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 .
Summary
This is the initial Office Action based on Application 18/303,343 and is in response to a Response to Election/Restriction filed 01/07/2026.
Applicant's election with traverse of species II, additive 1B claims 1-3 and 6 in the reply filed on 01/07/2026 is acknowledged. The traversal is on the ground(s) that the inventive species and groups are in a related field and would not impose undue burden. This is not found persuasive because the different claimed species have a large number of possible chemical compounds that would meet the different claimed chemical formulas, therefore this would result in the increased burden.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-15 are previously pending, of those claims, claims 4-5 and 7-15 have been withdrawn from consideration as being drawn to non-elected subject matter. Claims 1-3 and 6 are currently pending and have been fully considered.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over CHO (US 2022/0069350 A1) in view of HOSOE (US 2021/0242499 A1).
CHO teaches a positive electrode which includes a current collector and an active material layer (paragraph 0101). The positive active layer includes a conductive material and a binder (paragraph 0119). CHO then teaches the use of an additive, which may be represented by chemical formula 1B, and chemical formula 1B-I and 1B-II (paragraphs 0008-0011). In addition the additive may be formula 1B-I-1 (paragraph 0017-0018). The additive is present in the electrolyte (paragraph 0019). Therefore CHO teaches the claimed additive, but does not explicitly teach that it is a part of the positive electrode.
HOSOE teaches a non-aqueous electrolytic power storage device (paragraph 0005). The electrolyte may include various additives (paragraph 0045). There may include a positive electrode sheet 30 with the electrolyte is impregnated into the active material layer 94 of the positive electrode sheet (paragraph 0072). Thus the active material layer is impregnated with the electrolyte, thus the electrolyte is easily impregnated into the active material layer, and thus the resistance can be reduced (paragraph 0072).
At the time the invention was filed one having ordinary skill in the art would have been motivated to impregnate the electrolyte into the positive electrode active material layer as taught by HOSOE for the active material layer of CHO, as HOSOE teaches that allowing for the electrolyte to penetrate into the active material layer has the beneficial effect of reducing the resistance (paragraph 0072).
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 1-3 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,218,308 B2 in view of HOSOE (US 2021/0242499 A1). Patent’ ‘308 claims an electrolyte which includes an additive represented by chemical formula 1B (claim 2) additive represented by 1B-I or 1B-II (claim 3) and an additive represented by 1B-I-1 or 2B-I-1 (claim 6).
Patent ‘308 claims the additive is present in the electrolyte (claim 1). Therefore patent ‘308 claims the presently claimed additive, but does not explicitly teach that it is a part of the positive electrode.
HOSOE teaches a non-aqueous electrolytic power storage device (paragraph 0005). The electrolyte may include various additives (paragraph 0045). There may include a positive electrode sheet 30 with the electrolyte is impregnated into the active material layer 94 of the positive electrode sheet (paragraph 0072). Thus the active material layer is impregnated with the electrolyte, thus the electrolyte is easily impregnated into the active material layer, and thus the resistance can be reduced (paragraph 0072).
At the time the invention was filed one having ordinary skill in the art would have been motivated to impregnate the electrolyte into the positive electrode active material layer as taught by HOSOE for the active material layer of patent ‘308, as HOSOE teaches that allowing for the electrolyte to penetrate into the active material layer has the beneficial effect of reducing the resistance (paragraph 0072).
Claims 1-3 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/012,883 in view of HOSOE (US 2021/0242499 A1). Application ‘883 claims an electrolyte for a battery including an additive of chemical formula 1A (claim 1). The claim may further include chemical formula 1A-II (claim 7), chemical formulas 1A-II-1 and 1A-II-2 (claim 8) and chemical formula 1A-II-3 (claim 11).
Application ‘883 claims the additive is present in the electrolyte (claim 1). Therefore patent ‘883 claims the presently claimed additive, but does not explicitly teach that it is a part of the positive electrode.
HOSOE teaches a non-aqueous electrolytic power storage device (paragraph 0005). The electrolyte may include various additives (paragraph 0045). There may include a positive electrode sheet 30 with the electrolyte is impregnated into the active material layer 94 of the positive electrode sheet (paragraph 0072). Thus the active material layer is impregnated with the electrolyte, thus the electrolyte is easily impregnated into the active material layer, and thus the resistance can be reduced (paragraph 0072).
At the time the invention was filed one having ordinary skill in the art would have been motivated to impregnate the electrolyte into the positive electrode active material layer as taught by HOSOE for the active material layer of application ‘883, as HOSOE teaches that allowing for the electrolyte to penetrate into the active material layer has the beneficial effect of reducing the resistance (paragraph 0072).
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN G JELSMA whose telephone number is (571)270-5127. The examiner can normally be reached Monday through Friday 9:00 AM to 4:00 PM EST.
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/JONATHAN G JELSMA/Primary Examiner, Art Unit 1722