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 .
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.
Specification
The specification and drawings have been reviewed and no clear informalities or objections have been noted.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 2-3 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-3 of prior U.S. Patent No. 12,512,508. This is a statutory double patenting rejection.
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, 6-9, 11-15, 17-18, 21, 26 and 30-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-32 of U.S. Patent No. 12,512,508. Although the claims at issue are not identical, they are not patentably distinct from each other because the only difference between the two sets of claims is the presence of a bimodal particle distribution of cathode active materials in the cathode layer in patent 12,512,508. In other words, the claims of US 12,512,508 are more narrow in scope and contain all of the claim limitations of claims 1, 4, 6-9, 11-15, 17-18, 21, 26 and 30-32 of the instant application.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Claims 1-4, 6-9, 11-18, 21, 26 and 30-32 are allowable over the prior art. The closest prior art, Yamamoto (JP2015220012A) discloses an all solid battery which comprises a solid electrolyte layer that is broken up in to multiple layers. One layer 13B, comprises larger particles relative to the adjacent layers 13A and teaches that the larger particles exhibit a better ion conductivity than the smaller particles which are adjacent to the cathode and anode interfaces. This reference, however, does not teach the claimed relationship between solid electrolyte particles in the cathode that are smaller in size than the larger sized solid electrolyte particles of the second solid electrolyte layer or does it teach that the particle size of the second solid electrolyte is bigger than the first solid electrolyte where the second solid electrolyte is adjacent to the anode layer and the first solid electrolyte is adjacent the cathode layer . The prior art neither teaches nor suggests a motivation to modify Yamamoto to such a configuration.
Relevant Prior Art
US 2015/0147659 – Discloses a solid electrolyte battery comprising a multilayered solid electrolyte but is silent regarding the relative particle sizes in the layer.
US 2021/0367265 – Discloses a solid electrolyte battery which comprises a solid electrolyte layer that includes a material that has a larger particle size that a solid electrolyte contained in the positive electrode, but is silent regarding the multilayered solid electrolyte layer with the claimed relationship between the first and second solid electrolyte particles.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J MERKLING whose telephone number is (571)272-9813. The examiner can normally be reached Monday - Thursday 8am-6pm.
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/MATTHEW J MERKLING/Primary Examiner, Art Unit 1725
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