CTNF 18/753,354 CTNF 70817 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Reissue Applications For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. This application, filed 06/25/2024, is a reissue continuation of Serial No. 17/950,044, filed September 21, 2022, now RE50,031, which is a reissue of U.S. Patent 10,748,532 (hereafter the '532 patent), which issued from U.S. application Serial No. 16/666,131 (the ‘131 application) with claims 1-22 on September 22, 2020. Consent of Assignee 14-15 AIA This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.01. A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action. The instant reissue application contains a Consent of Assignee from South 8 Technologies, Inc. However, the reissue application does not contain a Consent of Assignee from The Reagents of the University of California. Accordingly, a Consent of Assignee from The Reagents of the University of California is hereby required. Statement Under 37 CFR 3.73(c) 14-16 AIA This application is objected to under 37 CFR 1.172(a) as the assignee has not established its ownership interest in the patent for which reissue is being requested. An assignee must establish its ownership interest in order to support the consent to a reissue application required by 37 CFR 1.172(a) . The assignee’s ownership interest is established by: (a) filing in the reissue application evidence of a chain of title from the original owner to the assignee, or (b) specifying in the record of the reissue application where such evidence is recorded in the Office (e.g., reel and frame number, etc.). The submission with respect to (a) and (b) to establish ownership must be signed by a party authorized to act on behalf of the assignee. See MPEP § 1410.01. An appropriate paper satisfying the requirements of 37 CFR 3.73 must be submitted in reply to this Office action. In particular, a statement under 37 CFR 3.73(c) is not present in the instant reissue application for The Reagents of the University of California. Objection to Application Data Sheet The application data sheet (ADS) filed on 06/25/2024 is objected to because the domestic benefit information does not identify the instant application as a reissue of 16/666,131, which issued as the ‘532 patent. See the, Reissue Application Filing Guide at http://www.uspto.gov/sites/default/files/forms/uspto_reissue_ads_guide_Sept2014.pdf for more information and in particular see the screen shot on page 10 given the sample facts presented on page 9. A corrected ADS is required . The corrected ADS should comply with 37 CFR 1.76(c)(2), which requires that any changes to an ADS be identified with markings (underline for addition, strike through for deletion). Applicant can also use the Corrected Web-based ADS. See the Quick Start Guide for Corrected Web-based ADS at https://www.uspto.gov/sites/default/fiies/documents/Corrected-WebADS-QSG.pdf. A request for corrected filing receipt is unnecessary in this instance since the filing receipt issued 09/09/2024 correctly identifies the instant application as a reissue of 16/666,131. Non-Compliant Amendment The amendment to the claims filed 01/24/2026 is improper. The amendment does not comply with 37 CFR 1.173 which sets forth the manner of making amendments in reissue applications. While the improper amendment has been entered and considered, a supplemental paper correctly amending the reissue application is required with Applicant’s next response. An amendment filed after final rejection that fails to comply with 37 CFR 1.173 will not be entered. All amendment changes must be made relative to the patent to be reissued, not relative to a previous submitted amendment. Pursuant to 37 CFR 1.173(d), any such changes which are made to the specification, including the claims, must be shown by employing the following markings: (1) the matter to be omitted by reissue must be enclosed in brackets, i.e., single brackets; and (2) the matter to be added by reissue must be underlined. The non-compliance issues are as follows: In claim 21, at line 9, a comma has been added after “K” without underlining. Note there is no comma after “K” in issued claim 21 at col. 18, line 39. Also, if Applicant intends claim 21 to be an amended claim, then the status identifier should be “Amended”. Specification The specification is objected to because of the following: The instant reissue application is a reissue continuation. As noted in MPEP 1451.I, all multiple reissue applications resulting from a single patent must include as the first sentence of their respective specifications a cross reference to the other reissue application(s). The instant specification is objected to since it does not include such a cross reference. An exemplary statement that can be added as the first sentence of the specification is as follows: “Notice: More than one reissue application has been filed for the reissue of Patent No. 10,784,532. The reissue applications are application number 18/853,354 (the present application); 17/950,044 (now RE 50,031); and 19/540,746.”