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 non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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.
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Claims 1-5 and 7-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 2-4, 11, 19 and 20 of U.S. Patent No. 12,110,603. Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to a system comprising a first membrane comprising a first-ion conducting and ion-selective material embedded in a first matrix, a first solution to store the first ions, a second membrane comprising a second ion-conducting and ion-selective material embedded in a second matrix, the second ions being different from the first ions, a second solution to store the second ions and an ion-conducting transport pathway, as claimed.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Laramie et al. (US Patent Application Publication no. 2015/0086837).
Regarding claim 1, Laramie discloses a system comprising:
a first membrane comprising a first ion-conducting and ion-selective material embedded in a first matrix configured to transport ions (paragraphs 35, 66, 118, 145 –the pores of the separators are filled with solid electrolyte),
a first solution/electrolyte to store the first ions which are first transported from a feed solution through the first membrane (paragraphs 66, 143 – lithium ions are transported through the electrolyte to an electrode),
a second membrane comprising a ion-conducting and ion-selective material embedded in a second matrix (multiple separators can be provided between the electrodes. The separators are made of a porous material filled with an electrolyte - paragraphs 35, 66, 118, 145), wherein the second membrane is configured to transport second ions different from the lithium ions (one or more ions can be transported through the separators; paragraphs 26, 118);
a second solution to store second ions (one or more ions can be transported through the separators, including lithium ions; paragraphs 26, 118); and
wherein the system is configured such that each of the first ions passes through an ion-conducting transport pathway of the first ion-conducting and ion-selective material of the first membrane (paragraphs 66; 118).
Regarding claim 2, the first solution of Laramie is an electrolyte solution configured to strore the first ions and the second solution is configured to store the second ions (paragraphs 33, 37, 66, 87, 118).
Regarding claim 3, the first and second solution of Laramie are configured to function as an electrode (paragraphs 26, 118, 124).
Regarding claim 4, the first ion-conducting and ion-selective material of Laramie is configured to extract the first ions, i.e. lithium ions (paragraphs 35, 66, 118, 145).
Regarding claim 5, Laramie further suggests that the feed solution is located on a first side of the first membrane, and the first solution is located on a second side of the membrane (paragraphs 26, 66, 118, 143
Regarding claim 8, the first membrane of Laramie is ion-selective for the lithium ions (paragraph 66); second membrane is ion-selective for the second ions (one or more ions can be transported through the separators, including lithium ions; paragraphs 26, 118); and the second ions includes at least one of sodium, potassium (any alkali metal can be used – paragraph 135).
Statement of Status of Claims
Claims 6 and 7 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and the non-statutory double patenting rejection is overcome.
Claims 9-20 are free of rejection over prior art. The closest prior art made of record fails to teach a first solution to store the lithium ions which are first transported from a feed solution through the first membrane, wherein the feed solution is an input source separate from the first solution through the first membrane.
Note that the claims are subject to a rejection under non-statutory double patenting above, and therefore not indicated as allowable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZULMARIAM MENDEZ whose telephone number is (571)272-9805. The examiner can normally be reached M-F 8am-4:30p.
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/ZULMARIAM MENDEZ/Primary Examiner, Art Unit 1794
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