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
Applicant’s election without traverse of Group I: Claims 1-19 in the reply filed on 8/31/2026 is acknowledged.
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/31/2026.
Specification
The abstract of the disclosure is objected to because “The approached described” in line 3 should read –The approach described--. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 2-3 are objected to because of the following informalities:
In claim 2, line 2, "the metal of the at least one modified metal" should read --a metal of the at least one modified metal--.
In claim 3, line 1 "the method further includes the step" should read --the method further includes a step--.
Appropriate correction is required.
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 9, 12 and 15 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.
Regarding claim 9, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purposes of examination, the claims are given the broadest reasonable interpretation, such that the limitation “the metal coordination complex and/or modified oligomeric metal coordination complex is selected from the group consisting of chromium, ruthenium, iron, cobalt, titanium, aluminium, zirconium, rhodium and combinations thereof, preferably chromium” is interpreted as wherein the metal coordination complex and/or modified oligomeric metal coordination complex is selected from the group consisting of chromium, ruthenium, iron, cobalt, titanium, aluminium, zirconium, rhodium and combinations thereof, as this appears to be what was intended by applicant.
Regarding claim 12, the limitation “the at least one active material is selected from silicon, silicon-containing materials (its oxides, composites and alloys), tin, a tin-containing material (its oxides, composites and alloys), germanium, germanium-containing material (its oxides, composites and alloys), carbon, and graphite” renders the claim indefinite. The use of parentheses around the recited limitations “its oxides, composites and alloys” makes it unclear whether the limitations are required or not. For the purposes of examination, claim 12 is given the broadest reasonable interpretation such that the limitation “the at least one active material is selected from silicon, silicon-containing materials (its oxides, composites and alloys), tin, a tin-containing material (its oxides, composites and alloys), germanium, germanium-containing material (its oxides, composites and alloys), carbon, and graphite” is interpreted as:
--the at least one active material is selected from silicon, silicon-containing materials, wherein silicon-containing materials comprises silicon oxides, silicon composites, and silicon alloys, tin, a tin-containing material, wherein the tin-containing material comprises tin oxides, tin composites, and tin alloys, germanium, a germanium-containing material, wherein the germanium containing material comprises germanium oxides, germanium composites, and germanium alloys, carbon, and graphite--
as this appears to be what was intended by applicant.
Regarding claim 15, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purposes of examination, the claims are given the broadest reasonable interpretation, such that the limitation “polymeric binder is selected from the group consisting of: polyvinylpyrrolidone, carboxymethyl cellulose (CMC), carboxymethyl cellulose (CMC) / citric acid, CMC / styrene-butadiene rubber (SBR), polytetrafluoro-ethylene (PTFE), poly(1-trimethylsilyl-1-propyne) (PTMSP), polyacrylic acid (PAA), poly(methacrylic acid), maleic anhydride copolymers including poly(ethylene and maleic anhydride) copolymers, polyvinyl alcohol, alginic acid salts, carboxymethyl chitosan, natural polysaccharide, Xanthan gum, Guar gum, Arabic gum, natural cellulose based binders, polysaccharides such as sodium carboxymethyl cellulose, lithium carboxymethyl cellulose, sodium alginate, polyacrylates, aliphatic polymers such as polyvinyl butyral, aromatic polymers such as styrene-butadiene rubber, alginate, polyimide, and polyacrylic acid (PAA) copolymers” is interpreted as wherein:
--polymeric binder is selected from the group consisting of: polyvinylpyrrolidone, carboxymethyl cellulose (CMC), carboxymethyl cellulose (CMC) / citric acid, CMC / styrene-butadiene rubber (SBR), polytetrafluoro-ethylene (PTFE), poly(1-trimethylsilyl-1-propyne) (PTMSP), polyacrylic acid (PAA), poly(methacrylic acid), maleic anhydride copolymers including poly(ethylene and maleic anhydride) copolymers, polyvinyl alcohol, alginic acid salts, carboxymethyl chitosan, natural polysaccharide, Xanthan gum, Guar gum, Arabic gum, natural cellulose based binders, polysaccharides, sodium carboxymethyl cellulose, lithium carboxymethyl cellulose, sodium alginate, polyacrylates, aliphatic polymers, polyvinyl butyral, aromatic polymers, styrene-butadiene rubber, alginate, polyimide, and polyacrylic acid (PAA) copolymers--
as this appears to be what was intended by applicant.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huang et al. (WO 2017165916 A1), hereinafter “Huang”, as cited in the IDS dated 2/21/2024.
