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 Status
Claims 1-6 and 8-9 are under examination.
Claim 7 is cancelled.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-6, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Onuki et al. (JP2012178339A as cited in IDS and using Machine Translation as English version), hereinafter Onuki, in view of Nishitani et al. (WO 2018/123751 A1 and using U.S. PGPub US 2020/0091500 A1 as Machine Translation of English version), hereinafter Nishitani.
Regarding claims 1 and 8, Onuki discloses a non-aqueous secondary battery, comprising:
a positive electrode including a lithium-transition metal composite oxide containing at least nickel as a transition metal (i.e., at least lithium nickel cobalt manganese composite, etc., as disclosed in [0153]);
a liquid electrolyte (i.e., at least as disclosed in [0158], Example 1, [0164], Example 10, [0172]),
wherein the liquid electrolyte contains a sultone compound (e.g., as disclosed in Example 10 [0164] 1,3-propensultone, etc., lacking any further distinction thereof, also see [0027]-[0032]) and an isocyanate compound (e.g., as disclosed in Examples 1 and 10 [0158] and [0164] 1,3-bis(isocyanatomethyl)cyclohexane, etc., also see [0023]-[0025]), lacking any further distinction thereof).
Onuki further discloses in Examples 1 and 10 [0158] and [0164] (i.e., substitute 1,3-propensultone for 1,3-propanesultone) a ratio of 2/0.5 = 4 = A/B, which is a value that is within the claimed range of 1 ≤ A/B ≤ 10 is satisfied, where a concentration of the sultone compound in the liquid electrolyte is A mass%, and a concentration of the isocyanate compound in the liquid electrolyte is B mass%, thus a prima facie case of anticipation exists (MPEP 2131.03, I.).
Onuki further discloses a negative electrode (i.e., at least as disclosed in [0012], [0014], [0026], [0032], [0034], [0061], [0092], [0093]-[0098]),
wherein the negative electrode includes a silicon-containing material (i.e., at least silicon, etc., as disclosed in [0096]-[0098]).
and a separator interposed between the positive electrode and the negative electrode (i.e., at least as disclosed in [0138]-[0139]).
However, Onuki is silent as to the silicon-containing material includes a lithium ion-conductive phase, and a silicon phase dispersed in the lithium ion-conductive phase, a content of the silicon phase in the silicon-containing material is C mass%, and a content of nickel relative to all metals other than lithium contained in the lithium-transition metal composite oxide is D mol%, and 1≤D/C≤1.9 is satisfied (with regards to claim 1). Furthermore, Onuki is silent as to 1.5≤D/C≤1.9 is satisfied (with regards to claim 8).
Nishitani teaches a non-aqueous electrolyte secondary battery (Title). Nishitani further teaches in [0019] a negative electrode capable of electrochemically absorbing and desorbing lithium, etc., whereby the negative electrode includes a negative electrode material (hereinafter also referred to as “negative electrode material LSX”), etc., whereby the negative electrode material LSX includes a lithium silicate phase, and a silicon particles dispersed in the lithium silicate phase, etc., and further teaches in [0026] the negative electrode material LSX includes a lithium silicate phase, and silicon particles dispersed in the lithium silicate phase, which at least provides the silicon-containing material includes a lithium ion-conductive phase, and a silicon phase dispersed in the lithium ion-conductive phase, lacking any further distinction thereof.
Nishitani further teaches in [0061] the lithium composite metal oxide can be used as the positive electrode active material, whereby examples thereof include LiaMn2-bMbO4, wherein a=0 to 1.2, b=0 to 0.9, M is at least one of Ni, etc., which at least provides, and as example given by the examiner when M = Ni, LiaMn2-bNibO4, such that since a=0 to 1.2, and b=0 to 0.9 provides a metal content (i.e., Li, Mn, Ni) ranging from 2 to 3.2, and a content of nickel that ranges from 0 to 45 mol% (i.e., 0.9×100/2 = 45 mol %).
