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 .
Status of the Claims
A preliminary amendment to the claims has not been filed. Thus claims 1-18 filed on 05/02/2024 are currently pending and under examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the generic limitation “organic solvent comprising at least one element of B, F and N”. Thei generic term encompasses a large amount of species and there is no disclosure of this term that would permit the determination of which species are within the scope of the generic term. The disclosure contains insufficient written description to demonstrate applicant was in possession of the generic term. Furthermore, the description does not place the public in possession of any of this generic group of compounds.
The MPEP states that the purpose of the written description requirement is to
ensure that the inventor had possession, as of the filing date of the application, of the
specific subject matter later claimed by him. The courts have stated:
"To fulfill the written description requirement, a patent specification must describe
an invention and do so in sufficient detail that one skilled in the art can clearly
conclude that "the inventor invented the claimed invention." Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir.
1997); In re Gostelli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir.
1989) ("[T]he description must clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed."). Thus, an applicant
complies with the written description requirement "by describing the invention,
with all its claimed limitations, not that which makes it obvious," and by using
"such descriptive means as words, structures, figures, diagrams, formulas, etc.,
that set forth the claimed invention." Lockwood, 107 F.3d at 1572, 41 USPQ2d at
1966." Regents of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
Further, for a broad generic claim, the specification must provide adequate
written description to identify the genus of the claim. In Regents of the University of
California v. Eli Lilly & Co. the court stated:
"A written description of an invention involving a chemical genus, like a
description of a chemical species, 'requires a precise definition, such as by
structure, formula, [or] chemical name,' of the claimed subject matter sufficient to
distinguish it from other materials." Fiers, 984 F.2d at 1171, 25 USPQ2d 1601; In
re Smythe, 480 F.2d 1376, 1383, 178 USPQ 279, 284985 (CCPA 1973) ("In
other cases, particularly but not necessarily, chemical cases, where there is
unpredictability in performance of certain species or subcombinations other than
those specifically enumerated, one skilled in the art may be found not to have
been placed in possession of a genus ... ") Regents of the University of California
v. Eli Lilly & Co., 43 USPQ2d 1398.
The MPEP further states that if a biomolecule is described only by a functional
characteristic, without any disclosed correlation between function and structure of the
sequence, it is "not sufficient characteristic for written description purposes, even when
accompanied by a method of obtaining the claimed sequence." MPEP § 2163. The
MPEP does state that for a generic claim the genus can be adequately described if the
disclosure presents a sufficient number of representative species that encompass the
genus. MPEP § 2163. If the genus has a substantial variance, the disclosure must
describe a sufficient variety of species to reflect the variation within that genus. See
MPEP § 2163. Although the MPEP does not define what constitutes a sufficient number
of representative species, the courts have indicated what do not constitute a
representative number of species to adequately describe a broad generic. In Gostelli,
the courts determined that the disclosure of two chemical compounds within a subgenus
did not describe that subgenus. In re Gostelli, 872, F.2d at 1012, 10 USPQ2d at 1618.
The MPEP lists factors that can be used to determine if sufficient evidence of
possession has been furnished in the disclosure of the Application. These include "level
of skill and knowledge in the art, partial structure, physical and/or chemical properties,
functional characteristics alone or coupled with a known or disclosed correlation
between structure and function, and the method of making the claimed invention.
Disclosure of any combination of such identifying characteristics that distinguish the
claimed invention from other materials and would lead one of skill in the art to the
conclusion that the applicant was in possession of the claimed species is sufficient."
MPEP § 2163. While all of the factors have been considered, a sufficient amount for a
prima facie case are discussed below.
(1) Level of skill and knowledge in the art:
The relative level of skill possessed by one of ordinary skill in the art is relatively high, as a majority of lead investigators directing scientific research and development in this particular technological area possess a scientific discipline such as organic synthetic chemistry, polymer chemistry, physical chemistry or the like.
(2) Partial structure:
The specification fails to describe what species are encompassed by the generic term organic solvent comprising at least one element of B, F and N. The specification further describes the organic solvent as comprising at least one of an alcohol solvent, an ether solvent, and a ketone solvent, in which some of their species comprise B, F, and N, however they are described as optional embodiments ([0008]-[0012]). In other words, the organic solvent comprising at least one of an alcohol solvent, an ether solvent is not the same as the organic solvent recited in claim 1, the latter being a required limitation of claim 1.
