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 .
Specification
The disclosure is objected to because of the following informalities: the second sentence of paragraph [0032] should read "The lithium ion conducting phase may further .
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/723960 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations all map each other and have a bijective relationship.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-3 and 7-8 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Maeda et al. (US 20190181494 A1, hereinafter "Maeda").
Regarding Claim 1, Maeda teaches a non-aqueous electrolyte secondary battery comprising:
a negative electrode that contains a negative electrode material mixture (paragraphs [0093] through [0098] teach a negative electrode active material mixture);
a separator ([0079] teaches a separator);
a positive electrode that is provided to oppose the negative electrode via the separator ([0079] teaches a nonaqueous electrolyte secondary battery in which the separator is disposed between the positive electrode and negative electrode); and
a non-aqueous electrolyte ([0079] teaches a nonaqueous electrolytic solution),
wherein the negative electrode material mixture contains a negative electrode active material ([0093] teaches the negative electrode active material layer/mixture contains the active material),
the negative electrode active material contains 3 mass% or more of a silicon-containing material ([0115] teaches the silicon is 5% mass or more of the Si/SiO/C composite, which is used in the negative electrode active material layer, as taught in the preceding 10 paragraphs),
the silicon-containing material contains carbon composite particles ([0109], [0111], and [0114] teach the silicon containing material contains carbon composite particles; silicon coated with carbon),
the carbon composite particles have a carbon phase and a silicon phase dispersed in the carbon phase ([0111] and [0114] teach a silicon phase dispersed in the carbon phase), and
the non-aqueous electrolyte contains a 5- or 6-membered cyclic compound component that contains a sulfur element as a ring-constituting element ([0062] teaches that the nonaqueous solvent in the nonaqueous electrolytic solution is a sulfone such as sulfolane, a 5 membered cyclic compound containing sulfur as a ring constituting element; additionally [0059] teaches the nonaqueous electrolytic solution may comprise 1,3-propanesultone as an additional additive).
Regarding Claim 2, Maeda teaches the non-aqueous electrolyte secondary battery in accordance with claim 1, wherein the silicon-containing material further contains a silicon oxide ([0111] and [0112] teach the silicon containing material further contains silicon oxide, e.g., the Si/SiO/C composite).
Regarding Claim 3, Maeda teaches he non-aqueous electrolyte secondary battery in accordance with claim 1, wherein the silicon-containing material further contains silicate composite particles ([0106] teaches silicates as an exemplary silicon compound usable in the composite particles of silicon and a silicon compound, as suggested in [0110]; additionally, [0108] teaches silicon oxide combined with a metal element, which is inherently a silicate), and the silicate composite particles have a silicate phase and a silicon phase dispersed in the silicate phase ([0110] first sentence explains the composition of the composite particle; in the case where silicate is used as the silicon compound in the silicon composite material, the silicon phase would be dispersed in the silicate phase; [0110] last sentence teaches the method of making such a particle).
Regarding Claim 7, Maeda teaches the non-aqueous electrolyte secondary battery in accordance with claim 1,
wherein the negative electrode material mixture further contains carbon nanotubes ([0094] teaches that the negative electrode active material includes a carbonaceous material, and [0100] teaches that the carbonaceous material can be graphite, amorphous carbon, carbon nanotubes, or a composite material thereof).
Regarding Claim 7, Maeda teaches the non-aqueous electrolyte secondary battery in accordance with claim 1,
wherein the non-aqueous electrolyte further contains fluoroethylene carbonate ([0059] teaches fluoroethylene carbonate as an additive compound for the nonaqueous electrolyte solution).
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.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Maeda (US 20190181494 A1) in view of Ashiura et al. (JP 2014192143 A, hereinafter “Ashiura”).
Regarding Claims 4 and 5, Maeda teaches the non-aqueous electrolyte secondary battery in accordance with claim 1.
Maeda does not teach that the sulfur heterocycle is unsaturated or is 1,3-propenesultone.
However, Ashiura teaches a lithium-ion secondary battery comprising LiPF6 salt and a nonaqueous electrolyte, which contains a cyclic compound that contains the sulfur element as the ring-constituting element and that has a carbon-carbon unsaturated bond ([0015] of the machine translated description teaches the electrolytic solution contains 1,3-propenesultone, PRS, as an additive, which is a 5-membered unsaturated sulfur heterocycle). He teaches that adding PRS performs interface control of the positive and negative electrodes, or in other words, the coating is formed, and improves the high-temperature retention characteristic ([0016]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have included 1,3-propenesultone (PRS) as an unsaturated sulfur heterocycle additive in the non-aqueous electrolyte solution to form a film or coating on the electrode interfaces, improving the high-temperature retention characteristic, as taught by Ashiura.
Regarding Claim 6, Maeda teaches the non-aqueous electrolyte secondary battery in accordance with claim 1.
Maeda does not teach that the concentration of the cyclic compound component in the non-aqueous electrolyte is 2 mass% or less.
However, Ashiura teaches that the concentration of 1,3-propenesultone in the non-aqueous electrolyte is 0.1% by weight or more, which overlapps the range 0.1 mass% to 2.0 mass%.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have included the sulfur heterocycle in the non-aqueous electrolyte solution in a concentration of 2 mass% or less, as taught by Ashiura.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW N KIM whose telephone number is (571)272-9169. The examiner can normally be reached Mon-Fri. 7:30am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (571)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW KIM/ Examiner, Art Unit 1727
/Maria Laios/ Primary Examiner, Art Unit 1727
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