Regarding claim 1, Huang teaches a composite precursor formulation (corresponding to the claimed step of providing a liquid formulation) (Huang, [0007], lines 1-5) comprising:
A first and second active material (corresponding to the claimed liquid formulation comprising at least one active material) (Huang, [0007], lines 1-5)
A metal-coordination complex that may comprise a ligand (corresponding to the claimed liquid formulation comprising at least one modified metal coordination complex (Huang, [0007], lines 1-5; [0142], lines 1-3)
A liquid carrier (corresponding to the claimed liquid formulation comprising a liquid carrier) (Huang, [0008], lines 1-2)
Huang further teaches that the first and second active materials may be associated with a polymer binder (corresponding to the claimed liquid formulation comprising at least one polymeric binder) (Huang, [0013], lines 1-3; 0061], lines 1-3).
The instant specification provides an example of curing as a polyacrylic acid solution being cross-linked by chromium acetate after 24 hours (Instant specification, [0033], lines 1-4). Huang teaches that ligands may cross-link metal ions of the oligomeric metal-coordination complexes (Huang, [0149], lines 1-6), which corresponds to the claimed step of curing the formulation to thereby form a cured conductive binder material.
Regarding claim 2, Huang teaches using ligands to cross-link metal ions of oligomeric metal-coordination complexes (corresponding to the claimed cured conductive binder material comprises cross-linking between any two or more of the metal of the at least one modified metal coordination complex) (Huang, [0149], lines 1-6). Huang also teaches that the active material and metal ion of the metal-coordination complex may form a dative bond (corresponding to the claimed cross-linking between the metal of the at least one modified metal coordination complex and the at least one active material) (Huang, [0118], lines 4-6). Huang also teaches that a dative bond between the metal-coordination complex and the polymer binder may form (corresponding to the claimed cross-linking between the metal of the at least one modified metal coordination complex and the at least one polymeric binder) (Huang, [0061], lines 1-3).
Regarding claim 3, the instant specification describes adding a base as an example of a step of adjusting a solution pH (Instant specification, [0131]). Huang teaches adjusting a metal-coordination complex solution pH using 1 M of sodium hydroxide (NaOH) as a base (Huang, [0160], lines 2-3). As mentioned in the rejection of claim 1 above, Huang teaches the composite precursor formulation comprising a first and second active material, a metal-coordination complex that may comprise a ligand, and a polymer binder (Huang, [0007], lines 1-5; [0142], lines 1-3; [0013], lines 1-3; 0061], lines 1-3). Therefore, the claimed method step of controlling the reaction pH of the at least one active material and/or modified metal coordination complex and/or at least one polymeric binder, when the three components are exposed to one another would result from the combination of Huang’s step of adjusting a solution pH using NaOH and Huang’s composite precursor formulation, explicitly disclosed by the prior art. See § MPEP 2112.
Regarding claims 4, Huang teaches forming oligomeric metal-coordination complexes by cross-linking metal ions between metal-coordination complexes (corresponding to the claimed step of forming a modified oligomeric metal coordination complex) (Huang, [0141], lines 1-5).
Regarding claim 5, Huang further teaches that the oligomeric metal-coordination complex may be a chromium (III) oligomeric metal-coordination complex (corresponding to the claimed modified oligomeric metal coordination complex is a modified oligomeric chromium coordination complex) (Huang, [0141], lines 1-5).
