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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination (RCE) under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application on 2/23/2026 after final rejection of 8/21/2025. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/23/2026 has been entered. The Office action on currently pending elected and newly added claims 1, 3-10, and 21 follows.
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 1-10, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10, 818, 906 (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Claim 1 of the instant application is anticipated by claim 1 of the reference patent; claim 2 of the instant application is anticipated by claim 1 of the reference patent; claim 3 of the instant application is anticipated by the combined subject matter of claims 1 and 2 of the reference patent; claim 4 of the instant application is anticipated by claim 3 of the reference patent; claim 5 of the instant application is anticipated by combined subject matter of claims 1, 3, and 4 of the refence patent; and claims 6-10 of the instant application are anticipated by claims 5-9 of the reference patent, respectively.
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 3 and 21 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.
Claim 3 recites the limitation “the isotropic contraction” which renders the claim indefinite, since it lacks antecedent basis.
Claim 21 recites the limitation “the first current collector” which renders the claim indefinite, since it lacks antecedent basis.
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.
Claim 21 is 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 21 recites the limitations: “wherein the first current collector contracts isotropically in response to the increase in temperature”. The specification does not teach the aforementioned functionality, thus lacking support therefor.
Claim 21 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The aforementioned limitations of claim 21 are not enabled. The specification does not teach the aforementioned functionality. After considering all of the Wands factors (and specifically, that there is no adequate direction provided by the inventor/applicant, etc.), the Office has concluded that the quantity of experimentation needed to make or use the invention based on the content of the instant disclosure will be high and undue to a person of the ordinary skill, and therefore, such a person will not be able to make and use the claimed invention without resorting to undue experimentation. See In re Brown, 477 F.2d 946, 177 USPQ 691 (CCPA 1973); In re Ghiron, 442 F.2d 985, 169 USPQ 723 (CCPA 1971).
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, 3, 5, 9, 10, and 21, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tucholski et al. (US 4,975,341 A, of record).
Regarding claims 1, 3, and 21, as best understood, Tucholski discloses an electrochemical cell (see e.g. Col. 2, lines 29-35), serving as a battery, comprising a first electrode (see e.g. #56 of Fig. 3 and Fig. 4), a current collector (a cell container bottom (see #70 of Fig. 3 and Fig. 4), serving as a current collector due to the ability to conduct electricity and collect current), a first current interrupter (a circuit disconnect device (see e.g. Col. 3, lines 12-16), serving as a first current interrupter) comprising a first layer of negative thermal expansion material (a shape memory alloy member (see #96 of Fig. 3, Fig. 4, and annotated Fig. 3 below)) interposed between the first electrode (see e.g. #56 of Fig. 3 and Fig. 4) and the current collector (a cell container bottom (see #70 of Fig. 3 and Fig. 4), wherein the first layer of negative thermal expansion material is coated on a surface of the first electrode and/or the current collector (see annotated Fig. 3 below), wherein the first current interrupter contracts in response to an increase in temperature (see e.g. Col. 2, lines 40-45) (thus being made of a material exhibiting negative thermal expansion), the contraction of the circuit disconnect device (see e.g. Col. 2, lines 40-45) reduces a conductivity between the first electrode and the current collector to disrupt a current flow within the battery (i.e., forming a nonconductive gap (see e.g. Col. 2, lines 50-56, and a space between #70 and a lower portion of #96 of Fig. 4, thus disrupting a current flow (see e.g. Col. 3, lines 5-9) within the electrochemical cell (see e.g. Col. 2, lines 29-35) at least by electrically decoupling the first electrode (see e.g. #56, #92, and #94 of Fig. 3 and Fig. 4) and the cell container bottom (see e.g. #70 of Fig. 3 and Fig. 4).
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Regarding claim 5, Tucholski discloses a separator (see e.g. #92 and #94 of Figs. 3 and 4, where #92 and #94 separate #98 from the rest of the electrochemical cell, thus #92 and #94 serving as a separator) disposed between the first electrode (see e.g. #70 of Figs. 3 and 4, where #70 acts as a conductive electrode for electricity to move through) and the second electrode
(see e.g. #44 of Figs. 1 and 2 or #80 in Figs. 3 and 4).
Regarding claim 9, Tucholski discloses all of the claimed limitations as set forth above and further discloses the first electrode (see e.g. #6 of Fig. 1 and Fig. 2, and #54 of Fig. 3 and Fig. 4) comprises a cathode or an anode (see e.g. Col. 5, lines 3-6) of the electrochemical cell (see e.g. Col. 2, lines 29-35), serving as a battery.
Regarding claim 10, Tucholski discloses all of the claimed limitations as set forth above and further discloses the first electrode (see e.g. #6 of Fig. 1 and Fig. 2, and #54 of Fig. 3 and Fig. 4) comprises lithium (see e.g. Col. 5, lines 9-11).
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 Tucholski et al. (US 4,975,341 A) taken alone (reference of record, cited in parent applications No. 15/968,346 and 17/023,242).
Regarding claim 4, Tucholski teaches all of the claimed limitations as set forth above, see first interpretation of claim 2 above, and further teaches a second electrode (see e.g. #44 of Figs. 1 and 2 or #80 in Figs. 3 and 4). Tucholski also teaches in a separate embodiment, shown in Figures 1 and 2, circuit disconnect device (see e.g. Col. 2, lines 40-42, #46 of Fig. 1 and Fig. 2), thus reading on second current interrupter, the second current disconnect device comprising a shape memory alloy member (see #46 of Fig. 1 and Fig. 2) such that the circuit disconnect device (see e.g. Col. 3, lines 12-16) contracts in response to an increase in temperature (see e.g. Col. 2, lines 40-45), thus being made of a material exhibiting negative thermal expansion, the contraction of the circuit disconnect device (see e.g. Col. 2, lines 40-45) forming a nonconductive gap (see e.g. Col. 2, lines 50-56, and a space between #12 and a lower portion of #46 of Fig. 1), disrupting a current flow (see e.g. Col. 3, lines 5-9) within the electrochemical cell (see e.g. Col. 2, lines 29-35).