Nishitani further teaches in [0033] the ratio of the silicon particles in the negative electrode material may be, for example, 30 mass % or more and 80 mass % or less, etc., (also see [0085] the ratio of the silicon particles in the LSX particles was 55 mass%)
Therefore, since Nishitani teaches the Ni content may be range from 0 to 45 mol% (D mol%) and further teaches the ratio of the silicon particles in the negative electrode material may be, for example, 30 mass % or more and 80 mass % or less (C mass %), this at least provides a range of 0 to 1.5, which overlaps and/or encompasses the claimed range of 1 ≤ D/C ≤ 1.9 is satisfied, where a content of the silicon phase in the silicon-containing material is C mass%, and a content of nickel relative to all metals other than lithium contained in the lithium-transition metal composite oxide is D mol% (with regards to claim 1), and further overlaps and/or encompasses the range of 1.5 ≤ D/C ≤ 1.9 is satisfied (with regards to claim 8), thus a prima facie case of obviousness exists (MPEP 2144.05, I.).
Nishitani further teaches in [0033] when the ratio of the silicon particles is in such a range, it is possible to secure a high capacity, etc.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to have modified Onuki with the teachings of Nishitani, whereby the non-aqueous secondary battery including the silicon-containing material further includes the silicon-containing material includes a lithium ion-conductive phase, and a silicon phase dispersed in the lithium ion-conductive phase, and 1 ≤ D/C ≤ 1.9 is satisfied, where a content of the silicon phase in the silicon-containing material is C mass%, and a content of nickel relative to all metals other than lithium contained in the lithium-transition metal composite oxide is D mol% as taught by Nishitani so as to secure a high capacity, etc.
Regarding claim 2, Onuki and Nishitani discloses the non-aqueous secondary battery as discussed above in claim 1. Onuki further discloses in Examples 1 and 10 [0158] and [0164] (i.e., substitute 1,3-propensultone for 1,3-propanesultone) a ratio of 2/0.5 = 4 = A/B, which is a value that is within the claimed range of 2 ≤ A/B ≤ 5 is satisfied, thus a prima facie case of anticipation exists (MPEP 2131.03, I.).
Regarding claim 3, Onuki and Nishitani discloses the non-aqueous secondary battery as discussed above in claim 1. Onuki further discloses in [0032] the sulfur compound content (e.g., sultones as discussed in [0031]) is preferably 0.3% by mass or more, and preferably 3% by mass or less, etc., and further discloses in [0026] the diisocyanate content in the present invention is usually 0.3% by mass or more, and preferably 2% by mass or less, which is a range of values that overlap and/or encompass the claimed ranges of wherein 0.01≤A≤1.5, and 0.01≤ B≤1 are satisfied, thus a prima facie case of obviousness exists (MPEP 2144.05, I.).
Regarding claim 4, Onuki and Nishitani discloses the non-aqueous secondary battery as discussed above in claim 1. Onuki further discloses in Examples 1 and 10 [0158] and [0164] (i.e., substitute 1,3-propensultone for 1,3-propanesultone, which at least provides, wherein the sultone compound has an unsaturated bond (i.e., at least1,3-propensultone possesses a double bond, etc., lacking any further distinction thereof, also see [0027]-[0032]).
Regarding claim 5, Onuki and Nishitani discloses the non-aqueous secondary battery as discussed above in claim 1. Onuki further discloses in Example 3 ([0160]) tetramethylene diisocyanate was used instead of 1,3-bis(isocyanatomethyl)cyclohexane, which at least provides, wherein the isocyanate compound is at least one selected from a diisocyanate compound from the group, lacking any further distinction thereof (also see Examples 4-6, [0160]-[0161], Example 14, [0167], also see [0023]-[0025]).
