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.
Claims 1-20 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. In this case, claim 1, 4 and 10 respectively recite “a bis(chlorosulfonyl)imide (or salt thereof)”, “an onium salt bis(chlorosulfonyl)imide (onium salt of CSI)”, and “an onium salt bis(fluorosulfonyl)imide (onium salt of FSI)”, one of ordinary skill in the art is uncertain whether the recited limitation(s) in the parentheses is (a) merely exemplary of previously recited limitation right before parentheses, and therefore not required by the claims, or (b) a required feature of the claims. Therefore, such limitations render claim indefiniteness for one of ordinary skill in the art. Secondly, both claim 1 and 10 recite “reacting bis(chlorosulfonyl)imide (or salt thereof) with an onium halide other than an onium fluoride to produce an onium salt of bis(chlorosulfonyl)imide”, it is note that onium salt of bis(chlorosulfonyl)imide has an ordinary meaning of a chemical compound composted of an onium cation (i.e. a positively charge ion, or cation) and a the bis(chlorosulfonyl)imide anion; while claim 1 and 10 recited bis(chlorosulfonyl)imide salt appears to share a similar ordinary meaning of a chemical compound composed of a positively charge ion (i.e. an onium cation) and a the bis(chlorosulfonyl)imide anion as well. Therefore, one of ordinary skill in the art is uncertain how can one of ordinary skill in the art differentiate the reactant of “bis(chlorosulfonyl)imide (or salt thereof)” as compared to the obtained product of onium salt of bis(chlorosulfonyl)imide? if reactant and product are the same, how can such chemical reaction proceed? If reactant and product are different, what specific different cations are they each composed of? Therefore, one of ordinary skill in the art cannot ascertain the metes and bounds of such claimed limitations. All claim 1’s and 10’s depending claims are rejected for similar reasons.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Okumura (JP2016/124735) (for applicant’s convenience, Machine translations has been used for citations hereof)
Okumura teaches a method of producing fluorosulfonyl imide compound shown by
formula (1) comprising a step of reacting a compound shown by formula (2)
with a compound shown by formula (3):NHF(HF)p, in which p is an integer of 0-1 in the presence of ammonia or a primary-tertiary alkylamine N(R)having a straight-chain alkyl group (claims 1-2, para. [0008]-[0018]), wherein in formula (1), R1 represents F or a fluoroalkyl group having 1 to 6 carbon atoms,Cat1+ represents a monovalent cation represented by R2R3R4R5N+, and R2 to R5 are the same or different and represent a hydrogen atom or an alkyl group having 1 to 6 carbon atoms; in formula (2), R6 represents a halogen or a fluoroalkyl group having 1 to 6 carbon atoms, Cat2+ represents a hydrogen ion or a monovalent cation represented by R2R3R4R5N+, and R2 to R5are the same as in formula (1) :
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Okumura expressly teaches the term "fluorosulfonylimide" includes bis(fluorosulfonyl)imide having two fluorosulfonyl groups and N-(fluorosulfonyl)-N-(fluoroalkylsulfonyl)imide having a fluorosulfonyl group and a fluoroalkylsulfonyl group.
Similarly, the term "chlorosulfonylimide" includes bis(chlorosulfonyl)imide and N-(chlorosulfonyl)-N-(fluoroalkylsulfonyl)imide (para. [0020]). Okumura further teaches the formula (2) compound can be obtained by reacting a chlorosulfonylimide compound represented by the following general formula (4) (referred to as chlorosulfonylimide) with an ammonium compound (e.g. ammonium chloride) (para. [0031]-[0039], example 1) and such reaction of converting chlorosulfonylimide to an onium salt of chlorosulfonylimide can be carried out without a solvent or in the presence of a solvent (para. [0037]-[0040]) :
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.
Regarding claim 1, it would have been obvious for one of ordinary skill in the art “obvious to try” reacting chlorosulfonylimide with a well-known ammonium compound of ammonium chloride in the absence of solvent for help obtaining a desired ammonium chlorosulfonylimide salt (i.e. an ammonium salt of bis(chlorosulonyl)imide) because choosing reacting in the absence of solvent from a finite number of identified, predictable solutions of either reacting with the solvent or absence of the solvent would with a reasonable expectation of success (see MPEP §2143 KSR). It is noted that Okumura disclosed “in the absence of solvent” also reads onto the instantly claimed “in the presence of solvent less than 5 wt% based on the total weight of the reaction reaction mixture involved in step a) as well.
