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 without traverse of claims 1-11 in the reply filed on 07/27/2026 is acknowledged.
Claim 12 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/27/2026.
Claim Objections
Claims 1-3, 6 and 11 are objected to because of the following informalities: Claim 1 recites “the general formula (1). Please add the term “Formula” before “(1)” in the last clause of the claim. It is also recommended to move the formula to immediately follow reference thereto in the claim.
Claim 1 states “the method comprising: dehydrating of adding the anionic compound”. This phrase is grammatically incorrect and it is assumed to be a typo. As such, it appears that the claim should read “the method comprising: adding the anionic compound”.
In claim 1, the last clause contains parenthesis around the requirements for X. It is recommended to use a comma for the first parenthesis and to delete the second parenthesis and to substitute “wherein” for “where”.
The phrasing of claims 2 and 3 are different but appear to describe the same limitation of the amount of anionic component added. It is recommended to use consistent language for each claim.
Claim 6 refers to “[Chemical 1] but it appears to be in reference to “general formula (2)”. It is recommended to delete recitation of “[Chemical 1]”.
Claim 6 uses several sets of parentheses. It is recommended to use commas where possible rather than parenthesis.
In claim 11, it is recommended to add --step is-- between “the dehydrating” and “calculated by” so the claim would then read “the dehydrating step is calculated by”.
Appropriate correction is required.
Claim Interpretation
Claim 1 requires a concentration of the anionic component of 10000 ppm by mass or less with respect to the electrolyte. Claim 2 then recites a concentration of 4000 ppm by mass or more and claim 3 recites a concentration of 1000 ppm by mass or more. Both claims 2 and 3 are seen to incorporate the upper limit of 10000 ppm by mass or less with respect to the electrolyte required by claim 1. In other words, the claims are interpreted to have ranges of 4000 ppm or more to 10000 ppm or less for claim 2, and 1000 ppm or more to 10000 ppm or less for claim 3.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by WO 2023/276568 (Watabe) (See US 2025/0070254 as the US equivalent). The effective filing date afforded the instant application
The applied reference has a common joint inventor/s with the instant application. Specifically, the instant application names Kobatake, Ookubo, Watabe and Arakawa, whereas the reference names Watabe, Kobatake, Ookubo, Arakawa, and Takida. Here, the instant application names fewer inventors, thus it is not apparent that an exception applies. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Watabe discloses all the limitations of the instant claims including the electrolyte of Formula 1 (abstract), anionic component having a pKa1 of 0-6.5 [0036], the component comprising amidosulfuric acid and alkali salts thereof or carboxylic acid and salt thereof and derivatives [0042, 0052-0053]. The amount of anion component is 0.1-1 mass% of the sulfonylimide compound, preferably 0.3% by mass or more (3000ppm). A non-aqueous solvent, preferably a chain carbonate solvent is used. Regarding water, Watabe discloses a dehydration process wherein the water-containing sulfonylimide solution for dehydration is dehydrated to obtain a sulfonylimide solution containing the added non-aqueous solvent, thus water is removed and is inherently within the range claimed. Regarding dehydration efficiency, Watabe discloses There is no particular lower limit to the added amount (used amount) of the electrolytic solution solvent, and it may be adjusted as appropriate according to the type and amount of the residual solvent in the sulfonylimide compound (1). For example, it is preferably 10000 g or less, more preferably 1000 g or less, even more preferably 500 g or less, and still more preferably 200 g or less per 100 g of the sulfonylimide compound (1), which falls below 80.
Claim(s) 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2021/171948 (Oyama) (see US 2023/0089471 as the US equivalent).
Oyama discloses a composition comprising an electrolyte, a solvent, and an anion component, wherein: the electrolyte contains a sulfonylimide salt; and the anion component contains an acid component, which has an acid dissociation constant, pKa, (first-step acid dissociation constant, pKa1, for a multiple-ionized acid) of 0 to 6.5, at a concentration of 50 ppm to 10,000 ppm with respect to the electrolyte, and discloses examples of 5500 and 1300ppm (abstract, Examples 1 and 2). The electrolyte may be bis (fluorosulfonyl) imide salts [e.g., lithium bis (fluorosulfonyl) imide, sodium bis (fluorosulfonyl) imide, potassium bis (fluorosulfonyl) imide, etc. which meets the formula of claim 1. The solvent may be a carbonate solvent (non-aqueous), preferably a chain carbonate solvent. The anion component may be amidosulfuric acid, including alkali salts thereof, or acetic acid (carboxylic) or phosphoric acid and derivatives such as formula 2 which meets instant formula 2 of claim 6 [0053]. Oyama discloses that the water content may be 1000ppm or less (table 2). The amounts of solvent and weight of electrolyte result in a value less than 80 (0027, examples).
