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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/26/24 was filed on 2/26/24. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings filed on 2/26/24 are accepted by the examiner.
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, 10, and 16 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. With respect to 4a,9a-dihydromethanoanthraquinone compound of formula (2), it is unclear what “R5” and “R6” are referring to because they are not defined in claim 1.
Claim Rejections - 35 USC § 103
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.
Claims 1-9, 11-15, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshimitsu et al (EP 0296589 A2).
Regarding claims 1-9, 11-15, 17, and 18, Yoshimitsu et al discloses a non-aqueous electrochemical cell (energy storage device), comprising an anode (negative electrode), a cathode collector (positive electrode), and a cathode-electrolyte (non-aqueous electrolyte solution) consisting of an ionically conductive solution of a solute in a solvent, wherein examples of the solute includes LiAlBr4 (electrolyte salt / lithium salt), wherein the solvent includes co-solvents such as propylene carbonate (organic solvent / cyclic carbonate); wherein the electrolyte includes an aromatic compound, wherein specific examples of the aromatic compound include benzothiophene, …, 1,4,4a,9a-tetrahydroanthraquinone (4a, 9a-dihydroanthraquinone compound of formula (1)), … (pg. 2, lines 3-5, pg. 2, line 55 to pg. 3, line 1, pg. 3, lines 22-49, pg. 4, lines 1-20).
However, Yoshimitsu et al does not expressly teach a 4a, 9a-dihydroanthraquinone compound of formula (1) or a 4a, 9a-dihydromethanoanthraquinone compound of formula (2) (claim 1); the 4a, 9a-dihydroanthraquinone compound of formula (1) (claim 9); 1,4,4a,9a-tetrahydroanthraquinone, 1,4,4a,9a-tetrahydromethanoanthraquinone, 2-methyl-1,4,4a,9a-tetrahydroanthraquinone, 2-(4-methyl-3-pentenyl)-1,4,4a,9a-tetrahydroanthraquinone, and/or 1,2,3,4,4a, 9a-hexahydrohexahydromethanoanthraquinone (claim 17).
However, the invention as a whole would have been obvious to one of ordinary skill in the art at the time the invention was made because the disclosure of Yoshimitsu indicates that 1,4,4a,9a-tetrahydroanthraquinone is a suitable material for use as an aromatic compound incorporated into the electrolyte. The selection of a known material based on its suitability for its intended use has generally been held to be prima facie obvious (MPEP §2144.07). As such, it would be obvious to use 1,4,4a,9a-tetrahydroanthraquinone.
In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Yoshimitsu aromatic compound to include 2-methyl-1,4,4a,9a-tetrahydroanthraquinone, 1-methyl-1,4,4a,9a-tetrahydroanthraquinone, 2-ethyl-1,4,4a,9a-tetrahydroanthraquinone, 2-butyl-1,4,4a,9a-tetrahydroanthraquinone, 2-amyl-1,4,4a,9a-tetrahydroanthraquinone, 1,3 -dimethyl-1,4,4a,9a-tetrahydroanthraquinone, 2,3 -dimethyl-1,4,4a,9a-tetrahydroanthraquinone, 1,4-dimethyl-1,4,4a,9a-tetrahydroanthraquinone, 2-chloro-1,4,4a,9a-tetrahydroanthraquinone, and/or 2-bromo-1,4,4a, 9a-tetrahydroanthraquinone; or 2-methyl-1,4,4a,9a-tetrahydroanthraquinone, 1-methyl-1,4,4a,9a-tetrahydroanthraquinone, 2-ethyl-1,4,4a,9a-tetrahydroanthraquinone, 2-butyl-1,4,4a,9a-tetrahydroanthraquinone, 2-amyl-1,4,4a,9a-tetrahydroanthraquinone, 1,3 -dimethyl-1,4,4a,9a-tetrahydroanthraquinone, 2,3 -dimethyl-1,4,4a,9a-tetrahydroanthraquinone, 1,4-dimethyl-1,4,4a,9a-tetrahydroanthraquinone, 2-chloro-1,4,4a,9a-tetrahydroanthraquinone, and/or 2-bromo-1,4,4a, 9a-tetrahydroanthraquinone; or