Regarding claim 6, the instant specification refers to the ligand and capping group interchangeably, and states that the capping group of the modified metal coordination complex may comprise a carboxylic acid, an alcohol, a sulphate, a phosphate, or an amide (Instant specification, [0100], lines 1-8). Huang teaches that the metal ion of the metal-coordination complex may have one or more coordination sites occupied by a ligand (Huang, [0101], lines 1-4). Huang further teaches that the metal-coordination complex may be further oligomerized by carboxylic acids, sulphates, or phosphates (corresponding to the claimed at least one modified metal coordination complex is a capped metal coordination complex) (Huang, [0144], lines 1-4).
Regarding claim 7, Huang teaches the metal-coordination complex comprising a bridging compound, such as a ligand (corresponding to the claimed at least one modified metal coordination complex comprises a ligand) (Huang, [0142], lines 1-3).
Regarding claim 8, Huang teaches that the metal-coordination complex may comprise a ligand, wherein a ligand datively bonds to at least two metal ions (Huang, [0142], lines 1-3). Huang also teaches that the dative bond forming groups may be sulphates, or phosphates (corresponding to the claimed ligand is a capping group which is selected from the group consisting of formate, acetate, propionate, oxalate, malonate, succinate, maleate, citrate, sulphate, phosphate, an amino acid, naphthalene acetate, and hydroxyacetate) (Huang, [0140], lines 2-7).
Regarding claim 9, Huang teaches that the metal ion of the metal-coordination complex may be chromium, ruthenium, iron, cobalt, aluminum, zirconium, and rhodium (corresponding to the claimed metal ion of the metal coordination complex and/or modified oligomeric metal coordination complex is selected from the group consisting of chromium, ruthenium, iron, cobalt, titanium, aluminium, zirconium, rhodium and combinations thereof) (Huang, [0134], lines 1-3).
Regarding claim 10, Huang teaches that the surface of the active material may comprise nitrogen, oxygen, sulfur, hydroxyl, or carboxylic acid species (corresponding to the claimed at least one active material has a surface which includes a nitrogen, oxygen, sulfur, hydroxyl, or carboxylic acid species) (Huang, [0118], lines 7-8).
Regarding claim 11, Huang teaches that the first and second active materials may be metals, metal oxides, ceramics, intermetallic compounds, metalloids, clays, carbon, and graphite (corresponding to the claimed at least one active material is selected from the group consisting of metals, intermetallic compounds, metalloids, metal oxides, clays, carbon-based nanoparticles, graphite and ceramics) (Huang, [0048], lines 1-4; [0049], line 10).
Regarding claim 12, Huang teaches that the first and second active material may be silicon, a silicon oxide, a silicon alloy, a silicon composite, tin, a tin oxide, a tin alloy, a tin composite, or graphite (corresponding to the claimed at least one active material is selected from silicon, silicon-containing materials, wherein silicon-containing materials comprises silicon oxides, silicon composites, and silicon alloys, tin, a tin-containing material, wherein the tin-containing material comprises tin oxides, tin composites, and tin alloys, germanium, a germanium-containing material, wherein the germanium containing material comprises germanium oxides, germanium composites, and germanium alloys, carbon, and graphite) (Huang, [0049], lines 1-7; [0049], line 10).
Regarding claim 13, Huang teaches that the first and second active material may be sulphur, LiFePO4 (LFP), or mixed metal oxides containing cobalt, lithium, nickel, iron, manganese and carbon (corresponding to the claimed at least one active material is selected from those comprising sulphur or a sulphur composite including sulphur and carbon mixtures, LiFePO4 (LFP), mixed metal or mixed metal oxides which include cobalt, lithium, nickel, iron and/or manganese, phosphorus, aluminum, titanium and carbon, disordered rock salt structures (DRX)) (Huang, [0050], lines 1-3).
Regarding claim 14, Huang teaches that the binder polymer may comprise oxygen species selected from acrylate, carboxyl, hydroxyl, and carbonyl moieties (corresponding to the claimed polymeric binder comprises an oxygen species selected from acrylate, carboxyl, hydroxyl, and carbonyl moieties) (Huang, [0061], lines 1-4).
