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 .
The Applicant’s arguments have been received. Claim 2 has been amended. Claim 8 is cancelled.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office Action.
Claim Rejections - 35 USC § 112
The rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, on claim 2 is withdrawn because the Applicant amended the claims.
The rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, on claim 8 is withdrawn because the Applicant cancelled the claim.
Claim Rejections - 35 USC § 103
The rejection under 35 U.S.C. 103 as being unpatentable over Wang et al. (US Publication 20170018803) in view of Mosallanejad (Phthalimide Derivatives: New Promising Additives for Functional Electrolyte in Lithium-Ion Batteries) in further view of Ehrlich (US Patent 6,203,949), on claims 1, 3, 5-8 are maintained. The rejection is repeated below for convenience.
The rejection under 35 U.S.C. 103 as being unpatentable over Wang et al. (US Publication 20170018803) in view of Mosallanejad (Phthalimide Derivatives: New Promising Additives for Functional Electrolyte in Lithium-Ion Batteries) in further view of Ehrlich in furthest view of Jiang, on claim 4 is maintained. The rejection is repeated below for convenience.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US Publication 20170018803) in view of Mosallanejad (Phthalimide Derivatives: New Promising Additives for Functional Electrolyte in Lithium-Ion Batteries) in further view of Ehrlich (US Patent 6,203,949) in furthest view of Jiang (CN101826635).
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 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.
Claim(s) 1, 3, 5-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US Publication 20170018803) in view of Mosallanejad (Phthalimide Derivatives: New Promising Additives for Functional Electrolyte in Lithium-Ion Batteries) in further view of Ehrlich (US Patent 6,203,949).
Regarding claims 1, 5, 6, 8, the Wang et al. reference discloses a lithium battery comprising a positive electrode, a negative electrode, and a non-aqueous electrolyte, wherein, the positive electrode comprises an electrode mixture including manganese dioxide (P29 and P37). The non-aqueous electrolyte comprises additive which includes an isocyanate compound with a concentration of 5 mass% or less (P23). The Wang discloses LiPF6 salt in non-aqueous electrolyte comprising ethylene carbonate and propylene carbonate but does not explicitly disclose a phthalimide compound. However, Mosallanejad reference discloses a phthalimide to be a new promising additive for lithium batteries to be candidates for SEI-forming additives protecting the anode in systems utilizing ethylene carbonate and propylene carbonate and LiPF6 salt electrolytes. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate phthalimide additive to protect the anode by forming SEI film disclosed by the Mosallanejad reference for the battery system utilizing ethylene carbonate and propylene carbonate with LiPF6 electrolytes in order to sustain battery component functions without compromising the anode and potentially short circuiting the battery.
In addition, the Wang reference discloses the negative electrode includes carbon but does not explicitly teach metal lithium, however, Ehrich reference discloses the conventional anode materials are carbon and lithium. That is, substitution of known equivalent structures involves only ordinary skill in the art. In re Fout 213 USPQ 532 (CCPA 1982); In re Susi 169 USPQ 423 (CCPA 1971); In re Siebentritt 152 USPQ 618 (CCPA 1967); In re Ruff 118 USPQ 343 (CCPA 1958). When a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. KSR v. Teleflex
Furthermore, the Wang in view of Mosallanejad in further view of Ehrlich (herein referred to as modified Wang reference) discloses a lithium ion battery but is silent in disclosing a primary battery, however, it is noted that the claim limitation “primary” is “intended use” language and it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Regarding claim 3, the Wang reference discloses the isocyanate compound includes isocyanate group comprising C1-C2 aromatic hydrocarbon group.
Regarding claim 7, the modified Wang reference discloses at least one of cyclic imide compound but silent on phthalic acid ester. However, since the claim recites multiple compounds in an alternative manner. Thus, as long as one of the compounds are disclosed by the prior art such as cyclic imide compound. It is unnecessary to address the rest of the claimed limitations such as phthalic acid ester.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US Publication 20170018803) in view of Mosallanejad (Phthalimide Derivatives: New Promising Additives for Functional Electrolyte in Lithium-Ion Batteries) in further view of Ehrlich (US Patent 6,203,949) in further view of Nunome et al. (US2012/0308901).
Regarding claim 2, the modified Wang reference discloses the claimed invention above and further incorporated herein. The modified Wang reference discloses the second component to be isocyanate compound with a concentration of 0.1% - 3 mass% or less and a first component of phthalimide but does not specify the first component and the second component included in the non-aqueous electrolyte is from 1/3 to 50/1. However, Nunome et al. reference discloses phthalimide component of 0.5 mass % can be added to the same lithium battery electrolyte. Therefore, it would have been obvious when applying phthalimide to an electrolyte in a lithium battery disclosed by the modified Wang reference to apply the mass % of phthalimide also for an electrolyte of a lithium battery disclosed by the Nunome et al. reference. A patent claim can be proved obvious merely by showing that the combination of elements was obvious to try. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. KSR v. Teleflex
As a result, the range selection of the 0.5 mass% of first component and the 0.1 mass% of the second component discloses the claimed limitation. For the range outside of the claimed range, it is the Examiner’s position that the amounts in question are so close that it is a prima facie obvious that one skilled in the art would have expected them to have the same properties Titanium Metals Corp. v. Banner, 227 USPQ 773
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US Publication 20170018803) in view of Mosallanejad (Phthalimide Derivatives: New Promising Additives for Functional Electrolyte in Lithium-Ion Batteries) in further view of Ehrlich (US Patent 6,203,949) in furthest view of Jiang (CN101826635).
Regarding claim 4, the modified Wang reference discloses the claimed invention above and further incorporated herein. The modified Wang reference discloses phenyl isocyanate but does not explicitly disclose the isocyanate compound includes at least one selected from the group consisting of hexyl isocyanate, hexamethylene diisocyanate, 1,3-bis(isocyanatomethyl) cyclohexane, and isophorone diisocyanate. However, the Jiang reference discloses that the same electrolytes as that of the modified Wang reference. The Jiang reference discloses the electrolytes can comprise additives to modify the electrolyte, specifically, electrolyte stabilizing additives to stabilize the electrolyte at battery operating temperature. The electrolyte stabilizing additives include phenyl isocyanate and hexamethylene isocyanate (P71; claimed hexamethylene diisocyanate). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate hexamethylene isocyanate for teachings of phenyl isocyanate for stabilizing the electrolyte disclosed by the Jiang reference for the phenyl isocyanate in the same electrolyte disclosed by the modified Wang reference for battery stability at operating temperatures.
Response to Arguments
Applicant's arguments filed 6/3/26 have been fully considered but they are not persuasive.
The Applicant argues, “
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However, the recitation of “primary” is intended use language for a lithium battery and also a preamble of the claim limitation. Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) 1-7. When reading the preamble in the context of the entire claim, the recitation “primary” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
The Applicant argues, “
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However the Wang reference discloses Li(CoxNiyMn1-x-y)O2 which is a lithium cobalt nickel manganese dioxide. The interpretation of manganese dioxide is considered a broad term which encompasses Li(CoxNiyMn1-x-y)O2
The Applicant argues, “
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However, the limitations are not claimed and therefore are considered moot. There is no sufficient evidence that the prior art does not comprise the same intrinsic properties as that of the Applicant’s invention. Additionally, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., intrinsic properties) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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 HELEN OI CONLEY whose telephone number is (571)272-5162. The examiner can normally be reached 8:30 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Smith can be reached at 5712728760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Helen Oi K CONLEY/Primary Examiner, Art Unit 1752
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