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 Group I, claims 9-12 and 14-16 in the reply filed on 01/06/2026 is acknowledged.
Claims 1-8 are withdrawn by the examiner from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claim 15 is 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 15 is vague and indefinite for the following reasons:
The preamble is drawn to a compound represented by formula (P1A) whereas the body of the claim appears to be drawn to a composition as it recites that the compound has a water content of 5000 mass ppm or less, thus rendering the scope of the claim unclear.
The claim recites a water content of 50000 mass ppm or less, but it is unclear whether the mass ppm is based on the total amount of the compound of formula (P1A) and water or is relative to the compound of formula (P1A).
Claim Rejections - 35 USC § 102
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.
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.
Claims 9 and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Patent number US4760177 (US’177; cited in IDS 12/20/2024).
Regarding claims 9 and 14-16, US’177 teaches anhydrous metal trifluoroacetate salt (specie of the claimed formula (P1A)) containing less than 0.1% of water (1,000 ppm) (col. 1, ll. 10-11). The reference specifically teaches:
CF3COONa containing about 3.998 ppm water (Example 2, calculated from 400/kg of water/ CF3COONa)
CF3COONa containing 480 ppm water (Example 3)
CF3COOLi containing 800 ppm (Example 4, calculated from 0.08% water)
CF3COOK containing 550 ppm water (Example 5)
CF3COONa containing 800 ppm (Example 7, calculated from 0.08% water).
Regarding claim 9, US’177 fails to teach that the above salts are additive for an electrochemical device as instantly set forth in the preamble of the claim. However, MPEP § 2111.02 indicates that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. In this instance, the intended use of the claimed compound represented by formula (P1A) is of no significance to the structure of the compound. Accordingly, the intended use in the preamble is not considered to be a limitation of the claim and thus is not given patentable weight.
Regarding claims 15-16, the limitation “produced by the production method according to claim 1” is a product by process claim language as a result of the catalyst product. The product by process limitation is not limited to the manipulations of the recited steps for preparing the compound of formula (P1), but only to the structure implied by the steps, in this case, only to the compound of formula (P1). See MPEP § 2113:
"[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) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim" ).
Furthermore, because the process steps do not appear to impart distinctive structural characteristic to the final compound of formula (P1), the process steps are not given patentable weight. See MPEP § 2113:
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) (holding "interbonded by interfusion" to limit structure of the claimed composite and noting that terms such as "welded," "intermixed," "ground in place," "press fitted," and "etched" are capable of construction as structural limitations). See also In re Nordt Dev. Co., 881 F.3d 1371,1375-76, 125 USPQ2d 1817, 1820 (Fed. Cir. 2018)(holding "the specification demonstrates that ‘injected molded’ connotes an integral structure," and discussing several cases since Garnero that held "limitations to convey structure even when they also describe a process of manufacture").
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Patent application publication number US2022/0158247A1 (US’247) in view of Patent number US4760177 (US’177; cited in IDS 12/20/2024).
Regarding claim 10, US’247 teaches an electrolytic solution comprising a lithium acetate compound represented by formula (I) (same as instant compound of formula (P1A)):
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110
249
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Greyscale
wherein R represents a fluorine atom or a fluorinated hydrocarbon group having from 1 to 6 carbon atoms ([0011]-[0013]) and exemplifies a nonaqueous electrolyte solution comprising lithium trifluoroacetate ([0266]-[0270]).
Regarding claims 11-12, US’247 further teaches and exemplifies the use of the electrolytic solution in lithium ion secondary battery ([0021]-[0025] and [0271]-[0274]), , which is a known electrochemical device.
Regarding claims 10-12, while US’247 teaches that the lithium acetate electrolyte solution is nonaqueous, the reference fails to teach or suggest that the electrolyte solution comprises water at a content of 50000 mass ppm or less relative to the compound represented by formula (I). The deficiency is however cured by US’177.
US’177 teaches anhydrous metal trifluoroacetate salt (specie of the claimed formula (P1A)) containing less than 0.1% of water (1,000 ppm) (col. 1, ll. 10-11). The reference specifically teaches:
CF3COONa containing about 3.998 ppm water (Example 2, calculated from 400/kg of water/ CF3COONa)
CF3COONa containing 480 ppm water (Example 3)
CF3COOLi containing 800 ppm (Example 4, calculated from 0.08% water)
CF3COOK containing 550 ppm water (Example 5)
CF3COONa containing 800 ppm (Example 7, calculated from 0.08% water).
Thus, since US’247 requires the electrolytic solution to be nonaqueous, a skilled artisan would have been motivated to use the anhydrous metal trifluoroacetate salt of US’177, specifically the anhydrous lithium trifluoroacetate, as the lithium acetate of US’247 with a reasonable expectation of success in obtaining a nonaqueous electrolytic solution.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to obtain the electrolyte solution, electrochemical device and a lithium ion secondary battery as instantly claimed in view of the teachings of US’177 and US’247.
Conclusion
Claims 9-12 and 14-16 are rejected and no claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEDHANIT W BAHTA/ Primary Examiner, Art Unit 1692