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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Claim Objections
Claims 1 and 19 are objected to because of the following informalities: a repeated “heterocyclylalkyl” needs to be deleted in R1-R43. Appropriate correction is required.
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 2, 6, 17-18, and 20 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 2, 6, and 17-18 recites –(CRw2)pO(C1-C6 aralkyl). Rw renders the claim indefinite as there is no definition what is meant by Rw.
Claim 20 contains the trademark/trade name Ketjenblack®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe carbon black and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 102
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 1-3, 5-7, 9-11, and 13-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakazawa et al. (WO 2022/138893).
Regarding claims 1-3, 5-7, 9-11, 13, 15-16, and 19, Nakazawa discloses an electrochemical cell comprising an anode, a cathode [0003], and a nonaqueous electrolyte comprising a salt [0039], a non-aqueous solvent [0041], and 0.001-10 mass% [0038] of a compound structure as claimed (Abstract, [0012]-[0023], [0029]:A-40 – A57, [0031]:A-97 – A-114, A-118 – A119, A-123 – A124, [0036]-[0037]).
Regarding claim 14, Nakazawa discloses the materials a claimed [0039], [0042], [0145].
Claims 17-18 attempts to limit the specific compound that are not necessarily required to be part of the composition. It is not clear if the Applicant intends the compound to be a required part of the electrolyte composition. For the purpose of examining the prior art, the Examiner considers the compounds of Claims 17-18 to be optional, and therefore do not further limit the electrolyte composition.
Regarding claim 20, please see [0118-0122].
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.
Claims 4, 8, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Nakazawa et al. (WO 2022/138893) in view of Ji et al. (US 2020/0388876).
Nakazawa a compound of Formula I-III, wherein R4-R6, which corresponds to claimed R4-R8 with a ring, R12-R18 with a ring, and R22-R24 is H ([0015-0017], and examples set forth above). Nakazawa discloses that R1-R3 is a C1-C12 hydrocarbon [0016], thereby fails to disclose that R1-R3, R9-R11, and R19-R21 is C1-6 fluorinated alkyl, alkenyl or alkynyl as presently claimed.
Ji discloses an electrolyte for an electrochemical cell, which is an analogous art to that of Nakazawa, comprising
PNG
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101
173
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Greyscale
(Examiner’s modified Figure (A) in [0067]). Ji discloses Si is directly attached to O and R1, Ra, Rb is C1-C10 alkyl, C2-C8 alkenyl, and C2-C8 heteroalkylenyl with F [0069], [0124], thereby Nakazawa shows that fluorinated alkyl or alkenyl is an equivalent structure known in the art. Therefore, because these two materials were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute alkyl for fluorinated alkyl or alkenyl in the invention of Nakazawa. Substitution of equivalents requires no express motivation as long as the prior art recognizes the equivalency. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Grover Tank & Mfg. Co. Inc V. Linde Air Products Co. 85 USPQ 328 (USSC 1950). Moreover, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nakazawa’s hydrocarbon to be of fluorinated alkyl or alkenyl with reasonable expectation of success and since Ji discloses that this is a known substituents that is directly attached to SiO in order to improve energy density [0002].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/ Examiner, Art Unit 1785
/Holly Rickman/ Primary Examiner, Art Unit 1785
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