Regarding claim 2 and 9, such limitation has been met as discussed above.
Regarding claim 3-4 and 14-16, Okumura also teaches the ammonium salt can be quaternary ammonium chloride (para. [0035]) and the amount of ammonium compound used is preferably 1.0 to 5.0 mol per 1.0 mol of chlorosulfonylimide (para. [0036]).
Regarding claim 5, Okumura further teaches HCl also produced as byproduct (besides HF) and a salt is formed between HCl and ammonia or the like, i.e. an ammonium chloride is formed. Since ammonia chloride is used as reactant for converting chlorosulfonylimide to an onium salt of chlorosulfonylimide, it would have been obvious for one of ordinary skill in the art to recycle such HCl byproduct generated ammonium chloride for converting chlorosulfonylimide to an onium salt of chlorosulfonylimide because by doing so can help suppress the outflow of HCl to the outside of the reaction system as suggested by Okumura (para. [0022], example 1).
Regarding claim 6, Okumura teaches ammonium chloride and ammonium fluoride being used (claim 1-3, example 1, para. [0022], [0039], [0040]).
Regarding claim 7 and 17-19, Okumura further discloses "the amount of compound (3), e.g. ammonium fluoride, used is in the stoichiometric range of 1 mol to 4 mol per 1 mol of chlorosulfonylimide compound (2) (para. [0041]).
Regarding claim 8, Okumura already teaches ammonia gas being added during reacting chlorosulfonylimide compound (2) with compound (3), therefore, ammonium chloride obtained from byproduct of HCl is produced in this step. It would have been obvious for one of ordinary skill in the art to recycle such (HCl byproduct generated) ammonium chloride for converting chlorosulfonylimide to an onium salt of chlorosulfonylimide because by doing so can help suppress the outflow of HCl to the outside of the reaction system as suggested by Okumura (para. [0022], example 1).
Regarding claim 10, Okumura has been described as above. It would have been obvious for one of ordinary skill in the art “obvious to try” reacting chlorosulfonylimide with a well-known ammonium compound of ammonium chloride in the absence of solvent for help obtaining a desired ammonium chlorosulfonylimide salt (i.e. an ammonium salt of bis(chlorosulonyl)imide) because choosing reacting in the absence of solvent from a finite number of identified, predictable solutions of either reacting with the solvent or absence of the solvent would with a reasonable expectation of success (see MPEP §2143 KSR).
Okumura further teaches the producing an alkali metal salt of fluorosulfonylimide compound represented by the following formula (5), which comprises reacting a compound represented by formula (1) obtained by the method according to claim 1 or 2 with an alkali metal compound salt (claim 3, para. [0049]-[0052]):
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Regarding claim 11 and 20, Okumura expressly teaches even more preferably using LiOH, NaOH and KOH as alkali metal compound (para [0052]).
Regarding claim 12-13, Okumura does not expressly teach onium hydroxide being recycled by reaction of with a hydrogen halide. However, Okumura already teaches byproduct HF and HCl being produced in such reaction system and outflow of such byproduct need be minimized. Okumura already teaches a same or substantially the same process as that of instantly claimed, involving same or substantially the same byproduct of HCl and HF, with same or substantially the same alkali metal compound being used, therefore, same or substantially the onium hydroxide byproduct being formed in the alkali metal reacting step is expected. It would have been obvious for one of ordinary skill in the art to reacting such byproduct of onium hydroxide with HCl to form onium chloride instead of onium fluoride thus help converting chlorosulfonylimide compound represented by formula (4) more towards to onium chlorosulfonylimide while converting byproduct HF to compound represented by formula (3) as suggested by Okumura (para. [0016], [0022]).
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-11 of co-pending Application No. 18/564470 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application’470 teaches a substantially the same method including the same or substantially the same steps as that of instantly claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732