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 .
As can be seen in the published version of the instant application, some of the text is illegible (eg table 1). A proper specification must be provided with the next response.
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 9 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ogawa 2019/0359847.
Ogawa exemplifies (#1) production of a polycarbonate of BPC. BPC has a single methyl at applicant’s R1-R4 position and single methyl at applicant’s R11-R14 position in formula (1). The number of repeating units is 1-,000 (paragraph 11). The polycarbonate is dissolved in toluene (paragraph 81) and coated on steel and dried. This dried film meets applicant’s claim regardless of what solvent was used as the solvent is eliminated upon drying.
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.
Claims 1-3 and 5-9 rejected under 35 U.S.C. 103 as being unpatentable over Ogawa 2019/0359847.
Ogawa exemplifies (#1) production of a polycarbonate of BPC. BPC has a single methyl at applicant’s R1-R4 position and single methyl at applicant’s R11-R14 position in formula (1). The number of repeating units is 1-,000 (paragraph 11). 10 parts of the polycarbonate is dissolved in 90 parts toluene (paragraph 81).
Toluene does not qualify as applicant’s solvent. However, dimethyl carbonate may be used in lieu of toluene (paragraph 52).
It would have been obvious to substitute dimethyl carbonate solvent for the example’s toluene solvent.
In regards to applicant’s dependent claims:
BPC provides applicant’s (5) structure of claim 5 and 6.
The viscosity of the polycarbonate is 0.65dl/g (paragraph 80) – meeting applicant’s claim 7.
The polycarbonate solution is coated on steel and dried (paragraph 81) – meeting applicant’s claim 9.
Claims 1-3 and 5-9 rejected under 35 U.S.C. 103 as being unpatentable over Ogawa 2019/0359847 in view of JP2019199558.
Ogawa applies as explained above.
JP2019199558 exemplifies dimethyl carbonate effectively dissolves polycarbonate in example 1.
Thus, JP2019199558 provides further reason to choose dimethyl carbonate from Ogawa’s list of potential solvents.
Claims 1-13 rejected under 35 U.S.C. 103 as being unpatentable over JP2001325990 in view of Ogawa 2019/0359847 and JP2019199558.
The reference exemplifies (#4) a polycarbonate from 29g BPAP, 25.6g BPC, 60g of siloxane and 0.61g of a trifunctional branching agent.
The BPC structure corresponds to applicant’s (1) with “X” being isopropylidene with a single methyl at applicant’s R1-R4 position and a single methyl at applicant’s R11-R14 position. Based on these weights, the amount of BPAP (ie applicant’s structure “4”) is well below applicant’s 75% maximum.
The number of repeating units is not given, but the intrinsic viscosity is 0.57 dL/g (paragraph 49). This value is at the low end of applicant’s claimed range (see applicant’s claim 7). Given the bisphenol polycarbonate units (ie from BPC + BPAP) make up only ~50wt% of the entire polycarbonate, it is safe to say the number of repeating BPC polycarbonate units must be below applicant’s 1,000 maximum.
36 parts of this polycarbonate is combined with 64 parts of a LiPF6 solution (paragraph 50). This is then dissolved in tetrahydrofuran solvent as in example 1 – presumably at a polycarbonate to tetrahydrofuran ratio of 4.5/22.5.
Tetrahydrofuran does not qualify as applicant’s solvent. The reference (paragraph 21) does suggest any solvent capable of dissolving the polycarbonate is suitable. JP2001325990 (paragraph 23) does list dimethyl carbonate as a solvent for the electrolyte (eg LiPF6) but as such would be present in amounts less than applicant’s minimum of 50wt%.
Ogawa (paragraph 52) lists dimethyl carbonate along with tetrahydrofuran are suitable solvents for polycarbonates. JP2019199558 exemplifies that dimethyl carbonate effectively dissolves polycarbonate in example 1.
It would have been obvious to substitute dimethyl carbonate solvent for the example’s tetrahydrofuran solvent as it would have been expected to effectively dissolve JP2001325990’s polycarbonate as well as the electrolyte.
In regards to applicant’s dependent claims:
The LiPF6 (paragraph 40) is provided in a solution of ethylene carbonate and propylene carbonate – meeting applicant’s claim 4.
BPC provides applicant’s (5) structure of claim 5 and 6.
The viscosity of the polycarbonate is 0.57dl/g (paragraph 49) – meeting applicant’s claim 7.
The polycarbonate solution is coated on PET and dried (paragraph 50) as in example 1 – meeting applicant’s claims 9 and 12.
The cited example’s10.5g of 1molar LiPF6 solution would provide approximately:
10.5g x 1mol LIPF6/1000g x 152gLiPF6/mol =1.6g of LiPF6
1.6g LiPF6
----------------------------------------------------------------- = 4% which meets applicant’s claim 10
4.5g PC + 22.5g solvent + 10.5g LiPF6 soln
LiPF6 is applicant’s electrolyte of claim 11.
The conductivity (table 1) is 0.00078 S/cm or 780 S/cm – meeting applicant’s claim 13.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1,2,5,6 and 8-13 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 19-119212 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application also claims electrolyte solutions of polycarbonate in a carbonate solvent (eg #4). The instant claims are broader in the sense that the polycarbonate need not have all three bisphenol monomers of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 2/17/26