DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1, 3-6, 8-10, and 12-15 have been amended. Claims 1-15 are pending in the instant application.
Priority
This application is a national stage entry of PCT/EP2022/082382 filed on November 18, 2022, which claims priority filed on November 19, 2021, in EUROPE with No. 21315245.7.
Information Disclosure Statements
Applicants’ Information Disclosure Statement, filed on 05/17/2024, has been considered. Please refer to Applicant’s copy of the PTO-1449 submitted herewith.
Status of the Claims
Claims 1-15 are under examination on the merits.
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 15 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 pre-AIA the applicant regards as the invention.
Specifically, claim 15 contains the phrase “the dispersion contains at least 1 ppm of solvent S2.”, wherein “solvent S2” is not defined.
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 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)(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 1-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by WO2022/053002 A1 (“the `002 publication”) to Tang et al., which claims priority to Chinese Patent Application No. CN202111750, filed on September 10, 2021, evidenced by EP 3381923 B1 (“the `923 patent”).
Applicants’ claim 1 is drawn to a dry dispersion of ammonium bis(fluorosulfonyl)imide (NH4FSI) salt of formula (I):[F-SO2-N--SO2-F]-NH4+, wherein the NH4FSI salt is in a form of a solvate comprising: 50 to 99.9 wt.% of the NH4FSI salt, and 0.1 to 50 wt.% of solvent S2, which is selected from the group consisting of cyclic and acyclic ethers, wherein the dry dispersion comprises at least two particle size fractions, a small-size fraction and a large-size fraction.
Note: The term “free dispersion” is interpreted as a dispersion free from water in light of Applicants’ disclosure.
Example 2 of the `002 publication (col. 31, p.19 to col. 2, p.21) discloses a crystalized dry dispersion of ammonium bis(fluorosulfonyl)imide (NH4FSI) salt of formula (I):[F-SO2-N--SO2-F]-NH4+, wherein the NH4FSI salt is in a form of a solvate comprising: 79.9 to 80.5 wt.% of the NH4FSI salt, and 20.1 to 19.5 wt.% of solvent S2 of 1,4-dioxane, and a method for preparing the dry dispersion thereof.
The `002 publication is silent on the limitation “the dry dispersion comprises at least two particle size fractions, a small-size fraction and a large-size fraction”. However, the crystalized dry dispersions disclosed in Example 2 would comprise at least two particle size fractions, a small-size fraction and a large-size fraction as an naturally flew property because Example 2 of the `002 publication discloses a substantially similar method of preparing the dry dispersion of ammonium bis(fluorosulfonyl)imide (NH4FSI) salt with the one disclosed in Applicant’s EXAMPLES [0047-0048], wherein crude NH4FSI salt was crystallized in Solvent 1 (S1) of TFE, and Solvent 2 (S2) of 1,4-dioxane at 60 °C, and evaporated at 70 °C.
It has long been recognized that a product is inseparable from its properties. The claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255,195 USPQ at 433. Therefore, the `002 publication anticipates claims 1-5, and 9-11.
In terms of claims 6-8, the `002 publication is silent on the limitation of the shape of the dry dispersion. However, one ordinary skilled in the art would have known that the crystalized dry dispersions disclosed in Example 2 would comprise at least two particle size fractions, a small-size fraction and a large-size fraction because Example 2 of the `002 publication discloses a substantially similar method of preparing the dry dispersion of ammonium bis(fluorosulfonyl)imide (NH4FSI) salt with the one disclosed in Applicant’s EXAMPLES [0047-0048], wherein crude NH4FSI salt was crystallized in Solvent 1 (S1) of TFE, and Solvent 2 (S2) of 1,4-dioxane at 60 °C, and evaporated at 70 °C. Therefore, the shape of the dry dispersion would have been an inherited property of the dispersion disclosed by the `002 publication.
In terms of claim 12 drawn to a process for preparing a bis(fluorosulfonyl)imide (MFSI) salt of formula (II):[F-SO2-N-SO2-F], M+ wherein M is selected from the group consisting of Li, Na and K, wherein the process comprises reacting the dry dispersion of ammonium bis(fluorosulfonyl)imide (NH4FSI) salt of formula (I) of claim 1 with a compound (C) selected from the group consisting of lithium compounds, sodium compounds and potassium compounds, the `002 publication (col. 8-15, p.2) discloses reacting the ammonium bis(fluorosulfonyl) imide with a lithium base to produce lithium bis (fluorosulfonyl) imide according to EP 3381923 B1 (“the `923 patent”).
In terms of claim 13 wherein the compound (C) is a lithium compound selected from the group consisting of lithium hydroxide LiOH, lithium hydroxide hydrate LiOH.H2O, lithium carbonate Li2CO3, lithium hydrogen carbonate LiHCO3, lithium chloride LiCl, lithium fluoride LiF, alkoxide compounds, alkyl lithium compounds, lithium acetate CH3COOLi, and lithium oxalate Li2C2O4, Example 3 of the `923 patent [0058-0059] teaches the lithium base is lithium hydroxide hydrate (LiOH·H2O).
In terms of claim 14, the `002 publication (col. 8-15, p.2) discloses reacting the ammonium bis(fluorosulfonyl) imide with a lithium base to produce lithium bis (fluorosulfonyl) imide according to EP 3381923 B1 (“the `923 patent”), wherein M is Li.