. It is further noted that the specification of 19/540,746 has also not yet been amended to recite the cross reference. Additionally, since Serial No. 17/950,044 issued as a reissue patent, it is requested that the amendment to its specification to recite the cross reference be taken care of by Applicant by Certificate of Correction. Appropriate correction is required. Claim Objections Claims 1-22 are objected to because of the following: Clams 1-22 were cancelled in the amendment filed 06/25/2025. As such, claims 1-22 cannot be reinstated in the latest amendment filed 01/24/2026. As noted in MPEP 608.01(s), “[a] claim canceled by amendment (deleted in its entirety) may be reinstated only by a subsequent amendment presenting the claim as a new claim with a new claim number. 37 CFR 1.121(c)(5). See MPEP § 714.” In claim 37, at the last line, “293 .15 K” should be changed to “293.15 K”. In claim 40, at the last line, the two occurrences of “cm2” should be “cm 2 ”. Appropriate correction is required. Claim Rejection - 35 USC § 251 Claims 1-22 are rejected under 35 U.S.C. 251 because the reissue applicant is not correcting an error in the original patent. Original claims 1-22 have been superseded by the reissuance of claims 1-22 in RE50,031. As noted in MPEP 1451.I, "[o]nce a claim in the patent has been reissued, it does not exist in the original patent; thus, it cannot be reissued from the original patent in another reissue application." Statutory Double Patenting – 35 USC 101 08-30 AIA 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. 08-31 AIA Claim s 1-43 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim s 1-43 of prior U.S. Patent No. RE50,031 . This is a statutory double patenting rejection. Non-Statutory Double Patenting 08-33 AIA 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, 10, 15-20, 23-25, 30-37, 39, 40, 42 and 43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 10,998,143 (the ‘143 reference patent). Although the claims at issue are not identical, they are not patentably distinct from each for the following reasons. Claim 3 of the ‘143 reference patent is pertinent since it sets forth an electrochemical device comprising an ionically conducting electrolyte which comprises liquefied gas solvent, one or more salts and additives. Claim 3 is set forth below along with claim 1 from which it depends: 1. An electrochemical device, comprising: an ionically conducting electrolyte comprising a mixture of one or more solid or liquid salts and a solution of one or more liquefied gas solvents, wherein the liquefied gas solvent comprises at least a first component that has a vapor pressure above 1.01325 bar at a room temperature of 20°C. and the first component comprises one or more chemicals selected from the group consisting of: sulfur dioxide, thionyl fluoride, thionyl chloride fluoride, phosphoryl fluoride, phosphoryl chloride fluoride, sulfuryl fluoride, sulfuryl chloride fluoride, fluoromethane, difluoromethane, fluoroethane, difluoroethane, chloromethane, chloroethane, ammonia, oxygen, nitrogen, carbon dioxide, tetrafluoroethane, and difluorochloromethane; a housing enclosing the ionically conducting electrolyte under a pressurized condition to maintain the liquefied gas solvent at a pressure higher than 1.01325 bar and at a room temperature of 20°C.; a pair of electrodes in contact with the ionically conducting electrolyte; and wherein the one or more salts include one or more of: lithium bis(trifluoromethanesulfonyl)imide, lithium hexafluorophosphate, lithium perchlorate, lithium tetrachloroaluminate, lithium tetragaliumaluminate, lithium bis(fluorosulfonyl)imide, lithium aluminum fluoride, lithium hexafluoroarsenate, lithium chloroaluminate, lithium chlorotitanate, lithium hexafluorotitanate, lithium tetrabromoaluminate, lithium tetrachloroborate, lithium tetrafluoroborate, lithium tetrachloroaluminate, sodium hexafluorophosphate, and magnesium hexafluorophosphate. 