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 1-12 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.
The claims are indefinite due in large part to improper Markush Group formatting. There are a number of ways one can properly structure a list of options to be selected from, care must be taken in the drafting. The two primary approaches are to format the claim as a material “selected from” a closed group, or to define the material as being, or comprising, one or more alternatively listed options. When the claim is formatted in “selected from” structure, care must be taken to structure the group that follows in a manner that ensures it has a definite, closed, structure. At a minimum this requires the listing of the group to be closed with “and” rather than “or”. Preferably, “selected from” is also followed by “the group consisting of” to make clear that the list that follows is a closed set. A prime example of proper Markush listing is in claim 8, for the element M1.
Claims 1, 2, 4, 6, 9, and 12, however, all include improper listings because they include a claim element that is “selected from” and the list that follows is closed with the conjunction “or”, making it unclear what the definite closed set of the list is. It is strongly recommended that Applicant, in addition to changing “or” to “and”, also add “the group consisting of” after any instance of the term “selected from”.
It is noted that the listing provided in claim 7 is not improper, despite closing a long list with the conjunction “or”. This is because claim 7 is not structured in “selected from” format, instead being structured as a requirement that “the non-aqueous solvent comprises” such that use of “or” to close the list that follows signals that only one (or more) member(s) of the list is required to satisfy the claim.
Further regarding claim 10, the use of parentheticals in the claim renders it indefinite. In particular, it is unclear if “(SiOq, 0.8<q<2.5)” is a required further limitation of the term “silicon oxide” or instead is just meant as an exemplary range of silicon oxides. If it is intended to be a required limitation, it should be expressly recited in the claim without parentheticals. If it is not intended to be required, it should be deleted. Further, although “(Si)” and “(SiC)” do not create ambiguity in the claim because they are the only possible symbols used for silicon and silicon carbide respectively, Applicant is strongly encouraged to delete those from the claim as well since the use of parentheticals in U.S. patent drafting is strongly discouraged.
Further regarding claim 11, it is unclear if the claim requires silicon to be present, or merely places a limit on the amount of silicon to be present if it is included. For examination purposes, the broadest reasonable interpretation will apply such that it will be considered claim 11 can be met by selection of carbon as the active material with no silicon present, or silicon as the active material in the amount of 1-20% of the total active material.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Each of formulae 8-14 of claim 3 include a fluoromethyl group in the position of the compound corresponding to R2. Claim 1 limits R2 to a fluoro group, an alkyl group, etc., but never states that the hydrogens of the alkyl group may be substituted by fluorine despite clearly stating that other hydrogens may be substituted by fluorine. Thus, the compounds according to chemical formulae 8-14 recited in claim 3 fail to incorporate all limitations of claim 1, because the structure in the R2 position does not correspond to any of the limitations required for that position. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1, 4-7, and 10-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2020/0119400 to Kubo (“Kubo”). Kubo discloses an electrolyte for use in lithium ion batteries. The electrolyte includes a second compound which, in some embodiments, corresponds to a compound in accordance with Formula (1) where R1 is CH2-O (i.e., R1 “comprises oxygen) and R2 is fluoro. Kubo at compound 34 on page 8. The compound is described as a salt, preferably with lithium as the cation. Id. at paragraph [0060]. The second compound is present in the electrolyte solution preferably in an amount ranging from 0.1 to 2% by mass in the electrolyte solution. Id. at paragraph [0066]. The electrolyte includes a lithium salt as solute, including the ubiquitous LiPF6 among others (at paragraph [0042], and common solvents including ubiquitous carbonates such as propylene carbonate, butylene carbonate, ethylene carbonate, diethyl carbonate, dimethyl carbonate, etc. at paragraph [0078]. Moreover, the electrolyte may include common additives, including cyclohexyl benzene, vinylene carbonate, etc. Id. at paragraph [0082]. The negative electrode active material of the battery is preferably carbon. Id. at paragraph [0085].
Claims 1-3 are anticipated by U.S. Patent Application Publication No. 2002/0009650 to Michot (“Michot”). Example 16 of Michot produced compounds corresponding to Structural Formula 29 of claim 3, which corresponds to formula 1 of claims 1 and 2 with R1 comprising any arylene group of 6 carbons (phenylene group) and R2 being a fluoro group. Michot at paragraph [0187].
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.
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.
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kubo in view of U.S. Patent Application Publication No. 2021/0083289 to Chen (“Chen”). Kubo is applied as described above. Kubo discloses that the positive electrode active material may be lithium metal oxide where the metal is a mixture of nickel, cobalt, and manganese, but does not give stoichiometric ratios for those elements.
High-nickel content oxides, such as LiNi0.8Co0.1Mn0.1O2 and LiNi0.6Co0.2Mn0.2O2 are commonly used versions of this material because it provides an excellent balance between capacity, cost, and safety. See, e.g., Chen at Abstract and Background section. Thus, use of those specific versions of the material suggested by Kubo are considered to be nothing more than the obvious use of a commonly known material for its intended purpose to achieve a predictable result.
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/WYATT P MCCONNELL/ Examiner, Art Unit 1727
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