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 .
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,676,307. Although the claims at issue are not identical, they are not patentably distinct from each other because the additives have overlapping ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter once the issue of the terminal disclaimer is resolved. Park (US 20190006669) discloses a cathode for a lithium-ion battery (abstract) with the same active material as the instant claimed invention ([0060]) shows the equation for the active material and ([0060]) shows the advantages of having the higher nickel concentration as disclosed within the instant claim 1 ([0040]). Park is silent to the additive and thus the chemical formula of the additive within instant claim 1. Hasegawa (US 2015/0372304) and Cho (US 2013/0171524) disclose additives within the positive electrode which are closely related to the additive of the instant claimed invention. Hasegawa discloses wherein the additive has the formula LixMyO4 where M is at least one material selected from Co, Fe, Mn, Zn, Al, Ga, Ge, Ti, Si, and Sn and X is 4 to 7 and y is 0.5 to 1.5 ([0020], [0023]). Cho discloses wherein the additive is represented by chemical formula 1 LixMyM’1-yO4 wherein M is from the group Co, Ni, Mn, Fe and a combination thereof and M’ is from the group Co, Ni, Mn, Fe, Al, Mg, Zn, Ti and a combination thereof and wherein x is greater than or equal to 5 and less than or equal to 6.5 and 7 is greater than or equal to 0 and less than or equal to 1 ([0021]-[0023]). However, for Hasegawa M would have to be Co, Zn and Al. That would be picking the only combination that would work out of 511 different options. Then once you adjust for the instant claimed ranges for all options for the possibilities are endless. This is the same issue with Cho occurs. Having to pick a specific combination from an even larger number of options than adjust than ranges to read on the instant claimed invention. Furthermore, the prior art does not discuss any advantages of the different options over one another wherein the instant specification discusses advantages from the instant claimed additive. Therefore, once the double patenting issue is resolved the application would be in condition for allowance.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN R OHARA whose telephone number is (571)272-0728. The examiner can normally be reached 7:30 AM-3:30 PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached at 571-270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN R OHARA/Examiner, Art Unit 1724
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