DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims Status.
This Office Action is responsive to the amendment filed on 01/29/2026. Claims 1-31 were pending. Claims 2, 6, 28, and 29 have been cancelled. Claims 1, 3-5, and 7-10 have been amended. Claims 32 and 33 have been added. Claims 1, 3-5, 7-27, and 30-33 are now pending. Claims 1, 3-5, 7-27, and 30-33 are presented for examination. Applicant's arguments have been considered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 is rejected under 35 U.S.C. 112(b) 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim recites the broad recitation “boronic acid derivative is a reaction product of an arylboronic acid of the following formula (1) and two or more reactive groups of at least one type selected from the group consisting of a hydroxyl group, a carbonyl group, an isocyanate group, and an amino group, and the claim also recites “the reactive compound has three or more of the reactive groups” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 3-5, 7-27, and 30-31 depend from claim 1 directly or indirectly and fall therewith.
Allowable Subject Matter
Claim would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action. Claims 3-5, 7-27, and 30-31 depend from claim 1 directly or indirectly and would allowable as well.
The following claim 1 drafted by the examiner and considered to distinguish patentably over the art of record in this application presented to applicant for consideration: A secondary battery electrode additive comprising a boronic acid derivative, wherein the boronic acid derivative is a reaction product of an arylboronic acid of the following formula (1) and a reactive compound having three or more reactive groups of at least one type selected from the group consisting of a hydroxyl group, a carbonyl group, an isocyanate group, and an amino group: wherein Ar represents an aryl group optionally having a substituent or a heteroaryl group optionally having a substituent[[,]] .
Please note that in case of above version compounds (4) and (6) are out of a scope of claim.
Claims 32 and 33 are allowed.
The closest prior art of record- US 6,156,459, US 20200220175, US 8,207,337, US 20150349344, CN 102790237, Yamamoto et al Angew. Chem. Int. Ed. 2008, 47, 928 –93 - fail to teach or suggest each and every limitations of the above mentioned claims 32 and 33.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection (35 U.S.C. 112(b)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: JPO decision to grant a patent for JP 2022563755
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.
/Alexander Usyatinsky/Primary Examiner, Art Unit 1751
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