Regarding claim 6, Onuki and Nishitani discloses the non-aqueous secondary battery as discussed above in claim 1. Onuki further discloses in Examples 1 and 10 [0158] and [0164] (i.e., fluoroethylene carbonate) in a mass % of 20, which at least provides the liquid electrolyte further contains fluoroethylene carbonate, and in the liquid electrolyte, a concentration of the fluoroethylene carbonate is 5 mass% or more and 20 mass% or less, thus a prima facie case of anticipation exists (MPEP 2131.03, I.).
Regarding claim 9, Onuki and Nishitani discloses the non-aqueous secondary battery as discussed above in claim 1. Onuki further discloses in [0065]-[0066] specific examples include lithium transition metal composite oxides and lithium-containing transition metal phosphate compounds, etc.
However, Onuki is silent as to wherein the lithium-transition metal composite oxide further contains at least one selected from the group consisting of Co, Mn, and Al, a content of cobalt relative to all metals other than lithium contained in the lithium- transition metal composite oxide is E mol%, and 0 ≤ E/C ≤ 0.1 is satisfied.
Nishitani further teaches in [0061] the lithium composite metal oxide can be used as the positive electrode active material, whereby examples thereof include LiaMn2-bMbO4, wherein a=0 to 1.2, b=0 to 0.9, M is at least one of Ni, etc., which at least provides, and as example given by the examiner when M = Ni, LiaMn2-bNibO4, such that this at least provides the lithium-transition metal composite oxide further contains at least Mn from the group, such that since Co is not provided (at least in an embodiment), then E = 0, which provides E/C = 0, which is a value that is within the claimed range of 0 ≤ E/C ≤ 0.1 is satisfied, where a content of cobalt relative to all metals other than lithium contained in the lithium-transition metal composite oxide is E mol%, thus a prima facie case of anticipation exists (MPEP 2131.03, I.).
Nishitani further teaches in [0104] a non-aqueous electrolyte battery according to the present embodiment generates a smaller amount of gas during high-temperature storage, and has excellent cycle characteristics despite having a high capacity, etc.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to have modified the combined teachings of Onuki and Nishitani further with the teachings of Nishitani, whereby the non-aqueous secondary battery including the lithium-transition metal composite oxide, etc., further includes the lithium-transition metal composite oxide further contains at least one selected from the group consisting of Co, Mn, and Al, a content of cobalt relative to all metals other than lithium contained in the lithium- transition metal composite oxide is E mol%, and 0 ≤ E/C ≤ 0.1 is satisfied, as taught by Nishitani so as to provide a non-aqueous electrolyte battery according to the present embodiment generates a smaller amount of gas during high-temperature storage, and has excellent cycle characteristics despite having a high capacity, etc.
Furthermore, the skilled artisan would appreciate simply substituting one known lithium- transition metal composite oxide as disclosed by Onuki for another known lithium-transition metal composite oxide as taught by Nishitani so as to provide a non-aqueous electrolyte battery according to the present embodiment generates a smaller amount of gas during high-temperature storage, and has excellent cycle characteristics despite having a high capacity, etc.
Response to Arguments
Applicant’s arguments, see Page 5, filed July 7th, 2026, with respect to the rejection(s) of claim(s) 1-2 and 4-6 under 35 U.S.C. 102 in view of Onuki have been fully considered and are persuasive. Therefore, the 35 U.S.C. 102 rejection has been withdrawn. However, upon further consideration, a new ground(s) of 35 U.S.C. 103 rejection is made in view of Onuki and Nishitani for claims 1-6 and 8-9.
Applicants argue Page 6, “Having a limited focus on problems associated with fluorine-substituted cyclic carbonate-containing solvent systems, Onuki does not recognize or address, explicitly or implicitly, an increase in DCIR under low SOC conditions caused when a Si-containing negative electrode containing a material is used. Onuki neither discloses nor suggests controlling the relationship (D/C ratio) between the Ni amount in a positive electrode and a Si amount in the negative electrode generally or as specifically recited in the present claims.”
