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 .
Claim Objections
Claims 21, 36, 42, and 43 are objected to because of the following informalities:
In claim 21, last line, add “,” after “arsenate” for clarity.
In claim 36, 2nd line, add “,” after “manganese” for clarity.
In claim 42, 3rd line, add “electrodes” after “negative” for clarity.
In claim 43, 1st line, add “electrodes” after “positive” for clarity.
In claim 43, 2nd line, add “the” before “negative electrodes” for clarity.
Appropriate correction is required.
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 1-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-58 of U.S. Patent No. 11,710,849. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed features of the rechargeable battery cell in independent claim 1 of the present application are substantially similar to the combination of claims 1, 23, and 24 of US 11,710,849. In addition, the dependent claims of the present application substantially overlap with those of US 11,710,849, and would depend on mere rearrangement of claim numbering and limitations thereof in each set of claims. Moreover, one of ordinary skill in the art would have recognized the overlapping scope of the claims, and exclusion of any additional features from the claims of US 11,710,849 would have been obvious, as open-ended “comprising” language exists in both sets of claims of the present application and US 11,710,849.
Claims 1-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-41 of U.S. Patent No. 11,901,504. Although the claims at issue are not identical, they are not patentably distinct from each other because the
claimed features of the rechargeable battery cell in independent claim 1 of the present application are substantially similar to those of independent claim 1 of US 11,901,504. In addition, the dependent claims of the present application substantially overlap with those of US 11,901,504, and would depend on mere rearrangement of claim numbering and limitations thereof in each set of claims. Moreover, one of ordinary skill in the art would have recognized the overlapping scope of the claims, and exclusion of any additional features from the claims of US 11,901,504 would have been obvious, as open-ended “comprising” language exists in both sets of claims of the present application and US 11,901,504.
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 1-43 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.
With regard to independent claim 1, the limitation “wherein the discharge element of the positive electrode and the discharge element of the negative electrode are embodied independently of one another from a material selected from the group consisting of aluminum and copper” is indefinite, as it is unclear whether “embodied independently” means that the different discharge elements are different in type of material (i.e. one is aluminum and one is copper) or that these different discharge elements “operate independently” (i.e. based on function and/or orientation thereof). Correction and clarification are required. Since claims 2-43 depend from independent claim 1, these claims are rejected under 35 USC 112(b) for the same reason.
Claim 1 recites the limitation "the substituents" in the 4th line from the end of the claim. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to delete “the” to obtain proper antecedent basis.
Regarding claim 4, the phrase "or the like" (in this instance, “like” of “net-like” in the 3rd line) renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claim 6 recites the limitation "the cell voltage" in the 1st line. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to replace “the” with “a” to obtain proper antecedent basis.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation “at least 4.0 volts”, and the claim also recites “at least 4.4 volts, at least 4.8 volts, at least 5.2 volts, at least 5.6 volts, and at least 6.0 volts” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 24 recites the limitation "the total weight" in the last line. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to replace “the” with “a” to obtain proper antecedent basis.
Claim 25 recites the limitation "the molar concentration" in the 1st line. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to replace “the” with “a” to obtain proper antecedent basis.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 25 recites the broad recitation “0.01 mol/L to 10 mol/L”, and the claim also recites “0.05 mol/L to 10 mol/L, 0.1 mol/L to 6 mol/L, and 0.2 mol/L to 3.5 mol/L” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 25 recites the limitation "the total volume" in the last line. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to replace “the” with “a” to obtain proper antecedent basis.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 26 recites the broad recitation “at least 0.1 mole SO2”, and the claim also recites “at least 1 mole SO2, at least 5 mole SO2, at least 10 mole SO2, at least 20 mole SO2” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 31 recites the limitation "the composition" in the 2nd line. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to replace “the” with “a” to obtain proper antecedent basis.
Claim 32 recites the limitation "the compound" in the 1st line. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to replace "the compound" with "the at least one compound" to obtain proper antecedent basis with "at least one compound" in the 2nd line of claim 31.
Claim 32 recites the limitation "the composition" bridging the 1st and 2nd lines. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to replace “the” with “a” to obtain proper antecedent basis.
Claim 33 recites the limitation "the compound" in the 1st line. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to replace "the compound" with "the at least one compound" to obtain proper antecedent basis with "at least one compound" in the 2nd line of claim 31.
Claim 33 recites the limitation "the composition" bridging the 1st and 2nd lines. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to replace “the” with “a” to obtain proper antecedent basis.
Claim 35 recites the limitation "the metal compound" in the 1st line. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to replace "the metal compound" with "the at least one metal compound" to obtain proper antecedent basis with "at least one metal compound" in the 2nd line of claim 34.
Claim 36 recites the limitation "the metal compound" in the 1st line. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to replace "the metal compound" with "the at least one metal compound" to obtain proper antecedent basis with "at least one metal compound" in the 2nd line of claim 34.
With regard to claim 41, the limitation “a polymer built up from monomeric structural units of a conjugated carboxylic acid or from the alkali metal, alkaline earth metal or ammonium salt of this conjugated carboxylic acid or from a combination thereof” is indefinite, as there are three instances of the term “or” that render this limitation unclear. Should one or more additions of punctuation (commas) be added before one (or more) of the term “or”? Correction and clarification are required.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 41 recites the broad recitation “at most 20 wt.%”, and the claim also recites “at most 15 wt.%, at most 10 wt.%, at most 7 wt.%, at most 5 wt.%, and at most 2 wt.%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 41 recites the limitation "the total weight" in the 13th line. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is suggested to replace “the” with “a” to obtain proper antecedent basis.
Allowable Subject Matter
Claims 1-43 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action, as well as the above double patenting rejections.
The following is a statement of reasons for the indication of allowable subject matter: the prior art (including all references provided in the three Information Disclosure Statements) fail to teach or suggest a rechargeable battery cell that includes the following structural features:
a positive electrode with a discharge element and a negative electrode with a discharge element, wherein the discharge element of the positive electrode and the discharge element of the negative electrode are “embodied independently of one another” (insofar as definite in view of the 35 USC 112(b) rejection of claim 1 above) from a material selected from the group consisting of aluminum and copper; and
an electrolyte that is based on SO2 and contains a conductive salt that has formula (I) of claim 1, wherein
M is a metal selected from the group consisting of alkali metals, alkaline earth metals, metals from group 12 of the periodic table of elements, and aluminum;
x is an integer from 1 to 3;
(the) substituents R1, R2, R3, and R4 are selected independently of one another from the group consisting of substituted or unsubstituted C1-C10 alkyl, C2-C10 alkenyl, C2-C10 alkynyl, C3-C10 cycloalkyl, C6-C14 aryl, and C5-C14 heteroaryl; and
wherein Z is aluminum or boron.
(of independent claim 1, from which claims 2-43 depend)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicants' disclosure. US 11,710,849 and US 11,901,504 (applied in the double patenting rejections above) are cited in PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN P KERNS whose telephone number is (571)272-1178. The examiner can normally be reached Monday-Friday 8am-430pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571)272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN P KERNS/Primary Examiner, Art Unit 1735February 12, 2026