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 .
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.
Claims 1-5 and 7-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-4, 6, and 8-11 of copending Application No. 18/851,645 (reference application), in view of Rhee et al. (KR 2014-0027671 A, see also the previously provided English translation) or over Rhee et al. (KR 2014-0027671 A, see also the previously provided English translation) in view of Wang (CN 105932330 A, see also the previously provided English translation).
Claims 1-5 and 7-10 of the instant application recite the same limitations as set forth in copending Application 18/851,645 in addition to “wherein the liquid phase polyhedral oligomeric silsesquioxane is impregnated into a chain structure of the solid phase polymer, or is coated on a portion where solid phase polymers are in contact with each other or on a surface thereof , andwherein a content ratio of the solid phase polymer to a sum of the liquid phase polyhedral oligomeric silsesquioxane and the lithium salt is 1:1 to 1:8”.
However, Rhee or Rhee in view of Wang teaches the above limitations as set forth in the rejection of record below.
It would have been obvious to one of ordinary skill in the art to form the solid phase-liquid phase hybrid electrolyte membrane of copending Application 18/851,645 such that the liquid phase polyhedral oligomeric silsesquioxane is impregnated into a chain structure of the solid phase polymer, or is coated on a portion where solid phase polymers are in contact with each other or on a surface thereof, and wherein a content ratio of the solid phase polymer to a sum of the liquid phase polyhedral oligomeric silsesquioxane and the lithium salt is 1:1 to 1:8, as taught by Rhee or Rhee in view of Wang, as such is a known configuration in the art and therefore the skilled artisan would have a reasonable expectation that such would successfully form the solid phase-liquid phase hybrid electrolyte membrane desired by copending Application 18/851,645.
This is a provisional nonstatutory double patenting rejection.
Examiner’s Interpretation
The Examiner notes that PEG-POSS is in a liquid phase at room temperature, as evidenced by [0030] of Wang (CN 105932330 A, see also the provided EPO machine generated English translation) and P8 of the instant specification.
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 1-5 and 7-10 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 1 recites the limitation "the solid phase polymer" and “solid phase polymers” in L5 from the bottom of the claim. There is insufficient antecedent basis for this limitation in the claim.
For purpose of examination, the Examiner will interpret the claim to recite “wherein the liquid phase polyhedral oligomeric silsesquioxane is impregnated into a chain structure of the chains of the polymer are in contact with each other or on a surface thereof, wherein the polymer is a solid phase polymer”.
Claims 2-5 and 7-10 are dependent on Claim 1 and therefore are rejected under 35 U.S.C. 112(b) for the reasons set forth above.
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.
Claims 1-5, 7-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Rhee et al. (KR 2014-0027671 A, see also the provided EPO machine generated English translation).
Regarding Claims 1-3 and 10, Rhee discloses a lithium secondary battery ([0040]) comprising:
a positive electrode ([0040]);
a negative electrode ([0040]); and
a solid phase-liquid phase hybrid electrolyte membrane ([0040]) comprising:
a polymer ([0020]);
a liquid phase polyhedral oligomeric silsesquioxane (POSS) represented by the following Formula 1 below ([0020], wherein the polyhedral oligomeric silsesquioxane is in a liquid phase at room temperature); and
a lithium salt ([0020]),
[Formula 1]
PNG
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378
460
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Greyscale
wherein, each R may be chosen to be a polyethylene glycol group with 1 repeating unit of ethylene oxide ([0024]-[0025], [0029]-[0033]).
The Examiner notes that when R is polyethylene glycol, such reads on Formula 1-1 wherein L1 and L2 are C2 alkylene groups, R1 is a C1 alkyl group, and m and n are 1.
It would have been obvious to one of ordinary skill in the art to utilize a polyethylene glycol group with 1 repeating unit of ethylene oxide as each R in [Formula 1], as disclosed by Rhee, wherein the skilled artisan would have a reasonable expectation that such would successfully form the solid phase-liquid phase hybrid electrolyte membrane desired by Rhee.
Modified Rhee further discloses wherein the solid phase-liquid phase hybrid electrolyte membrane is formed by mixing the polymer, the liquid phase polyhedral oligomeric silsesquioxane, and the lithium salt, and then dried ([0047]-[0048]) and further discloses wherein the liquid phase polyhedral oligomeric silsesquioxane functions as a plasticizer in order to control the crystallinity of the polymer (i.e. inhibit interchain interactions of the polymer) ([0023], [0029]).
