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 .
Relevant MPEP Sections
MPEP 2112.01 relating to Composition, Product, and Apparatus Claims: 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).
Response to Arguments
Applicant's arguments and amendments have been fully considered and are persuasive for the claim rejections 35 USC § 112 and anticipation 35 USC §102, however, they are not persuasive in regard to the prior art rejection under obviousness and 35 USC §103.
Applicant argues the criticality and low critical solution temperature (LCST) properties in the claims as amended however the instant specification discloses -
“[0042] The polyethersulfone according to an exemplary embodiment may show LCST behavior by specific means, for example, the number average molecular weight of polyethersulfone, the kind of solvent, or a combination thereof, and the electrolyte according to an exemplary embodiment may provide a lithium secondary battery satisfying both excellent performance and thermal stability, by using the polyethersulfone showing LCST behavior”
Applicant argues the claimed composition has a criticality such as an unexpected advantage corresponding to portions of the present specification which describe the functionality of the polymer having a LCST. However, the Examiner notes MPEP 716.02(d) - Unexpected Results Commensurate in Scope with Claimed Invention: Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In the instant case, the claims do not specify and allow for any a lithium salt and a nonaqueous organic solvent in any compositional values relative to the additive.
This application is attempting to claims a very well-studied material (cyclic electrolyte additives such as polyethersulfone i.e. PES) and the volumes of prior art, such as those references cited above, speak to the obviousness of the necessity to optimize the variables claimed (composition and molecular weight of the PES). Furthermore, the instant claims fail to establish criticality of the claimed ranges (by failing to be reasonable commensurate in scope with the results shown in the specification – see MPEP 716.02(d)) because the claims do not positively require the particulars of the Examples disclosed in the instant specification as filed “[0075] 0.7M LiTFSI and 0.05M LiNO3 were dissolved in a mixed solvent of dioxolane (DOL) and dimethoxyethane (DME) at a volume ratio of 1:1 to prepare a mixed solution. The polyethersulfone of Preparation Example 1 was dissolved at 2 wt% in the mixed” which is the only actual material combination actually tested in the instant specification and the results cannot be taken to provide unexpected results for any electrolyte composition including PES, solvent and salt.
The prior art discloses PES with a molecular weight of about 25,000 (paragraph [0071] - which overlaps or is close enough to the claimed range including 20,000 - MPEP 2144.05) and is reasonably presumed to be capable of, depending on the solvents used, have a LCST which obviates the claimed range and the claimed ranges have not been given criticality as discussed above. Therefore, the prior art rejection is maintained and this action is FINAL.
Claim Rejections - 35 USC § 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.
Claims 1 and 4-13 are rejected under 35 U.S.C. 103 as unpatentable over Mikhaylik et al. (US Pub 2012/0052397 of record).
In regard to claims 1 and 4-10, Mikhaylik et al. teach an electrolyte for a lithium secondary battery comprising: lithium salts such as LiPF6 and LiNO3 (paragraph [0084]; a nonaqueous organic solvent such as dioxolane and dimethoxymethane (paragraph [0084]); and about 1 to about 10 percent by weight polyethersulfone (i.e. PES) additive (paragraph [0077]) with a molecular weight of about 25,000 (paragraph [0071]) where the PES additive has substantially the same structure (paragraphs [0052-0057]) as those taught in the instant specification in paragraphs [0044-0047] as originally filed.
While the prior art does not specify a low critical solution temperature (LCST) – the materials of the prior art including the various solvent, salt and additive combinations are substantially identical to those claimed and are taken to anticipate the claimed requirements for LCST, alternative, the properties of the prior art are close enough in a manner which obviates the claimed properties (see MPEP 2112.01 above and MPEP 2144.05 regarding the obviousness of ranges). For example, the prior art composition is taken to include material combinations such as PES with a molecular weight of about 25,000 and specific solvent combinations which may be selected such that the LCST may be within or close enough to the claimed ranges, as the LCST is dependent on both the PES and solvent properties together.
In regard to claims 11-13, the prior art teaches a lithium secondary battery comprising: a sulfur containing positive electrode (paragraphs [0030]); a negative electrode; the electrolyte for a lithium secondary battery of claim 1; and a separator (figure 1, paragraph [0027]). As the material and structure of the prior art are indistinguishable from the claims, the prior art is reasonably presumed to have an interfacial resistance property at various temperatures which anticipate or obviate the claimed ranges as noted above with regard to the claimed LCST property.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub 20140011093 describes the importance of critical solution temperatures in forming polymers for battery separators and electrolytes.
US Patent No 10,046,319 newly cited teaches a polyethersulfone (polymer B) having a molecular weight of 11,000 g/mol and containing no OH end groups in Example 1 – column 10.
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 NICHOLAS P D'ANIELLO whose telephone number is (571)270-3635. The examiner can normally be reached Monday to Friday 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tong Guo can be reached at 571-272-3066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS P D'ANIELLO/Primary Examiner, Art Unit 1723
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