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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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, 4, 5, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,555,787. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims substantially encompasses the claims of US Patent ‘787 and/or obvious variant of one another with slight optimization of ranges.
US ‘787 fails to explicitly disclose that La carbide having a non-layered structure. However, it would have been well within the purview of one of ordinary skill in the art to choose to use a non-layered La carbide. One of ordinary skill in the art would be well aware that La carbide is either layered or non-layered structure. Thus, choice of non-layered structure given only two alternatives would be well within the level of ordinary skill in the art.
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.
Claim 4 is 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.
Regarding claim 4, “MxC(1-x)” renders the claim indefinite as it doesn’t define what is meant by “M”. For the purpose of this examination, the examiner is interpretating M to be transitional metal.
Claim Rejections - 35 USC § 102
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 1-6 and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gao et al. (Non-layered transition metal carbides for energy storage and conversion).
Regarding claim 1, Gao discloses non-layered transitional metal carbides (Title, Table 1). This thereby reads upon the claimed negative electrode active material.
The recitation in the claims that the material is “for a fluoride ion battery” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Gao disclose the material as presently claimed used in energy storage, it is clear that the material of Gao would be capable of performing the intended use, i.e. for fluoride ion battery presently claimed as required in the above cited portion of the MPEP.
Regarding claims 2 and 9, the reference does not disclose the x-ray analysis of the NL-TMC required by the claim. It is the examiner's position that the reference to Gao teaches the same structure and composition as claimed and therefore, would be expected to inherently satisfy the claimed x-ray analysis relationship.
It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC § 102 or on prima facie obviousness under 35 USC § 103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977).
Regarding claim 3, please see Table 1.
Regarding claim 4, Gao discloses examples using Mo2C, which falls within the same ratio as Mo0.66C0.33, thereby is equivalent.
Regarding claim 5-6, please see sections 3.1-3.3 for a nominal battery structure.
Regarding claim 8 and 10, Gao discloses that it is known in the art that NL-TMC is produced by ball-milling (Table 1).
Claim Rejections - 35 USC § 102/103
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.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Warren et al. (US 2021/0151755).
Regarding claims 1, 8, and 10, Warren discloses a negative electrode active material comprising transitional metal carbide (0007, claims 1-3, 5, and 14), having a cage structure [0086]. A cage structure would broadly read upon the claimed “non-layered”.
Alternatively, although Warren fails to explicitly disclose an embodiment or example requiring pure c-A2C, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to pick the instant claimed non-layered as a mere combing prior art elements according to known methods to obtain predictable results i.e. NL-TMCs ( see MPEP 2143 I and 2144.06 I).
It has been held that the mere fact that a reference suggests possible combinations does not in and of itself make any one of these combinations less obvious, citing Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804 (Fed. Cir. 1989). It is also well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992)
Additionally, Wallen discloses r-A2C, which is layered, subjected to ball milling of up to 100 hours [0158]. This specific step produces a structure with size reduction. Given that this relates to mechanical impact that reduces in size and is similarly to the claimed process of the same materials as claimed (mechanical impact using ball milling), one of ordinary skill in the art before the effective filing date of the claimed invention would immediately envisage that this would produced a non-layered structure.
It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC § 102 or on prima facie obviousness under 35 USC § 103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977).
In the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to subject layered A2C by ball-milling of 100 hours to be fully non-layered with reasonable expectation of success. A person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation.
Additionally, a person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art at the time of the invention was made to optimize the weight of the fabric since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed structure is critical and has unexpected results. In the present invention, one would have been motivate to optimize the structure of the active material on what the end use of the active material was used for.
The recitation in the claims that the material is “for a fluoride ion battery” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Wallen disclose the material as presently claimed, it is clear that the material of Wallen would be capable of performing the intended use, i.e. for fluoride ion battery presently claimed as required in the above cited portion of the MPEP.
Regarding claims 2 and 9, The reference does not disclose the x-ray analysis of the TMC required by the claim. It is the examiner's position that the reference to Wallen teaches the same structure and composition as claimed and therefore, would be expected to inherently satisfy the claimed x-ray analysis relationship.
It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC § 102 or on prima facie obviousness under 35 USC § 103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977).
Regarding claim 3, please see [0085], Tables 1-2 and 4, Examples.
Regarding claim 4, Wallen discloses examples using Y2C or Sc2C, which falls within the same ratio as Y0.66C0.33.
Alternatively, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In the instant case, the difference empirical vs stoichiometric formula does not appear confer patentability to the claims in the absence of a showing of critically associated with the claimed formula.
Regarding claim 5, please see Fig. 1.
Regarding claims 6-7, please see [0128], [0139], and Fig. 1.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Gao et al. (Non-layered transition metal carbides for energy storage and conversion).
Regarding claim 4, Gao discloses NL-TMC set forth above, wherein one is Mo2C (Table 1).
A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In the instant case, the difference empirical vs stoichiometric formula does not appear confer patentability to the claims in the absence of a showing of critically associated with the claimed formula.
Alternatively, Gao discloses that the NL-TMC comprises of tunable stoichiometric ratios, which give rises to high gravimetric capacities, high conductivity, and excellent stability (Abstract). Thereby, the formula is a result effective variable.
Therefore, it would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to optimize the stoichiometric ratios within the limits known in the art based on the desired end use of the material since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA) 1980.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Gao et al. (Non-layered transition metal carbides for energy storage and conversion) in view of Warren et al. (US 2021/0151755).
Regarding claim 7, Gao discloses NL-TMC that are applied in Li-ion batteries, Li-sulfur batteries, or Li-O2 batteries, however, fails to explicitly disclose a fluoride ion battery.
Warren discloses a negative electrode active material comprising transitional metal carbide (0007, claims 1-3, 5, and 14), having a cage structure [0086]. A cage structure would broadly read upon the claimed “non-layered”. Warren discloses that this material is used in fluoride ion battery (Fig. 1)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Gao’s energy storage to be of fluoride ion battery, since Warren discloses that it would lead to high charge density along with a safe operation [0004-0005].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
