and z”
In claim 9, line 2, the claim recites “R is an alkyl radical” but should recite “R is an alkyl group” or something similar as a radical refers to alkyl having an unpaired electron which does not appear to be the intended meaning
In claim 9, line 4, the list “steps (β1), (β2), (β3)” should recite “steps (β1), (β2), and (β3)”
In claim 9, lines 7-8, the phrase “salt S … is routed through KM <13>, then via VAM <15>, then through KA <11> …” is grammatically incorrect – in particular “then via VAM <112>, then through KA <101>”. One suggested fix would be to amend the phrase to state “then via VAM <112> through KA <101>”
In claim 10, line 2, the claim recites the list “group consisting of Li+, Na+, K+” but should recite “group consisting of Li+, Na+, and K+”
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9-12 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 9 recites the limitation "the alcohol ROH" in line 2. However, there is insufficient antecedent basis for this limitation in the claim.
Claim 9 additionally recites the limitation "higher concentration of XOR" in line 10. However, there is insufficient antecedent basis for this limitation in the claim as the claim previously sets forth “an alkali metal alkoxide XOR” (see claim 9 at lines 1-2). Consequently, it is unclear whether a new alkoxide XOR is being set forth or if the claim intends to refer back to and further limit the XOR previously set forth.
Please note, claims 10-12 are only rejected herein as a result of their dependency.
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 1-12 is/are rejected under 35 U.S.C. 103 as being obvious over both US Pub. No. 2021/0301409 by Horn et al., (hereinafter referred to as “HORN”) and US Pub. No. 2021/0301407 to Horn et al., (hereinafter referred to as “HORN II”) in view of US Pub. No. 2010/0181189 to Suarez et al., (hereinafter referred to as “SUAREZ”).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103, as set forth below, might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
The examiner wishes to note that since both references, i.e. HORN and HORN II, qualify as prior art under 102(a)(2), the grounds of rejection is based upon each separately as each of the references would need to be addressed individually. Furthermore, it is acknowledged by the Examiner that since both references contain substantially overlapping disclosures, that the examiner will set forth the grounds of rejection with reference to HORN primarily in order to avoid unnecessary duplication. However, the corresponding disclosure of HORN II which is equivalent to that relied upon in HORN should be understood to be applied.
While ordinarily duplicative rejections would be avoided, the examiner is making the rejection based on both HORN and HORN II in the interests of compact prosecution so that both 102(a)(2) references may be addressed and prosecution advanced thereby.
Regarding claim 1, HORN/HORN II teach an electrolysis cell E <1> comprising (see HORN at Abstract and Fig. 1 and Fig. 2; see HORN II at Abstract and Fig. 1 and Fig. 2):
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> (see HORN at Fig. 1 and Fig. 2 depicting the anode chamber as claimed),
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> (see HORN at Fig. 1 and Fig. 2 depicting the cathode chamber as claimed), and
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> (see HORN at Fig. 1 and Fig. 2 depicting the middle chamber as claimed),
where IKA <112> and IKM <132> are divided from one another by a diffusion barrier D <14> (see HORN at Fig. 1 and Fig. 2 depicting the diffusion barrier 110), and
AKM <131> is connected by a connection VAM <15> to the inlet ZKA <110>, such that liquid can be passed from IKM <132> into IKA <112> via the connection VAM <15> (see HORN at Fig. 1 and Fig. 2 depicting connection 112 as claimed),
where IKK <122> and IKM <132> are divided from one another by a dividing wall W <16> comprising one side SKK <161> having the surface OKK <163> and, opposite the side SKK <161>, a side SA/MK <162> having the surface OA/MK <164> (see HORN at Fig. 1 and Fig. 2 depicting the dividing wall 111 as claimed),
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 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> (see HORN at Fig. 1 and Fig. 2 depicting the dividing wall 111 as claimed).
While HORN/HORN II teach the dividing wall being an alkali metal cation-conducting solid-state electrolyte ceramic (see HORN at ¶100-¶109; see HORN II at ¶107-¶116), HORN/HORN II fails though to explicitly teach wherein the dividing wall W <16> encompasses at least two alkali metal cation-conducting solid-state electrolyte ceramics FA <18> and FB <19> separated from one another by at least one separating element T <17> in such a way 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> as claimed.
However, SUAREZ teaches a membrane scaffold that is intended for use in an electrochemical cell (see SUAREZ at ¶2 and Fig. 1 and Fig. 4). Moreover, 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 (see SUAREZ at ¶27-¶29 teaching the above and the number of orifices being 1 to 8 or more; see also SUAREZ at ¶51 teaching the ceramic member being NaSICON material amongst others). The plate of SUAREZ having 2 or more orifices would read on the claimed at least two alkali metal cation-conducting solid-state electrolyte ceramics in which the plate 20 reads on the separating element so as to provide the surfaces as claimed.
Furthermore, SUAREZ teaches the membrane scaffold as providing a hermetic seal that prevents mixing of the electrolyte on the opposite sides of the membrane and provides a reliable and long-lasting seal that ensures that only specific ions are allowed to selectively pass between the two solutions it is separating (see SUAREZ at ¶7 and ¶27).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the membrane scaffold having several cation-conducting solid-state electrolyte ceramics as taught by SUAREZ in either the electrolytic cell of HORN or HORN II as a means of providing for transfer of the Na-ions into the cathode chamber and doing so in reliable way that is long-lasting and avoids leaks between the middle and cathode chambers.