The examiner respectfully disagrees, whereby as put forward in the current 35 U.S.C. 103 rejection of record, the combined teachings of Onuki and Nishitani disclose the claimed features, and in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Specifically, Nishitani teaches in [0061] the lithium composite metal oxide can be used as the positive electrode active material, whereby examples thereof include LiaMn2-bMbO4, wherein a=0 to 1.2, b=0 to 0.9, M is at least one of Ni, etc., which at least provides, and as example given by the examiner when M = Ni, LiaMn2-bNibO4, such that since a=0 to 1.2, and b=0 to 0.9 provides a metal content (i.e., Li, Mn, Ni) ranging from 2 to 3.2, and a content of nickel that ranges from 0 to 45 mol% (i.e., 0.9×100/2 = 45 mol %).
Nishitani further teaches in [0033] the ratio of the silicon particles in the negative electrode material may be, for example, 30 mass % or more and 80 mass % or less, etc., (also see [0085] the ratio of the silicon particles in the LSX particles was 55 mass%)
Therefore, since Nishitani teaches the Ni content may be range from 0 to 45 mol% (D mol%) and further teaches the ratio of the silicon particles in the negative electrode material may be, for example, 30 mass % or more and 80 mass % or less (C mass %), this at least provides a range of 0 to 1.5, which overlaps and/or encompasses the claimed range of 1 ≤ D/C ≤ 1.9 is satisfied, where a content of the silicon phase in the silicon-containing material is C mass%, and a content of nickel relative to all metals other than lithium contained in the lithium-transition metal composite oxide is D mol% (with regards to claim 1), and further overlaps and/or encompasses the range of 1.5 ≤ D/C ≤ 1.9 is satisfied (with regards to claim 8), thus a prima facie case of obviousness exists (MPEP 2144.05, I.).
Therefore, the examiner asserts that the combined teachings of Onuki and Nishitani disclose the limitations as claimed, with proper motivation to combine, whereby the skilled artisan would appreciate the non-aqueous secondary battery including the silicon-containing material, etc., as disclosed by Onuki further includes the silicon-containing material includes a lithium ion-conductive phase, and a silicon phase dispersed in the lithium ion-conductive phase, and 1 ≤ D/C ≤ 1.9 is satisfied, where a content of the silicon phase in the silicon-containing material is C mass%, and a content of nickel relative to all metals other than lithium contained in the lithium-transition metal composite oxide is D mol% as taught by Nishitani so as to secure a high capacity, etc.
Furthermore, in response to applicant's argument that “an increase in DCIR under low SOC conditions caused when a Si-containing negative electrode containing a material is used”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Furthermore, 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., “an increase in DCIR under low SOC conditions”) 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).
Applicant further argues Pages 6-7, “Nishitani's reference to a Si-containing material for use in a negative electrode is not sufficient to remedy the various deficiencies of Onuki. Nishitani aims, in the case where the proportion of the silicon particles in the LSX is 30% by mass or more, to suppress gas generation during high-temperature storage, which is caused by alkali elution from the surfaces of the LSX particles and to suppress deterioration of cycle characteristics associated with the negative electrode. Nishitani's use of a poly(meth)acrylic acid to suppress expansion and contraction of the Si phase leads to another problem-the use of the poly(meth)acrylic acid promotes alkali elusion from the surfaces of the LSX particles. To tackle this problem, controlled amounts of a poly(meth)acrylic acid and a carboxyalkyl cellulose are used in combination while adjusting the pKa of the acid of the nonaqueous electrolyte to neutralize the alkali eluted from the LSX. Nishitani thereby achieves suppression of both gas generation during high-temperature storage and negative electrode deterioration (Nishitani, paragraphs [0020] to [0022]). But the solutions to those particular problems do not address the problems associated with an electrolyte containing an isocyanate compound leading to an increase in DCIR under low SOC conditions.”
