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 . 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.
Claim Objections
Claims 1 and 5-6 are objected to because of the following informalities:
Claim 1, line 3: the word “of” after “contacting” should be deleted, i.e. “contacting of bis(fluorosulfonyl)imide” should read as “contacting bis(fluorosulfonyl)imide.”
Claim 5, line 2: “comprising” should read as “further comprising”
Claim 6, line 2: “comprising” should read as “further comprising”
Appropriate correction is required.
Claim Interpretation
Claim 1 recites the limitation “diafiltration of the mixture” in line 6 where “diafiltration” is broadly interpreted as a filtration technique utilizing a semi-permeable or porous membrane that separates components based on their molecular size. The specification states the nanofiltration membrane “makes it possible to retain the lithium bis(fluorosulfonyl)imide and … [allows] the water, the solvent, and other impurities to pass,” (see Page 17, lines 25 – 31).
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 2, 4, 7, and 8 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.
Regarding claim 2, the phrase “preferably” (line 2) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. See MPEP § 2173.05(d). Therefore, it is unclear whether “dimethyl carbonate, methyl ethyl carbonate, diethyl carbonate, ethylene carbonate, propylene carbonate, butylene carbonate, diphenyl carbonate, methyl phenyl carbonate, dipropyl carbonate, methyl propyl carbonate, ethyl propyl carbonate, vinylene carbonate, fluoroethylene carbonate, trifluoropropylene carbonate, or mixtures thereof” is a limitation.
Regarding claim 4, the phrases “preferably” (line 1) and “more preferably” (line 3) render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. See MPEP § 2173.05(d). Therefore, it is unclear whether “100 to 200 dalton” and “120 to 180 dalton” are limitations.
Regarding claim 7, the phrases “preferably” (line 3) and “more preferably” (line 4) render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. See MPEP § 2173.05(d). Therefore, it is unclear whether “equal to or less than 50 ppm” and “equal to or less than 20 ppm” are limitations.
Regarding claim 8, the phrase “preferably” (line 2) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. See MPEP § 2173.05(d). Therefore, it is unclear whether the solvent added is “the same as the solvent used in the step of contacting bis(fluorosulfonyl)imide with a lithium base” is a limitation.
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.
The factual inquiries 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 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Hormes et. al. 2018 (US 2018/0362343 A1), referred to as Hormes hereinafter, in view of Wamble et. al. 2022 (Optimal Diafiltration Membrane Cascades Enable Green Recycling of Spent Lithium-Ion Batteries. ACS Sustainable Chem. Eng. 2022, 10(37) 12207 – 12225).
It is noted that the availability date of Wamble is after the filing date of FR2113700. Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Regarding claim 1, Hormes teaches a process for preparing lithium bis(fluorosulfonyl)imide (Example 31 in [0871] – [0872] describes preparing lithium bis(fluorosulfonyl)imide), comprising:
contacting bis(fluorosulfonyl)imide with a lithium base in a solvent (Example 31 in [0871] – [0872] describes mixing LiOH monohydrate, which is considered a lithium source, and diethyl carbonate, a solvent) selected from carbonates (Example 31 in [0871] – [0872] uses diethyl carbonate), ethers ([0127] lists preferable solvents for the solvent, including “aliphatic ether-based” solvents; [0180] provides a list of specific ether-based solvents), and nitriles ([0127] lists preferable solvents for the solvent, including “nitrile-based” solvents; [0176] provides a list of specific nitrile-based solvents) to obtain a mixture comprising lithium bis(fluorosulfonyl)imide and water (Example 31 in [0871] – [0872] describes preparing lithium bis(fluorosulfonyl)imide; Example 31 in [0871] – [0872] also describes distilling water from the diethyl carbonate, suggesting that water is present)
distillation of the mixture ([0871] in Example 31 describes removing diethyl carbonate and water so as to obtain a residue enriched in lithium bis(fluorosulfonyl)imide and depleted in water ([0871] in Example 1 describes the lithium bis(fluorosulfonyl)imide as a residue; [0871] describes performing the distillation to remove water, suggesting the residue is depleted in water), and a distillate depleted in lithium bis(fluorosulfonyl)imide and enriched in water (Example 1 in [0871] describes distilling diethyl carbonate and water, suggesting that the distillate comprises of diethyl carbonate and water; the distillation step in [0871] is meant to separate diethyl carbonate and water from the lithium bis(fluorosulfonyl)imide product, suggesting that the lithium bis(fluorosulfonyl)imide is not contained in the distillate).
