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 .
Election/Restrictions
Claims 6 and 11-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/24/2026.
Response to Amendment
The amendments filed on 11/13/2023 and 11/30/2023, 02/12/2024 and 06/24/2026 have been entered. The replacement drawings and the amendment to the specification are accepted. Claims 1-25 are pending and Claims 6 and 11-25 are withdrawn.
Priority
Acknowledgment is made of priority in view of provisional application 63/148,348 with an effective filing date of 02/11/2021.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 07/23/2024 (3), 02/13/2025, and 03/12/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Rejections - 35 USC § 102
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 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, 5 and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tang et al. (US 20160207789 A1), hereinafter "Tang".
In regard to Claims 1, 5 and 8-10, Tang et al. discloses a composition, comprising a plurality of metal oxide (TiO2/titanate) nanofilaments (nanotubes) with a specific example comprising nanofilaments having a length of 10µm for use in a device, the device comprising a composition according to claim 1 wherein the device comprises an electrode and wherein the device is characterized as an energy storage device (Tang, Abstract, [0059, 0066-0067, 0086]).
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Tang et al. (US 20160207789 A1), hereinafter "Tang" as applied to claim 1 above. Tang et al. is analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely metal oxide nanofilaments.
In regard to Claim 2, Tang et al. discloses the composition according to claim 1. Tang et al. also discloses a width (diameter) of the nanofilament is variable and can be adjusted by the skilled artisan (Tang, [0030]) wherein an embodiment shows a width of about 3nm (Tang, Figure 14e), which anticipates the claimed range.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Tang et al. (US 20160207789 A1), hereinafter "Tang" as applied to claim 1 above in view of Kar et al. (Rutile phase n- and p-type anodic titania nanotube arrays with square-shaped pore morphologies: Chem. Commun.,2015, 51, 7816), hereinafter "Kar". Tang and Kar et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely metal oxide nanofilaments.
In regard to Claim 3, Tang et al. discloses the composition according to claim 1. While Tang et al. discloses that the aspect ratio of the nanofilament is a variable that is adjustable by the skilled artisan (Tang, [0030]), it is silent as to a cross sectional aspect ratio.
However, the skilled artisan would be well aware of the properties of materials given their cross sectional aspect ratios including within a range of 1-10 as evidenced by Kar et al. which discloses a beneficial composite comprising a plurality of metal oxide nanofilaments wherein the cross sectional aspect ratio can be derived from the SEM image to be about 1.1-1.8 (Kar, Abstract, Figure 1(a)). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a plurality of metal oxide nanofilaments as disclosed in Tang with a cross sectional aspect ratio as taught in Kar as doing so would be obvious to try for the skilled artisan and as doing so would amount to nothing more than a result effective variable to be optimized by the skilled artisan with the reasonable expectation of success.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Tang et al. (US 20160207789 A1), hereinafter "Tang" as applied to claim 1 above in view of Mowbray et al. (Stability and Electronic Properties of TiO2 Nanostructures With and Without B and N Doping, J. Phys. Chem. C 2009, 113, 12301–12308), hereinafter "Mowbray". Tang and Mowbray et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely metal oxide nanofilaments.
In regard to Claim 4, Tang et al. discloses the composition according to claim 1. While Tang et al. discloses surface area of the nanofilament is a variable that is adjustable by the skilled artisan (Tang, [0030]), it is silent as to a cross-sectional area.
However, the skilled artisan would be well aware of the properties of materials given their cross sectional area including within a range of 10 to about 100 A2 as evidenced by Mowbray et al. which discloses a beneficial composite comprising a plurality of metal oxide nanofilaments wherein the cross sectional area can be calculated from the radii of the nanofilament (about 3.5A (3,3) and about 4.3A (4,4)) and the area as πR2 to be about 38.5A for (3,3) and 58.1A (4,4) (Mowbray, Abstract, Figure 2), which anticipates the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a plurality of metal oxide nanofilaments as disclosed in Tang with a cross sectional area as taught in Mowbray as doing so would be obvious to try for the skilled artisan and as doing so would amount to nothing more than a result effective variable to be optimized by the skilled artisan with the reasonable expectation of success.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Tang et al. (US 20160207789 A1), hereinafter "Tang" as applied to claim 1 above in view Tan et al. (CN 101916875 A - Machine Translation referenced for citation), hereinafter "Tan". Tang and Tan et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely metal oxide nanofilaments.
In regard to Claim 7, Tang et al. discloses the composition according to claim 1. While Tang et al. discloses electrodes with a binder it is silent as adding the binder to the composition. However, the skilled artisan would be well aware of the variation in electrodes which comprise a binder as evidenced by Tan et al, which discloses a composition comprising metal oxide nanofilaments used in an electrode for an energy storage device also comprising a conductive carbon and binder (Tan, Abstract, Embodiment 5). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a composition comprising a plurality of metal oxide nanofilaments for use in an electrode of an energy storage device as disclosed in Tang et al. with a binder and conductive carbon as taught in Tan et al. as doing so would give the skilled artisan the reasonable expectation of success and as doing so would amount to nothing more than a variation of it for use in the same field based on design incentives or other market forces, as the variations are predictable to one of ordinary skill in the art.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-5 and 7-10 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim claims 1-2, 5, 7, 8, 13, and 15-17 of copending Application No. 19/103604 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 1 of the current application claims “A composition, comprising:a plurality of metal oxide subnanofilaments and/or nanofilaments” and claim 1 of the reference application claims “A composition, comprising: a plurality of metal oxide subnanofilaments and/or nanofilaments”
Claim 2 of the current application claims “at least some of the nanofilaments and/or subnanofilaments have a width in the range of from about 3 to about 50 A” and claim 2 of the reference application claims “at least some of the nanofilaments and/or subnanofilaments have a width in the range of from about 3 to about 50 Å”.
Claim 3 of the current application claims “a cross-sectional aspect ratio of from greater than 1 to about 10.” and claim 5 of the reference application claims “a cross-sectional aspect ratio of from greater than 1 to about 10.”
Claim 4 of the current application claims “an average cross-sectional area in the range of from about 10 to about 100 A2.” and claim 7 of the reference application claims “an average cross-sectional area in the range of from about 10 to about 100 A.sup.2.”
Claim 5 of the current application claims “a length in the range of from 1 nm to about 25 µm.” and claim 8 of the reference application claims “a length in the range of from 1 nm to about 25 μm.”
Claim 7 of the current application claims “further comprising a binder.” and claim 13 of the reference application claims “further comprising a binder.”
Claims 8-10 of the current application claims “A device, the device comprising a composition according to claim 1, wherein the device comprises an electrode and wherein the device is characterized as an energy storage device.” and claims 15-17 of the reference application claims “A device, the device comprising a composition according to claim 1, wherein the device is characterized as an energy storage device and wherein the device comprises an electrode, the electrode optionally comprising the composition according to claim 1.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Pinault et al. (US 20200286690 A1) discloses vertically aligned carbon nanotubes with a metal oxide sheath deposited over the entire length of said vertically aligned carbon nanotubes (Pinault, Abstract, [0042]).
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/K.M.O./Examiner, Art Unit 1725
/JONATHAN CREPEAU/Primary Examiner, Art Unit 1725
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