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 without traverse of Species 2, Formula IV in the reply filed on 4/13/26 is acknowledged.
Claims 2, 3, 9, 11, 12, and 28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. The Office considers these claims to be distinct from the elected Species 2.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Objections
Claims 21 and 22 are objected to because of the following informalities: The claims are meant to recite “4 mA∙h to about 20 mA∙h” and “5 mA∙h to about 8 mA∙h,” respectively. Instead, the bullet operation appears as an empty box. Appropriate correction is required.
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 1, 4-8, and 13-27 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 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: the charge of the structure. The elected species Formula IV, depicted in claim 10, must have a charge of -2 as established in the instant specification. This charge must be depicted in the structure since the CAT+2 is also shown. Claims 4-8 and 13-27 depend on claim 1.
Claim 15 recites the limitation "the hexacyanoferrate" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 and 26 of U.S. Patent No. 11,267,830. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims encompass the same molecular structure of Species 2 (Formula IV) in the context of a battery with anode and cathode having the structure. The solid charge storage medium of the instant claims can be considered an anode or cathode solution which is recited in the patented claims. U.S. Patent No. 11,267,830 discloses that the structure is bound to a substrate (paragraph 63) and thus the distinction of a current collector is obvious to one of ordinary skill in the art.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4-8, 16-19, 23, and 25-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cappillino (WO 2018/165312 A1). Corresponding US Application 2021/0139516 A1 is used in lieu for citation purposes.
Regarding claims 1, 10, and 25-27, Cappillino discloses: an anode and cathode comprising the structure of Formula IV including the claimed CAT (see claim 26). The solid charge storage medium of the instant claims can be considered a solution (instant paragraph 45); Cappillino discloses that the anode and cathode have solutions (paragraph 8). Cappillino discloses that the structure is bound to a substrate (paragraph 63) which is considered a current collector.
Regarding claim 4, Cappillino discloses that the claimed cations (paragraph 42).
Regarding claim 5-7, Cappillino discloses that the claimed R1 values (paragraph 4).
Regarding claim 8, Cappillino discloses that a coordination number of 8 (paragraph 98).
Regarding claims 16-19, Cappillino discloses that that the anode and cathode solutions can have concentrations of 5-20 mM (paragraph 54).
Regarding claim 23, Cappillino discloses a first pump 26 and second pump 28 for the anode and cathode tanks respectively (paragraph 57).
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 13-15, 20-22, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Cappillino as applied to claim 1 above, and further in view of Chun (KR 102315320 B1). A machine translation is provided herewith and used for citation and translation purposes.
Cappillino does not discloses the use of hexacyanoferrates or the assessed capacities associated with the use of hexacyanoferrates. Chun—in an invention for a battery utilizing redox reactions—discloses that cobalt hexacyanoferrate (CoHCF) contains “cobalt (Co) as a transition metal, Co ions and Fe (CN) .sup.6- ions form a combined crystal structure, and both Co and Fe, which are transition metals, participate in oxidation/reduction reactions. Therefore, when used as a cathode material, there is an advantage of having a high specific capacity” (paragraph 5 from the top of the machine translation). It would have been obvious to one having ordinary skill in the art at the time of invention to utilize CoHCF for the cathode of Cappillino to improve its assessed capacity as suggested by Chun. It is the Office’s position that the assessed capacity would then be as claimed since all the same materials would be present and thus the same properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IMRAN AKRAM whose telephone number is (571)270-3241. The examiner can normally be reached M-F 9a-5p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia Ridley can be reached at 571-272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IMRAN AKRAM/Primary Examiner, Art Unit 1725
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