3. The electrochemical device of claim 1, further comprising additives that include one or more of: lithium chloride, lithium fluoride, sodium fluoride, sodium chloride, bromine chloride, bromo fluoride, chloride, and fluoride. With respect to claims 1, 10, 15-20, 35, 36, and 43, claim 3 of the ‘143 reference patent does not specifically teach that the electrochemical device is rechargeable, e.g., a rechargeable battery, such as a lithium ion battery or a lithium metal battery. However, rechargeable batteries, such as a lithium ion battery or a lithium metal battery, are conventional electrochemical devices in the art. In fact, the lithium salts of the ionically conducting electrolyte in claim 3 of the ‘143 patent are conventional lithium salts for a lithium ion battery or lithium metal battery. Accordingly, it would have been obvious for a skilled artisan to have prepared the electrochemical device in claim 3 of the ‘143 patent as a rechargeable battery, such as a lithium ion battery or a lithium metal battery, so as to take advantage of the conventional lithium salts in the ionically conducting electrolyte, and because rechargeable batteries are conventional electrochemical devices in the art. Further, the electrode materials in claims 18-20, 35, 36 and 43 are conventional materials in the art and, as such, would have been obvious to a skilled artisan. With respect to claim 15, the use of two additives in claim 3 of the ‘143 patent, i.e., the use of either lithium chloride or lithium fluoride with one of the other additives in the Markush group of additives in claim 3, or the use of lithium chloride and lithium fluoride together, renders obvious claim 15. Note claim 3 of the ‘132 patent teaches one or more of the additives. Claim 3 of the ‘143 patent further differs from claims 36 and 43 is not requiring that the average coulombic efficiency of the device is greater than 98% over 600 cycles (claim 36) or that the electrolyte maintains over 90% efficiency on a graphite anode after 5 cycles (claim 43). However, these properties are inherent in claim 3’s device and electrolyte because they are made from the same materials as here claimed. Alternatively, it would have been obvious to one of ordinary skill in the art to have optimized the coulombic efficiency of the device and the electrolyte efficiency on the graphite anode after 5 cycles, and thus, arrived at the claimed values, since coulombic efficiency and electrolyte efficiency after a specified number of cycles are known properties for a rechargeable battery and the electrolyte therein. Claim 3 of the ‘143 reference patent differs from claims 23, 33, 34, 37, 40 and 43 in not requiring that the first component of the liquefied gas solvent is carbon dioxide in combination with one or more of fluoromethane, difluoromethane and sulfuryl fluoride. However, claim 3 of the ‘143 reference patent sets forth that the first component of the liquefied gas solvent can be one or more of, inter alia , sulfuryl fluoride, fluoromethane, difluoromethane and carbon dioxide. Accordingly, it would have been obvious to one of ordinary skill in the art to have used carbon dioxide in combination with one or more of fluoromethane, difluoromethane and sulfuryl fluoride, as the first component in claim 3’s liquefied gas solvent with the goal of preparing a suitable ionically conducting electrolyte for use in the electrochemical device of claim 3. With respect to claim 24, claim 3 of the ‘143 reference patent teaches that the salt can be lithium bis(fluorosulfonyl)imide. While claim 24 recites sodium bis(fluorosulfonyl)imide, the use of lithium salts and their corresponding sodium salts in the ionically conducting electrolyte of an electrochemical cell is conventional. In fact, claim 3 sets forth lithium hexafluorophosphate and sodium hexafluorophosphate as alternative salts. Thus, it would have been obvious to have used sodium bis(fluorosulfonyl)imide in place of lithium bis(fluorosulfonyl)imide with the goal of preparing a suitable ionically conducting electrolyte for claim 3’s electrochemical device. With respect to claim 25, claim 3 of the ‘143 reference patent teaches that the salt can be lithium bis(trifluoromethanesulfonyl)imide. With respect to claims 30, 31, 39 and 42, claim 3 of the ‘143 reference patent does not teach a molar ratio of the additive to the salt. However, it would have been obvious to one of ordinary skill in the art to have determined an appropriate ratio, such as the ratio here claimed, so as to prepare a working electrochemical device. