DETAILED ACTION
Applicant’s preliminary amendment dated 25 July 2023 is acknowledged. Claims 1, 2, 4, 5, 7-12, 14-16, 18-20, 22, 23, 27, 29-31, and 39 as amended are pending.
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 .
Specification
The disclosure is objected to because of the following informalities: the structure drawings at paras. 0011, 0035, 0049, 0051, 0055, 0057, and 0064 are poorly rendered and difficult to discern.
Appropriate correction is required.
Claim Objections
Claims 1, 2, 4, 5, 7-12, 14-16, 18-20, 22, 23, 27, 29-31, and 39 are objected to because of the following informalities: the structure drawings at claims 1, 22, 23, 27, 29, and 30 are poorly rendered and difficult to discern. Appropriate correction is required.
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, 2, 4, 5, 7-12, 14-16, 18-20, 22, 23, 27, 29, 31, and 39 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.
Claim 1 recites the index n in relation to the general formula (1), and also recites the index n in one of the moieties of Rf. The claim recites n > 1 and n ≥ 1. It is unclear whether each of these definitions of n refers to one or the other of the recitation of index n in Formula 1. Claims 5, 7, 14, and 18 recite n being 1, 2, 3, 4, 5, or 6. It is unclear what index n is referred to since n is used twice as index n. This ground of rejection applies to claims 2, 4, 5, 7-12, 14-16, 18-20, 22, 23, 27, 29-31, and 39.
Claim 1 defines a moiety L as being certain substituents. However, the moiety L does not appear in the structure of formula I. It is therefore unclear how this moiety L, when present, relates to the multifunctional thiol conductor compound having formula I. This ground of rejection also applies to claims 2, 4, 5, 7-12, 14-16, 18-20, 31, and 39.
Claim 1 also recites moieties L1-L4, R1 and R2, where each of these is shown multiple times in the formulae. It is unclear in claim 1 whether each such instance must be the same, or may be different. Claims 14-16 and 18-20 further narrow definitions and it is unclear whether these limitations must apply to all or any instance of the recited moiety. This ground of rejection applies to claims 2, 4, 5, 7-12, 14-16, 18-20, 22, 23, 27, 29-31, and 39.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7, 8, 14, and 15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In the event that n > 1 refers to the index n in formula I of claim 1, claims 7 and 8 (from which claims 14 and 15 depend, respectively) each recite that n is 1, 2, 3, 4, 5, 6, while base claim 1 requires n > 1. As such, under this assumption, claims 7 and 8 fail to include all the limitations of claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 2, 5, 9-12, 14-16, 18, 19, 27, 31, and 39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al., “Artificial Single-Ion Conducting Polymer Solid Electrolyte Interphase Layer toward Highly Stable Lithium Anode,” ACS App. Energy Mater. 4, 862-869 (2021) (“Zhang”).
As to claims 1, 5, 9, 11, 12, 14-16, 18, and 19, Zhang teaches the structure
PNG
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175
120
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(p. 863). This structure meets formula I where A is a substitutable core, L is absent, Rf is CF3 as required by claims 1 and 9, M+ is Li+ as require by claims 1, 11, and 12, L1 is n-alkyl, specifically -CH2- as required by claims 1, 14, and 15, R1 is ester as required by claims 1 and 16, L2 is n-alkyl, L3 is n-alkyl, specifically -CH2CH2- as required by claims 1, 18, and 19, R2 is absent, L4 is phenyl, and n is 2 as required by claims 1, 5, 14, 15, 18, and 19.
As to claims 2 and 27, Zhang does not explicitly show the structure of formula I where A is a carbon atom as required by claim 2, or the recited structure of formula III of claim 27. However, Zhang teaches a reaction of 2 eq of LiSTFBI and 1 eq of PTMP. While only the disubstituted product is shown, it is reasonable to expect that statistically, some portion of trisubstituted PTMP will be formed, thereby forming some portion of formula I where A is a carbon atom and n is 3, or formula III of claim 27 where A is a carbon atom, and L is absent.
As to claim 10, the structure of Zhang has Rf being CF3. The electron-withdrawing group is optional under claim 1.
As to claim 31, the term lithium bis(trifluoromethanesulfonyl)imide is construed to include bis(sulfonyl)imide compounds having only one trifluoromethyl group, consistent with the examples of applicant’s specification. Fig. 1 teaches the reaction of PTMP, a multifunctional thiol compound with LiSTFI, which under the above construction is a lithium bis(trifluoromethanesulfonyl)imide compound having a C=C group.
As to claim 39, the compound is used to form a single ion conducting layer (p. 863).
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 14 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of copending Application No. 18/339,684 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because to the extent that claim 14 is interpreted as an independent claim having the limitations of claim 1 except that n in the general formula I ranges from 1 to 6 and L1 is alkyl, formula (II) of copending claim 15 meets formula (I) of claims 14 and 15 where L is absent, Rf is CF3, M+ is lithium cation, each L1 is -CH2- as required by claims 14 and 15, R1 and L2 are absent, A is substitutable core -CH2-, L3 is n-alkyl, R2 is ester, L4 is n-alkyl, and n is 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 14 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 18/339,667 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because to the extent that claim 14 is interpreted as an independent claim having the limitations of claim 1 except that n in the general formula I ranges from 1 to 6 and L1 is alkyl, formula (II) of copending claim 9 meets formula (I) of claims 14 and 15 where L is absent, Rf is CF3, M+ is lithium cation, each L1 is -CH2- as required by claims 14 and 15, R1 and L2 are absent, A is substitutable core -CH2-, L3 is n-alkyl, R2 is ester, L4 is n-alkyl, and n is 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim 30 is 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, as well as addressing the other claim objections.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art, Zhang, does not teach or suggest the recited structure.
Conclusion
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/KREGG T BROOKS/Primary Examiner, Art Unit 1764