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 .
DETAILED ACTION
Claims 1-8 are pending in the application. Claims 1-3 are rejected. Claims 4-8 are withdrawn from further consideration.
Response to Amendment / Argument
The amendment to the claims filed on January 14th, 2026 does not comply with the requirements of 37 CFR 1.121(c) because the dash added to the fifth line of claim 1 was not marked with underline. Amendments to the claims filed on or after July 30, 2003 must comply with 37 CFR 1.121(c) which states:
(c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement (e.g., Claims 1–5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.
(2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn—currently amended.”
(3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of “original,” “withdrawn” or “previously presented” will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of “withdrawn” or “previously presented.” Any claim added by amendment must be indicated with the status of “new” and presented in clean version, i.e., without any underlining.
(4) When claim text shall not be presented; canceling a claim.
(i) No claim text shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.”
(ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim.
(5) Reinstatement of previously canceled claim. A claim which was previously canceled may be reinstated only by adding the claim as a “new” claim with a new claim number.
Nevertheless, the amendment has been treated on the merits.
On pages 5-8 of the response filed January 14th, 2026, Applicant traverses the rejection of claims under 35 USC 102. Applicant refers to the amendment to claim 1 to recite a product by process limitation, which is addressed in the rejections below as necessitated by amendment. On pages 6 and 7 of the response, Applicant asserts the method “can effectively control the hydroxyl concentration in the linear carbonate,” which does not distinguish from a product having the same hydroxyl concentration obtained by other methods.
On page 7 of the response, Applicant refers to the prior art documents and the disclosure of different methods, which is not found persuasive since a product-by-process is not limited the recited method steps.
On pages 7 and 8 of the response, Applicant discusses a lack of “technical guidance when combined” between the two cited 102 references. The instant claims are rejected under 102 and not 103. Applicant further refers to the avoidance of acidity and that lower hydroxyl rate “does not necessarily result in a free acid conversion rate…” as claimed. Applicant, however, has presented no evidence regarding the prior art materials and why they would not possess the instantly claimed property. As discussed in the rejection, the instant application attributes the recited property to a low hydroxyl concentration. Applicant refers to dependence on “the free acid content in the lithium hexafluorophosphate before and after storage.” The instant claims, however, place no limitation on the free acid content in lithium hexafluorophosphate when analyzing the solution, i.e. a material would be embraced by the instant claims if it results in a free acid conversion rate less than 1.2% when mixed with pure lithium hexafluorophosphate.
For these reasons, Applicant’s arguments are not found persuasive regarding the rejections below.
All other objections and rejections made in the previous Office Action that do not appear below have been overcome by Applicant's amendments to the claims. Therefore, arguments pertaining to these objections and rejections will not be addressed.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3 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.
Step 3 of claim 1 recites “cooling to (-50)-70°C”. The effect of the number in paratheses is unclear. It is unclear if Applicant is attempting to recite alternative values or a range. If Applicant is attempting to claim a range, it is unclear if the dash before seventy is a negative symbol or the range indicator. Dependent claims 2 and 3 are rejected as indefinite for the same reason since they do not obviate the issue.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2006069997 A by Shinichi et al., where a machine translation is appended to the reference and will be cited herein.
The prior art teaches the following on page 1: “The present invention relates to a production method capable of obtaining high-purity dialkyl carbonate with a very small amount of residual alcohol in a short time.” The prior art teaches Examples 1-5 for preparing diethyl carbonate (embraced by structural formula 1 where R1 and R2 are ethyl) on pages 4 and 5 where Table 1 discloses ethanol content in ppm for Examples 1-4 of 65, 3, 60 and 95 ppm. Each of these is embraced by the range of instant claim 1 for hydroxyl concentration. Furthermore, examples, 2 and 3 are embraced by the hydroxyl concentration of instant claim 3.
The prior art further teaches Examples 6-9 on page 7 where examples 6-8 prepare dimethyl carbonate (embraced by structural formula 1 where R1 and R2 are methyl) and where example 9 prepares methyl ethyl carbonate (embraced by instant claim 2 and structural formula 1 where one of R1 and R2 is methyl and the other is ethyl). Table 3 lists residual methanol or methanol/ethanol amounts in the range of instant claims 1 and 3.
Regarding the limitation of claim 1 that “a free acid conversion rate of a solution with a concentration of 1 mol/L as formulated from the linear carbonate and lithium hexafluorophosphate is less than 1.2% after sealed storage under a condition of constant temperature of 25°C for 30 days”, the instant specification states the following:
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In this situation, the prior art teaches hydroxyl concentrations lower than those disclosed in the instant specification resulting in rates having a value lower than 1.2%.
Regarding the newly added limitations of instant claim 1 pertaining to a method of making the linear carbonate, MPEP 2113(I) states: ‘"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)’. In this situation, the prior art teaches a linear carbonate and that it possesses a property (low hydroxyl concentration) that Applicant discloses as causing a low free acid conversion rate.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 104418751 A by Guo et al., where a machine translation is appended to the reference and will be cited herein.
Guo et al. teach a method of preparing dimethyl carbonate (embraced by instant structural formula 1 where R1 and R2 are methyl) on pages 2 and 3 where the prior art teaches the following on page 3:
[…] After the molecular sieve is vented to the buffer tank, it is emptied; when the liquid level in the gas-liquid separator reaches 35-40%, the whole tower is kept back, and the side line production line is closed, the side line circulation line is opened, and the synchronous side line circulation is maintained, in the process Mid-line closed sampling analysis Content and moisture, when the alcohol content is ≤20ppm, the water content is ≤8ppm, and the dimethyl carbonate content is ≥99.99%, the feed pump is started to continue feeding, and the side line circulation line is closed, the side line production line is opened, and the switch is switched to The side line is in working condition, and the circulating water cooler is turned on to cool the product after the side line is produced to 35 ° C ~ 40 ° C before being sent to the finished product tank.
The prior art teaches less than or equal to 20 ppm alcohol content, which falls within the range of instant claims 1 and 3.
Regarding the limitation of claim 1 that “a free acid conversion rate of a solution with a concentration of 1 mol/L as formulated from the linear carbonate and lithium hexafluorophosphate is less than 1.2% after sealed storage under a condition of constant temperature of 25°C for 30 days”, the instant specification states the following:
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In this situation, the prior art teaches hydroxyl concentrations lower than those disclosed in the instant specification resulting in rates having a value lower than 1.2%.
Regarding the newly added limitations of instant claim 1 pertaining to a method of making the linear carbonate, MPEP 2113(I) states: ‘"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)’. In this situation, the prior art teaches a linear carbonate and that it possesses a property (low hydroxyl concentration) that Applicant discloses as causing a low free acid conversion rate.
Conclusion
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 MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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