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 . If status of the application as subject to 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 a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-20 are pending in the application and are presently examined.
Double Patenting
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application Number 18/112,796 (796). Although the claims at issue are not identical, they are not patentably distinct from each other. All distinctions between present claims 1 & 19 and application 796 are taught by US20210288320A1 (Kawada), as discussed in the Allowable Subject Matter section below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 Objections
Claims 2-3 & 5 are objected to because of the following informalities.
Claim 2 recites “p, q, and r are each independently an integer ranging from 0 to 2”. This “integer” was introduced in claim 1, so “an integer” should be amended to “the integer”.
Claim 3 recites “m and n are each independently an integer ranging from 10 to 200”. This phrase was introduced in claim 1, so it should be deleted.
Claim 5 recites “the electrolyte additive has a weight average molecular weight of 5,000 to 30,000 g/mole”. The “weight average molecular weight” was introduced in claim 1. Examiner suggests the following amendment: “the is 5,000 to 30,000 g/mole”
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.
Claims 1-20 are 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(s) regard as the invention.
Claims 1 & 19 show an asterisk (*) at both ends of Formula 1, but fail to define the asterisk. The specification provides the following definition for the asterisk:
“In addition, unless specifically stated otherwise, the symbol ‘*’ refers to a bond formed between the same or different atoms or the terminals of the formulas.”
If * is a bond, it is unclear what atoms are bonded. If * is a terminal, it is unclear what chemical element the polymer terminates with.
Claims 2-18 & 20 are rejected due to their dependence on claims 1 or 19.
Claim 14 recites “the Formula 3”. There is insufficient antecedent basis for this limitation in this claim.
Allowable Subject Matter
Claims 1-20 are allowable over prior art, and will be allowed if the above rejections and objections are overcome. The following is a statement of reasons for allowable subject matter:
US20210288320A1 (Kawada) and JP2953047B2 (Tosha) are the closest prior art of record. Kawada teaches the following claim 1 limitations. The claims are in bold font, and the prior art is in parentheses.
A lithium secondary battery (paragraphs 56-57 & 94) comprising:
an electrode assembly comprising a positive electrode, a negative electrode, and a separator interposed between the positive electrode and the negative electrode (paragraph 85-57; figure 1); and
an electrolyte composition comprising a lithium salt… and a non-aqueous solvent (paragraphs 85-86),
wherein the positive electrode comprises a positive electrode active layer containing an irreversible additive represented by the Formula 2… [Formula 2] LiaMbM’1-bOc (paragraph 94: Li5FeO4)
wherein…
M comprises one or more of Co, Ni, Mn, or Fe,
M’ comprises one or more of Co, Ni, Mn, Fe, Al, Mg, Zn, or Ti, provided that M and M’ are different from each other, and
a, b, and c are in a range of 1.50 ≤ a ≤ 6.5, 0 ≤ b ≤ 1, and 1.5 ≤ c ≤ 4.5, respectively.
Claims 1 & 19 also recite:
an electrolyte composition comprising… an electrolyte additive having a unit represented by the Formula 1…
the electrolyte additive has a weight average molecular weight of less than 40,000 g/mole:
[Formula 1]
PNG
media_image1.png
601
1036
media_image1.png
Greyscale
wherein:
R1, R2, and R3 are each independently hydrogen or an alkyl group having 1 to 6 carbon atoms,
R4 and R5 are each independently an alkylene group having 1 to 6 carbon atoms,
p, q, and r are each independently an integer ranging from 0 to 5,
m and n are each independently an integer ranging from 10 to 200,
Tosha teaches the following chemical (page 1 of original patent):
PNG
media_image2.png
132
674
media_image2.png
Greyscale
This chemical is similar to presently claimed monomer n in Formula 1. Tosha, however, fails to teach monomer m, and Tosha is not analogous.
Claims 2-18 and 20 are allowable due to their dependence on claims 1 or 19.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
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/R.G.W./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721