In light of the above, modified Rhee necessarily and inherently discloses wherein the liquid phase polyhedral oligomeric silsesquioxane is impregnated into a chain structure of the polymer, or is coated on a portion where chains of the polymer are in contact with each other or on a surface thereof, wherein the polymer is a solid phase polymer, in order to successfully function as a plasticizer ([0047]-[0048], [0023], [0029]).
Moreover, modified Rhee discloses wherein a content of the liquid phase polyhedral oligomeric silsesquioxane in the solid phase-liquid phase hybrid electrolyte membrane is 5 wt% to 50 wt% based on the total weight of the solid phase-liquid phase hybrid electrolyte membrane ([0020], [0035]).
Therefore, modified Rhee discloses wherein a content of the lithium salt is necessarily and inherently greater than 0 wt% and less than 95 wt% based on the total weight of the solid phase-liquid phase hybrid electrolyte membrane.
In light of the above, modified Rhee discloses wherein a content of the polymer to a sum of the liquid phase polyhedral oligomeric silsesquioxane and the lithium salt may be 1:1 to 1:8.
It would have been obvious to one of ordinary skill in the art to form the solid phase-liquid phase hybrid electrolyte membrane to have a content ratio of the polymer to the sum of the liquid phase polyhedral oligomeric silsesquioxane and the lithium salt to be 1:1 to 1:8, as disclosed by modified Rhee, wherein the skilled artisan would have a reasonable expectation that such would successfully form the solid phase-liquid phase hybrid electrolyte membrane desired by modified Rhee.
Regarding Claim 4, modified Rhee discloses all of the limitations as set forth above and further discloses wherein the polymer is not particularly limited may be chosen to comprise a polyvinylidene fluoride (PVDF) or a polyacrylonitrile (PAN) as a main chain ([0021]).
It would have been obvious to one of ordinary skill in the art to form the polymer to comprise a polyvinylidene fluoride (PVDF) or a polyacrylonitrile (PAN) as a main chain, as disclosed by modified Rhee, as such is not particularly limited and therefore the skilled artisan would have a reasonable expectation that such would successfully form the solid phase-liquid phase hybrid electrolyte membrane desired by modified Rhee.
Regarding Claim 5, modified Rhee discloses all of the limitations as set forth above and further discloses wherein the lithium salt is not particularly limited and may be chosen to comprise one selected from the group consisting of LiPF6, LiBF4, LiBOB, LiClO4, and a combination thereof ([0039]).
It would have been obvious to one of ordinary skill in the art to utilize LiPF6, LiBF4, LiBOB, LiClO4, or a combination thereof as the lithium salt, as disclosed by modified Rhee, as such is not particularly limited and therefore the skilled artisan would have a reasonable expectation that such would successfully form the solid phase-liquid phase hybrid electrolyte membrane desired by modified Rhee.
Regarding Claim 7, modified Rhee discloses all of the limitations as set forth above and further discloses wherein a content of the liquid phase polyhedral oligomeric silsesquioxane in the solid phase-liquid phase hybrid electrolyte membrane is 5 wt% to 50 wt% based on the total weight of the solid phase-liquid phase hybrid electrolyte membrane ([0020], [0035]).
Therefore, modified Rhee discloses wherein a content of the lithium salt is necessarily and inherently greater than 0 wt% and less than 95 wt% based on the total weight of the solid phase-liquid phase hybrid electrolyte membrane.
In light of the above, modified Rhee discloses wherein a content ratio of the liquid phase polyhedral oligomeric silsesquioxane to the lithium salt is greater than 0 and less than 1:19, which encompasses the instantly claimed range of 10:1 to 1:5.
It would have been obvious to one of ordinary skill in the art to form the solid phase-liquid phase hybrid electrolyte membrane to have a content ratio of the liquid phase polyhedral oligomeric silsesquioxane to the lithium salt in the encompassing portion of the range disclosed by modified Rhee, wherein the skilled artisan would have a reasonable expectation that such would successfully form the solid phase-liquid phase hybrid electrolyte membrane desired by modified Rhee.