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller , 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). With respect to claim 32, claim 3 of the ‘143 reference patent, as dependent on claim 1, sets forth that the first component has a vapor pressure above 1.01325 bar (100 kPa) at a room temperature of 20°C (293°K). With respect to claims 37, 39, 40 and 42, claim 3 of the ‘143 reference patent does not set forth the electrolyte has a conductivity over 0.5 mS/cm at a room temperature of 293.15 K (claims 37 and 39) or that the electrolyte has a lithium plating stripping efficiency of over 98.0% under a 0.5 mA/cm 2 current and 0.5 mAh/cm 2 charged passed (claims 40 and 42). However, the conductivity and lithium plating stripping efficiency are inherent in the ionically conducting electrolyte of claim 3 since it contains the same or similar components as here claimed. Alternatively, it would have been obvious for a skilled artisan to have prepared the ionically conductive electrolyte of claim 3 such that is has the claimed conductivity and lithium plating stripping efficiency because these are known properties in the electrochemical device art and a skilled artisan has a goal of optimizing the operation of the electrochemical device. Claims 1-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 23-40 of copending Application No. 19/540,746 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ionically conducting electrolyte in claims 23-40 of the reference application teach an ionically conducting electrolyte containing the components of the instant claims. The claims of the reference application do not teach use of the ionically conducting electrolyte in a rechargeable electrochemical device, such as a rechargeable lithium ion battery or lithium metal battery. However, such are conventional uses of the ionically conducting electrolyte, and thus, would have been obvious. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Response to Applicant’s Remarks In the Remarks filed 01/24/2026, Applicant states the following: PNG media_image1.png 182 532 media_image1.png Greyscale The non-statutory double patenting rejection over the claims of the ‘143 reference patent is appropriate at least because all the co-inventors of the ‘143 reference patent are listed as inventors of the ‘532 patent. See MPEP 804 and In re Hubbell, 709 F.3d 1140, 1146-47, 106 USPQ2d 1032, 1037-38 (Fed. Cir. 2013). To any extent Applicant is unable to file a terminal disclaimer with respect to the ‘143 reference patent, then an alternative is to present claims in the instant reissue application that are patentably distinct from the claims of the ‘143 reference patent. Duty to Disclose 14-11-01 AIA Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 10,784,532 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN D DIAMOND whose telephone number is (571)272-1338. The examiner can normally be reached Monday through Thursday 5:30 am to 3:00 pm, and Fridays from 5:30 am to 9:30 am. 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, Patricia Engle can be reached on 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. Signed: /ALAN D DIAMOND/Patent Reexamination Specialist Central Reexamination Unit 3991 Conferees: /JOSEPH R KOSACK/ /Patricia L Engle/Patent Reexamination Specialist SPRS, AU 3991 Central Reexamination Unit 3991 Application/Control Number: 18/753,354 Page 2 Art Unit: 3991 Application/Control Number: 18/753,354 Page 3 Art Unit: 3991 Application/Control Number: 18/753,354 Page 4 Art Unit: 3991 Application/Control Number: 18/753,354 Page 5 Art Unit: 3991 Application/Control Number: 18/753,354 Page 6 Art Unit: 3991 Application/Control Number: 18/753,354 Page 7 Art Unit: 3991 Application/Control Number: 18/753,354 Page 8 Art Unit: 3991 Application/Control Number: 18/753,354 Page 9 Art Unit: 3991 Application/Control Number: 18/753,354 Page 10 Art Unit: 3991 Application/Control Number: 18/753,354 Page 11 Art Unit: 3991 Application/Control Number: 18/753,354 Page 12 Art Unit: 3991 Application/Control Number: 18/753,354 Page 13 Art Unit: 3991
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