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 .
The election is noted. Claim 5 is withdrawn.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. US9478804.
Park teaches, especially in col. 16-19 and the examples, forming a material having Mn, Ni and Co in various permutations (or all with Fe), then mix with Na compound and calcined. The atmosphere may be ‘oxygen’ and is separately listed from air, so it is taken to refer to pure O2. Choosing it is obvious to create the desired structure.
For claim 2, fig. 1B shows a sphere. Given the amount of Na taught in col. 17-18 and the mixing, it appears that the present level of coating is achieved.
For claim 3, the ‘precipitator’ salt is taught in col. 16 lines 33-60. Salts of the metals are also taught.
For claim 4, Fe is taught with the other 3 metals. From the amount of Na (above), the ratio (coefficient a) to total metals (x+y+z) is achieved. From the formula, the sum of all the metals is between 1 and 0.83. a is less than or equal to 1. Thus, the amount of Na (above) defacto overlaps the claimed formula range, rendering it obvious.
In example 3, a=0.67, x=0, (y-q)=0.5, (z-r)=0.5, (p+q+r)=0, as there is no extra metal beyond Na, Mn, Ni and Co (thus p, q, r individually are each zero because no coefficient can be less than zero). Thus, y=0.5 and z=0.5 and thus (x+y+z)=1 as demanded.
Claims 1, 4 are rejected under 35 U.S.C. 103 as being unpatentable over Castro et al. 20220298024 taken with Park.
Castro teaches, especially in paras 50-59, making a Ni/Mn/Cr oxide, adding Na and calcining to make a P2 structure. This differs in not using the claimed oxygen level.
Park, above, teaches oxygen as an alternative to air and thus is pure oxygen. Using it in the process of Castro is obvious to create the desired P2 structure.
For claim 4, table 1 teaches Na0.7(Mn0.65Ni0.35)O2 (p+q+r=0) as well as Na0.7(Mn0.6Ni0.3Cr0.1)O2; p+q+r=0.1. As there is no cobalt, (z-r) is zero. Since there are no restrictions per se on the relevant variables other than their sum, numbers may be chosen to arrive at the formula (under the logic that there can never be a negative amount of a metal).
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-7 of copending Application No. 18/597386 (reference application) taken with Park.
Although the claims at issue are not identical, they are not patentably distinct from each other because they claim common, nearly identical, subject matter. Claim 6 of the copending case is the initial formation step and the present claims include the ion exchange (‘comprising’). Park (above) teaches the oxygen level (pure O2) to achieve the desired structures. Using it in ‘386 is thus obvious to create the P2 structure.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 18/326483 (reference application) taken with Park.
Although the claims at issue are not identical, they are not patentably distinct from each other because they claim common, nearly identical, subject matter. Park (above) teaches the oxygen level (pure O2) to achieve the desired structures. Using it in ‘483 is thus obvious to create the P2 structure.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/325514 (reference application) taken with Park.
Although the claims at issue are not identical, they are not patentably distinct from each other because they claim common, nearly identical, subject matter. Park (above) teaches the oxygen level (pure O2) to achieve the desired structures. Using it in ‘514 is thus obvious to create the P2 structure.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
State of the art
Kim 20200251724 is noted.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STUART L HENDRICKSON whose telephone number is (571)272-1351. The examiner can normally be reached on Monday-Friday from 9 to 5. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Anthony Zimmer, can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STUART L HENDRICKSON/Primary Examiner, Art Unit 1736