Regarding Claim 8, modified Rhee discloses all of the limitations as set forth above and further discloses in the exemplary embodiments wherein an ion conductivity of the solid phase-liquid phase hybrid electrolyte membrane is from 3.5 x 10-7 to 4.0 x 10-6 S/cm at room temperature ([0054], Table 1), which falls within and therefore reads on the instantly claimed range of 1.0 x 10-7 to 9.0 x 10-5 S/cm at 25°C.
Claims 1-5, 7-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Rhee et al. (KR 2014-0027671 A, see also the previously provided English translation), and further in view of Wang (CN 105932330 A, see also the previously provided English translation).
In another interpretation, the following is relied upon.
Regarding Claims 1-3, 7, and 10, Rhee discloses a lithium secondary battery ([0040]) comprising:
a positive electrode ([0040]);
a negative electrode ([0040]); and
a solid phase-liquid phase hybrid electrolyte membrane ([0040]) comprising:
a polymer ([0020]);
a liquid phase polyhedral oligomeric silsesquioxane (POSS) represented by the following Formula 1 below ([0020], wherein the polyhedral oligomeric silsesquioxane is in a liquid phase at room temperature); and
a lithium salt ([0020]),
[Formula 1]
PNG
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378
460
media_image1.png
Greyscale
wherein, each R may be chosen to be a polyethylene glycol group with 1 repeating unit of ethylene oxide ([0024]-[0025], [0029]-[0033]).
The Examiner notes that when R is polyethylene glycol, such reads on Formula 1-1 wherein L1 and L2 are C2 alkylene groups, R1 is a C1 alkyl group, and m and n are 1.
It would have been obvious to one of ordinary skill in the art to utilize a polyethylene glycol group with 1 repeating unit of ethylene oxide as each R in [Formula 1], as disclosed by Rhee, wherein the skilled artisan would have a reasonable expectation that such would successfully form the solid phase-liquid phase hybrid electrolyte membrane desired by Rhee.
Modified Rhee further discloses wherein the solid phase-liquid phase hybrid electrolyte membrane is formed by mixing the polymer, the liquid phase polyhedral oligomeric silsesquioxane, and the lithium salt, and then dried ([0047]-[0048]) and further discloses wherein the liquid phase polyhedral oligomeric silsesquioxane functions as a plasticizer in order to control the crystallinity of the polymer (i.e. inhibit interchain interactions of the polymer) ([0023], [0029]).
In light of the above, modified Rhee necessarily and inherently discloses wherein the liquid phase polyhedral oligomeric silsesquioxane is impregnated into a chain structure of the polymer, or is coated on a portion where chains of the polymer are in contact with each other or on a surface thereof, wherein the polymer is a solid phase polymer, in order to successfully function as a plasticizer ([0047]-[0048], [0023], [0029]).
Moreover, modified Rhee discloses wherein a content of the liquid phase polyhedral oligomeric silsesquioxane in the solid phase-liquid phase hybrid electrolyte membrane is 5 wt% to 50 wt% based on the total weight of the solid phase-liquid phase hybrid electrolyte membrane ([0020], [0035]).
Therefore, modified Rhee discloses wherein a content of the lithium salt is necessarily and inherently greater than 0 wt% and less than 95 wt% based on the total weight of the solid phase-liquid phase hybrid electrolyte membrane.
Wang teaches an electrolyte membrane comprising a polymer, a polyhedral oligomeric silsesquioxane, and a lithium salt, wherein the electrolyte membrane comprises 1 part by weight of the polymer, 0.02-0.8 parts by weight of the polyhedral oligomeric silsesquioxane, and 0.01-3 parts by weight of the lithium salt ([0010]).
For example, Wang teaches in an exemplary embodiment wherein the electrolyte membrane comprises about 43 wt% of the polymer, about 35 wt% of the polyhedral oligomeric silsesquioxane, and 22 wt% of the lithium salt ([0086]).
The Examiner notes that the above exemplary embodiment of Wang has a content of the polymer, the polyhedral oligomeric silsesquioxane, and the lithium salt that fall within the suitable ranges disclosed by modified Rhee and further has a content ratio of the polymer to a sum of the polyhedral oligomeric silsesquioxane and the lithium salt of about 1:1.3, which falls within and therefore reads on the instantly claimed range of 1:1 to 1:8, and a content ratio of the polyhedral oligomeric silsesquioxane to the lithium salt of about 1:0.6, which falls within the instantly claimed range of 10:1 to 1:5.
