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 .
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 22 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 22 recites the limitation "the salt of lithium" in line 4. There is insufficient antecedent basis for this limitation in the claim. Lithium salt is first introduced in non-connected claim 5.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 10, 11, 12, 13, 15, 16 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14, 16, 15, 18, 20, 21 of copending Application No. 18/256,264 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the compound formula choices overlap with those of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1, 2, 5, 6, 8, 18, 19, 22, 23, 27, 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smith et al. (PGPub 2019/0185402).
Considering Claim 1, Smith discloses a nonaqueous battery electrolyte formulation (battery electrolyte composition [0008, 0067, 0068]), comprising a compound of Formula (1) (general formula (1) [0076] or compounds such as Example 1 [0158] or Example 2 [0161] read on the compound of Formula (1) as the OR substituent group must read on the requirement of either cis- or trans-).
Considering Claim 2, Smith discloses a battery (lithium ion battery [0067, 0073]), comprising the battery electrolyte formulation according to claim 1 (see claim 1).
Considering Claim 5, Smith discloses that the metal salt is a salt of lithium such as lithium hexafluorophosphate, lithium tetrafluoroborate, lithium perchlorate, lithium hexafluoroarsenate, lithium bis(fluorosulfonyl)imide, lithium bis (trifluoromethanesulfonyl)imide ([0069]).
Considering Claim 6, Smith discloses an additional solvent such as propylene carbonate, ethylene carbonate, dimethyl carbonate, ethyl methyl carbonate ([0072]), and because this is mixed with the hydrofluoroolefin compound that makes up at least 25% by weight [0076], this reads on the liquid component of between 0.1 wt% to 99.9 wt% of the liquid component.
Considering Claim 8, Smith discloses a compound such as Example 1 [0158] or Example 2 [0161], which reads on the formula of R being C1-6H0-13Z0-13.
Considering Claim 18, Smith discloses a method of reducing the flammability of a battery and/or a battery electrolyte comprising adding to the battery and/or battery electrolyte the battery electrolyte formulation according to claim 1 (adding the compound to battery electrolyte used for nonflammability requirements [0008, 0017]).
Considering Claim 19, Smith discloses a method of powering an article comprising a battery, the method comprising adding to the battery the battery electrolyte formulation according to claim 1 (electrolyte added to battery for outstanding cycle life [0067], used to power electronic articles such as computers, power tools, automobiles [0075]).
Considering Claim 22, Smith discloses mixing a compound of Formula (1) with the additional solvent and with the salt of lithium so as to produce the formulation ([0067]).
Considering Claim 23, Smith discloses that a capacity of the battery and/or charge transfer within the battery is improved relative to a battery without the formulation (the electrolyte composition provides outstanding cycle life at a maximum charge voltage of at least 4.5V and up to 6.0V [0067], contains same formulation as outlined in claim 1).
Considering Claim 27, Smith discloses an additional solvent such as propylene carbonate, ethylene carbonate, dimethyl carbonate, ethyl methyl carbonate ([0072]), and because this is mixed with the hydrofluoroolefin compound that makes up at least 25% by weight [0076], this reads on the liquid component of between 0.1 wt% to 99.9 wt% of the liquid component.
Considering Claim 29, Smith discloses a compound such as Example 1 [0158] or Example 2 [0161], which reads on the formula of R being C1-6H0-13Z0-13.
Claims 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Amine et al. (PGPub 2011/0076572).
Considering Claim 10, Amine discloses a formulation (non-aqueous electrolyte composition [Abstract]) comprising a metal ion (includes metal ions [0071]), a compound of Formula (1) (non-aqueous electrolyte includes two or more including a fluorinated ether [0008], fluorinated ether can include F3CFC=CFOCH2F; F3CFC=CFOCHF2; F3CFC=CFOCF3, etc. [0013, 0063] that read on Formula (2) and the requirements of R1, R2, R3, and OR4), optionally in combination with a solvent ([Abstract]); and
OR is cis- or trans- to any vicinal group (because Amine discloses a compound with a formula identical and/or substantially identical to the claimed Formula (1), including the same double bond, one of ordinary skill in the art would appreciate that said OR is at least cis- or trans- to any vicinal group, lacking any further distinction thereof).
Considering Claim 11, Amine discloses a battery (battery [0016]), comprising the formulation according to claim 10 (see claim 10).
