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 .
Election/Restrictions
Applicant’s election without traverse of Species 5, compound 5:
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in the reply filed on 3-18-2026 is acknowledged.
Claim Objections
Claims 2-5, 7-8, 10, 13-16 and 18-19 are objected to because of the following informalities: Claim 2 is objected to because the claim should cite “wherein a substituent of the C1-C5 alkylene group is selected from the group consisting of one or more of a halogen-substituted C1-C120 alkyl group, …and a halogen-substituted or unsubstituted C2-C40 heteroaryl group”. Claim 3 is objected to because the claim should cite “wherein the substituent of the C1-C5 alkylene group is selected from the group consisting of one or more of halogen, …and pyridyl”. Claim 4 is objected to because the claim should cite “wherein R5 and R6 are each independently selected from the group consisting of a hydrogen atom, …and nitrogen-containing hydrocarbon group”. Claim 5 is objected to because the claim should cite “wherein R5 and R6 are independently selected from the group consisting of hydrogen atom, …and pyridyl”. Claim 7 is objected to because the claim should cite “further comprises one or more selected from the group consisting of 1.3-propane sultone, … and ethylene sulfate” because of the use of “and”. Claim 8 is objected to because the claim should cite “wherein the lithium salt a selected from the group consisting of one or more of LiPF6, …and LiN(SO2)F2 and … the cyclic carbonate is selected from the group consisting of one or more of ethylene carbonate, … and butylene carbonate, and the chain carbonate is selected from the group consisting of one or more of dimethyl carbonate, … and methyl propyl carbonate” because of the use of “selected from”. Claim 10 is objected to because the claim should cite “M is selected from the group consisting of one or more of Al, … and Fe” because of the use of “selected from”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(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 1, 6-11 and 17-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for R1, R2, R3 and R4 to be an unsubstituted C1-C5 alkylene group, does not reasonably provide enablement for R1, R2, R3 and R4 to be a substituted or unsubstituted C1-C5 hydrocarbylene group claimed in claim 1. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims. An alkylene group is a specific species to the broad hydrocarbylene group. An alkylene group refers to an alkene, which is an unsaturated hydrocarbon containing a double bond between two carbon atoms whereas hydrocarbylene refers to any divalent radical form by removing two hydrogen atoms from a hydrocarbon, which can include alkynes and other types of hydrocarbons.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
The breadth of the claims [where R1, R2, R3 and R4 are a substituted or unsubstituted C1-C5 hydrocarbylene group in the spiro compound represented by Structural Formula 1];
The nature of the invention;
The state of the prior art;
The level of one of ordinary skill;
The level of predictability in the art;
The amount of direction provided by the inventor [where R1, R2, R3 and R4 are an unsubstituted C1-C5 alkylene group in the spiro compound represented by Structural Formula 1] ;
The existence of working examples [where R1, R2, R3 and R4 are an unsubstituted C1-C5 alkylene group in the spiro compound represented by Structural Formula 1]; and
The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The specification discloses sufficient information for one of ordinary skill in the art to use a spiro compound where R1, R2, R3 and R4 are an unsubstituted C1-C5 alkylene group represented by Structural Formula 1. However, the specification does not provide direction on how to use a spiro compound where R1, R2, R3 and R4 are a substituted or unsubstituted C1-C5 hydrocarbylene group represented by Structural Formula 1. Thus, the disclosed specification does not provide guidance and does not bear a reasonable correlation to the full scope of the claim. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of the claim(s).
Claims 4-5, 11 and 15-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 4 is rejected because R1, R2, R3 and R4 are not defined in the claim. Claim 11 is objected to because unclear of the phrase “has an asymmetric structure” further limits claim 1 from which the claim depends from because the compound already contains an asymmetric structure. Allowable Subject Matter
Claims 2-3 and 12-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Cha et al. (US 2016/0211550) teaches an electrolyte solution for a lithium battery comprising a lithium salt, an organic solvent and a disultone-based compound represented by Formula 1:
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.Cha teaches a very similar compound but the bond O-S(=O)2-(A1)n1 does not teach the bond X-R2 of the instant invention.
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/LAURA S. WEINER/
Primary Examiner
Art Unit 1723
/Laura Weiner/Primary Examiner, Art Unit 1723
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