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 .
Election/Restrictions
Applicant’s election of formula (13) for the fluorine-containing compound and alkyl for the hydrocarbon group, claims 1-11 in the reply filed on 30 September 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent 5681669A1(Yoshio) in view of US2015/0372349A1(Shikita), which is listed in Applicant’s information disclosure statement.
Regarding claims 1-4 and 8-11, Yoshio teaches a lithium ion secondary battery comprises a cathode, an anode, and an electrolyte solution (col. 3, line 40-68), wherein the electrolyte comprising an organic solvent containing an aromatic carbonate such as 3-methyl catechol carbonate and 4-methyl catechol carbonate (col.2, line 6-10, col.3, line 20-25 and Examples 1-3 and 6).
Yoshio does not teach trifluoromethyl catechol carbonate of formula (13), neither its amount.
Shikita teaches an electrolytic solution containing fluorinated methyl group such as trifluoromethyl and a fluorine atom on the benzene ring of a phenyl ester compound is capable of not only improving a capacity retention rate after a cycle but also significantly improving electrochemical characteristics of a battery ([0021]-[0024], [0028] and [0030]), wherein the fluorinated phenyl ester is preferably present in 0.1 to 2 mass% of the electrolytic solution([0048]), which encompasses the claimed amount.
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to modify the methyl catechol carbonate of Yoshio with the bulky and electron-withdrawing trifluoromethyl and electro-withdrawing fluorine substitution on the benzene ring of Shikita, thus the structure of formula(13), wherein at least one of R63 to R66 is a trifluoromethyl group and one of R63 to R66 is a fluorine group, and include it in the electrolytic solution in an amount of 0.1 to 2 mass % as taught by Shikita . The rationale to do so would have been the motivation provided by the teachings of Shikita that to do so would predictably improve a capacity retention rate after a cycle and electrochemical characteristics as well as decomposability (Shikita, [0024]).
Since Yoshio in view of Shikita teaches the fluorinated methyl catechol carbonate is preferably present in 0.1 to 2 mass% of the electrolytic solution([0048]), which encompasses the claimed amount.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include the fluorinated methyl catechol carbonate at the instantly claimed range since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding claims 5-7, the combined teachings of Yoshio and Shikita are set forth above.
While Yoshio teaches that the electrolytic solution further comprises additional organic solvent such as ethylene or propylene carbonate (col.3, line 1-10), Yoshio does not teach the instantly claimed unsaturated cyclic carbonic acid ester or fluorinated cyclic carbonic acid ester, neither the presence of sulfonic ester or a nitrile compound.
Shikita teaches that the electrolytic solution may comprise cyclic carbonate having an unsaturated bond or cyclic carbonates having a fluorine atom ([0052]-[0055]), which can inhibit the gas generation of the battery after a cycle ([0055]), and other additives including sulfonic esters and nitrile compounds to improve electrochemical characteristics ([0071]-[0072] and [0076]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to include the unsaturated cyclic carbonate or fluorinated cyclic carbonate, sulfonic esters and nitrile compounds of Shikita in the electrolytic solution of Yoshio and Shikita. The rationale to do so would have been the motivation provided by the teachings of Shikita that to do so would inhibit the gas generation of the battery after a cycle and improve electrochemical characteristics of the battery ([0055] and [0071]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766
