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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Claim Interpretation:
Claim 1 recites “… in Structure I: R1 can be… R2 and R3 each can be…” and “in Structure II: R1 can be … and R2 can be…” The broadest reasonable interpretation of the term “can be” is optional.
Claim 1 recites Structure II of “-R1-CO-N-(R2)-CH2-… R1 can be -(ChxFy)(ChzFa)-… R2 can be -(CH3-a-(CxHyFz)a”. In light that the structure having “-“ at the terminal end, the broadest reasonable interpretation is any solvent compound comprising Structure II.
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 1-2, 4-19, 25-26 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 claims 1 and 17, where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “alkaline earth metal salt” in claims 1 and 17 are used by the claim to mean “lithium” (claim 2) (or sodium), which is an alkali metal, while the accepted meaning for “alkaline earth metal” is elements containing Be, Mg, Ca, Sr, Ba, Ra. The term is indefinite because the specification does not clearly redefine the term.
Claims 7-9 and 15-16 recites a language of “consist essentially of” or “consists of” in regard to Structure II. However, it is not clear to the examiner how it is possible to have a substantially closed or closed language if Structure II is not a final end structure. Clarification is needed.
Claim Rejections - 35 USC § 102
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.
Claims 1-2, 4-10, 12-19, and 25-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Appel et al. (US 6,489,064).
Regarding claims 1-2, 6-8, and 11-17, Appel discloses an electrolyte and a method of making thereof (all Examples) comprising a salt system of lithium salt, and a solvent system of having at least one of having a formula of R1-CO-NR2R3, wherein the specific compound is N,N-dimethylacetamide, N,N-dimethyltrifluoroacetamide, N,N-diethyltrifluoroacetamide, N-Trifluoracetylpyrrolidine (Abstract, Table 1). This thereby reads upon the claimed solvent system material. Please see the broadest reasonable interpretation for Structures I and II as set forth above.
The recitation in the claims that the electrolyte is “for a secondary battery that operates using a flow of ions of an alkaline earth metal between an anode and a cathode” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Appel disclose electrolyte as presently claimed, it is clear that the electrolyte of Appel would be capable of performing the intended use, i.e. for a secondary battery, presently claimed as required in the above cited portion of the MPEP. Nevertheless, Appel discloses a secondary battery as claimed.
Regarding claims 4-5 and 18-19, Appel discloses the concentration as claimed (Examples 3-5: 0.1 M, which also corresponds to about 0.5 M).
Regarding claims 9-10, Appel discloses at least one of acetamide-based solvent, which corresponds to Structures I and II, and further discloses EC or PC solvent (Table 1, claim 11).
Regarding claim 25, please see examples 1-5.
Regarding claim 26, Appel discloses non-acetamide based solvent as claimed (claim 11) and the concentration of the acetamide-based solvent as claimed (col. 7, lines 34-37).
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 5 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Appel et al. (US 6,489,064).
Regarding claim 5, Appel discloses an electrolyte as set forth above, however, fails to explicitly disclose the salt-system concentration of about 0.5-5 M as presently claimed.
However, Appel discloses that the solvent has 2-100 vol.% of the electrolyte (col. 7, lines 34-37), thereby the remaining range is the salt system, which overlaps the claimed range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
In the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to optimize the lithium salt concentration within the limits known in the art based on the desired end use of the electrolyte material since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA) 1980.
Regarding claims 7-10 and 14-16, Appel discloses a solvent of
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402
301
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Greyscale
Although Appel fails to explicitly disclose an embodiment or example requiring the solvent structure, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to pick the instant claimed elements as a mere combing prior art elements according to known methods to obtain predictable results i.e. acetamide-based solvent ( see MPEP 2143 I and 2144.06 I).
It has been held that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of these combinations less obvious, citing Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804 (Fed. Cir. 1989). It is also well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992). Appel further discloses EC or PC solvent is present (Table 1). Given that Appel discloses at least one solvent of formula I, Appel discloses plurality of solvent that would encompass both of the claimed Structures I and II.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/ Examiner, Art Unit 1785
/Holly Rickman/ Primary Examiner, Art Unit 1785
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