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 .
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.
Status of Claims
Claims 1-4 are currently under examination. Claims 5-8 have been canceled. Claim 1 is amended.
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.
Claims 1-4 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kozelj et al. (US 2020/0181071 A1, provisional application filed on 10/19/2016), and in view of Zak et al. (Acta Cryst. 1978, B34, 38-40), as previously cited in the Office Action mailed on 1/18/2026, referred to herein as Kozelj and Zak, respectively.
Regarding claims 1-4, Kozelj teaches a process of making sulfamic acid salt having the formula I as shown below ([0032]-[0034]):
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As we see above, the formula I taught by Kozelj et al. corresponds to the instant claimed lithium sulfamate of formula (3), wherein R1 is a methyl group (C1 alkyl groups), R2 is a halogenated heteroarylsulfonyl group, and R3 is OM (OLi).
Based on the amendments made to claim 1, the R2 group being a halogenated heteroarylsulfonyl group meets the claimed limitations, since claim 1 lists option (e) where R2 may be a C6-C15 aryl group, and claim 1 further recites the substituent optionally containing at least one bi- to hexavalent heteroatom in its structure (the aforementioned hetero- structure taught by Kozelj, where the heteroatoms are taught as atoms of nitrogen, oxygen, or sulfur ([0064]), thus falling within the claimed range of valency) and being a substituent in which at least one hydrogen atom is optionally replaced with a C0-C7 functional group, wherein the C0-C7 functional group may be –SO2X3 where X3 is F (halogenated as taught by Kozelj). Kozelj teaches fluorination as the halogenation for the aryl groups ([0072]).
The lithium sulfamate of Kozelj is obtained from the step i) of the reaction of NH3 (R1R2NH, R1 and R2 as being CH3 groups) (the instant claimed formula (2)) with FSO3H (fluorosulfonic acid) and its salts. The step ii) taught by Kozelj is an optional step ([0022]):
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Kozelj further clearly points out the sulfamic acid derivatives thus produced and to their uses in electrolyte compositions for electrochemical applications (Abstract). Lithium salt of sulfamic acid derivatives are used in lithium ion batteries ([0113]). The lithium sulfamate of Kozelj is obtained from the reaction of R1R2NH (applicant’s formula (2)) with lithium salt of FSO3H (applicant’s formula (1) ([0021]-[0024]).
Although Kozelj et al do not specifically teach a method of making LiSO3F as per applicant claims 1-4, Zak teaches a method of prepared by the reaction of LiCl (applicant’s lithium source) with HSO3F (applicant’s compound formula (4)) (page 38).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the LiSO3F taught by Zak in the process for making lithium sulfamate taught by Kozelj to obtain the invention as specified in the claims 1-4. One would be motivated to do so in order to obtain a lithium salt for electrolytic use in a lithium battery, as Kozelj teaches, since Zak teaches that the structure of LiSO3F is confirmed by crystal structure and therefore is a predictable, known structure in the art. Since both Kozelj and Zak teach LiSO3F, one would have a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 5/6/2026 have been fully considered but they are not persuasive.
Applicant argued that the instant claim 1 is distinguished from Kozelj in that Kozelj does not teach the structure of formula I (Remarks page 7-9). While the Examiner agrees that a methyl group is not taught for R2 by Kozelj, this argument is rendered moot by the amendments, and the structure of amended claim 1 formula I is taught by Kozelj as discussed above, wherein Kozelj discloses the structure of amended claim 1 formula I.
Applicant argued that Kozelj teaches the forming of the lithium sulfamate salt by reacting an amine with FSO3H or its salts, and that this combination fails with the teachings of Zak of LiSO3F to arrive at the claimed invention (Remarks page 9-10). However, Kozelj clearly points out the sulfamic acid derivatives thus produced and to their uses in electrolyte compositions for electrochemical applications (Abstract), and Kozelj specifically teaches that lithium salt of sulfamic acid derivatives are used in lithium ion batteries ([0113]). Kozelj therefore clearly motivates the choice of a lithium salt as the salt of FSO3, for use in a lithium battery. One skilled in the art would expect reasonably predictable performance and success by this choice, because Zak teaches the confirmation of the stability of the crystal structure of LiSO3F. As such, the rejection is maintained.
Applicant argued that the lithium salt is obtained after the sulfonation reaction, by conversion with a metallic base (Remarks page 10). This argument is not found convincing, since Kozelj teaches that this step is optional ([0023, 0028]) and that the structure of the product itself is formed by the reaction of step i). Applicant argued that neither Kozelj and Zak teach the claimed invention (page 10-11); in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant argued that the motivation taught does not provide a reason why one skilled in the art would use LiSO3F (page 10); this argument is not found convincing, since as discussed above, Kozelj motivates the selection of LiSO3F, and Zak motivates that one skilled in the art would find such a selection predictable and expect success.
Applicant argued that the combination of the prior art is based on impermissible hindsight and the decision of the PTAB is based on impermissible hindsight (page 11-12). In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, applicant has argued that the discussion of lithium batteries has nothing to do with the sulfur trioxide source, but this is not found convincing, since the reactants of step i) of Kozelj must have lithium if the reaction product is to have lithium in order to be used in a lithium battery, and therefore one of ordinary skill in the art would find it necessary to select the sulfur trioxide source to have lithium.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eileen Moudou whose telephone number is (571)272-1768. The examiner can normally be reached M-Th 8 AM - 4 PM EST.
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/Eileen Moudou/ Examiner, Art Unit 1738
/MICHAEL FORREST/ Primary Examiner, Art Unit 1738
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