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 .
Response to Arguments
Applicant’s arguments 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.
The Examiner notes that obvious double patenting has been applied below in view of the amendments made in both the instant and the pending application.
Relevant MPEP Sections
MPEP 2112.01 relating to Composition, Product, and Apparatus Claims: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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.
Claim 1, 4-8, 10-12 and 14-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5, 8, 9, 11-13 and 18 of co-pending Application No. 17/980,265 (reference application) published as US PG Pub 2023/0223597. Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending and instant claims have been amended to overlap in scope regarding the capacity compensation electrolyte additive which is the LixPy is selected from one or more of LiP4, LiP5, LiP7, LiP8 and LiP10 for a lithium-ion battery (claim 1 of co-pending application) which includes the same generic solvents (co-pending claim 9) and generally the same composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. However, the Examiner notes that the co-pending claims have been indicated as allowable subject matter.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 4-8, 10-12 and 14-23 are rejected under 35 U.S.C. 103 as being unpatentable over Visco et al. (US Pub 2004/0191617 of record).
In regard to claim 1, 4-7, 9-12, 14-19, Visco et al. teach a lithium-ion secondary battery (note the prior art also appreciates the ability to use other active alkali metals such as sodium and potassium – paragraph [0037]) including a lithium metal anode 308 (paragraph [0059]) and cathode (paragraphs [0086-0088] such as LiCoO2 or LiNiO2), separator 200 (paragraph [0046]) and
an electrolyte (paragraphs [0080-0085]) including a capacity-compensation electrolyte for a lithium-ion secondary battery, comprising:
a non-aqueous ester organic solvent such as EC (paragraph [0082]), an electrolyte salt such as LiPF6 (paragraph [0081]) and an electrolyte additive capable of compensating ions and electrons simultaneously; wherein the electrolyte additive comprises:
a lithium phosphide component such as LiP3 (i.e. Li2P6 and Li3P9 - paragraphs [0022, 0069] i.e. this component is reasonably expected to be capable of compensating ions and electrons simultaneously by decomposing and releasing active ions and electrons simultaneously in the electrolyte during the working process of the battery – see MPEP 2112.01 above) which participates in charge transfer in the electrolyte and is therefore reasonably expected to have some portion which is dissolved in the electrolyte solvent during cycling.
While the prior art does not specify the molarity of the lithium salt, the use of about 1 M LiPF6 (paragraph [0081]) for electrolytes is the most common level of lithium salt addition, therefore absent evidence to the contrary the prior art and general state of the art at the time the invention was filed obviates the claimed range in a manner which provides a prima facie case of obviousness (see MPEP 2144.05).
In regard to claim 8 and 20, Visco et al. teach the lithium phosphide component is present in a controlled amount, such as by varying the thickness of the first chemically compatible material layer to be between 0.1 and 5 microns (see paragraph [0059]). Therefore, while no particular weight percentage is taught by the prior art, dependent on the thickness and composition of the various layers and solvents included in the electrolyte, and the desired properties of the electrolyte, the ranges disclosed for the prior art overlap the claimed range in a manner which provides a prima facie case of obviousness (see MPEP 2144.05). Alternatively, the prior art appreciates the amount of lithium phosphides included are result effective variables which effect the properties of the electrolyte (see paragraphs [0034-0041]) and therefore should be optimized depending on the application (MPEP 2144.05 Part II).
In regard to claims 21-23, these claims require components in generic ranges which generally encompass electrolyte solvent and salts such as those disclosed by the prior art (i.e. a non-aqueous ester organic solvent such as EC (paragraph [0082]), an electrolyte salt such as LiPF6 (paragraph [0081])), therefore the claimed ranges are obvious absent evidence to the contrary.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Visco et al. (US Pub 2004/0131944) teaches LiP layers in electrolytes.
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 Nicholas P D'Aniello whose telephone number is (571)270-3635. The examiner can normally be reached Monday to Friday 9am to 5pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tong Guo can be reached at 571-272-3066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICHOLAS P D'ANIELLO/Primary Examiner, Art Unit 1723
Prosecution Insights