Regarding claim 15, Huang teaches that the polymer binder may comprise polyvinylpyrrolidone, carboxymethylcellulose, polyacrylic acid (PAA), poly(methacrylic acid), maleic anhydride copolymers, poly(ethylene and maleic anhydride) copolymers, polyvinyl alcohol, carboxymethyl chitosan, natural polysaccharide, Xanthan gum, alginate, and polyimide (corresponding to the claimed polymeric binder is selected from the group consisting of: polyvinylpyrrolidone, carboxymethyl cellulose (CMC), carboxymethyl cellulose (CMC) / citric acid, CMC / styrene-butadiene rubber (SBR), polytetrafluoro-ethylene (PTFE), poly(1-trimethylsilyl-1-propyne) (PTMSP), polyacrylic acid (PAA), poly(methacrylic acid), maleic anhydride copolymers including poly(ethylene and maleic anhydride) copolymers, polyvinyl alcohol, alginic acid salts, carboxymethyl chitosan, natural polysaccharide, Xanthan gum, Guar gum, Arabic gum, natural cellulose based binders, polysaccharides, sodium carboxymethyl cellulose, lithium carboxymethyl cellulose, sodium alginate, polyacrylates, aliphatic polymers, polyvinyl butyral, aromatic polymers, styrene-butadiene rubber, alginate, polyimide, and polyacrylic acid (PAA) copolymers) (Huang, [0061], lines 1-15).
Regarding claim 16, Huang teaches a method of producing a composite precursor formation (corresponding to the claimed method of forming a curable binder formulation) (Huang, [0010], lines 1-7). Huang teaches the method comprising:
Providing a first and a second active material (corresponding to the claimed at least one active material) (Huang, [0010], lines 1-7)
Providing a metal-coordination complex (corresponding to the at least one modified metal coordination complex) (Huang, [0010], lines 1-7)
Combining the first and second active materials and the metal coordination complex to form the composite precursor formulation (corresponding to the claimed adding at least one active material, and at least one modified metal coordination complex) (Huang, [0010], lines 1-7)
A step of agitating the combined mixture of first and second active materials and metal-coordination complex (corresponding to the claimed mixing at least one active material and at least one modified metal coordination complex to thereby form a curable binder formulation) (Huang, [0011], lines 1-3).
Huang further teaches that the method may comprise a step of combining the first and second active materials and the metal-coordination complex in a liquid carrier (corresponding to the claimed steps of providing a liquid carrier and adding to the liquid carrier; at least one active material, at least one modified metal coordination complex) (Huang, [0080], lines 1-3).
Huang also teaches that the metal-coordination complex may be associated with the first and second active materials by a polymer binder (corresponding to the claimed at least one polymeric binder) (Huang, [0013], lines 1-3; [0061], lines 1-3). Since Huang teaches a step of agitating the mixture of the first and second active materials (Huang, [0011], lines 1-3), then Huang also teaches a step of agitating the binder because the binder is associated with the first and second active materials. Therefore, the claimed step of mixing the at least one polymeric binder would result from the combination of Huang’s step of agitating a binder and Huang’s polymeric binder, explicitly disclosed by the prior art. See MPEP § 2112.
Additionally, Huang teaches that the first and second active materials may be associated by a polymer binder (Huang, [0013], lines 1-3; [0061], lines 1-3). Huang also teaches a step of combining the first and second active materials and the metal-coordination complex in a liquid carrier (Huang, [0080], lines 1-3). Therefore, Huang’s step of combining the active materials in a liquid carrier also suggests a step of combining the liquid carrier and the polymer binder, which corresponds to the claimed step of adding to the liquid carrier at least one polymeric binder.
