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 .
Response to Amendment
Upon consideration, the previous rejection of record was withdrawn in light of new amendments. However new rejection is applied to the amended claims. All changes made in the rejection are necessitated by the amendment.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 4-9, and 13-14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 102/103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4-9, and 13-14 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 02/099919 A1 hereinafter Coowar.
Regarding Claim 1, Coowar teaches an electrolyte for a lithium-ion cell (column 1, lines 3-5), the electrolyte comprising: ethylene carbonate in the range 1-30% by volume; vinyl ethylene carbonate in the range 1-8% by volume; and methoxyethyl methyl carbonate in the range 8-80% by volume (column 2, lines 24-33). Coowar further teaches that the electrolyte comprises a lithium salt (column 6, 8-13).
Alternatively, The Supreme Court decided that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that "[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp." An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S._,_, 82 USPQ2d 1385, 1395 -97 (2007) (see MPEP § 2143, E.).
Therefore, it would have been obvious to one of ordinary skill in the art to form an electrolyte that comprises lithium salt, ethylene carbonate, vinyl ethylene carbonate, and methoxyethyl methyl carbonate in the claimed volume ratio before the effective filing date of the claimed invention because such configuration can form an electrolyte for a lithium-ion cell with improved safety (column 2, lines 11-22).
MPEP § 2112.01 teaches that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Because the electrolyte of the cited prior art is substantially identical to that of the claims, the claimed properties or functions (i.e., flash point and ionic conductivity at room temperature) are presumed to be inherent.
Regarding Claims 4-9, Coowar teaches that the electrolyte comprises vinyl ethylene carbonate in the range 1-8% by volume, methoxyethyl methyl carbonate in the range 8-80% by volume (column 2, lines 24-33), and 1M of LiPF6 as the lithium salt (column 6, 8-13). With regards to fluoroethylene carbonate, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Regarding Claims 13-14, Coowar teaches a lithium-ion cell that comprises a cathode, an anode, a separator disposed between the cathode and the anode, and the electrolyte as described above (column 6, lines 2-13, see cell assembly). Coowar further teaches a lithium-ion cell that is used in an electronic device.
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 OSEI K AMPONSAH whose telephone number is (571)270-3446. The examiner can normally be reached Monday - Friday, 8:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, NICHOLAS A SMITH can be reached at (571)272-8760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OSEI K AMPONSAH/ Primary Examiner, Art Unit 1752