Claim(s) 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2020/241161 (Mizuno) (see US 12,456,753 as the US equivalent).
Mizuno discloses a composition comprising a non-aqueous solvent (chain carbonate), sulfonylimide of formula 1, and an amidosulfuric acid, alkali salts and derivatives thereof (abstract, col. 7, col. 10). The pKa1 of the amidosulfuric acid is inherent to the material. The amount of amidosulfuric acid is preferably 0.1-10000ppm relative to the electrolyte composition (col. 9, claim 7). The amounts disclosed are seen to have extensive overlap with the claimed ranges so as to provide sufficient specificity so as to provide anticipation. The water content is less than 3000ppm (claim 12). The dehydration efficiency is considered met by the amounts of solvent and electrolyte discloses (examples).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2021077515 (Mizuno II), cited on IDS filed 09/10/2024.
Mizuno II discloses a method of making a nonaqueous electrolyte comprising an electrolyte, a non-aqueous solvent and an anionic component (abstract). The electrolyte is represented by Formula (1):
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18
340
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Greyscale
wherein X represents a fluorine atom, an alkyl group having 1 to 6 carbon atoms or a fluoroalkyl group having 1 to 6 carbon atoms [0002]. The non-aqueous electrolyte may contain additives to improve various characteristics of the battery. The additives may include H3NSO3 (sulfamic or amidosulfuric acid) and its salt are preferable, and its lithium salt are more preferable, from the viewpoint of further reducing the interfacial resistance of the battery [0029]. These materials inherently have a pKa1 of 0 or more and 6.5 or less and are the same materials claimed and disclosed. The non-aqueous solvent may be a carbonate solvent such as a chain carbonate ester solvent [0025]. The sulfamic acid (anionic component) is added to a non-aqueous solution (A) after adding carbamate [0041-0043].
Regarding the amount of the anionic component recited in claims 1-3, the total amount of carbonate and sulfamic acid compound added to the non-aqueous electrolyte solution (A) reliably traps HFSO3 and / or HF, and from the viewpoint of further reducing the interfacial resistance of the battery. In 100% by mass of the liquid (A), it is preferably 0.2% by mass or more, more preferably 0.4% by mass or more, and further preferably 0.6% by mass or more. Further, the total amount of the carbonate and the sulfamic acid compound added to the non-aqueous electrolyte solution (A) is 100 mass by mass of the non-aqueous electrolyte solution from the viewpoint of reducing the amount of insoluble particles remaining in the non-aqueous electrolyte solution (A). In %, it is preferably 2% by mass or less, more preferably 1.6% by mass or less, and further preferably 1.2% by mass or less [0042]. Furthermore, the amount of the sulfamic acid compound added to the non-aqueous electrolyte solution is preferably 0.1% by mass or more, more preferably 0.2% by mass, based on 100% by mass of the non-aqueous electrolyte solution, from the viewpoint of further reducing the interfacial resistance of the battery. Thus, the amounts of sulfamic acid (anionic component) are seen to obviated such that it would have been obvious to one of ordinary skill to optimize the amount of sulfamic acid compound to reduce the interfacial resistance of the battery and amount of insoluble particles of the sulfamic acid compound.
Regarding claims 4-8, the anionic component is sulfamic acid (amidosulfuric acid) and the lithium salt of sulfamic acid is more preferred.
Regarding claim 9, as stated above, the non-aqueous solvent may be a carbonate solvent such as a chain carbonate ester solvent [0025].
Regarding claim 10, the electrolyte is non-aqueous, and the addition of the sulfonylimide compound is added, the water content is dissolved. Thus, the amount of water present is considered to be minimal and also obvious to reduce to less than 1wt% to be considered non-aqeuous [0036].
Regarding claim 11, no further additions or material appear to be required by the claims other than the three materials addressed above, and reduction of the water content to zero or a small enough amount to be considered non-aqueous is seen to meet the required dehydration efficiency.
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.
Claim 1 is rejected on the ground of non-statutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,456,753.
Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of claim 1 are present in the corresponding claim of the reference patent wherein the instantly claimed non-aqueous solvent corresponds to the chain carbonate solvent.
Claim 1 is provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim 7 of co-pending Application No. 17/791,512 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of claim 1 are present in the corresponding claim of the reference application wherein the instantly claimed non-aqueous solvent corresponds to the chain carbonate solvent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tong Guo can be reached at 5712723066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1723
/Jennifer McNeil/Primary Examiner, Art Unit 1723
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