It would have been obvious to one of ordinary skill in the art to form the solid phase-liquid phase hybrid electrolyte membrane of modified Rhee to have a content of the polymer, the polyhedral oligomeric silsesquioxane, and the lithium salt that fall within the ranges taught by Wang, such that the solid phase-liquid phase hybrid electrolyte membrane has a content ratio of the polymer to a sum of the polyhedral oligomeric silsesquioxane and the lithium salt that falls within the range of 1:1 to 1:8 and a content ratio of the polyhedral oligomeric silsesquioxane to the lithium salt that falls within the instantly claimed range of 10:1 to 1:5, wherein such falls within the suitable ranges disclosed by modified Rhee and therefore the skilled artisan would have a reasonable expectation that such would successfully form the solid phase-liquid phase hybrid electrolyte membrane desired by modified Rhee.
Regarding Claim 4, modified Rhee discloses all of the limitations as set forth above and further discloses wherein the polymer is not particularly limited may be chosen to comprise a polyvinylidene fluoride (PVDF) or a polyacrylonitrile (PAN) as a main chain ([0021] of Rhee).
It would have been obvious to one of ordinary skill in the art to form the polymer to comprise a polyvinylidene fluoride (PVDF) or a polyacrylonitrile (PAN) as a main chain, as disclosed by modified Rhee, as such is not particularly limited and therefore the skilled artisan would have a reasonable expectation that such would successfully form the solid phase-liquid phase hybrid electrolyte membrane desired by modified Rhee.
Regarding Claim 5, modified Rhee discloses all of the limitations as set forth above and further discloses wherein the lithium salt is not particularly limited and may be chosen to comprise one selected from the group consisting of LiPF6, LiBF4, LiBOB, LiClO4, and a combination thereof ([0039] of Rhee).
It would have been obvious to one of ordinary skill in the art to utilize LiPF6, LiBF4, LiBOB, LiClO4, or a combination thereof as the lithium salt, as disclosed by modified Rhee, as such is not particularly limited and therefore the skilled artisan would have a reasonable expectation that such would successfully form the solid phase-liquid phase hybrid electrolyte membrane desired by modified Rhee.
Regarding Claim 8, modified Rhee discloses all of the limitations as set forth above and further discloses in the exemplary embodiments wherein an ion conductivity of the solid phase-liquid phase hybrid electrolyte membrane is from 3.5 x 10-7 to 4.0 x 10-6 S/cm at room temperature ([0054], Table 1 of Rhee), which falls within and therefore reads on the instantly claimed range of 1.0 x 10-7 to 9.0 x 10-5 S/cm at 25°C.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Rhee et al. (KR 2014-0027671 A, see also the previously provided English translation) or over Rhee et al. (KR 2014-0027671 A, see also the previously provided English translation) in view of Wang (CN 105932330 A, see also the previously provided English translation), as applied to Claim 1 above, and further in view of Xue et al. (CN 110994013 A, see also the provided EPO machine generated English translation).
Regarding Claim 9, modified Rhee discloses all of the limitations as set forth above and further discloses wherein the solid phase-liquid phase hybrid electrolyte membrane has a strong mechanical strength such that it can maintain its performance even when its thickness is reduced ([0013] of Rhee).
However, modified Rhee remains silent regarding the specific thickness and consequently does not disclose wherein a thickness of the solid phase-liquid phase hybrid electrolyte membrane is from 1 to 200 µm.
Xue teaches a thin-film electrolyte membrane for a lithium secondary battery comprising POSS, wherein the electrolyte membrane has a thickness preferably in the range from 50 to 300 µm ([0008], [0070]), which overlaps with the instantly claimed range of 1 to 200 µm.
It would have been obvious to one of ordinary skill in the art to form the solid phase-liquid phase hybrid electrolyte membrane of modified Rhee to have a thickness in the overlapping portion of the range taught by Xue, as such is a known suitable thickness in the art for a thin-film electrolyte membrane and therefore the skilled artisan would have a reasonable expectation that such would successfully form the solid phase-liquid phase hybrid electrolyte membrane desired by modified Rhee.
