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 .
Status of Claims
Claims 1-5 and 8-9 were rejected in the Office Action from 03/30/2026.
Applicant filed a response, amended claims 1 and 9, cancelled claim 2 and added claims 10-18.
Claims 1 and 2-18 are currently pending in the application, of claims 6-7 are withdrawn from consideration.
Claims 1, 3-5 and 8-18 are being examined on the merits in this Office Action.
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, 2-5 and 8-18 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.
Claims 1 and 9 recite the limitation “R15 is an alkenylene group” however, there is no R15 group in any of the claimed formulas. Clarification or amendment to the claim is required.
Regarding dependent claims 2-5, 8 and 10-18, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
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.
Claim(s) 1, 3-5, 8-12, 14-16 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yasuo et al. (CN1836347A) and further in view of Yamada et al. (U.S. Patent Application Publication 2014/0217322).
The Examiner has provided a machine translation of CN1836347A. The citation of the prior art in this rejection refer to the machine translation.
Regarding claims 1 and 8-9, Yasou teaches a lithium ion secondar battery (page 1, line 14) comprising:
a positive electrode (page 1, line 21);
a negative electrode (page 1, line 21); and
an electrolytic solution including a solvent (page 4, line 48-50) and an electrolyte salt (page 4, line 38), wherein the solvent further comprises one or more of α-angelica lactone which conforms to formula 4 and formulas 21-22, and divinyl sulfone which conforms to formula 5 (page 4, lines 18-20) (see below).
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Yasuo does not teach the formulas as recited for the first unsaturated compound. However, α-angelica lactone is known as a derivate of gamma-butyrolactone.
Yamada, also directed to batteries (i.e., electrical storage device) (paragraph [0002]), teaches an electrolytic solution that include derivates of gamma-butyrolactone (paragraph [0014]). Further, Yamada teaches the electrolyte including alpha-methylene-gamma-butyrolactone (paragraph [0029]) which encompasses the claimed Formulae (1) and (3). Yamada teaches the electrolyte improves the characteristics of the cathode and anode and allows the battery to exhibit excellent charge-discharge characteristics (paragraph [0002]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Yasuo electrolyte, which contains α-angelica lactone, a known derivate of gamma-butyrolactone (see paragraph [0029] of Yamada), to include alpha-methylene-gamma-butyrolactone, also a derivative of gamma-butyrolactone, as suggested by Yamada, an reasonably expect a success for the electrolyte to improve the characteristics of the cathode and anode and allow the battery to exhibit excellent charge-discharge characteristics.
Regarding claim 3, Yasuo teaches the content of the first and second unsaturated compound is 0.01 weight percent to 10 weight percent (page 2, lines 40-45, Examples 1-14). It is noted that Yasuo differ in the exact same content range as recited in the instant claim however, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the content range of Yasuo overlap the instant claimed range and therefore is considered to establish a prima facie case of obviousness. It has been held in the courts that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 4, Yasuo teaches the solvent including a high-dielectric-constant solvent and a lactone (i.e., alpha-methylene-gamma-butyrolactone) (page 2, lines 40-45; page 4, lines 18-20).
Yasuo does not teach the specifics of the proportion of the weight of the lactone to a weight of the high-dielectric-constant solvent as recited in the instant claim. However, a material with high dielectric constant is known to have the ability to store electrical charge and increase capacity. Therefore, absent criticality of the claimed range, one of ordinary skill in the art could have consider adding different concentrations to include the ones claimed in order to optimize the solvent’s ability to store electrical charge and achieve an optimal battery capacity.
Regarding claim 5, Yasuo, as modified by Yamada, teaches the electrolytic solution can further include a cyclic carbonic acid ester (paragraph [0017], [0028]-[0031]).
Regarding claims 10-11, Yasuo, as modified by Yamada, teaches the first unsaturated compound includes the compounds represented by Formulae 3-1 and 3-2 (paragraph [0028]-[0031]).
Regarding claim 12, Yasuo teaches the second unsaturated compound encompasses the compound represented by Formulae 5-1 (page 4, lines 18-20). Further Yasuo, as modified by Yamada, teaches the first unsaturated compound includes the compounds represented by Formulae 3-1 and 3-2 (paragraph [0028]-[0031]).
Regarding claims 14-16, Yasuo teaches the electrolytic solution further includes vinylene carbonate in a content of 0.01-20% which overlaps the claimed range (page 3, lines 13-17).
Regarding claim 18, Yasuo, as modified by Yamada, teaches the first unsaturated compound includes Formula (1) (paragraph [0028]-[0031]) and the second unsaturated compound includes Formula (6) (i.e., component B)( paragraph [0024]-[0027]).
Allowable Subject Matter
Claims 13 and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. In other words, claim 1 would be allowable if rewritten in independent form to incorporate either:
all the limitations of claim 1, claim 10 and claims 12-13, or
all the limitations of claim 1, claim 10, claim 12, and claim 17.
Applicant is encouraged to consider amending claim 1 accordingly to place the application in condition of allowance.
The prior art is silent with regards to (1) and (2) and the particular combination of the recited features.
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 CHRISTIAN ROLDAN whose telephone number is (571)272-5098. The examiner can normally be reached Monday - Thursday 9:00 am - 7:00 pm.
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/CHRISTIAN ROLDAN/Primary Examiner, Art Unit 1723
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