The examiner respectfully disagrees, whereby as put forward in the current 35 U.S.C. 103 rejection of record, and as discussed above, the combined teachings of Onuki and Nishitani disclose the claimed features, such that the examiner doesn’t specifically rely upon Nishitani's use of a poly(meth)acrylic acid, etc., controlled amounts of a poly(meth)acrylic acid and a carboxyalkyl cellulose, etc., and rather relies on the combined teachings of Onuki and Nishitani, whereby the non-aqueous secondary battery including the silicon-containing material, etc., as disclosed by Onuki further includes the silicon-containing material includes a lithium ion-conductive phase, and a silicon phase dispersed in the lithium ion-conductive phase, and 1 ≤ D/C ≤ 1.9 is satisfied, where a content of the silicon phase in the silicon-containing material is C mass%, and a content of nickel relative to all metals other than lithium contained in the lithium-transition metal composite oxide is D mol% as taught by Nishitani so as to secure a high capacity, etc.
Furthermore, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Furthermore, in response to applicant's argument that “an increase in DCIR under low SOC conditions”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Furthermore, 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., “an increase in DCIR under low SOC conditions”) 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).
Applicant further argues Page 7, “Nishitani does not suggest determining the D/C ratio. One of ordinary skill in the art would have seen no particular reason for such a determination as the relevance of a D/C ratio was not known generally or in the specific context of the present claims. Using the guidance of the present application, the D/C ratio could at most, retrospectively, be derived only indirectly by combining non-associated passages from Nishitani. That exercise would necessarily involve taking those passages out of context from their presentation in Nishitani. Accordingly, Nishitani neither recognizes the D/C ratio as a result-effective variable affecting properties, nor discloses or suggests the concept of controlling the D/C ratio as a design parameter generally or in the context of the present claims. "Applicants may rebut a prima facie case of obviousness based on optimization of a variable disclosed in a range in the prior art by showing that the claimed variable was not recognized in the prior art to be a result-effective variable." M.P.E.P. § 2144.05.” Applicant further argues Page 7, “From the above remarks it is apparent that neither Onuki nor Nishitani nor their combination even recognize the problem addressed by the presently claimed subject matter, let alone providing a solution to the unrecognized problem. Even if one were to hypothetically combine Onuki and Nishitani, one of ordinary skill in the art could not have arrived at the technical concept of controlling the A/B ratio and the D/C ratio for suppressing an increase in DCIR when using the specific combination of a positive electrode using a Ni-rich composite oxide N and a negative electrode containing a Si-containing material.”
The examiner respectfully disagrees, whereby as put forward in the current 35 U.S.C. 103 rejection of record, the combined teachings of Onuki and Nishitani disclose the claimed features, and in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Specifically, Nishitani teaches in [0061] the lithium composite metal oxide can be used as the positive electrode active material, whereby examples thereof include LiaMn2-bMbO4, wherein a=0 to 1.2, b=0 to 0.9, M is at least one of Ni, etc., which at least provides, and as example given by the examiner when M = Ni, LiaMn2-bNibO4, such that since a=0 to 1.2, and b=0 to 0.9 provides a metal content (i.e., Li, Mn, Ni) ranging from 2 to 3.2, and a content of nickel that ranges from 0 to 45 mol% (i.e., 0.9×100/2 = 45 mol %).
Nishitani further teaches in [0033] the ratio of the silicon particles in the negative electrode material may be, for example, 30 mass % or more and 80 mass % or less, etc., (also see [0085] the ratio of the silicon particles in the LSX particles was 55 mass%)
Therefore, since Nishitani teaches the Ni content may be range from 0 to 45 mol% (D mol%) and further teaches the ratio of the silicon particles in the negative electrode material may be, for example, 30 mass % or more and 80 mass % or less (C mass %), this at least provides a range of 0 to 1.5, which overlaps and/or encompasses the claimed range of 1 ≤ D/C ≤ 1.9 is satisfied, where a content of the silicon phase in the silicon-containing material is C mass%, and a content of nickel relative to all metals other than lithium contained in the lithium-transition metal composite oxide is D mol% (with regards to claim 1), and further overlaps and/or encompasses the range of 1.5 ≤ D/C ≤ 1.9 is satisfied (with regards to claim 8), thus a prima facie case of obviousness exists (MPEP 2144.05, I.).
