DETAILED ACTION
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 6-9, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuoka et al. (US 2019/0393556) in view of Qin et al. (CN 106 099 189), machine translation.
Regarding claims 1 and 6-9, Matsuoka teaches a non-aqueous electrolyte solution comprising:
a lithium salt (abstract);
organic solvent (para 0036-0037);
triphenyl phosphate, (chemical formula 1) (para 0404); and
2,6-di-tert-butyl-p-cresol (para 0055).
Matsuoka does not expressly teach an amount of triphenyl phosphate.
Qin, directed to the safety of an electrolyte, teaches triphenyl phosphate used in an amount of 5-10 wt.% (para 0005).
It would have been obvious to one of ordinary skill in the art before the effective filing date to turn to the prior art for an express teaching of express amounts of triphenyl phosphate; moreover, used in the above amounts when used as a flame-retardant (abstract).
Regarding claim 13, Matsuoka teaches vinylene carbonate (para 0046) used in an amount of 0.5-4 vol% (para 0047), which overlaps Applicant’s claimed range of 0.01-5 wt.%.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the recited concentration because a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. 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). Furthermore, "[ A ] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP 2144.05.
Regarding claim 15, Matsuoka teaches battery casing 110, an electrode assembly (sequentially stacked positive electrode 150, separator 170, and negative electrode 160) (para 0382) and the above electrolyte solution.
Allowable Subject Matter
Claims 2-5 and 10-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS BARCENA whose telephone number is (571)270-5780. The examiner can normally be reached Monday-Thursday 8-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tong Guo can be reached at (571)272-3066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARLOS BARCENA/Primary Examiner, Art Unit 1723
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