DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Set Under Examination
2. Applicant filed a preliminary amendment on 12/29/2023 in order, “…to place the claims in condition to be examined under the practices of the USPTO and to eliminate multiple dependencies” (see remarks filed 12/29/2023 in conjunction with said amendments).
On 8/13/2024, Applicant appears to refile the entire disclosure including the claim set filed 8/13/2024. The claim set filed 8/13/2024 does not include the amendments previously filed in the preliminary amendment. It is assumed that Applicant’s intention is for the claim set of 12/29/2023 with the preliminary amendments made is the claim set wished to be examined. The Examiner is examining the 12/29/2023 claim set; however, given the presence of the 8/13/2024 claim set, the next claim set filed should re-file the preliminary amendments of 12/29/2023.
Claim Objections
3. Claims 2-4 and 6-7 are objected to because of the following informalities:
Claims 2-4: the preambles should correct “an aqueous sulfonylimide solution” to “the aqueous sulfonylimide solution”
Claims 6-7: the preambles should correct “a nonaqueous electrolyte solution…” to “the nonaqueous electrolyte solution”
The above corrections provide proper antecedent basis invocation.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
4. 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.
5. Claim 5, and thus dependent claims 6-7; and claim 8, 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 5 recites the limitation “…the sulfonylimide compound represented by the general formula (1)…” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation “…the aqueous sulfonylimide solution” in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation, “…the sulfonylimide compound represented by the general formula (1)…” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation, “…the electrolyte solution solvent” and “the non-aqueous electrolyte solution” in lines 3 and 4. There is insufficient antecedent basis for these limitations in the claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
6. 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.
7. Claims 1 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schmidt et al. (US 2018/0366764).
Regarding claim 1, Schmidt teaches a method for preparing a compound of Formula III and further defined Formula IIIb or IIIc (P14, 58, 130 see P21-25 defining “X” and “R2” within Formula III; see also P58 Formula IIIb with M is Li and R2 defined in P62-65), the compound exemplified by the examples listed at P55 and P65 (i.e., X/M= Li, and R2 =F, CF3, etc.), and the manufacture of an electrolyte solution therefrom (P56) for use in a lithium battery (P57):
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Schmidt teaches steps (a) and (b) (P70-72, 77-119) are drawn to the preparation of said compounds represented by Formula (III) , and then there are subsequent further treatment steps (i.e., steps (c) and/or (d)) of the obtained Formula III compound that include heating and result in purification (139-147).
Specifically, step (c) (P74, 120-129) teaches the use of an aqueous solution in conjunction with the obtained Formula III compound from steps (a) + (b) that is carried out at a reaction temperature up to 40 °C (i.e., “heating an aqueous sulfonylimide solution containing a sulonylimide compound represented by the general formula (1)” as claimed). Step (d) (P76, 130-147) teaches a step in which a reaction in water or mixtures of water and an organic solvent is carried out with the obtained compound of Formula III therein, wherein the reaction may occur between 0 °C and the boiling point of the organic solvent used (P134). As the organic solvent, options include ethyl acetate, having a boiling point of 77.1 °C (intrinsic thereto), such that a reaction temperature up to 77.1 °C is considered to also meet, “…heating an aqueous sulfonylimide solution containing a sulonylimide compound represented by the general formula (1)” as claimed.
Schmidt teaches the obtained Formula III compounds obtained by the method are at a purity level of 99.5% by weight, advantageously at least 99.9% by weight (P58, 139), wherein the impurity FSO3Li is in a concentration of less than 50 ppm, preferably less than 5 ppm (P141), wherein this is the impurity aimed to be removed in the instant application (see P7, 15 describing the purification method is aimed at reducing the concentration of FSO3Li). Note that the process taught by Schmidt also removes other constituents and impurities as listed in P140-146.
Accordingly, while not explicitly described as, “A method for purifying an aqueous sulfonylimide solution,” Schmidt teaches the process steps result in the obtained purity levels of the product (P139-147) and include the step of heating an aqueous sulfonylimide solution containing a sulfonylimide compound represented by general formula (1) of the claim such that the methods taught either at step (c) and/or step (d) are considered to provide a method for purifying an aqueous sulfonylimide solution as claimed.
Regarding claim 5, Schmidt teaches a method for producing a non-aqueous electrolyte solution containing the sulfonylimide compound represented by the general formula (1) as an electrolyte and an electrolyte solution solvent (e.g., P137), wherein the electrolyte solution solvent (examples taught include ethyl acetate, among others – P137) is added to the aqueous sulfonylimide solution purified by the purification method of claim 1 (rejection of which is entirely incorporated into the instant rejection) “to dehydrate the sulfonylimide solution.” To this end, P137 teaches that when the solvent utilized in the prior steps a-d is water, the reaction medium may be extracted with an organic solvent (“an electrolyte solution solvent”) and this may be performed several times to maximize the recovery yield. Accordingly, the “dehydration” (i.e., removal of water) of the aqueous sulfonylimide solution is taught by Schmidt (P137).
Claim Rejections - 35 USC § 103
8. 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.
9. Claims 2-4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt et al. (US 2018/0366764) as applied to at least claims 1 and 5 above.
Regarding claim 2, Schmidt teaches in step (c) (P74, 120-129) is carried out at a reaction temperature up to 40 °C (i.e., “ the heating step”). Schmidt teaches step (d) (P76, 130-147) is such that the reaction may occur between 0 °C and the boiling point of the organic solvent used (P134). As the organic solvent, options include ethyl acetate, having a boiling point of 77.1 °C (intrinsic thereto), such that a temperature up to the boiling point of this solvent is considered “up to 77.1 °C”.
Regarding the step (d) heating step, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP § 2144.05).
