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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Specification
The specification and drawings have been reviewed and no clear informalities or objections have been noted.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2016/0233544).
Regarding claims 1, 5, 6 and 7, Kim discloses a nonaqueous electrolytic solution for a nonaqueous electrolytic solution battery comprising a positive electrode and a negative electrode that are capable of occluding and releasing metal ions,
wherein the nonaqueous electrolytic solution comprises a compound represented by Formula (A) (such as tris(trimethylsilyl)borate, see paragraph 104) and a compound represented by Formula (α) (such as the silylamide of paragraph 100) along with an alkali metal salt (such as a lithium salt, see paragraph 115) and a nonaqueous solvent (as described in paragraph 107). It is noted that the tris(trimethylsilyl)borate of Kim also reads on Formula A’’ of claim 5.
Kim goes on to teach that the amount of Formula A (which in Kim, is called a “additive”, as described in paragraph 104) is between 0.01wt% and 10wt% based on the weight of the electrolyte (as described in paragraph 105) and further teaches that Formula α is (which in Kim is called “silylamide compound”, as described in paragraph 101) is contained in an amount of 0.01wt% to 10wt% based on the weight of the electrolyte (see paragraph 102). Kim does not teach the exact claimed range of these formulas but does teach ranges that overlap them, as described above. As such, arriving at the claimed range would have been obvious to one of ordinary skill in the art at the time of the invention. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP §2144.05(I)).
Regarding claim 2, Kim fails to teach the exact claimed range of the borate in the electrolyte, but Kim does teach an overlapping range (see paragraph 105 which teaches 0.1% to 10%). As such, arriving at the claimed range would have been obvious to one of ordinary skill in the art at the time of the invention. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP §2144.05(I)).
Regarding claim 3, Kim fails to teach the exact claimed range of the acetamide in the electrolyte, but Kim does teach an overlapping range (see paragraph 102 which teaches 0.1% to 10%). As such, arriving at the claimed range would have been obvious to one of ordinary skill in the art at the time of the invention. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP §2144.05(I)).
Regarding claim 4, Kim fails to teach the exact ratio of the borate to the acetamide, but does teach identical ranges for each compound in the electrolyte. Such ranges produce a ratio that overlaps the claimed ratio. As such, arriving at the claimed range would have been obvious to one of ordinary skill in the art at the time of the invention. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP §2144.05(I)).
Regarding claims 8-9, Applicant claims that the compound α and Compound A form a composite insulating coating film as a result of being electrochemically decomposed. Such a claim limitation does not further define the claimed composition of the nonaqueous electrolyte solution but rather recites a result of an electrochemical process on the claimed nonaqueous electrolyte. It is also noted that the claimed composition of compound A and compound α is identical to that of Kim and the electrochemical process that produces the composite insulating coating film will also produce a composite insulating coating film in Kim. Regarding limitations recited in claim which are directed to a manner of operating disclosed system (such as the electrochemical decomposition), neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP §2114 and 2115. Further, process limitations do not have a patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states "Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.
Relevant Prior Art
US 2014/0134501 – Discloses an acetamide and a borate as additives in a nonaqueous electrolyte.
Response to Arguments
Applicant's arguments filed 10/24/2025 have been fully considered but they are not persuasive. On page 5, Applicant claims unexpected results by pointing to the beneficial results of Table 1 which illustrate a reduced amount of gas generated compared to comparative examples.
The Office notes, however, that the data of Table 1 which allegedly exhibit the claimed unexpected results, are not commensurate in scope with the claims. Such is required by MPEP §716.02(d). In this case, the data provided in Table 1 shows that Formula A is one of 3 compounds (Compound 1, 2 or 3), but the claims claim a large number of possibilities for Formula A that go beyond what shows the alleged unexpected results. Another example of this is the content of Compound (A). All the examples in Table 1 show a content wt% of Compound (A) of 1wt%. However, the claim recites a range of Compound A that is significantly greater than just 1%.
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 J MERKLING whose telephone number is (571)272-9813. The examiner can normally be reached Monday - Thursday 8am-6pm.
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, Basia Ridley can be reached at 571-272-1453. 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.
/MATTHEW J MERKLING/ Primary Examiner, Art Unit 1725