Response to Arguments
Applicant's arguments filed September 11, 2026 have been fully considered but they are not persuasive.
Regarding amended Claim 1, the Applicant argues that Rhee does not disclose or suggest a liquid phase POSS that is “impregnated into a chain structure of the solid phase polymer, or is coated on a portion where solid phase polymers are in contact with each other or on a surface thereof”. In Rhee, PEO serves as the polymer matrix and remains the dominant, ion-conducting component, while the PEG-POSS is merely a minor additive to control PEO crystallinity ([0020]-[0021]). Rather, Rhee teaches a dispersed nanocomposite filler within a polymer matrix – the structural inverse of the claimed phase hybrid.
The Examiner respectfully disagrees and notes that, as set forth in the rejections above, Rhee discloses wherein the solid phase-liquid phase hybrid electrolyte membrane is formed by mixing the polymer, the liquid phase polyhedral oligomeric silsesquioxane, and the lithium salt, and then dried ([0047]-[0048]) and therefore modified Rhee necessarily and inherently discloses wherein the liquid phase polyhedral oligomeric silsesquioxane is impregnated into a chain structure of the polymer, or is coated on a portion where chains of the polymer are in contact with each other or on a surface thereof, wherein the polymer is a solid phase polymer.
For example, if Rhee discloses wherein the liquid phase PEG-POSS is filled within the polymer matrix, as argued by the Applicant, wouldn’t the liquid phase PEG-POSS necessarily and inherently be at least be coated on a portion where chains of the polymer are in contact with each other or on a surface thereof?
The Examiner further notes that Rhee discloses wherein the liquid phase POSS functions as a plasticizer in order to control the crystallinity of the polymer (i.e. inhibit interchain interactions of the polymer) ([0023], [0029]) and therefore Rhee necessarily and inherently discloses wherein the liquid phase POSS is impregnated into a chain structure of the polymer, or is coated on a portion where chains of the polymer are in contact with each other or on a surface thereof, wherein the polymer is a solid phase polymer, in order to successfully function as a plasticizer.
Next, the Applicant argues that Rhee does not disclose the recited content ratio of 1:1 to 1:8. In Rhee, the polymer matrix remains the dominant component, with the POSS serving as a minor additive at 5 wt% to 50 wt% ([0020]). This ratio forces the liquid POSS out of “minor additive” territory and into a co-dominant phase, which is what Rhee teaches away from. The Examiner’s inherency reasoning that the ratio may be within the claimed range is speculation.
The Examiner respectfully disagrees and notes that Rhee does not disclose wherein the liquid phase POSS is a “minor additive” and therefore such is an allegation made by the Applicant.
Furthermore, the Examiner notes that it is unclear what the Applicant means by “minor additive”. If the liquid phase POSS may be included up to about 50 wt% based on the total weight of the electrolyte membrane, how is the Applicant considering it to be a “minor additive”?
As set forth in the rejection above, Rhee discloses wherein a content of the liquid phase POSS in the solid phase-liquid phase hybrid electrolyte membrane is 5 wt% to 50 wt% based on the total weight of the solid phase-liquid phase hybrid electrolyte membrane ([0020], [0035]).
Therefore, modified Rhee discloses wherein a content of the lithium salt is necessarily and inherently greater than 0 wt% (because the lithium salt is present) and less than 95 wt% based (because at least 5 wt% of the liquid phase POSS is present and the polymer is present) on the total weight of the solid phase-liquid phase hybrid electrolyte membrane.
In light of the above, modified Rhee discloses wherein a content of the polymer to a sum of the liquid phase polyhedral oligomeric silsesquioxane and the lithium salt may be 1:1 to 1:8.
It would have been obvious to one of ordinary skill in the art to form the solid phase-liquid phase hybrid electrolyte membrane to have a content ratio of the polymer to the sum of the liquid phase polyhedral oligomeric silsesquioxane and the lithium salt to be 1:1 to 1:8, as disclosed by modified Rhee, wherein the skilled artisan would have a reasonable expectation that such would successfully form the solid phase-liquid phase hybrid electrolyte membrane desired by modified Rhee.
