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 .
DETAILED ACTION
Claims 13-29 are pending in this application, which is a 371 of PCT/EP2022/056780. Amended claims 13-14; canceled claims 1-12; and newly added claims 20-29 are noted.
Election/Restrictions
Applicant’s election without traverse of claims 14-29 in the reply filed on 06/22/2026 is acknowledged.
Claim 13 is withdrawn from consideration as being directed to a nonelected invention.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
It is noted that the claimed invention is directed to a method. The examiner suggests amending the abstract to reflect same.
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
It is noted that the claimed invention is directed solely to a method. The examiner suggests amending the title to reflect same.
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 16, 27 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.
In claim 16 line 2, the phrase “preferably isopropanol” is deemed confusing as to whether it is required or not.
In claim 27 line 2, the phrase “said nickel substrate” lacks antecedent basis.
Allowable Subject Matter
Claims 14-29 are allowed.
Generally speaking, it is well known to form a catalytic activating agent in an outer surface of a porous layer on a counter electrode made from a mixed metal oxide as noted in Glass et al. (GB 2431167). In addition, it is well known to form a gas evolving electrode using electroplating and electrochemical processes as noted in Maciel et al. (Electrochemistry Communications article).
Specifically with materials, it is well known to form a conductive base electrode by an electrolytic process by using a plating layer of nickel oxide with an elements such as vanadium as noted in CN 86107530. It is also well known to use lithium salts such as nickel cobalt aluminate and vanadium oxide to form a positive electrode as noted in KR 1020210027023.
In addition, it is well known to form a positive electrode using lithium nickel cobalt manganate and vanadium oxide as noted in JP 2019-109998. Specifically, it is well known to form a nickel vanadium oxide hydrogen evolution electrode using nickel salt and calcining as noted in CN 110424023.
With respect to particles, it is well known to use a nickel salt and vanadium salt having a particle size distribution to form a positive electrode active material as noted in JP 3577799.
With respect to the processing steps, it is well known to form an electrode material including washing and drying, calcining, and acid leaching as noted in CN 110931775. It is also well known to form an electrode material by drying, heat treatment, calcining, and leaching as noted in CN 105356000. However, while the prior art references teaches portions of the claimed invention, there is no tenable way of combining the references to reach the claimed method.
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 14-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-24 of copending Application No. 18/042500 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the claimed steps listed in the Marina are recited in the present claims.
Marina teaches a method for the production of the electrode according to claim 1 comprising the following steps: a) applying to a metal substrate a coating solution comprising a nickel salt, a vanadium salt and a gelling agent; b) drying at a temperature in the range of 80-150° C.; c) calcining at a temperature in the range of 300-500° C.; d) repeating steps a) to c) until a coating having a desired specific load of nickel is obtained; e) finally, thermally treating at a temperature in the range from 300-500° C.; and f) carrying out leaching of vanadium from said coating in an alkaline bath (claim 17), which is similar to pending claim 14. All these steps are recited in the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRET CHEN whose telephone number is (571)272-1417. The examiner can normally be reached M-F 8:30-8:30 MT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at (571) 272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRET P CHEN/Primary Examiner, Art Unit 1718 08/05/2026
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