In terms of claim 15, Example 2 of the `002 publication (col. 31, p.19 to col. 2,p.21) discloses a crystalized dry dispersion of ammonium bis(fluorosulfonyl)imide (NH4FSI) salt of formula (I):[F-SO2-N--SO2-F]-NH4+, wherein the NH4FSI salt is in a form of a solvate comprising 79.9 to 80.5 wt.% of the NH4FSI salt, and 20.1 to 19.5 wt.% of solvent S2 of 1,4-dioxane, wherein of solvent S2 of 20.1 to 19.5 wt.% reads on the limitation “at least 1 ppm of solvent S2”.
Alternatively, claims 1-15 are rejected under 35 USC § 103(a) as follows.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over the `002 publication in view of the `923 patent.
Example 2 of the `002 publication (col. 31, p.19 to col. 2,p.21) discloses a crystalized dry dispersion of ammonium bis(fluorosulfonyl)imide (NH4FSI) salt of formula (I):[F-SO2-N--SO2-F]-NH4+, wherein the NH4FSI salt is in a form of a solvate comprising: 79.9 to 80.5 wt.% of the NH4FSI salt, and 20.1 to 19.5 wt.% of solvent S2 of 1,4-dioxane, and a method for preparing the dry dispersion thereof.
The difference between the instantly claimed dispersion and the dispersion of the `002 publication is that the `002 publication does not teach the limitation “the dry dispersion comprises at least two particle size fractions, a small-size fraction and a large-size fraction”.
However, one ordinary skilled in the art would have known that the crystalized dry dispersions disclosed in Example 2 would comprise at least two particle size fractions, a small-size fraction and a large-size fraction, because Example 2 of the `002 publication discloses a substantially similar method of preparing the dry dispersion of ammonium bis(fluorosulfonyl)imide (NH4FSI) salt with the one disclosed in Applicant’s EXAMPLES [0047-0048], wherein crude NH4FSI salt was crystallized in Solvent 1 (S1) of TFE, and Solvent 2 (S2) of 1,4-dioxane at 60 °C, and evaporated at 70 °C. It has long been recognized that a product is inseparable from its properties. The claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255,195 USPQ at 433. Therefore, the `002 publication reads on claims 1-5, and 9-11.
In terms of claims 6-8, the `002 publication is silent on the limitation of the shape of the dry dispersion. However, one skilled in the art would have known that the crystalized dry dispersions disclosed in Example 2 would comprise at least two particle size fractions, a small-size fraction and a large-size fraction because Example 2 of the `002 publication discloses a substantially similar method of preparing the dry dispersion of ammonium bis(fluorosulfonyl)imide (NH4FSI) salt with the one disclosed in Applicant’s EXAMPLES [0047-0048], wherein crude NH4FSI salt was crystallized in Solvent 1 (S1) of TFE, and Solvent 2 (S2) of 1,4-dioxane at 60 °C, and evaporated at 70 °C. In addition, the `923 patent [0046] discloses that a high-purity crystalline phase is the powder having a relatively large particle size and no dust is generated, the powder is suitable for use as a secondary battery electrolyte material having very good workability or flowability. One ordinary skilled in the art would have known such a powder having a relatively large particle size has sphere-like shape, and other shapes.
Therefore, the shape of the dry dispersion would have been either an inherited or obvious property of the dispersion disclosed by the `002 publication in view of the `923 patent.
In terms of claim 12 drawn to a process for preparing a bis(fluorosulfonyl)imide (MFSI) salt of formula (II):[F-SO2-N-SO2-F], M+ wherein M is selected from the group consisting of Li, Na and K, wherein the process comprises reacting the dry dispersion of ammonium bis(fluorosulfonyl)imide (NH4FSI) salt of formula (I) of claim 1 with a compound (C) selected from the group consisting of lithium compounds, sodium compounds and potassium compounds, the `002 publication (col. 8-15, p.2) discloses reacting the ammonium bis(fluorosulfonyl) imide with a lithium base to produce lithium bis (fluorosulfonyl) imide according to EP 3381923 B1 (“the `923 patent”).
In terms of claim 13 wherein the compound (C) is a lithium compound selected from the group consisting of lithium hydroxide LiOH, lithium hydroxide hydrate LiOH.H2O, lithium carbonate Li2CO3, lithium hydrogen carbonate LiHCO3, lithium chloride LiCl, lithium fluoride LiF, alkoxide compounds, alkyl lithium compounds, lithium acetate CH3COOLi, and lithium oxalate Li2C2O4, Example 3 of the `923 patent [0058-0059] teaches the lithium base is lithium hydroxide hydrate (LiOH·H2O).
In terms of claim 14, the `002 publication (col. 8-15, p.2) discloses reacting the ammonium bis(fluorosulfonyl) imide with a lithium base to produce lithium bis (fluorosulfonyl) imide according to EP 3381923 B1 (“the `923 patent”), wherein M is Li.
In terms of claim 15, Example 2 of the `002 publication (col. 31, p.19 to col. 2,p.21) discloses a crystalized dry dispersion of ammonium bis(fluorosulfonyl)imide (NH4FSI) salt of formula (I):[F-SO2-N--SO2-F]-NH4+, wherein the NH4FSI salt is in a form of a solvate comprising 79.9 to 80.5 wt.% of the NH4FSI salt, and 20.1 to 19.5 wt.% of solvent S2 of 1,4-dioxane, wherein of solvent S2 of 20.1 to 19.5 wt.% reads on the limitation “at least 1 ppm of solvent S2”.
Conclusions
Claims 1-15 are rejected.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/YONG L CHU/Primary Examiner, Art Unit 1731