The Examiner notes that the Applicant has not provided any reasoning or evidence as to why the electrolyte membrane of Rhee could not be formed to have the claimed content ratio in light of the disclosure of Rhee.
The Applicant further argues that Wang’s component ratios are recited exclusively for a nitrile-rubber electrolyte system. Wang does not disclose a solid phase-liquid phase hybrid architecture in which a liquid phase POSS is impregnated into a chain structure of the solid phase polymer, or is coated on a portion where solid phase polymers are in contact with each other or on a surface thereof and therefore the combination fails to render obvious Claim 1.
The Examiner respectfully disagrees and notes that Wang was not relied on to teach a solid phase-liquid phase hybrid architecture in which a liquid phase POSS is impregnated into a chain structure of the solid phase polymer, or is coated on a portion where solid phase polymers are in contact with each other or on a surface thereof, as argued by the Applicant. Instead, Wang was relied on to teach suitable amounts of a polymer, a lithium salt, and a POSS in an electrolyte membrane ([0010]).
The Examiner notes that because the amount of the liquid phase POSS included in the electrolyte membrane taught by Wang falls within the desired range disclosed by Rhee, the skilled artisan would have had a reasonable expectation that the ranges taught by Wang could be utilized to successfully form the electrolyte membrane desired by Rhee.
Furthermore, Rhee discloses wherein the polymer in the electrolyte membrane is not particularly limited (e.g. is not limited to PEO) ([0037], [0020]) and therefore the skilled artisan would have had a reasonable expectation of successfully applying the teachings of Wang to Rhee, even if Rhee uses a different polymer from Wang.
Lastly, the Applicant argues that the specification demonstrates unexpected results achieved by the recited combination of features. See Table 1, which shows that comparative membranes lacking the liquid phase POSS gave no measurable ion conductivity or very low ion conductivity, while the examples within the recited content ratio gave substantially higher ion conductivity. Table 2 of the instant specification shows that the solid phase-liquid hybrid electrolyte membrane has a weight change of 0.2% or less with no leakage under applied pressure.
The Examiner respectfully disagrees and notes that Rhee discloses that when the electrolyte membrane includes the liquid phase POSS, ion conductivity is increased ([0023], [0029]) and therefore the increase in ion conductivity of electrolyte membranes comprising the liquid phase POSS compared to electrolyte membranes lacking the liquid phase POSS demonstrated in Table 1 of the instant specification would be expected.
Furthermore, the Examiner notes wherein the instant specification discloses that in Comparative Example 5, when an excessive amount of POSS was included, the weight change of the electrolyte membrane was greatly changed and it did not have the form of a solid phase electrolyte membrane, and leakage of the electrolyte membrane occurred under applied pressure (Table 2, P23). However, Comparative Example 5 comprises a content ratio of 1:6 (Table 1), which falls within the instantly claimed range of 1:1 to 1:8, and therefore the claimed range does not appear to achieve the argued effects.
Moreover, the Examiner notes that Table 1 does not appear to provide evidence of criticality for the claimed range. For example, Table 1 does not disclose ion conductivities of electrolyte membranes comprising content ratios within the entirety of the claimed range (e.g. Examples 1-10 only demonstrate a content ratio in the range of 1:1 to 1:4) or content ratios outside of the claimed ratio (e.g. comparative examples that would demonstrate that a content ratio outside of the claimed range would have higher resistance and/or lower ion conductivity).
The Examiner suggests that the Applicant could amend Claim 1 to require the content ratio to be in the range of 1:1 to 1:4 in order to make the Applicant’s arguments directed to Tables 1-2 of the instant specification commensurate with the scope of the claims.
Thus, the Applicant’s arguments are not considered to be persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Pan et al. (US PGPub 2018/0226679 A1) teaches an electrolyte membrane comprising a polymer, a polyhedral oligomeric silsesquioxane (POSS), and a lithium salt ([0010]).
For example, Pan teaches wherein the polyhedral oligomeric silsesquioxane may be glycidyl POSS ([0029]).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIMBERLY WYLUDA whose telephone number is (571)272-4381. The examiner can normally be reached Monday-Thursday 7 AM - 3 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BASIA RIDLEY can be reached at (571)272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIMBERLY WYLUDA/Primary Examiner, Art Unit 1725
