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
Claims 1, 8, 9, 12, 13, 14, and 15 of this application are patentably indistinct from claims 1, 8, 9, 12, 13, 14, and 15, respectively, of Application No. 18/384,212. Claims 2-3 of this application are patentably indistinct from claim 3 of Application No. 18/384,212. Claims 4-5 of this application are patentably indistinct from claim 5 of Application No. 18/384,212. Claims 6-7 of this application are patentably indistinct from claim 7 of Application No. 18/384,212. Claims 10-11 of this application are patentably indistinct from claim 11 of Application No. 18/384,212. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/384,212 in view of Cho et al. (US 2016/0020488 A1), hereinafter “Cho”.
Regarding claim 1, claim 1 of the 212 application recites an electrolyte solution for a lithium secondary battery, a lithium salt, a solvent, and a functional additive which includes 3-(4-cyano-5-(4-nitrophenyl)-1H-1,2,3-triazol-1-yl)propyl methanesulfonate (1 below).
The 212 application does not disclose the claimed 3-(4-cyano-5-(4-nitrophenyl()-1H-1,2,3-triazol-1-yl)propyl 4-methylbenzenesulfonate (2 below).
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However, Cho teaches a series of sulfonyl based structures having the generic formula 3 (above) (Cho, [0017] - [0018]), with a p-toluenesulfonyl (tosyl) based group that may react with oxygen to form tosylate, a stable negative ion group allowing 3 to be decomposed more easily than the electrolyte allowing it to participate in formation of a solid electrolyte interface (SEI) layer before the other components of the electrolyte, and may reduce thermal decomposition of the electrolyte improving the safety of the lithium battery (Cho, [0047]). Thus, it would have been prima facie obvious to one of ordinary skill in the art to substitute the methanesulfonyl portion of the 212 application’s methanesulfonate group with Cho’s tosyl group in order to provide a more stable electrolyte and safer battery (Cho, [0047]).
Claims 2-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of the copending Application No. 18/384,212 in view of Cho.
Regarding claims 2 and 3, in light of the claim 1 rejection discussed above, claim 3 of the 212 application further recites a positive-electrode film additive (corresponding to the claimed first electrode film additive) in the amount of 0.01 - 1.0 % by weight (corresponding to the claimed 0.01 - 1.0 % by weight of claim 2 and the claimed 0.05 - 1.0 % by weight of claim 3).
Claims 4-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 18/384,212 in view of Cho.
Regarding claims 4 and 5, in light of the claim 1 rejection discussed above, claim 5 of the 212 application further recites the functional additive including vinylene carbonate (see claim 4 of the 212 application) in the amount of 0.5 -2.0 % by weight.
Claims 6-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/384,212 in view of Cho.
Regarding claims 6 and 7, in light of the claim 1 rejection discussed above, claim 7 of the 212 application further recites the functional additive further including lithium difluorophosphate (see claim 6 of the 212 application) in the amount of 0.5 - 2.0 % by weight.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/384,212 in view of Cho.
Regarding claim 8, in light of the claim 1 rejection discussed above, claim 8 of the 212 application further recites the lithium salt may comprise one or more of LiPF6, LiBF4, LiClO4, LiCl, LiBr, LiI, LiB10Cl10, LiCF3SO3, LiCF3CO3, LiAsF6, LiSbF6, LiAlCl4, CH3SO3Li, CF3SO3Li, LiN(SO2C2F5)2, Li(CF3SO2)2N, LiC4F9SO3, LiB(C6H5)4, LiB(C2O4)2, LiPO2F2, Li(SO2F)2N, LiFSI, and (CF3SO2)2NLi.
Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 18/384,212 in view of Cho.
Regarding claim 9, in light of the claim 1 rejection discussed above, claim 9 of the 212 application further recites the solvent may comprise a carbonate-based solvent, an ester-based solvent, an ether-based solvent, and a ketone-based solvent.
Claims 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/384,212 in view of Cho.
Regarding claims 10 and 11, claim 11 of the 212 application recites a lithium secondary battery, the electrolyte solution as recited by claim 1 of the 212 application and discussed in regard to the instant claim 1 above (corresponding to the claimed electrolyte solution of clam 1, see claim 10 of the 212 application), a positive electrode whose material contains Ni, Co, and Mn, a negative electrode whose material contains carbon and/or silicon, and a separator interposed between the two electrodes.
Claim 12 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 18/384,212 in view of Cho.
Regarding claim 12, in light of the claim 11 rejection discussed above, claim 12 of the 212 application further recites the positive electrode comprises a Ni content of 60 % by weight or more.
Claim 13 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of copending Application No. 18/384,212 in view of Cho.
Regarding claim 13, in light of the claim 11 rejection discussed above, claim 13 of the 212 application further recites the negative-electrode active material comprising graphite.
Claims 14 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14 and 15, respectively, of copending Application No. 18/384,212 in view of Cho.
Regarding claims 14 and 15, in light of the claim 10 rejection discussed above, claims 14 and 15 of the 212 application further recite the lithium secondary battery has a capacity retention rate of 88 % or more after 100 charge/discharge cycles (as recited by claim 14 of the 212 application and corresponding to the instant claim 14’s claimed 89 % or more capacity retention rate) or 80% or more after 200 charge/discharge cycles (as recited by claim 15 of the 212 application and corresponding to the instant claim 15’s claimed 80 % or more capacity retention rate) between 2.5 - 4.2 V at a rate of 1C and 45° C
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Three patents by Lee et al. (US 12,362,390 B2, US 12,412,929 B2, and US 11,670,801 B2) all disclose structurally similar electrolyte additives to that disclosed in the instant claim 1 but are not prior art. Ji et al. (US 2020/0388879 A1) and Zhou et al. (CN 114094166 A ) teach the use of sulfonate esters as SEI forming electrolyte additives and disclose tosylate esters and additives including both sulfonates and triazoles but do not specifically disclose an additive having both a tosylate and triazole and especially do not disclose Formula 1 from the instant claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIMRAN S SAUND whose telephone number is (571)270-0845. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at (571) 272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIMRAN S. SAUND/Examiner, Art Unit 1734
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734
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