However, while Hormes suggests water can be separated using membrane assisted filtration ([0383] provides a list of alternative separation techniques that can be used to isolate lithium bis(fluorosulfonyl)imide), Hormes does not explicitly teach using diafiltration to obtain a concentrate enriched in lithium bis(fluorosulfonyl)imide and depleted in water and a permeate depleted in lithium bis(fluorosulfonyl)imide and enriched in water.
Wamble discloses a design model for employing a diafiltration cascade (see Figure 1) to separate lithium and cobalt from spent batteries (see Abstract). Wamble teaches that the separation of lithium generally involves methods that are energy intensive (second paragraph in the first column on Page 12208 describes electrochemical techniques as energy-intensive) or not sustainable (last paragraph in the first column on Page 12208 begins with “the past three decades has failed to produce a corresponding revolution in sustainable separation applications”), but that diafiltration offers an alternative option that can operate at milder conditions with less harmful reagents (last paragraph in the first column on Page 12208 describes diafiltration as a process to recover lithium and cobalt “without extreme operating conditions or harsh solvents”). Some of the diafiltration cascade system designs of Wamble predict a 95% recovery of lithium (Design III in Figure 5 shows a 95% Li+ recovery), suggesting diafiltration is a promising method for recovering lithium.
Wamble and Hormes are analogous to the present invention because Hormes is in the same field of preparing lithium bis(fluorosulfonyl)imide while Wamble is in the same field of recovering lithium salts using more sustainable membrane separation techniques.
It would be obvious to substitute to the distillation step of Hormes with the diafiltration cascade of Wamble to separate lithium bis(fluorosulfonyl)imide and water as diafiltration is a less energy intensive technique and avoids using harmful solvents. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143.A.). The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 - 97 (2007) (see MPEP § 2143, B.). One of ordinary skill in the art would have a reasonable expectation of success as Hormes suggests membrane-assisted filtration techniques as an alternative for isolating lithium bis(fluorosulfonyl)imide from water using distillation.
Regarding claim 2, Hormes in view of Wamble teaches the process of claim 1 and Hormes further teaches the solvent is selected from diethyl carbonate (Example 31 in [0871] – [0872] uses diethyl carbonate; also included in a list of most preferable solvents in [0172]), methyl ethyl carbonate, dimethyl carbonate, ethylene carbonate, propylene carbonate, and butylene carbonate (see [0172] for a list of most preferable solvents).
Regarding claim 3, Hormes in view of Wamble teaches the process of claim 1 and Hormes further teaches the lithium base is selected from lithium hydroxide (Example 31 in [0871] – [0872] describes mixing LiOH monohydrate; [0034] states that hydroxides of lithium are “even more [preferable]”) or lithium carbonate ([0034] states that carbonates of lithium are “even more [preferable]”).
Regarding claim 5, Hormes in view of Wamble teaches the process of claim 1. Hormes further teaches the process of claim 1 may comprise of a step of pervaporation between the step of contacting bis(fluorosulfonyl)imide with a lithium base and the diafiltration step ([0383] includes membrane assisted pervaporation as a method to isolate and extract lithium bis(fluorosulfonyl)imide).
Wamble teaches that multiple stages of separation can lead to high purity of the recovered products (first paragraph of Section titled “Superstructure Optimization Model Captures Non-intuitive Trade-Offs” on Page 12213 describes adding more stages will capture more retentate, which will also increase the purity of the permeate). Furthermore, Hormes suggests water can be separated from lithium bis(fluorosulfonyl)imide using membrane assisted filtration ([0383] provides a list of alternative separation techniques that can be used to isolate lithium bis(fluorosulfonyl)imide) instead of distillation. Therefore, it would be obvious to perform a pervaporation step in place of distillation as suggested by Hormes before performing diafiltration as taught by Wamble to further increase the purity of the lithium bis(fluorosulfonyl)imide product. While Hormes does not include pervaporation in a preferred embodiment, it is noted that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See MPEP § 2123.I
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hormes in view of Wamble, as applied in claim 1, and in further view of Houp, 2009 (Ultrafiltration and Diafiltration. Journal of Validation Technology 2009, 15(4), 40 – 45), referred to as Houp hereinafter.