Regarding claim 2, HORN/HORN II in view of SUAREZ teaches the electrolysis cell E <1> wherein the dividing wall W <16> comprises at least four alkali metal cation-conducting solid-state electrolyte ceramics FA <18>, FB <19>, FC <28> and FD <29> (see SUAREZ at ¶28 teaching 4 or more orifices).
Regarding claim 3, HORN/HORN II in view of SUAREZ teaches the electrolysis cell E <1> wherein the separating element T <17> takes the form of a cross or grid (see SUAREZ at Fig. 1 and Fig. 4 depicting the orifices arranged in a grid like pattern).
Regarding claim 4, HORN/HORN II in view of SUAREZ teaches the electrolysis cell E <1> wherein the separating element T <17> comprises a material selected from the group consisting of plastic, glass, and wood (see SUAREZ at ¶27 teaching the plate being made of a plastic).
Regarding claim 5, HORN/HORN II in view of SUAREZ teaches the electrolysis cell E <1> wherein the dividing wall W <16> comprises a frame element R <20> (see SUAREZ at Fig. 1 depicting gasket 135 acting as a frame).
Regarding claim 6, HORN/HORN II in view of SUAREZ teaches the electrolysis cell E <1> wherein at least a portion of the separating element T <17> is in one-piece form together with at least a portion of the frame element R <20> (see SUAREZ at Fig. 1 depicting plate 20 and gasket 135 being a unitary structure).
Regarding claim 7, HORN/HORN II in view of SUAREZ teaches the electrolysis cell E > wherein the alkali metal cation-conducting solid-state electrolyte ceramics
encompassed by the dividing wall W <16> independently have a structure of the formula and conditions as claimed (see HORN at ¶100-¶109; see HORN II at ¶107-¶116 teaching the formular and conditions as claimed).
Regarding claim 8, HORN/HORN II in view of SUAREZ teaches the electrolysis cell E <1> wherein the connection VAM <15> is formed within the electrolysis cell E <1> (see HORN at Fig. 2).
Regarding claim 9, HORN/HORN II in view of SUAREZ teaches a process for producing a solution L₁ <21> of an alkali metal alkoxide XOR in an alcohol ROH, where X is an alkali metal cation and R is an alkyl group having 1 to 4 carbon atoms (see HORN at claim 1; see HORN II at claim 1),
wherein the following steps (β1), (β2), (β3) that proceed simultaneously are conducted in an electrolysis cell E <1> of claim 1 (see rejection of claim 1 above as to the modification of HORN/HORN II by SUAREZ):
(β1) a solution L₂ <22> comprising the alcohol ROH is routed through KK <12> (see HORN at claim 1; see HORN II at claim 1),
(β2) a neutral or alkaline, aqueous solution L₃ <23> of a salt S comprising X as cation is routed through KM <13>, then via VAM <15> through KA <11> (see HORN at claim 1; see HORN II at claim 1),
(β3) voltage is applied between EA <113> and EK <123> (see HORN at claim 1; see HORN II at claim 1),
which affords the solution L1 <21> at the outlet AKK <121>, with a higher concentration of XOR in L1 <21> than in L2 <22> (see HORN at claim 1; see HORN II at claim 1),
and which affords an aqueous solution L4 <24> of S at the outlet AKA <111>, with a lower concentration of S in L4 <24> than in L3 <23> (see HORN at claim 1; see HORN II at claim 1).
Regarding claim 10, HORN/HORN II in view of SUAREZ teaches the process wherein X is selected from the group consisting of Li⁺, Na+, and K⁺ (see HORN at claim 2; see HORN II at claim 1).
Regarding claim 11, HORN/HORN II in view of SUAREZ teaches the process wherein S is a halide, sulfate, sulfite, nitrate, hydrogencarbonate or carbonate of X (see HORN at claim 3; see HORN II at claim 1 teaching S being NaCl, i.e. a halide).
Regarding claim 12, HORN/HORN II in view of SUAREZ teaches the process wherein R is selected from the group consisting of methyl and ethyl (see HORN at claim 4; see HORN II at claim 2).
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 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 11 of U.S. Patent No. 11,174,559, i.e. the patent of HORN, and also over claims 1-2 and 9 of US Patent No. 11,629,415, i.e. the patent of HORN II, in view of SAUREZ.
Specifically, it is noted that this grounds of rejection is on the same basis as set forth in the obviousness grounds of rejection based on HORN and HORN II each as modified by SAUREZ. The grounds of rejection as set forth above are incorporated herein.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/292,986 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the limitations of the instant application are claimed in the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Pub. No. 2008/0173551 to Joshi et al., teaching an electrolytic method to make alkali alcoholates
US Pub. No. 2008/0142373 to Joshi et al., teaching an electrolytic method to make alkali alcoholates using ion conducting alkali electrolyte/separator
US Pub. No. 2005/0177008 to Balagopal et al., teaching an electrolytic method to make alkali alcoholates using ceramic ion conducting solid membranes
US Pub. No. 2003/0106805 to Horn teaching a method of producing alkali alcoholates
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bryan D. Ripa whose telephone number is (571)270-7875. The examiner can normally be reached Mon-Fri 8:00AM-4:00PM ET.
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/BRYAN D. RIPA/Primary Patent Examiner, Art Unit 1794
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