1,2,3,4,4a, 9a-hexahydroanthraquinone, 2-methyl-1,2,3,4,4a,9a-hexahydroanthraquinone, 1-methyl-1,2,3,4,4a,9a-hexahydroanthraquinone, 2-ethyl-1,2,3,4,4a,9a-hexahydroanthraquinone, 2-butyl-1,2,3,4,4a,9a-hexahydroanthraquinone, 2-amyl-1,2,3,4,4a,9a-hexahydroanthraquinone, 1,3 -dimethyl-1,2, 3,4,4a,9a-hexahydroanthraquinone, 2,3 -dimethyl-1,2, 3,4,4a,9a-hexahydroanthraquinone, 1,4-dimethyl-1,2, 3,4,4a,9a-hexahydroanthraquinone, 2-chloro-1,2,3,4,4a,9a-hexahydroanthraquinone, and/or 2-bromo-1,2,3,4,4a, 9a-hexahydroanthraquinone; or 6-methyl-1,4,4a,9a-tetrahydroanthraquinone, 2,6-dimethyl-1,4,4a,9a-tetrahydroanthraquinone, 2,7-dimethyl-1,4,4a,9a-tetrahydroanthraquinone, 2-ethyl-6-methyl-1,4,4a, 9a-tetrahydroanthraquinone, 2-butyl-6-methyl-1,4,4a,9a-tetrahydroanthraquinone, 2-amyl-6-methyl-1,4,4a, 9a-tetrahydroanthraquinone, 2-chloro-6-methyl-1,4,4a,9a-tetrahydroanthraquinone, 2-bromo-6-methyl-1, 4,4a,9a-tetrahydroanthraquinone, 6-methyl-1,2,3,4,4a,9a-hexahydroanthraquinone, 2,6-dimethyl-1,2,3,4,4a,9a-hexahydroanthraquinone, 2,7-dimethyl-1,2,3,4,4a,9a-hexahydroanthraquinone, 2-ethyl-6-methyl-1,2,3,4,4a, 9a-hexahydroanthraquinone, 2-butyl-6-methyl-1,2,3,4,4a,9a-hexahydroanthraquinone, 2-amyl-6-methyl-1,2,3,4,4a, 9a-hexahydroanthraquinone, 2-chloro-6-methyl-1,2,3,4,4a,9a-hexahydroanthraquinone, and/or 2-bromo-6-methyl-1,2,3,4,4a,9a-hexahydroanthraquinone; or
6-chloro-1,4,4a,9a-tetrahydroanthraquinone, 2-methyl-6-chloro-1,4,4a,9a-tetrahydroanthraquinone, 2-ethyl-6-chloro-1,4,4a,9a-tetrahydroanthraquinone, 2-butyl-6-chloro-1, 4,4a,9a-tetrahydroanthraquinone, 2-amyl-6-chloro-1,4,4a,9a-tetrahydroanthraquinone, 2,6-dichloro-1,4,4a,9a-tetrahydroanthraquinone, 2-bromo-6-chloro-1,4,4a, 9a-tetrahydroanthraquinone, 6-chloro-1,2,3,4,4a,9a-hexahydroanthraquinone, 2-methyl-6-chloro-1,2,3,4,4a,9a-hexahydroanthraquinone, 2-ethyl-6-chloro-1,2,3,4,4a,9a-hexahydroanthraquinone, 2-butyl-6-chloro-1,2,3,4,4a,9a-hexahydroanthraquinone, 2-amyl-6-chloro-1,2,3,4,4a,9a-hexahydroanthraquinone, 2,6-dichloro-1,2,3,4,4a,9a-hexahydroanthraquinone, and/or 2-bromo-6-chloro-1,2,3,4,4a,9a-hexahydroanthraquinone; or
1-(2-methyl-2-butenyl)-3 -methyl-1,4,4a,9a-tetrahydroanthraquinone, 1-(3 -butenyl)-1,4,4a,9a-tetrahydroanthraquinone, 2-(4-methyl-3-pentenyl)-1,4,4a,9a-tetrahydroanthraquinone, and/or 1-(2-methyl-1-propenyl)-3,4-dimethyl-1,4,4a,9a-tetrahydroanthraquinone because structural analogs were held to have been obvious (In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990)). According to MPEP 2144.09, Section I, “A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.". Based upon para. [0039]-[0043] of the present application, one of ordinary skill in the art would have expected the compounds recited in claims 11-15 that are similar in structure to have similar properties.
Allowable Subject Matter
Claims 10 and 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if the 112, 2nd paragraph rejection of claims 1, 10, and 16 is obviated.
Yoshimitsu discloses an electrolyte solution comprising 1,4,4a,9a-tetrahydroanthraquinone which reads on 4a,9a-dihydroanthraquinone compound of formula (1), where R1, R2, R3, R4, and X are each H, and a portion in which dashed parallel lines is a double bond.
However, Yoshimitsu does not expressly teach a 4a,9a-dihydromethanoanthraquinone compound of formula (2) which is a dihydroanthraquinone compound having a bridging methano group. The addition of a bridging methano group would have required undue experimental burden to one of ordinary skill in the art and there is no motivation to modify the Yoshimitsu 1,4,4a,9a-tetrahydroanthraquinone to include a bridging methano group.
Conclusion
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/T.S.C/Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 7/15/2026
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