It is noted that the availability date of Wamble is after the filing date of FR2113700. Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Regarding claim 4, Hormes in view of Wamble teaches the process of claim 1 but does not teach a cutoff threshold for the nanofiltration membrane. Houp teaches that cutoff threshold is a result effective variable.
Houp teaches the fundamentals of ultrafiltration and diafiltration (see Section titled “Introduction” on Page 40) including the membranes used in both ultrafiltration and diafiltration where the membranes used are available in different pore sizes and surface areas. Houp further teaches that the pore size of a membrane is represented by its molecular cut-off weight, or MWCO (the first paragraph of the Section titled “Ultrafiltration” on Page 40 states “the different pore sizes are notated by their respective molecular weight cutoff (MWCO)” where MWCO is equivalent to “cutoff threshold”) and that the MWCO of the membrane determines which particles will be able to pass through the membrane during ultrafiltration or diafiltration (the first paragraph of the Section titled “Ultrafiltration” on Page 40 describes how particles smaller than the MWCO will pass through the membrane while particles larger than the MWCO will not).
Therefore, while Houp does not teach a cutoff threshold, they do teach that the cutoff threshold will determine which particles will travel through the membrane in diafiltration. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the cutoff threshold of the nanofiltration membrane, thereby arriving at the instantly claimed invention. The courts have found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II. Therefore, the claimed range of 80 to 250 dalton merely represents an obvious variant and/or routine optimization of regulating which particles can pass through the nanofiltration membrane during diafiltration as taught by Houp.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hormes in view of Wamble as applied in claim 1 and in further view of Yamauchi, et. al. 2014 (JP 2014201453 A), referred to as Yamauchi hereinafter.
It is noted that the availability date of Wamble is after the filing date of FR2113700. Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Regarding claim 6, Hormes in view of Wamble teaches the process of claim 1. While Wamble teaches that multiple stages of separation can lead to high purity of the products (first paragraph of Section titled “Superstructure Optimization Model Captures Non-intuitive Trade-Offs” on Page 12213 describes adding more stages will capture more retentate, which will also increase the purity of the permeate), neither Wamble nor Hormes teaches azeotropic distillation specifically.
Yamauchi discloses a method for producing an alkali metal fluorosulfonyl imide salt (see Overview). While not explicitly called “azeotropic distillation,” Yamauchi describes a distillation step similar to azeotropic distillation used to isolate the alkali metal fluorosulfonyl imide salt ([0059] – [0060] describes this step as the “concentration step”). In this step, the reaction solution containing the alkali metal fluorosulfonyl imide salt and an ester-based solvent ([0011] states “the reaction solvent is preferably an ester-based solvent” for the concentration step), is combined with another solvent, described as a “poor medium,” in order to easily obtain the alkali metal fluorosulfonyl imide salt (see [0060]). While not explicitly called an azeotrope, the poor medium and the reactant solution do not separate into two layers (see [0060]), suggesting that the two solvents formed an azeotrope as one of ordinary skill in the art would not expect the polar ester-based reaction solvent to readily mix with the non-polar poor medium ([0010] lists non-polar “poor solvents” including alkanes). Furthermore, in azeotropic distillation, the difference in the boiling points between the components of the azeotrope increases, allowing one component to distill off easier than it would have alone. Yamauchi discloses a similar concept, stating that the reaction solvent is easier to distill off after the addition of the poor solvent, ([0060] specifically states that the reaction solvent is easily distilled off), further suggesting that the concentration step in Yamauchi is azeotropic distillation.
Yamauchi is analogous to the present invention as both are in the same field of synthesizing alkali metal fluorosulfonyl imide salts.
One of ordinary skill in the art would recognize that the concentration step taught by Yamauchi is analogous or similar to that of azeotropic distillation. Therefore, it would be obvious for one of ordinary skill in the art before the effective filing date to add the concentration step taught by Yamauchi to the method of Hormes in view of Wamble to perform multiple separation steps in order to further purify the lithium bis(fluorosulfonyl)imide product.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hormes in view of Wamble as applied in claim 1, and in further view of Sato, et. al. 2015 (US 9079780 B2), referred to as Sato hereinafter.
