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 .
Amendments to the claims, filed 1 March 2024, have been entered in the above identified application.
Claim 32 is pending in the application.
Claims 1-8, 11, 13, 17-21, 23, 26, 29, and 31 are withdrawn in the application.
Claims 9-10, 12, 14-16, 22, 24-25, 27-28, and 30 are cancelled in the application.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-8, 11, 13, 17-21, 23, 26, 29, and 31, drawn to an electrochemical cell, classified in H01M 50/109.
II. Claim 32, drawn to a method of preparing a child-safe electrochemical cell, classified in H01M 10/0427.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process, such as by applying the aversive coating to the terminal exterior by a dry application method, as opposed to making a solution.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
-the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification;
-the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter; and/or
-the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Daniel J O’Connor on 07/02/2026 a provisional election was made without traverse to prosecute the invention of Group II, claim 32. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-8, 11, 13, 17-21, 23, 26, 29, and 31 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Double Patenting
Claim 32 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 24 of copending Application No. 18/593,533 (reference application, hereinafter ‘533). Although the claims at issue are not identical, they are not patentably distinct from each other because:
‘533 claims a method of preparing a child-safe electrochemical cell, wherein at least a part of an exterior of the electrochemical cell is coated with an aversive coating, the part of the exterior being greater than 50% of an area of a positive or negative terminal of an electrochemical cell. While this range does not overlap with the claimed range of 2% to 50% of an area of the exterior of one of the terminals, it is close. In the case where the claimed ranges are sufficiently close, a prima facie case of obviousness exists (MPEP 2144.05).
‘533 claims the aversive coating has a dry-weight composition comprising 0.2 wt% to 10 wt% of an aversive agent composition and 45 wt% to 99.8 wt% of a water-soluble polymer (claim 24). The wt% of the aversive agent composition and water-soluble polymer overlap with the claimed range of 0.5 wt% to 65 wt% of an aversive agent composition and 5 wt% to 98.5 wt% of a water-soluble polymer.
‘533 claims the method includes preparing a coating solution, wherein the coating solution comprises 0.001 wt% to 0.1 wt% of an aversive taste agent and 0.01 wt% to 1.0 wt% of a water-soluble polymer dissolved in one or more solvents. The wt% of the water-soluble polymer overlaps with the claimed range of 0.2 wt% to 14 wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05).
Next, ‘533 claims applying the coating solution to greater than 50% of the area of the exterior of the terminal of the electrochemical cell, and drying the solution onto the area of the exterior of the terminal of the electrochemical cell. While this range does not overlap with the claimed range of 2% to 50% of an area of the exterior of one of the terminals, it is close. In the case where the claimed ranges are sufficiently close, a prima facie case of obviousness exists (MPEP 2144.05).
‘533 does not explicitly claim the coating solution comprises 0.2 wt% to 20 wt% of an aversive agent composition.
Knight teaches a water-soluble coating containing a colorant and/or aversive agent (abstract) that is used to provide child safety features to a battery ([0077]). Knight also teaches a method of making the coating which involves first forming a coating solution ([0136]), the coating solution including 0.01 wt% to 1.5 wt% of an aversive agent ([0051] and [0043], as the solvent can range from 50% to 90% of the total mass of the coating solution, and the values of the aversive agent in the dry-weight composition are 0.1 wt% to 3 wt%, they must be adjusted accordingly (i.e. 0.1% aversive agent x 0.1, and 3% aversive agent x 0.5). This wt% of the aversive agent in the coating solution is beneficial as it is enough to impart an unpleasant taste or sensation, while avoiding levels that can lead to potential toxicity from the aversive agent itself ([0049]).
It would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the claimed invention, to use the wt% of the aversive agent as taught by Knight in the claimed invention of ‘533. One of ordinary skill in the art would have been motivated to use this amount for the unpleasant taste or sensation without toxicity.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 32 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 31, which is dependent upon claim 24, of copending Application No. 18/593,391 (reference application, hereinafter ‘391). Although the claims at issue are not identical, they are not patentably distinct from each other because:
‘391 claims a method of preparing an electrochemical cell, wherein a portion at least a portion of an exterior surface of the electrochemical cell is coated with an aversive coating (claim 24), wherein the aversive coating has a dry-weight composition comprising 0.5 wt% to 65 wt% of an aversive agent composition and 5 wt% to 98.5 wt% of a water-soluble polymer (claim 24).
‘391 further claims the method comprising preparing a coating solution (claim 31), wherein the coating solution comprises 0.2 wt% to 20 wt% of the aversive agent composition and 0.2 wt% to 14 wt% of the water-soluble polymer in one or more solvents (claim 31). The wt% of the aversive agent and water-soluble polymer overlap with the claimed range of 0.2 wt% to 20 wt% of an aversive agent composition and 0.2 wt% to 14 wt% of a water-soluble polymer. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05).