Regarding the step (c) heating step, a prima facie case of obviousness exists where the claimed ranges do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985); MPEP 2144.05. The case law to In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) is pertinent to the instant scenario where the claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.
Regarding claim 3, the method steps of (c) and (d) as taught by Schmidt do not include a pressure range; however, Schmidt teaches that step (b) t may be performed at a pressure between 0 and 16 bar absolute (equivalent to 0 kPA – 1600 kPA). Accordingly, it is considered an obvious expedient to determine a suitable pressure range at which to carry out step (c) and/or step (d), and to look to the taught pressure range by Schmidt for other steps and implement the same for step (c) and/or step (d), which provides for a range encompassing the range claimed.
Additionally, the court has held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05. Accordingly, in the absence of new or unexpected results for which objective evidence exists that is fully commensurate in scope with the claim, the determination of the pressure range implemented for steps (c) and (d) is considered routine experimentation. To this end, the Examiner has reviewed the instant application and there is no teaching of criticality with respect to the pressure range, wherein the instant application teaches it can be performed under normal pressure or reduced pressure, with the latter option not being limited to a particular value (P18). Accordingly, there is no evidence in the record that the pressure range produces any new and/or unexpected results or is considered critical relative to the heating step being carried out at normal pressure.
Regarding claim 4, Schmidt teaches the obtained Formula III/IIIb/IIIc compounds obtained by the method are at a purity level of 99.5% by weight, advantageously at least 99.9% by weight (P58, 139), wherein the impurity FSO3Li is in a concentration of less than 50 ppm, preferably less than 5 ppm (P141) relative to the mass of imide salt (“with respect to the sulfonylimide compound represented by the general formula (I)”) (P145). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP § 2144.05).
Regarding claim 7, Schmidt teaches the obtained Formula III/IIIb/IIIc compounds obtained by the method are at a purity level of 99.5% by weight, advantageously at least 99.9% by weight (P58, 139), wherein the impurity FSO3Li is in a concentration of less than 50 ppm, preferably less than 5 ppm (P141) relative to the mass of imide salt (“with respect to the electrolyte”) (P145). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP § 2144.05).
10. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Schmidt et al. (US 2018/0366764) as applied to at least claims 1 and 5 above, and further in view of Sato et al. (US 2012/0041233).
Claim 8 (an independent claim) is rejected under 35 U.S.C. 103 as being unpatentable over Schmidt et al. (US 2018/0366764) in view of Sato et al. (US 2012/0041233).
Regarding claim 6, Schmidt does not teach the electrolyte solution solvent is a carbonate solvent as claimed, and teaches the use of ethyl acetate (EA), butyl acetate (BA), etc. (P137).
In the same field of endeavor, Sato teaches analogous art of a method for producing and purifying a fluoisulfonylimide salt (abstract), wherein an analogous separatory extraction method is provided after an analogous heating step that removes impurities (P15, 44), the separatory extraction method including water and an organic solvent (P51), wherein the organic solvent (i.e., “the electrolyte solution solvent”) is taught as being any of ethyl acetate, butyl acetate, ethylene carbonate (EC), propylene carbonate (PC), etc. (P51). Accordingly, Sato teaches the functional equivalency of utilizing a carbonate solvent (i.e., EC or PC, among others) or the taught options of Schmidt (EA or BA) as a suitable organic solvent (“the electrolyte solution solvent”) is an analogous step of an analogous method in which a separatory extraction method is used.
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to substitute ethylene carbonate (EC) or propylene carbonate (PC) for the ethyl acetate (EA) or butyl acetate (BA) as taught by Schmidt given Sato teaches an analogous method step and that these are known, functionally equivalent organic solvents suitable for such a process step. Furthermore, the court has held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Regarding claim 8, Schmidt teaches a method for producing an electrolyte composition containing the sulfonylimide compound represented by the general formula (1) as an electrolyte, the method comprising: evaporating the organic phase (“the electrolyte solution solvent”) from the nonaqueous electrolyte solution obtained by the production method of claim 5 (rejection entirely incorporated into the instant rejection and not repeated here) to obtain the imide salt (P137). The obtained Formula III/IIIb/IIIc compounds obtained by the method are at a purity level of 99.5% by weight, advantageously at least 99.9% by weight (P58, 139), wherein the impurity FSO3Li is in a concentration of less than 50 ppm, preferably less than 5 ppm (P141) relative to the mass of imide salt (“with respect to the electrolyte”) (P145). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP § 2144.05).
Schmidt does not explicitly teach that the process of removing the organic phase (“the electrolyte solution solvent”) is one of distilling; however, Sato teaches analogous art of a method for purifying a fluoisulfonylimide salt (abstract), wherein once the final product of the lithium salt of the fluorosulfonyl imide compound is obtained and is held with an organic solvent (butyl acetate), the butyl acetate is distilled from the organic layer followed by evaporation to dryness to obtain the final, dried imide salt (“electrolyte composition”) (P83).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to implement the known method step of distilling the organic solvent off prior to evaporating as taught by Schmidt given Sato teaches such a technique is known in the art in an analogous method of obtaining a dried lithium salt of the fluorosulfonyl imide compound (P83), thereby providing the predictable result of a method by which the electrolyte is obtained that is quicker as compared to simple evaporation.
Conclusion
11. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The Chinese Office Action mailed 8/2/2025 (not cited in an IDS within this application; the Chinese Office Action was found in the Global Dossier file) cites Schmidt et al. (CN 109923063) which has US family member US 2019/0379088, and is summarized in said Office Action as follows and is considered an “X” reference against the claims:
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12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BARROW whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA J BARROW/Primary Examiner, Art Unit 1729
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