It is noted that the availability date of Wamble is after the filing date of FR2113700. Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Regarding claim 7, Hormes in view of Wamble teaches the process of claim 1 but does not teach the water content of the concentrate enriched in lithium bis(fluorosulfonyl)imide and depleted in water obtained after diafiltration. Sato teaches that water content of lithium bis(fluorosulfonyl)imide is a result effective variable
Sato discloses a method for preparing lithium bis(fluorosulfonyl)imide that reduces the amount of impurities and water in the final lithium bis(fluorosulfonyl)imide product (see Column 2, lines 24 – 31). Sato teaches that fluorosulfonyl imide salts, such as lithium bis(fluorosulfonyl)imide, have a high affinity to water, making it difficult to remove water (see Column 1, lines 62 - 65). Sato further teaches water content in alkali metal fluorosulfonyl imide salt electrolytes may hinder the performance of an electrochemical device. Sato specifically teaches that the presence of water may weaken voltage endurance of the electrolyte itself and may also corrode other components of that device, such as electrodes (see Column 1, line 65 – Column 2, line 2).
Therefore, while Sato does not teach the water content of a concentrate enriched in lithium bis(fluorosulfonyl)imide and depleted in water, they do teach that water content is detrimental to the performance of an electrochemical device when alkali metal fluorosulfonyl imide salts, such as lithium bis(fluorosulfonyl)imide, are used as electrolytes. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the water content of the concentrate enriched in lithium bis(fluorosulfonyl)imide, thereby arriving at the instantly claimed invention. The courts have found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II. Therefore, the claimed range of less than 100 ppm merely represents an obvious variant and/or routine optimization of water content in order to avoid lowering the overall the performance of an electrochemical device when lithium bis(fluorosulfonyl)imide is used as an electrolyte.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Hormes in view of Wamble, as applied in claim 1, and in further view of Marchetti, et. al. 2014 (Molecular Separation with Organic Solvent Nanofiltration: A Critical Review. Chem. Rev. 2014, 114(21), 10735 – 10806), referred to as Marchetti hereinafter.
It is noted that the availability date of Wamble is after the filing date of FR2113700. Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Regarding claim 8, Hormes in view of Wamble teaches the process of claim 1 but does not teach a solvent is added during the diafiltration step to the concentrate, the solvent preferably being the same as the solvent used in the step of contacting bis(fluorosulfonyl)imide with a lithium base.
Marchetti teaches the importance of nanofiltration separation processes in organic synthesis (see the first paragraph of Section 1 titled “Introduction” on Page 10736) and advantages of utilizing membrane technology (the second paragraph of Section 1 titled “Introduction” on Page 10736 describes the benefits of membrane technology over conventional techniques in terms of “economy, environment, and safety”). Marchetti further teaches the importance and concept of solvent recovery in industrial processes (see the first paragraph of Section 4.1.2. titled “Solvent Recovery” on Page 10783). Marchetti states that conventional purification techniques may require a large amount of organic solvent, leading to high solvent consumption. Additionally, Marchetti further teaches that handling such large amounts of organic solvents may pose health risks, such as increased risks of cancer or mental illnesses, and environmental hazards, such as air and ground water pollution (see the first paragraph of Section 4.1.2. titled “Solvent Recovery” on Page 10783), further emphasizing the necessity for solvent recovery.
Marchetti is analogous to the present invention because Marchetti teaches nanofiltration processes, similar to that of the diafiltration step of the present invention.
While Marchetti teaches nanofiltration in organic synthesis, the concept of solvent recovery is not limited to that field and can thus also be applied to the synthesis of lithium bis(fluorosulfonyl)imide. Furthermore, Marchetti discloses the solvent recovery of organic solvents, similar to the solvents employed in the present invention. Therefore, it would be obvious for one of ordinary skill in the art before the effective filing date to modify the method of Hormes in view of Wamble and reuse the solvent used during the contacting of lithium bis(fluorosulfonyl)imide with a lithium base to reduce solvent consumption as taught by Marchetti. The courts have made clear that the teaching, suggestion, or motivation test is flexible and an explicit suggestion to combine the prior art is not necessary. The motivation to combine may be implicit and may be found in the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved. Id. at 1366, 80 USPQ2d at 1649. See MPEP § 2143.G.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hormes in view of Wamble as applied in claim 1 and in further view of Membrane System Specialists Inc., 2021 (How to Calculate Transmembrane Pressure, Membrane System Specialists Inc. https://www.mssincorporated.com/blog/how-to-calculate-transmembrane-pressure/; article posted on June 15, 2021), referred to as MMS hereinafter.
