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 .
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.
Claim(s) 31, 42, and 43 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ZAGARS (2020/0014025).
Regarding claim 31, 42, and 43
ZAGARS generally teaches the formation of an semi-solid electrode by disposing a slurry onto a current collector [0106]. The semi-solid electrode is a mixture of active material, conductive carbon, and liquid electrolyte [0039]. A calendaring step to reduce thickness and remove electrolyte can be done [0107] (reduces thickness and volume).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over ZAGARS (2020/0014025).
Regarding claim 46,
ZAGARS teaches the finished thickness of the semi solid electrode can be 25-2000µm [0100]. The claimed range is overlapped by the prior art range and is considered prima facie obvious, MPEP 2144.05.I.
Claim(s) 50 is/are rejected under 35 U.S.C. 103 as being unpatentable over ZAGARS (2020/0014025) in view of TAN et al. (US 9,437,864).
Regarding claim 50,
ZAGARS teaches the removal of electrolyte but does not teach the final energy density of the electrode. The reference incorporates slurry compositions from TAN [0039]. TAN teaches using semi-solid electrodes with 150-200 mAh/g and 700-1,200 mAh/g column 7 lines 11-21. Removal of non-active material (electrolyte) according to ZAGARS would only further increase the energy density. At the time of filing the invention it would have been prima facie obvious to use the slurry compositions of TAN because they are specifically incorporated by reference. The compositions will have an energy density that falls within the claimed range before and after removal of a non-active material.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 31, 32, 37-42, 45, 46, 48 and 50 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 31, 32, 37, 42, 45, 46, 48, and 50 are directed to a method of mixing and disposing a semi-solid electrode material followed by extracting some of the liquid electrolyte from the semi-solid electrode material. However, the claim does not limit the way the extraction occurs. The originally filed claims specify that the reduction in volume (extraction of liquid electrolyte) is performed by a compression step with an absorbent and/or semipermeable membrane. By broadening the scope to include extraction of liquid electrolyte by other means the claims incorporate new matter which was not in the original disclosure. In contrast, claims 33-36 reincorporate the compressing step with absorbant/semi permeable membrane which narrows the scope of extraction to what was originally disclosed.
Claims 38-41 similarly broaden the claims by “transferring a volume” of the liquid electrolyte (changing volume and densifying the remaining semi-solid electrode) without requiring the compressing. This language does not require compression and does not even preferentially remove liquid electrolyte.
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 31-50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-20 of U.S. Patent No. 12,107,252. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent fall completely within the scope of the present claims 31-50.
Claims 31-50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 12-16, 19-22, 24 and 25 of U.S. Patent No. 11,462,722. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent fall completely within the scope of the present claims 31-50.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN MURATA whose telephone number is (571)270-5596. The examiner can normally be reached M-F 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL CLEVELAND can be reached at 571272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN MURATA/Primary Examiner, Art Unit 1712