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 1-7 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.
Regarding claim 1, last line, “50 mass ppm or less” is unclear and renders the claim indefinite. The Examiner suggests removing “mass” so that the claim reads “50 ppm or less”. The Examiner will examine the claim as reading 50 ppm or less.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4, 6, and 7 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Tani et al. (“Tani”, US 2020/0176771 A1).
Regarding claims 1 and 7, Tani discloses a non-aqueous electrolyte secondary battery (title) and teaches electrolytic solutions (Table 1) containing 5 vol.% methyl acetate (i.e. carboxylic acid ester) and 5 ppm methanol (i.e. hydroxy-group containing compound), which falls within the claimed range of 50 ppm or less.
As to claim 2, Tani teaches including methyl acetate at 5 vol.% (Table 1).
As to claim 4, Tani teaches including methanol (Table 1).
As to claim 6, Tani teaches methyl acetate (Table 1), which reads on the claimed structure.
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.
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 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Tani, as applied above, and further in view of Kotato et al. (“Kotato”, US 2007/0224514 A1).
Regarding claims 3 and 5, Tani is applied as in the 102 rejection above.
Tani does not expressly teach the mass ratio claimed in claim 3 or the diether compound claimed in claim 5.
However, Kotato discloses a non-aqueous electrolyte solution and lithium secondary battery (title) and teaches including diether compounds ([0167]) in any proportion ([0170]) but teaches a range of usually 0.01 weight% or greater and 5 weight% or lower ([0171]).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to include diether compounds in the electrolytic solution of Tani to inhibit degradation under high voltage ([0171]), as taught by Kotato.
As to the mass ratio, Kotato teaches that if the content is too low, inhibitory effect oof degradation under high voltage may not appear to an adequate degree, and if the proportion is too high, large-current characteristics of the battery may tend to decline ([0171]).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to determine the appropriate amount of diether compound to use in Tani through routine experimentation.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05(II).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL H. LEE whose telephone number is (571)272-2548. The examiner can normally be reached M-F 8:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DANIEL H. LEE
Primary Examiner
Art Unit 1746
/DANIEL H LEE/Primary Examiner, Art Unit 1746