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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1-27-2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 2-3, 12, 14 and 16-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 103
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.
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable overWatarai et al. (JP 2012-190699, machine translation) in view of Morigaki (JP 2009-123549, machine translation). Watarai et al. teaches in Example 1, an electrolyte solution comprising 0.5 wt% succinimide (SucI) and 1 wt% LiBOB [teaching an oxalate borate complex component, lithium bis(oxalate)borate]. Watarai et al. discloses the claimed invention teaching an electrolyte comprising 1 wt% of an oxalate borate complex component comprising LiBOB and 0.5 wt% of a cyclic imide component comprising succinimide but does not teach that that the cyclic imide component is phthalimide. Morigaki teaches an electrolyte comprising an organic solvent, a supporting salt and further adding an imide compound. Morigaki teaches as the imide compound contained in the organic electrolyte, succinimide, maleimide and phthalimide are preferable. Morigaki teaches in Example 3, an electrolyte solution comprising 0.1 parts by weight of the phthalimide. Morigaki teaches in Example 1, an electrolyte solution comprising 2 parts by weight of the phthalimide. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the phthalimide instead of succinimide as the cyclic imide component because Morigaki teaches that both these cyclic imide components can be used in the electrolyte solution as explained above and one would expect therefore that these cyclic imide component additives would function in a similar way and give similar results.
Claim(s) 2-3, 12, 14 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Watarai et al. (JP 2012-190699, machine translation) in view of Morigaki (JP 2009-123549, machine translation). Watarai et al. teaches a battery comprising a positive electrode comprising LiMnO2, LiMn2O4, etc. and teaches in Example 1, an electrolyte solution comprising 0.5 wt% succinimide (SucI) and 1 wt% LiBOB [teaching an oxalate borate complex component, lithium bis(oxalate)borate]. Watarai et al. discloses the claimed invention teaching an electrolyte comprising 1 wt% of an oxalate borate complex component comprising LiBOB and 0.5 wt% of a cyclic imide component comprising succinimide but does not teach that that the cyclic imide component is phthalimide. Morigaki teaches an electrolyte comprising an organic solvent, a supporting salt and further adding an imide compound. Morigaki teaches as the imide compound contained in the organic electrolyte, succinimide, maleimide and phthalimide are preferable. Morigaki teaches in Example 3, an electrolyte solution comprising 0.1 parts by weight of the phthalimide. Morigaki teaches in Example 1, an electrolyte solution comprising 2 parts by weight of the phthalimide. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the phthalimide instead of succinimide as the cyclic imide component because Morigaki teaches that both these cyclic imide components can be used in the electrolyte solution as explained above and one would expect therefore that these cyclic imide component additives would function in a similar way and give similar results. Watarai et al. discloses the claimed invention teaching that the positive electrode comprises LiMnO2 but does not teach the positive electrode comprising MnO2 and further includes a manganese sulfate in the amount of 0.05-3 parts by mass. Morigaki teaches providing a lithium primary battery with good storage property and discharge characteristics at the same time. The lithium primary battery comprises a positive electrode comprising magnesium dioxide, a negative electrode containing lithium and an electrolyte consisting of organic solvent and supporting salt and further adding an imide compound. Morigaki teaches the positive electrode comprises 1-3 parts by weight of sulfur per 100 parts by weight of the total of manganese dioxide and sulfur. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use positive electrode comprising magnesium dioxide, MnO2 instead of LiMnO2 and 1-3 parts by weight of sulfur per 100 parts by weight of the total of manganese dioxide and sulfur as the cathode material because Morigaki teaches that a battery comprising the positive active material and the electrolyte solution provides a lithium primary battery with good storage property and discharge characteristics at the same time.
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 2-3 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 9-11 and 13-14 of copending Application No. 17/913,538 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Application No. 17/913,538 claims in claim 2, the same lithium primary battery comprising the same positive electrode and further claims that the mixture further includes a manganese sulfate as claimed in instant claim 17, the same negative electrode and a nonaqueous electrolyte comprising the same additive containing the same cyclic imide component and bis(oxalate) borate complex component comprising an organic silyl borate component in the exact same amounts as instant claim 2. Application No. 17/913,538 claims in claim 3, the exact same instant claim 3; claims in claim 5, the exact same instant claim 16; claims in claim 10 the exact same instant claim 18; claims in claim 11 the exact same instant claim 19 and claims in claim 13 the exact same instant claim 20. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not re9lied upon is considered pertinent to applicant's disclosure. Fujita et al. (JP 2015-149140, machine translation) teaches a primary battery comprising a positive electrode comprising manganese dioxide; a negative electrode comprising lithium or lithium alloy and an electrolyte solution comprising an additive comprising 0.1-1.0 wt% hydroxyphthalimide. Kawaguchi et al. (WO 01/41247, machine translation) teaches a battery comprising a negative electrode comprising metallic lithium or a lithium alloy; a positive electrode comprising MnO2 (page 9) and an electrolyte solution comprising phthalimide, 2-ethylphthalimide, etc. Hibara et al. (JP 2000-294273, machine translation) teaches a battery comprising metallic lithium or a lithium-containing alloy; a cathode comprising MnO2 [0033] and an electrolyte solution comprising a phthalimide derivative such as methylphthalimide, ethylphthalimide, etc. Sugioka et al. (WO 2016/195062 or US 2017/0358791) teaches a primary battery with improved storage properties and high temperature and excellent reliability comprising a negative electrode containing metallic lithium or lithium alloy, a positive electrode and a non-aqueous electrolyte solution containing LiClO4 as an electrolyte salt, and 0.1-5% by mass of LiB(C2O4)2. Sugioka et al. ‘8791 teaches in example 1, a primary battery comprising a positive electrode comprising manganese dioxide; a negative electrode comprising a lithium foil and a nonaqueous electrolyte solution comprising 0.5 M LiClO4 and 1% by mass LiB(C2O4)2 in a solvent comprising PC and DME. Otsuka et al. (JP 2018-170276, machine translation) teaches a primary battery which enables the improvement in high temperature storage characteristic to increase the reliability comprising a negative electrode comprising metallic lithium or a lithium alloy and a non-aqueous electrolyte solution containing at least one lithium salt A selected from LiClO, LiCFSO, LiN(FSO) and LiN(CFSO) and at least one lithium salt B selected from LiPF6, LiBF4, LiB(CO), etc. in an amount of 0.1-2 mass%. The lithium salt A function is an electrolyte salt for ensuring lithium ion conductivity, allowing for primary batteries to have high temperature storage characteristics and lithium salt B is used as an electrolyte salt for ensuring lithium ion conductivity and LiB(C2O4)2, produces a protected coating that suppresses the reaction between the nonaqueous electrolyte and the negative electrode. Therefore, the primary battery, comprising the lithium salt A, and the above described action by the lithium salt B, LiB(C2O4)2 are made to function synergistically. Suppression of the battery swelling an increase in internal resistance during storage can be suppressed to ensure high right reliability. Examples of boric acid compounds include mono(trimethylsilyl) borate, etc. is present in an amount of 0.1-5 % by mass. Otsuka et al. teaches that the positive electrode active material can include manganese dioxide, etc. Otsuka et al. teaches in example 1, a positive electrode comprising magnesium oxide, a negative electrode comprising lithium foil and the non-aqueous electrolyte solution comprising LiClO4 (lithium salt A) and LiPF6 (lithium salt B) were mixed in a solvent comprising PC and DME and adding 1 % by mass (0.05 M) of LiBOB.
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/LAURA S. WEINER/
Primary Examiner
Art Unit 1723
/Laura Weiner/Primary Examiner, Art Unit 1723