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 .
Specification
The disclosure is objected to because of the following informalities:
The title of the invention is not descriptive. The title “CYANO-CONTAINING ORGANOFLUOROBORATE ADDITIVES FOR LITHIUM ION BATTERIES” does not describe the claimed invention because the additive compound of independent claim 1 is not an organofluoroborate. A new title is required that is clearly indicative of the invention to which the claims are directed.
Appropriate correction is required.
Claim Objections
Claims 17-19 are objected to because of the following informalities:
Claims 17-19 require an additive selected from a list including compounds different from the additive compound of Formula (IV) required by parent claim 1. The dependent claims should be amended to refer to “a second additive” or “an additional additive.”
Appropriate correction is required.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-21 of copending Application No. 17/835,772 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the ‘772 application claims an electrolyte fluid comprising a compound of Formula (IV) wherein m is an integer equal to or greater than 1 and equal to or less than 9, n is an integer equal to or greater than 1 and equal to or less than 9, p is an integer equal to or greater than 1 and equal to or less than 9, q is an integer equal to or greater than 1 and equal to or less than 9, and Mm is selected from an alkali metal ion, a quaternary ammonium ion, an imidazolium ion, and a quaternary phosphonium ion.
Claims 2-3 and 5-21 of the ‘772 application include the contents of claims 2-20 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-20 would be allowable if the rejections set forth in this Office Action are overcome.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art is Hagiwara (US 2011/0150736 A1; cited in the IDS filed 11/13/2025). Hagiwara teaches an electrolyte fluid ([0001]) comprising an additive corresponding to the compound of Formula (IV) wherein m, n, p, and q are equal to 0 ([0011]) and M+ is an alkali metal ion ([0036]).
The prior art does not teach or suggest an electrolyte fluid comprising a compound of Formula (IV) wherein m, n, p, and q are between 1 and 9 inclusive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE C. DISNEY whose telephone number is (703)756-1076. The examiner can normally be reached M-F 8:30-5:30 MT.
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/C.C.D./Examiner, Art Unit 1723 /TIFFANY LEGETTE/Supervisory Patent Examiner, Art Unit 1723
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