Considering Claim 12, Amine discloses that in Formula (2), R has the formula C1-6H0-13Z0-13 wherein Z is F (fluorinated ether can include F3CFC=CFOCH2F; F3CFC=CFOCHF2; F3CFC=CFOCF3 [0013, 0063]).
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 3, 20, 24, 26 are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (PGPub 2019/0185402).
Considering Claim 3, Smith discloses that a lithium electrolyte salt is employed at a concentration of 1.0-2.0 M such that the conductivity of the electrolyte composition is at or near its maximum value [0071]. As the weight percentage is directly proportional to the molar concentration, routinely experimenting with and coming up with a weight range of 0.1 wt% to 20 wt% to achieve such a maximum electrolyte conductivity would have been obvious to a person of ordinary skill in the art.
Considering Claim 20, Smith discloses that the electrolyte composition provides outstanding cycle life at a maximum charge voltage of at least 4.5V and up to 6.0V [0067], so partially replacing or supplementing an electrolyte to achieve such predicted results would have been obvious to a person of ordinary skill in the art.
Considering Claim 24, Smith discloses that a lithium electrolyte salt is employed at a concentration of 1.0-2.0 M such that the conductivity of the electrolyte composition is at or near its maximum value [0071]. As the weight percentage is directly proportional to the molar concentration, routinely experimenting with and coming up with a weight range of 0.1 wt% to 20 wt% to achieve such a maximum electrolyte conductivity would have been obvious to a person of ordinary skill in the art.
Considering Claim 26, Smith discloses that the metal salt is a salt of lithium such as lithium hexafluorophosphate, lithium tetrafluoroborate, lithium perchlorate, lithium hexafluoroarsenate, lithium bis(fluorosulfonyl)imide, lithium bis (trifluoromethanesulfonyl)imide ([0069]).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (PGPub 2019/0185402) and further in view of Bartelt et al. (PGPub 2010/0209600).
Considering Claim 21, Smith discloses a nonaqueous battery electrolyte formulation (battery electrolyte composition [0008, 0067, 0068]), comprising a compound of Formula (1) (general formula (1) [0076] or compounds such as Example 1 [0158] or Example 2 [0161] read on the compound of Formula (1) as the OR substituent group must read on the requirement of either cis- or trans-).
However, Smith is silent to an alcohol reaction for producing the compound.
Bartelt discloses an ether compound composition [Abstract]. The composition may be prepared by contacting a perfluoroalkene such as perfluoro-3-heptene with an alcohol in the presence of a strong base [0024]. The preparation and compound present non-flammability with little or no environmental impact [0006].
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the electrolyte composition of Smith with the preparation method of Bartelt in order to present non-flammability with little or no environmental impact [0006].
Claims 13, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Amine et al. (PGPub 2011/0076572).
Considering Claim 13, Amine discloses that the ionic electrolyte salt is present from about 0.01 M to about 1.5 M so as to provide an adequate number of carrier ions in the electrolyte [0072]. Because the amount of electrolyte salt provides an adequate number of carrier ions in the electrolyte [0072], routinely experimenting with and coming up with an amount of 0.1 to 20 wt% relative to the total mass of the battery electrolyte formulation to achieve such would have been obvious to a person of ordinary skill in the art. Amine discloses that the metal electrolyte salt is a salt of lithium, sodium, magnesium, calcium (salt of lithium, sodium, magnesium, calcium [0071]).
Considering Claim 15, Amine discloses that the metal electrolyte salt is a salt of lithium selected from the group consisting of lithium hexafluorophosphate (LiPF6) (LiPF6 [0090]).
Considering Claim 16, Amine discloses an additional solvent (further includes a carbonate compound solvent [0008]) selected from the group consisting of dimethyl carbonate, ethyl methyl carbonate, propylene carbonate, ethylene carbonate ([0014]), or dimethoxyethane ([0067]), sulfolane ([0010]). Because these compounds are included [0008] for the purpose of good wetting stability, low viscosity, high ionic conductivity, and oxidative durability [0039], routinely experimenting with and coming up with an additional solvent liquid component weight of 0.1 wt% to 99.9 wt% would have been obvious to one of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER P DOMONE whose telephone number is (571)270-7582. The examiner can normally be reached M-F 8:00-4:30 PM.
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/CHRISTOPHER P DOMONE/Primary Patent Examiner
Art Unit 1725