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
Claims 1-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/28/2026.
Applicant’s election without traverse of claim 8 in the reply filed on 01/28/2026 is acknowledged.
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.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over XIAO et al., "Rational Design of a P2-Type Spherical Layered Oxide Cathode for High-Performance Sodium-lon Batteries", ACS CENTRAL SCIENCE, 2019, Vol. 5, No. 12, Pages 1937-1945 (9 pages total), provided by the applicant IDS, in view of Maruyama (US 20090239119 A1) and further in view of Paulsen et al. (US 20060071198 A1).
Regarding claim 8, Xiao teaches a preparation method for making a transition metal oxide for a cathode that includes a spherical precursor that is composed of a salt, MnCl is exemplified. Further, the method includes mixing the precursor microspheres with a solution containing a sodium salt, Na2CO3 is exemplified. The precursor particle is then dried and calcined to obtain transition metal oxide microspheres containing Na which has a P2-type structure (Xiao, page 7 of the given PDF, first paragraph of the experimental section).
While Xiao specifies that calcination is used, Maruyama explains that calcination and firing in the context of cathode materials are equivalent processes (Maruyama paragraph 0114).
Xiao is silent to the amount of area covered by the salt solution on the precursor particle. Paulsen teaches a similar method of making a transition metal oxide for a cathode and explains that the precursor is coated in a salt where “coated” can be either a partial or full coating (Paulsen 0037) and can be done by either a dry powder or wet slurry/solution method (Paulsen 0044), in the case of the method explained in Xiao, a full coating of the wet solution method is exemplified and encompasses the whole precursor particle and therefore would result in covering more than 40% of the precursor particle surface.
It would be obvious to one of ordinary skill in the art to use the method as explained in Xiao but use the equivalent firing instead of calcination as well as fully cover the precursor particle surface with the Na salt solution as done in Paulson as doing so provides the cathode particle with protection from air exposure (Paulsen 0046).
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.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 18/326483 in view of Moriya et al. (US 20220190323). The instant application claim 8 is the same as the copending application claim 12 except for the copending application adding the additional step of converting at least a part of the Na to Li to form the final transition metal composite oxide. Moriya teaches a method for synthesizing a lithium transition metal composite oxide with Na being included in an intermediate step and the Na eventually gets replaced by Li via ion exchange (Moriya 0036).
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN ROBERT BROWN whose telephone number is (571)272-0640. The examiner can normally be reached M-F, 9-5 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Galen Hauth can be reached at (571)270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN R. BROWN/Examiner, Art Unit 1743
/ADAM J FRANCIS/Primary Examiner, Art Unit 1728