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 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 2 and 11 recite the limitation "the electrode material distribution system configured to increase" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim as the preceding claims only refer to regulation, not a system which increases.
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-56 of U.S. Patent No. 10,461,311. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are broader.
Regarding claims 1-17, ‘311 discloses a similar battery system with electrode reservoirs (claim 1), reactions chambers (claim 1), a solid electrolyte layer (claim 1), lithium-based negative electrodes (claim 2), lithium-based solid electrolytes (claim 3), electrode distribution systems between positive and negative electrodes and their respective reservoirs (claim 1), and distinctions in volume thresholds based on a controller and current data (claims 16-18). In addition, the foregoing patent is replete with other teachings that largely align with the current claims (see remaining claims in ‘311).
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) s 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. US 2017/0047593).
Regarding claim 1, Lu discloses a molten electrode battery ([0003[) including a reaction chamber (figure 2; 200) comprising a solid electrolyte ([0019]; figure 2 - 226), a positive electrode (referred to as cathode) region (figure 2; 202), a negative electrode (referred to as anode) region (figure 2; 206), a positive electrode reservoir (figure 2; 230) and an electrode material distribution system (figure2; 228, 232, 227) that is configured to regulate the flow of electrode material based on the current flow ([0027]). The examiner notes that threshold voltages represent a proxy to the claimed “current” as Ohm’s law (the scientific principal which governs the relationship) holds that they are directly proportional. The foregoing either anticipates the instant invention or renders it highly obvious given that there is nothing suggesting a change in resistance to counterbalance the voltage (note that Ohms law is V = IR). The examiner additionally notes that the courts have held that that “[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” (MPEP 2144.01)
Regarding claims 2-9, the claims appear to be drawn largely to the operation of the battery, and the examiner notes that the courts have held that “[A]pparatus claims cover what a device is, not what a device does. (MPEP 2144(II)). The structure, is identified above. As to the steps relating to the operation, the examiner notes that Lu already discloses using a pump-based system (figure 2 – 230, 227, 228 and 232) to move electrode active materials through a battery, based on a particular stimulus identified by the user (voltage fluctuations; see claim 1 above). Expanding on the foregoing to merely identify different stimuli or using such a system to merely move different active materials would appear to be a matter of obviousness in the absence of new or unexpected results as it merely takes the general disclosure of Lu and applies it in predictable ways. The courts have held that (A) Combining prior art elements according to known methods (pumping electrode active materials) to yield predictable results (shuttle those materials around a battery system for operability); (B) Simple substitution of one known element (one battery subcomponent) for another (another battery subcomponent) to obtain predictable results (shuttle around the battery system for operability); (C) Use of known technique to improve similar devices (methods, or products) in the same way. (See MPEP 2143(I)).
Regarding claims 10, the merits have been substantially addressed above in claim 1, but Lu further discloses the anode (i.e. negative electrode) can comprise lithium ([0028]) and so can the solid electrolyte ([0019], [0022]).
Regarding claims 11-17, see rejection above relating to claims 2-9.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL N ORLANDO whose telephone number is (571)270-5038. The examiner can normally be reached M-F 8:00 AM - 4:30 PM.
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, Alexa Neckel can be reached at (571) 272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
