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 .
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.
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Claims 9, 10, 12 -15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 and 9-12 of copending Application No. 18/551,828 [hereinafter ‘828], in view of Choi et al. (U.S. Pub. US 2019/0214622).
Regarding claim 9, ‘828 teaches a secondary battery comprising:
a positive electrode;
a negative electrode;
a non-aqueous electrolytic solution; and
a separator,
wherein an active material of the negative electrode contains one or more compounds selected from the group consisting of a C-based compound, a Si-based compound, a Sn-based compound and metal lithium or metal lithium, and
the separator is a polymer film having an air permeability of more than 10,000 seconds, an ionic conductance of 1 x10-5 S/cm or more (claim 7 of ‘828),
and a contact angle between at least one surface of the separator and an organic solvent of 90° or more (claim 9 of ‘828),
‘828 further teaches wherein the polymer film contains at least one polymer selected from the group consisting of an aromatic polyamide, an aromatic polyimide, and an aromatic polyamide-imide (claim 12 of ‘828).
but does not teach wherein an active material of the positive electrode is a lithium-containing transition metal oxide represented by general formula LixMyOz, where M is at least one element selected from the group consisting of Ni, Co, Mn, Al, Mg, and Mo, and a composition ratio satisfies 0.8 ≤ x ≤ 1.3, 0.5 ≤ y ≤ 2, and 1 ≤ z ≤ 4, the non-aqueous electrolytic solution contains two solvents, is separated by the separator, and has a composition of the non-aqueous electrolytic solution in contact with a negative electrode side and a composition of the non-aqueous electrolytic solution in contact with a positive electrode side different from each other.
However, Choi 622 teaches wherein an active material of the positive electrode is a lithium-containing transition metal oxide represented by general formula LixMyOz, where M is at least one element selected from the group consisting of Ni, Co, Mn, Al, Mg, and Mo, and a composition ratio satisfies 0.8 ≤ x ≤ 1.3, 0.5 ≤ y ≤ 2, and 1 ≤ z ≤ 4 (LiCoO2, [0141]), the non-aqueous electrolytic solution (see [0108]) contains two solvents (see [0151]), is separated by the separator (64, Fig. 8), and has a composition of the non-aqueous electrolytic solution in contact with a negative electrode side and a composition of the non-aqueous electrolytic solution in contact with a positive electrode side different from each other (see [0095]).
Examiner’s Note: It is the position of the Examiner, that the catholyte and anolyte taught by Choi 622 are different in composition, since the invention is taught to prevent swelling form absorption/uptake of an electrolyte (see [0005]), thereby preventing crossover of electrolyte systems.
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the positive electrode of ’828 such that the active material was LiCoO2, as taught by Choi 622, to enable reversible intercalation of lithium (see [0140]).
Further, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the non-aqueous electrolytic solution of Sawamoto such that the positive and negative electrolytic solutions have different compositions, as taught by Choi 622, to increase the performance of a lithium ion battery and facilitate the use of novel materials ([0095]).
Regarding claim 10, ‘828 teaches wherein the separator is a polymer film having an air permeability of more than 10,000 seconds, an ionic conductance of 1 x10-5 S/cm or more (claim 7 of ‘828),
but does not teach a contact angle between at least one surface of the separator and a propylene carbonate liquid of 90° or more and a contact angle between at least one surface of the separator and a 1,2-dimethoxyethane liquid of 90° or more.
However, ‘828 teaches a contact angle between at least one surface of the separator and a dimethyl carbonate liquid of 90° or more (claim 9 of ‘828).
Further, Choi 622 teaches dimethyl carbonate as a functional equivalent of propylene carbonate or dimethoxyethane as solvents for a lithium-ion battery (see [0151]).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the separator of ‘828 such that it has a contact angle greater than 90° with propylene carbonate and 1,2-dimethoxyethane, to allow for the use of a functionally equivalent electrolyte system ([0151]).
Regarding claim 12, ‘828 teaches wherein a change ratio of a contact angle between an organic solvent and the polymer film after 1 hour is less than 10% (claim 10 of ‘828).
Regarding claim 13, ‘828 does not teach wherein change ratios of contact angle between the polymer film and a propylene carbonate liquid after 1 hour and a contact angle between the polymer film and a 1,2-dimethoxyethane liquid after 1 hour are less than 10%.
However, ‘828 teaches wherein a change ratio of a contact angle between a dimethyl carbonate liquid and the polymer film after 1 hour is less than 10% (claim 10 of ‘828),
Further, Choi 622 teaches dimethyl carbonate as a functional equivalent of propylene carbonate or dimethoxyethane as solvents for a lithium-ion battery (see [0151]).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the separator of ‘828 such that it has a change ratio of a contact angle with propylene carbonate and 1,2-dimethoxyethane less than 10% after 1 hour, to allow for the use of a functionally equivalent electrolyte system ([0151] of Choi 622).
Regarding claims 14 and 15, since ‘828 and Choi would have suggested the secondary battery having substantially the same structure (i.e., electrodes, non-aqueous electrolytic solution, separator, and active material), it is the examiner’s position that the shrinkage and meltdown temperature required by claims 14 and 15 would have naturally flowed from the suggestion of the references.
Allowable Subject Matter
Claims 11 and 17-21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN J JOHNSON whose telephone number is (571)272-1177. The examiner can normally be reached Monday-Friday, 6:30 AM - 3 PM.
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JONATHAN JOHNSON
Primary Examiner
Art Unit 1734
/JONATHAN JOHNSON/Primary Examiner, Art Unit 1734
Prosecution Insights