Therefore, the examiner asserts that the combined teachings of Onuki and Nishitani disclose the limitations as claimed, with proper motivation to combine, whereby the skilled artisan would appreciate the non-aqueous secondary battery including the silicon-containing material, etc., as disclosed by Onuki further includes the silicon-containing material includes a lithium ion-conductive phase, and a silicon phase dispersed in the lithium ion-conductive phase, and 1 ≤ D/C ≤ 1.9 is satisfied, where a content of the silicon phase in the silicon-containing material is C mass%, and a content of nickel relative to all metals other than lithium contained in the lithium-transition metal composite oxide is D mol% as taught by Nishitani so as to secure a high capacity, etc.
Furthermore, the examiner asserts that both variables are provided by Nishitani, and as such the skilled artisan would appreciate that since the ranges of the C mass % and D mol% are provided, dividing one by the other at least provides the claimed range(s), lacking any further distinction thereof.
In response to applicant's argument that “…neither Onuki nor Nishitani nor their combination even recognize the problem addressed by the presently claimed subject matter, let alone providing a solution to the unrecognized problem…”, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant further argues Pages 7-8, “However, the claimed subject matter is able to suppress an associated increase in DCIR. That ability is made possible at least because the A/B ratio is appropriately controlled (specification, paragraphs [0069] to [0071]). As recited in the present claims, when the A/B ratio is controlled within a specific range under conditions (1 ≤ D/C ≤ 1.9) under which an increase in DCIR would normally become significant, that increase can be suppressed in a system in which a positive electrode containing a Ni-rich composite oxide N and a negative electrode containing a predetermined amount of a Si-containing material are used in combination. These advantageous effects would not have been expected based on Onuki and Nishitani or the art generally. Onuki and Nishitani, whether considered individually or in combination with each other and/or the art generally, fail to teach, suggest, or otherwise render the claims obvious. Thus, the Office has not established a prima facie case of obviousness. Accordingly, reconsideration and withdrawal of the rejections are respectfully requested.”
The examiner respectfully disagrees, whereby as put forward in the current 35 U.S.C. 103 rejection of record, and as discussed above the combined teachings of Onuki and Nishitani disclose the limitations as claimed, with proper motivation to combine, whereby the skilled artisan would appreciate the non-aqueous secondary battery including the silicon-containing material, etc., as disclosed by Onuki further includes the silicon-containing material includes a lithium ion-conductive phase, and a silicon phase dispersed in the lithium ion-conductive phase, and 1 ≤ D/C ≤ 1.9 is satisfied, where a content of the silicon phase in the silicon-containing material is C mass%, and a content of nickel relative to all metals other than lithium contained in the lithium-transition metal composite oxide is D mol% as taught by Nishitani so as to secure a high capacity, etc.
Furthermore, the examiner asserts that both variables are provided by Nishitani, and as such the skilled artisan would appreciate that since the ranges of the C mass % and D mol% are provided, dividing one by the other at least provides the claimed range(s), lacking any further distinction thereof.
In response to applicant's argument that “…These advantageous effects would not have been expected based on Onuki and Nishitani or the art generally…”, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sawa et al. (U.S. PGPub US 2013/0316229 A1) discloses non-aqueous electrolyte solution and non-aqueous electrolyte secondary battery employing the same (Title), whereby as disclosed in [0085] the sultones can be specifically exemplified by 1,3-propane sultone, 1,3-propene sultone, 1,4-butane sultone, and 1,4-butene sultone, etc.
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 JOSHUA PATRICK MCCLURE whose telephone number is (571)272-2742. The examiner can normally be reached Monday-Friday 8:30am-5:00pm.
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/JOSHUA P MCCLURE/Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727
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