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 .
Claim Objections
Claim 7 is objected to because of the following informalities: (1) the phrase “in the alkali metal salt of compound of formula (I)” should be written as “in the alkali metal salt of the at least one compound of formula (I), and (2) the phrase “in the alkali metal salt of compound of formula (II)” should be written as “in the alkali metal salt of the at least one compound of formula (II). Appropriate correction is required.
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.
Claim 4 is 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 4 recites the limitation "said compound (II)." There is insufficient antecedent basis for this limitation in the claim (it is noted that Claim 1 refers to “at least one compound of formula (II)”).
Claim 5 is 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 "compound (I)." There is insufficient antecedent basis for this limitation in the claim (it is noted that Claim 1 refers to “at least one compound of formula (I)”).
Claim 5 recites that the at least one compound of formula (I) is selected from the group consisting of the instantly claimed four chemical structures. However, Claim 5 is rendered particularly indefinite insofar as it is unclear how the first, second, and third chemical structures (i.e. the structures which are negatively charged) can be the at least one compound of formula (I) when Claim 1 explicitly states the structure of the at least one compound of formula (I) (i.e. the fourth chemical structure of Claim 5 or an alkali metal salt thereof), wherein said first, second, and third chemical structures are not described by the structure of Claim 1.
Claim 6 is 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 6 recites the limitation "compound (II)." There is insufficient antecedent basis for this limitation in the claim (it is noted that Claim 1 refers to “at least one compound of formula (II)”).
Claim 6 recites that the at least one compound of formula (II) is selected from the group consisting of the instantly claimed three chemical structures. However, Claim 6 is rendered particularly indefinite insofar as it is unclear how the first and second chemical structures (i.e. the structures which are negatively charged) can be the at least one compound of formula (II) when Claim 1 explicitly states the structure of the at least one compound of formula (II) (i.e. the third chemical structure of Claim 6 or an alkali metal salt thereof), wherein said first and second chemical structures are not described by the structure of Claim 1.
Claim 7 is 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 7 recites the limitation "in FSO3-." There is insufficient antecedent basis for this limitation in the claim (it is noted that Claim 1 refers to “at least one alkali metal salt of FSO3-”).
Claim 11 is 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 11 recites the limitation "the total weight." There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation “said liquid composition.” There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 12 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claim does not fall within at least one of the four categories of patent eligible subject matter because it is drawn to the “use” of the composition according to Claim 1 as a non-aqueous electrolyte solution in a battery, but such a recitation of “use” is an improper definition of a process (See MPEP 2173.05(q)).
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 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of copending Application No. 18/695313 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because said conflicting claims, when considered in accordance with the claim dependencies recited in said conflicting claims, recite a composition comprising, at least, all of the recited limitations of the instantly claimed composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-11 of copending Application No. 18/695290 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because said conflicting claims, when considered in accordance with the claim dependencies recited in said conflicting claims, recite a composition comprising, at least, all of the recited limitations of the instantly claimed composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The following reference is noted for its particular relevance to the instant claims:
Buisine et al. (WO 2021/074142, provided by Applicant in the 03/26/24 IDS) recites an LiFSI composition (Abstract). Buisine teaches a 30 wt% LiFSI solution formed by the steps recited in Examples 1 and 3 (Page 15 line 20 to Page 16 line 20). Applicant explicitly states (see [0106]-[0107] and Table 1 of Applicant’s own PG Pub.) that a 30 wt% LiFSI solution formed by the steps recited in Buisine’s Examples 1 and 3 includes, in addition to LFSI, 121.3 ppm of FSO3-, 32.3 ppm of a compound of instantly claimed formula (I), 155 ppm of instantly claimed formula (II), less than 34 ppm total alcohol content, and a 34 ppm moisture content. In other words, Applicant explicitly states that Buisine’s solution includes in addition to LFSI, 121.3 ppm of FSO3-, 32.3 ppm of a compound of instantly claimed formula (I), 155 ppm of a compound of instantly claimed formula (II), less than 34 ppm total alcohol content, and a 34 ppm moisture content. However, Buisine’s composition is not explicitly in accordance with the instantly claimed ranges, and Buisine neither teaches nor suggests how or why one of ordinary skill in the art would form the composition with FSO3-, compound of instantly claimed formula (II), alcohol, and moisture contents in accordance with the instantly claimed ranges.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW W VAN OUDENAREN whose telephone number is (571)270-7595. The examiner can normally be reached 7AM-3PM EST M-F.
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/MATTHEW W VAN OUDENAREN/Primary Examiner, Art Unit 1728
