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 Objections
Claims 4-63, 95-100 and 105-111 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim can not depend from any other multiple dependent claim. See MPEP § 608.01(n). Accordingly, these claims have not been further treated on the merits.1
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 64-69, 75-82, and 84-94 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 claims 64-69, and 75-82, the independent claims recite the relative term “thin film” without giving sufficient context in order to determine where the cutoff is between a film that is thin and one that is not thin. The dependent claims listed do not provide any further context to benefit in determining the scope of the relative term.
Regarding claims 84-94, claims 84 and 85 from which claims 86-94 depend, each recite the relative term “high speed”. Although each claim follows this with “for example”, it is unclear if this is merely exemplary with “high speed” possibly being broader than the exemplary range, or if it is meant to be limiting of the scope of the term “high speed.”.
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.
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.
Claim(s) 1-3, 64, and 75 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2011/0117440 to Maekawa (“Maekawa”).
Regarding claims 1-3, Maekawa discloses electrolyte compositions comprising LiBH4 and MX where M is lithium, rubidium, or cesium, and X is a halogen or NH2 group, with most preferred MX compositions including LI, LiNH2, where the most preferred compounds may be present individually or as combinations. The ration of LiBH4 to MX may range from 1:1 to 1:20. The ratio of combined MX compounds is not limited and is guided by balancing thermostablity, lithium ion conductivity, and other properties. Maekawa at paragraphs [0033]-[0035], [0038], [0039], [0041] and [0042]. Thus, given the breadth of the allowed ranges for A, B, and C in claims 1-3, the Office finds that sufficient guidance is provided to render these broad ranges nothing more than the obvious product of routine experimentation in attempting to arrive at an electrolyte having excellent thermostability and lithium ion conductivity.
Regarding claims 64, the materaisl of Maekawa are made by mixing the LiBH4 and MX materials together, dropping them into a glass cell (substrate), heating to melt followed by cooling to room temperature.
Regarding claim 75, because the materials of Maekawa are made in the same manner as those of Applicant and are of substantially similar composition, the Office finds that they will necessarily have the recited conductivity.
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 1-3 are rejected on the ground of nonstatutory doule patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11, 011,796. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlap to such an extent that the present claims are found to be anticipated by those of the reference patent.
Claims 1-3 are rejected on the ground of nonstatutory doule patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11, 581,682. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlap to such an extent that the present claims are found to be anticipated by those of the reference patent.
Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,855,251. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlap to such an extent that the present claims are found to be anticipated by those of the reference patent.
Allowable Subject Matter
Claims 70-74 and 83 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 101-104 are allowed.
Regarding claims 70-74, Maekawa discloses examples where the electrolyte is several millimeters thick, an order of magnitude beyond the range of thicknesses claimed here.
Regarding claims 83, and 101-104 Maekawa is silent regarding deposition to any of the recited substrates.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT P MCCONNELL whose telephone number is (571)270-7531. The examiner can normally be reached 9am to 5pm M-F.
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/WYATT P MCCONNELL/ Examiner, Art Unit 1727
1 It is noted that if the multiple dependency is eliminated by amendment and the claims are then rejected on the merits, the grounds for new grounds for rejection will have been necessitated
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