It is noted that the availability date of Wamble is after the filing date of FR2113700. Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Regarding claim 9, Hormes in view of Wamble teaches the process of claim 1 but does not teach the pressure exerted during the diafiltration step. MMS teaches that the pressure of diafiltration is a result effective variable.
MMS defines transmembrane pressure as the amount of force necessary to push water through a membrane during crossflow filtration techniques such as nanofiltration (see section under the title “What is Transmembrane Pressure?”; above “What is Transmembrane Pressure?” is a list of crossflow filtration techniques, which includes nanofiltration). MMS further teaches that transmembrane pressure influences concentration polarization and membrane fouling, which in turns affects the efficiency of the membrane used during crossflow filtration (see Section titled “What is Transmembrane Pressure?”).
Therefore, while MMS does not teach the pressure of the diafiltration step, they do teach transmembrane pressure influences membrane efficiency. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the pressure exerted during crossflow filtration, such as diafiltration, thereby arriving at the instantly claimed invention. The courts have found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II. Therefore, the claimed range of 1 to 60 bar merely represents an obvious variant and/or routine optimization of transmembrane pressure, which in turns influences the overall performance of the nanofiltration membrane.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hormes in view of Wamble, as applied in claim 1, and in further view of Li, et. al. 2011 (Transport and Electrochemical Properties and Spectral Features of Non-Aqueous Electrolytes Containing LiFSI in Linear Carbonate Solvents. Journal of The Electrochemical Society 2011, 158(2), A74 – A82), referred to as Li hereinafter.
It is noted that the availability date of Wamble is after the filing date of FR2113700. Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Regarding claim 10, Hormes in view of Wamble teaches preparing lithium bis(fluorosulfonyl)imide as claimed in claim 1 (see above). However, while Hormes discloses that lithium bis(fluorosulfonyl)imide is used for the production of electrolytes (see [0025]), neither Hormes nor Wamble teaches preparing an electrolyte with lithium bis(fluorosulfonyl)imide.
Li teaches a process for preparing a Li-ion battery electrolyte (the various electrolytes investigated are shown in Figures 2 and 3), comprising preparing an electrolyte comprising lithium bis(fluorosulfonyl)imide (the first paragraph in the second column on Page A75 describes three electrolytes prepared with LiFSI, or lithium bis(fluorosulfonyl)imide, in various carbonate solvents). Li further teaches that lithium bi(fluorosulfonyl)imide electrolytes exhibit higher ionic conductivities than lithium hexafluorophosphate electrolytes, a common lithium salt used in lithium-ion batteries (the second paragraph in the second column on Page A75 specifically states “all the above results suggest that the LiFSI-based electrolytes show superior ionic conductivity properties than the LiPF6-based ones”). Li further suggests that lithium bis(fluorosulfonyl)imide could be a safer option with improved electrochemical performance (last paragraph before Section titled “Conclusion” on Page A80 specifically states “all these results suggest that LiFSI would be a very good contender to replace LiPF6, with increased performances and safety”).
Li is analogous to the present invention as both are in the field of preparing lithium bis(fluorosulfonyl)imide-based electrolytes.
It would be obvious for one in ordinary skill in the art to use the lithium bis(fluorosulfonyl)imide prepared by the method of Hormes modified by Wamble to further prepare an electrolyte for a lithium-ion battery as taught by Li as lithium bis(fluorosulfonyl)imide electrolytes present as safer options than other lithium salts, such as lithium hexafluorophosphate electrolytes, and exhibit high ionic conductivities. Furthermore, one of ordinary skill in the art would have a reasonable expectation of success as demonstrated by Li.
Citation of Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Daigle, et. al. 2021 (EP 38548365 A1) teaches synthesizing ionic polymers containing lithium bis(halosulfonyl)imide where ultrafiltration is used as a purification step for the ionic polymer.
Eugene, et. al. 2019 (Material Property Goals to Enable Continuous Diafiltration Membrane Cascades for Lithium-Ion Battery Recycling. Proceedings of the 9th International Conference on Foundations of Computer-Aided Process Design, Copper Mountain, CO, July 14-18 2019; Muñoz, et. al. Eds; Elsevier: 2019) teaches a multi-stage diafiltration technique that recycles lithium ions from depleted batteries, similar to Wamble.
Conclusion
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/V.F.C./Examiner, Art Unit 1738
/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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