Regarding claim 17, Huang teaches that binding between the active material particles and the metal-coordination complex promotes homogeneity within the formulation (corresponding to the claimed formulation is substantially homogeneous throughout its extent) (Huang, [0059], lines 1-4; [0006], lines 1-5). Huang also teaches adding ligands to bridge between metal-coordination complexes, to cross-link metal ions, or to form dative bonds with components in the composite (corresponding to the claimed formulation is curable to cross-linking any two of the metal of the at least one modified metal coordination complex, the at least one active material, and the at least one polymeric binder) (Huang, [0143], lines 1-6).
Claims 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huang (WO 2017165916 A1), as cited in the IDS dated 2/21/2024, as applied to claims 1-17 above, as evidenced by Shariatinia (Shariatinia, “Carboxymethyl chitosan: Properties and biomedical applications”, International Journal of Biological Macromolecules, 2018, vol. 120 (part B), published on 26 September 2018, pp: 1406-1419).
Regarding claims 18 and 19, Huang teaches that a metal-coordination complex may comprise a carboxylic acid ligand (Huang, [0144], lines 1-4). Huang also teaches the binder may be carboxymethyl chitosan (Huang, [0061], lines 1-15). Shariatinia teaches that carboxymethyl chitosan monomers may comprise a carboxylic acid functional group (corresponding to the claimed ligand and the at least one polymeric binder comprise the same functional group) (Shariatinia, Fig. 1, pg. 1407, lines 18-19). Since a carboxymethyl chitosan polymer is made of multiple monomers that each comprise a carboxylic acid functional group, the carboxymethyl chitosan polymer must comprise more than one carboxylic acid functional group. Huang’s carboxylic acid ligand comprises only one carboxylic acid functional group. Therefore, Huang’s carboxymethyl chitosan polymer must comprise a greater number of carboxylic acid functional groups than the carboxylic acid ligand (corresponding to the claimed at least one polymeric binder comprises a greater number of said functional group than the ligand, and the claimed functional group is a carboxylic acid).
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, 6, and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5, 9, 15, 23, and 25 of copending Application No. 17/917,764, hereinafter “the ‘764 application”. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding the instant claim 1, claims 1, 23, and 25 of the ‘764 application teach a method of forming a cured conductive binder material comprising:
Providing a liquid formulation comprising: a liquid carrier, at least one active material, at least one modified metal coordination complex comprising a capping group, and at least one polymeric binder (corresponding to the claimed step of providing a liquid formulation comprising a liquid carrier, at least one active material, at least one polymeric binder, and at least one modified metal coordination complex)
Curing the liquid formulation to form a cured conductive binder material (corresponding to the claimed step of curing the liquid formulation of step (i), to thereby form a cured conductive binder material)
Regarding the instant claim 2, the instant specification describes dative bonds as an example of cross-linking bonds between components of the composite (Instant specification, [0109], lines 12-15). Claim 2 of the ‘764 application teaches the conductive binder material comprising dative bonds between the metal of the at least one modified metal coordination complex and both the at least one active material and the at least one polymeric binder (corresponding to the claimed cured conductive binder material comprises cross-linking between any two or more of the metal of the at least one modified metal coordination complex, the at least one active material, and the at least one polymeric binder).
Regarding the instant claim 3, claim 4 of the ‘764 application teaches a step of controlling the reaction pH and/or temperature and/or mixing and/or relative concentrations of the at least one active material and/or modified metal coordination complex and/or at least one polymeric binder, when the three components are exposed to one another.
Regarding the instant claim 4, claim 5 of the ‘764 application teaches a step of forming a modified oligomeric metal coordination complex.
Regarding the instant claim 6, claim 9 of the ‘764 application teaches the at least one modified metal coordination complex comprising a capping group (corresponding to the claimed at least one modified metal coordination complex is a capped metal coordination complex).
Regarding the instant claim 10, claim 15 of the ‘764 application teaches the at least one active material has a surface which includes a nitrogen, oxygen, sulfur, hydroxyl, or carboxylic acid species.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/R.M.A./ Examiner, Art Unit 1734
/JONATHAN JOHNSON/ Supervisory Patent Examiner, Art Unit 1734