(3) Physical and/or chemical properties:
As set forth above, the disclosure fails to provide chemical properties of the generic term.
(4) Functional characteristics
No disclosure of functional characteristics of the generic limitation are present in the specification.
(5) Method of making the claimed invention:
The specification does not set forth method of making any organic solvent comprising at least one element of B, F and N.
As stated supra, the MPEP states that written description for a genus can be
achieved by a representative number of species within a broad generic. It is
unquestionable that instant claims are broad and generic, with respect to all possible
species encompassed by the claims. The possible structural variations are limitless
to any “organic solvent comprising at least one element of B, F and N”. Although the claim may recite some functional characteristics, the claim lacks written description because there is no disclosure of a correlation between function and structure of the organic solvent comprising at least one element of B, F and N. Moreover, the specification lacks any species to reflect this variance in the genus. While having written
description of the elected species and compounds identified in the specification tables
and/or examples, the specification does not provide sufficient descriptive support for the
myriad of compounds embraced by the claim.
The description requirement of the patent statue requires a description of an
invention, not an indication of a result that one might achieve if one made that invention.
See In re Wilder, 736, F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984)
(affirming rejection because the specification does "little more than outlin[e] goals
appellants hope the claimed invention achieves and the problems the invention will
hopefully ameliorate.") Accordingly, it is deemed that the specification fails to provide
adequate written description for the genus of the claims and does not reasonably
convey to one skilled in the relevant art that the inventor(s), at the time the application
was filed, had possession of the entire scope of the claimed invention.
Claims 2-18 also fail to comply with the written description for their dependency on claim 1.
Claim Rejections - 35 USC § 112 – Indefiniteness
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 1-18 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 “organic solvent comprising at least one element of B, F and N” that renders the claim vague and indefinite. Upon review of the specification, the examiner cannot determine which species of organic solvent comprising at least one element of B, F and N are embraced by the claim. It is unclear how many organic solvents comprising at least one element of B, F and N are tolerated to fall within the metes and bounds of the aforementioned limitation.
Claims 2-18 are also rendered indefinite for their dependency on claim 1.
Claim 3 recites the limitations β-sitosterol, 2-bromo-9-methyl-9H-fluoren-9-ol, (1S,4R)-1-methyl-4-(1-methylvinyl)-2-cyclohexen-1-ol, and 2-(5-methylfuran-2-yl)ethanol;
Claim 12 recites the limitations diethyl ether, ethylene glycol monomethyl ether, ethylene glycol monoethyl ether, ethylene glycol monobutyl ether, and tetrahydrofuran; and
Claim 13 recites 2-phenylchromone, flavonol, 2-hydroxychalcone, isophorone and 2,4-pentanedione.
There is insufficient antecedent basis for these limitations in the claims because claim 1 requires the organic solvent to comprise at least one element of B, F and N, whereas the above limitations do not comprise the aforementioned elements.
Allowable Subject Matter
The subject matter of claims 1-18 is free of prior art. The closest prior art reference is Ross (Ross, S. D. Patent number US2,830,237).
Ross teaches in Example 1 (col. 4) a preparation method for an electrolyte additive, wherein the preparation method for an electrolyte additive comprises: dissolving a picric acid in tri-n-butylamine (an organic solvent comprising N) to obtain an additive solution; and performing crystallization from the additive solution, to precipitate the electrolyte additive. Ross teaches in Example 2 (col. 4) a method for producing an electrolyte from the electrolyte additive. The reference discusses that the electrolyte systems and more particularly refers to non-aqueous electrolytes for electrolytic devices such as capacitors. Ross, however, fails to teach the preparation method for an electrolyte additive, the electrolyte additive being used for being added to an electrolyte of a lithium ion battery. Moreover, there is no suggestion in Ross for a skilled artisan to use the prepared electrolyte additive of an electrolyte of a lithium ion battery.
The claimed invention is thus deemed novel and unobvious over the closest prior art reference.
Conclusion
Claims 1-18 are rejected and no claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692
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