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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5, 6, 9, 10, 14 and 15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 now claims the heat treatment in (S2) is performed “in a range of 361 minutes to 1441 minutes after the halide-based solid electrolyte has been exposed to the air.” The original claim nor specification support this new limitation. The Remarks point to Table 2 as support for this limitation. However Table 2 and its examples only appear to disclose that after exposure to humid air for 1 minute, there is a 6 to 24 hour response time before the ionic conductivity is measured then followed by heat treatment. This does not correspond to the claimed heat treatment performed 361 minutes to 1441 minutes after the halide-based solid electrolyte has been exposed to the air. Description of the Examples states that the 6 to 24 hours is “Response” time and appears to indicate that during this time, the electrolyte is also exposed to air. [0044] states “reacted for 24 hours” and [0045] states “reacted with the air,” thus appear to indicate the heat treatment is performed after the electrolyte has been exposed and reacted with air for 1 minute plus 6 hours (i.e. 361 minutes) to 1 minute plus 24 hours (1441 minutes). Also because ionic conductivity is measured before heat treatment, there is no indication of how much total time has passed between when exposed to this air and when heat treatment starts to limit the time before heat treatment as claimed. Applicant can provided evidence for the record what Table 2 indicates by time of 1 minute followed by “Response” of 6 to 24 hours.
Dependent claims are rejected as based on rejected claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 claim heat treatment performed in air and claim 5 claim performed under “ambient” conditions” It is not clear how claim 5 is further limiting when according to the specification, the heat treatment may be performed in ambient air. This it is not clear how “ambient” conditions is any different than “air.”
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Conclusion
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MELVIN C. MAYES
Supervisory Patent Examiner
Art Unit 1759
/MELVIN C. MAYES/Supervisory Patent Examiner, Art Unit 1759