Tucholski also teaches the electrochemical cell breaks contact when the internal temperature of the cell rises (see e.g. Col. 4, lines 43-48).
Tucholski does not explicitly disclose a single battery comprising both a first current interrupter and a second current interrupter in a single embodiment.
It would have been obvious to one of ordinary skill in the art before the affective filing date of the claimed invention to have modified Tucholski to combine the separate embodiments of Tucholski to add another element of safety to prevent the internal temperature of the cell from rising to an unsafe level and a skilled artisan would have a reasonable expectation of success in doing so. Thus, the contraction of both of the first and second current interrupters forms two nonconductive gaps within the battery, both of which disrupts the current flow by electrically decoupling the first electrode and the second electrode (from their respective battery terminals)). Also, all claimed elements were known in the prior art and one skilled in the art could have combined / modified the elements as claimed by known methods with no change in their respective functions, and the combination / modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Tucholski et al. (US 4,975,341 A) in view of Fisher (D.J. Fisher, Negative Thermal Expansion Materials, January 15th, 2018, Materials Research Forum LLC, Page 7, Page 86 [reference of record, cited in parent applications No. 15/968,346 and 17/023,242]).
Regarding claims 6, 7, and 8, Tucholski teaches a shape memory alloy member (see e.g. Col. 2, lines 40-42, #46 of Fig. 1 and Fig. 2, and #96 of Fig. 3 and Fig. 4) comprising NiTi (see e.g. Col. 3, lines 16-21) such that the circuit disconnect device (see e.g. Col. 3, lines 12-16) contracts in response to an increase in temperature (see e.g. Col. 2, lines 40-45), thus being made of a material exhibiting negative thermal expansion.
Tucholski does not explicitly disclose that the negative thermal expansion material comprises one or more oxides, a silicate, a zirconium tungstate, a cyanide, a ruthenate, a siliceous faujasite, Fe3Pt, a perovskite oxides, an antiperovskite, a zeolite, a samarium fulleride, LaCu3Fe4O12, an invar alloy, a metal oxide, a low-dimensional material, a metal fluoride, a mechanoresponsive polymer, a porous polyacrylamide, a dibenzocyclooctadiene, and/or a polyacrylamide film containing dibenzocyclooctadiene, or a composite of one or more negative thermal expansion materials.
Fisher teaches negative thermal expansion materials including NiTi (see e.g. Page 7, Paragraph 1, line 1) and Zr2P2WO12 (see e.g. Page 7, Paragraph 3, line 2) which is a metal oxide as claimed in claim 6, 7, and 8 of the instant claims. Fisher also teaches creating a composite of NiTi and Zr2P2WO12 by sintering (see e.g. Page 7, Paragraph 3, lines 3-5) to ensure a negative coefficient of thermal expansion (see e.g. Page 7, Paragraph 3, lines 2-5).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have used, as a material for the shape memory alloy member of Tucholski, a composite of NiTi and Zr2P2WO12 as taught by Fisher to ensure a negative coefficient of thermal expansion as desired by Tucholski. The Examiner notes that a skilled artisan would have found it obvious to optimize the amount of Zr2P2WO12 mixed with the NiTi in order to arrive at a desired balance between conductivity (related to the amount of NiTi) needed for operation as desired by Tucholski and appropriate negative coefficient of thermal expansion (related to the amount of Zr2P2WO12), and the skilled artisan would have a reasonable expectation of success in doing so. Also, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. The gist of the arguments is that, allegedly, Tucholski’s shape memory alloy member is a wire, wherein Tucholski does not teach “a first current interrupter-comprising a first layer of negative thermal expansion material interposed between the first electrode and the current collector, wherein the first layer of negative thermal expansion material is coated on a surface of the first electrode and/or the current collector, wherein the first current interrupter contracts in response to an increase in temperature, and wherein the contraction of the first current interrupter reduces a conductivity between the first electrode and the current collector to disrupt a current flow within the battery”, as set forth in claim 1.
On the contrary, claim 1 reads on Tucholski as explained in the modified rejection above. Furter, the Office would like to direct the Applicant’s attention to the definition of “layer”, which is pretty broad, i.e., “a thickness of some material laid on or spread over a surface”, “something lying over or under something else; a level or tier” (https://www. dictionary.com/ browse/layer). And the definition of “coated”: “covered with an outer layer, film, etc.” (https:// www.dictionary.com/browse/coated).
The horizontal portions of the shape memory alloy member (96) in Tucholski as presented on the annotated Fig. 3 below are perfectly in line with the aforementioned dictionary definitions, and the amended claim 1 continue to read on Tucholski as explained above in the body of the rejection.
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Furthermore, the amended claim 1 just broadly recites that “a first layer of negative thermal expansion material interposed between the first electrode and the current collector”. The claim does not specify that said “coated” “layer” has planar opposite surfaces thereof and that said opposite surfaces are actually in extended physical and electrical contact with said first electrode and the current collector. Claim 1 is broader than argued.
Conclusion
This is an RCE of applicant's earlier Application No. 18/504, 003. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). 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. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anatoly Vortman whose telephone number is (571)272-2047. The examiner can normally be reached Monday-Thursday, between 10 am and 8:30 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash N. Gandhi can be reached at 571-272-3740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANATOLY VORTMAN/Primary Examiner, Art Unit 2835