‘391 further claims applying the coating solution to at least a portion of the exterior surface of an electrochemical cell and drying the solution onto the portion of the exterior surface of the electrochemical cell (claim 31).
‘391 does not explicitly claim applying the coating solution to 2% to 50% of the area of the exterior of the terminal of the electrochemical cell.
Knight teaches a water-soluble coating containing a colorant and/or aversive agent (abstract) that is used to provide child safety features to a battery ([0077]). Knight also teaches a method of making the coating which involves first forming a coating solution ([0136]), then applying the coating mixture to 10% to 100% of the area of one of the external terminals of the cell (battery electrode, [0074] and [0077]). This allows for the coating to be applied in a manner that does not increase the resistance of the battery above an acceptable level ([0077]). This range overlaps with the claimed range of 2% to 50% of the area of the external terminal of the electrochemical cell. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the claimed invention, to use the area of coverage of the aversive coating on the external terminal of the electrochemical cell, as taught Knight, in the claimed invention of ‘391. One of ordinary skill in the art would have been motivated to reduce the decrease in resistance of the battery to an acceptable level.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: figures 1 and 2, ref. #13, #14, #15, and #16. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Knight (US Patent Application Publication No. 2022/0127488).
Knight teaches a method of preparing a child-safe electrochemical cell ([0014] and [0137]), wherein a portion of the area of at least one terminal of the electrochemical cell is coated with an aversive coating ([0004] and [0073]). The aversive agent is coated on an area of 10% to 100% of the external surface of the electrode terminal ([0074]), which overlaps with the claimed range of 2% to 50%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05)
The aversive coating has a plurality of substituents, first being a water-soluble polymer ([0003], polyvinyl alcohol (PVOH) and polyacrylic acid (PAA)), which may comprise up to 100% of the aversive coating dry-weight composition (as the other constituents are optional additives, [0025]). The aversive coating may also contain a dry-weight composition of 0.1 wt% to 3 wt% of an aversive agent composition ([0052], calculated from 1000 ppm to 30,000 ppm of the aversive agent), 0.1 wt% to 8 wt% of a surfactant ([0061]), 1 wt% to 45 wt% of a plasticizer ([0047]), and 0.1 wt% to 5 wt% of other auxiliary additives ([0063]). The aversive coating may also contain a dry-weight composition of 2 wt% to 25 wt% of a colorant ([0056], the colorant is provided in a range of 5 wt% to 25 wt% of the water-soluble polymer. Therefore, when all other additives are set to their maximum, the minimum amount of the colorant added as a wt% of the total dry mass is 2%, and the maximum amount of the colorant added as a wt% of the total dry mass is 25% when the remainder of the mass is only the water-soluble polymer).
The minimum amount of the water-soluble polymer is 39% (when all other additives are set to their maximum values), resulting in a range of the water-soluble polymer in the dry-weight composition of the aversive coating being 39 wt% to 100 wt%. This overlaps with the claimed range of 5 wt% to 98.5 wt% of a water-soluble polymer. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05)
The dry-weight composition of the aversive coating including 0.1 wt% to 3 wt% of an aversive agent composition ([0052], calculated from 1000 ppm to 30,000 ppm of the aversive agent) also overlaps with the claimed range of 0.5 wt% to 65 wt% of an aversive agent composition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05).
The method includes preparing a coating solution including water as a solvent ([0136]), the coating solution including 0.01 wt% to 1.5 wt% of an aversive agent ([0051] and [0043], as the amount of water as a solvent can range from 50% to 90% of the total mass of the coating solution, the values of the dry-weight composition are adjusted accordingly (i.e. 0.1% aversive agent x 0.1, and 3% aversive agent x 0.5) and 3.9 wt% to 50 wt% of the water-soluble polymer (from the maximum and minimum amounts of the water-soluble polymer given above, adjusted in the same manner as the aversive agent). The ranges of the aversive agent and water-soluble polymer in the coating solution overlap with the claimed ranges of 0.2 wt% to 20 wt% of an aversive agent composition and 0.2 wt% to 14 wt% of a water-soluble polymer dissolved. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05).
Next, applying the coating solution to 10% to 100% of the area of the exterior of the terminal of the electrochemical cell ([0080] and ([0041]), which overlaps with the claimed range of 2% to 50% of the area of the exterior of the terminal of the electrochemical cell. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05).
Lastly, drying the solution onto the area of the exterior of the terminal of the electrochemical cell ([0111]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Myles Alan Lovasz whose telephone number is (571)272-0214. The examiner can normally be reached Monday-Friday 7:30 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at (571) 272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAL/
Myles Alan LovaszExaminer, Art Unit 1788 07/14/2026
/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788
Prosecution Insights