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 .
Priority
Support for the claimed subject matter was introduced in application 14/800,380 filed 07/15/2015. Fur purpose of examination, the application is given the effective filing date of 07/15/2015.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted 02/06/2024 (x2) and 03/05/2026 were received and have been considered by the examiner.
Drawings
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 5 and 10 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.
The term “about” in claims 5 and 10 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The additive weight and concentration of FEC in the electrolyte is rendered indefinite by the use of the term “about.” For purpose of examination, so long as taught ranges approach the claimed amounts, the prior art will read on claims 5 and 10.
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.
Claim(s) 1-3 and 6-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smart et al. (U.S. 20120007560).
With respect to claims 1, 3, and 8-11, Smart discloses an energy storage device (lithium-ion electrochemical cells) ([abstract]), comprising:
a first electrode (cathode) ([0027]);
a second electrode (anode) ([0027]);
a separator (w/ electrolyte) between the first electrode and the second electrode ([0007]; [0027]); and
an electrolyte composition in contact with the first electrode, the second electrode, and the separator ([0007]; [0027]),
wherein the electrolyte composition comprises at least two co-solvents (fluoroethylene carbonate (FEC - thus reading on claims 8-11), a non-cyclic carbonate, and a linear ester – [0023]) and at least one additive (lithium difluoro(oxalato) borate (LiDFOB) – [0033]; thus reading on claim 3).
Claim 2 limits the intended use of the additive to reduce the gassing of the electrode. Applicant is reminded that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing 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" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In this instance, since the structure of the electrolyte (2 or more co-solvents, one being FEC, a lithium salt being LiPF6, and an additive), the intended use of the additive does not differentiate the additive from the prior art. Further, in the absence of persuasive evidence to the contrary, it is assumed that the additive disclosed in the prior art, LiDFOB ([0033]), which is the same as referenced in applicant’s claim 3, will achieve the degassing affect as claimed.
With respect to claims 6-7, Smart discloses said electrolyte composition further comprises a lithium-containing salt, specifically lithium hexafluorophosphate (LiPF6), thus reading on claim 7 ([0024]).
With respect to claim 12, Smart discloses the fluoroethylene carbonate (FEC) is present at a concentration of 10-40% by volume ([0022]), thus being encompassed by the clamed range of about 10 vol% to about 60 vol% with sufficient specificity.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Smart et al. as applied to claim 1 above, and further in view of Chen et al. (U.S. 20080026297).
With respect to claims 4-5, Smart discloses LiDFOB as in additive in the electrolyte (see above rejection of claim 1), but only gives the amount present at less than or equal to 40 vol %, and optionally in some embodiments less than or equal to 20 vol %, and optionally in some embodiments less than or equal to 10 vol %, and optionally in some embodiments less than or equal to 5 vol %, and optionally in some embodiments less than or equal to 2.5 vol % ([0037]), not by a wt % as claimed.
Chen discloses an electrolyte comprising three co-solvents, a lithium salt, and LiDFOB as an additive ([0065]) and teaches the amount of the LiDFOB present in the electrolyte is 2.0 wt % ([0065]), thus falling into the claimed range of less then 10 wt % (claim 4) and about 1 wt % to about 9 wt % (claim 5). Chen further teaches the LiDFOB at this content produces a cell with excellent pulse overcharge tolerance ([0065]).
It would have been obvious to one having ordinary skill in the art at the time that the application was effectively filed to ensure the LiDFOB as an additive in the electrolyte disclosed by Smart was present in the amount taught by Chen in order to produce a cell with excellent pulse overcharge tolerance.
Applicant is reminded that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JORDAN E BERRESFORD whose telephone number is (571)272-0641. The examiner can normally be reached M-F 8:00 am - 5:00 pm EST.
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/J.E.B./Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727
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