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 Arguments
Applicant's arguments filed 4/27/2026 have been fully considered but they are not persuasive as to claims 5 and 11.
Applicant argues that because claims 5 and 11 depend on claim 1 which has been allowed and that the Office Action has failed to make a prima facie case of anticipation or obviousness as to claim 5 or 11. The argument is unpersuasive since the hexafluorophosphate salt according to claim 5 is a dependent product-by-process claim. Applicant is reminded that the patentability of a product-by-process claim is based on the product itself and does not depend on its method of production only the structure implied by the steps. See MPEP 2113.
Here, the Office Action cites Waki et al (US 2010/0322838) which teaches a “high purity, low moisture hexafluorophosphate”. Applicant is also reminded that because of the nature of a product-by-process claim, a lesser burden of proof is required to make out a case of prima facie obviousness or anticipation. Therefore, the burden is on Applicant to come forward with evidence establishing that a nonobvious difference between the claimed product and the Waki. See MPEP 2113.II.
At Page 9-10 of the Remarks, Applicant argues against the rejection of claim 9 that Li discloses a free acid content of <40 ppm, a moisture content of <5 ppm and is silent to impurity metal ion content. The argument is not persuasive first since a free acid content of <40 ppm and a moisture content of <5 ppm overlaps with the claimed range and does not teach a process comprising metal ions.
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.
Claim(s) 5 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Waki et al (US 2010/0322838).
Regarding claim 5, the claim is a product-by-process claim directed to a phosphorus pentafluoride product. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Here, Waki discloses a high purity, low moisture hexafluorophosphate (AF6) where A is at least one of Li, Na, K, Rb, Cs, NH4; and Ag (see [0066-0067]). The prior art Waki therefore discloses a hexafluorophosphate salt that is identical in chemical composition to the claimed product (i.e., hexafluorophosphate salt) and which is specifically taught to have high purity and low moisture even if produced by a different method since the instant claim implies the identical chemical structure of [cation]+[PF6]-. In the event any slight differences can be shown between the two phosphorus pentafluorides, the burden is on Applicant to provide concrete evidence that the difference exhibits unexpected properties compared to the prior art Waki which appears to disclose an identical product. See Ex parte Gray, 10 USPQ2d 1922.
Regarding claim 11, Waki further teaches a process for producing an electrolyte for lithium secondary batteries (i.e., lithium-ion batteries) using the hexafluorophosphate salt (see [0001-0002])
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al (CN-101391760).
Regarding Claim 9, the claim is a product-by-process claim directed to a phosphorus pentafluoride product. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Li teaches a highly pure phosphorus pentafluoride containing more than 99.9% pure PF5 (see Abstract).
Here, the prior art Li discloses a phosphorus pentafluoride product that is identical in chemical composition, phosphorus pentafluoride (PF5) and comprises a purity of greater than 99.9%. The instant claim implies the identical structure of PF5 having a purity of more than or equal to 99.9% In the event any slight differences can be shown between the two phosphorus pentafluorides, the burden is on Applicant to provide concrete evidence that the difference exhibits unexpected properties compared to the prior art Li which appears to disclose an identical product. See Ex parte Gray, 10 USPQ2d 1922.
Further regarding the content of free acid, moisture, and metal ion impurity, as noted above Li teaches greater than 99.9 % pure PF5. Furthermore, as admitted in the Remarks filed 4/27/2026, Li teaches a process comprising an HF content that is <40 ppm and a moisture content that is <5 ppm. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the PF5 as taught by Li where the concentrations of free acid, moisture, and metal ions are in any range overlapping with Li including the claimed range.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li as applied to claim 9, and in further view of Waki.
As applied to claim 9, Li discloses a high-purity phosphorus pentafluoride. Li does not disclose a preparation method of lithium hexafluorophosphate or lithium difluorophosphate for lithium-ion batteries, comprising using the high-purity phosphorus pentafluoride.
Waki teaches a method for preparing high purity hexafluorophosphate by using high purity phosphorus pentafluoride (see Abstract and [0090]). Waki teaches a process producing lithium hexafluorophosphate from the phosphorus pentafluoride and produced at a low price while having low moisture content and low free acid concentration (See [0090] and [0096]). Waki discloses the hexafluorophosphate having industrial applicability as an electrolyte for a battery (see [0121-0122]) It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to use the high-purity phosphorus pentafluoride as disclosed by Li in a preparation method of lithium hexafluorophosphate for lithium ion batteries as taught by Waki because it produces an industrial useful electrolyte for lithium ion batteries with low impurities and low price.
Allowable Subject Matter
Claims 1-4 and new claim 13 are allowed for the reasons previously presented.
Claims 7-8 are objected to as being dependent upon rejected base claim 5, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 7, the arguments presented by Applicant in the Remarks filed 4/27/2026 are persuasive. The Office agreed that HF in the process according to Waki is consumed as MF·(HF) and therefore does not teach a catalyst.
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 MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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