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 .
Claim Objections
Claim 9 is objected to because of the following informalities: “… a mass ratio of the first solvent to the second solvent ranges from-0.7 to 1.5” should be corrected to recite “a mass ratio of the first solvent to the second solvent ranges from 0.7 to 1.5”. Appropriate correction is required.
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 2-3, 5-6, 8, 11-12 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad and more narrow recitation of “…R1 is selected from C1-C3 fluoroalkyl, and optionally, R1 is fluoromethyl and/or R2 is selected from a hydrogen atom, C1-C3 alkyl, and C1-C3 fluoroalkyl, and optionally, selected from a hydrogen atom, methyl, fluoromethyl, ethyl, and fluoroethyl”, claim 3 recites “in the Formula II, R3 to R8 are each independently selected from a hydrogen atom, a fluorine atom, and C1-C6 fluoroalkyl, and optionally, selected from a hydrogen atom, a fluorine atom, and C1-C3 fluoroalkyl; and/or in the Formula III, R9 to R10 are each independently selected from a hydrogen atom, a fluorine atom, and C1-C6 alkyl, optionally, selected from a hydrogen atom, a fluorine atom, C1-C3 alkyl, and C1-C3 fluoroalkyl, and more optionally, R9 to R10 are each independently selected from a hydrogen atom or a fluorine atom”, claim 5 recites “ an antioxidant, optionally, the antioxidant being selected from at least one of lithium nitrate and lithium perchlorate”. Claim 6 recites the broad recitation a concentration of the antioxidant ranges from 0.5 wt% to 3 wt%, and the claim also recites “…optionally, from 0.7 wt% to 1.5 wt%, and more optionally, from 0.9 wt% to 1.1 wt%,” which is the narrower statement of the range/limitation. Claim 8 recites the broad recitation “…a concentration of the fluorine-containing electrolyte salt ranges from 0.5M to 3M”, and the claim also recites “…the concentration of the fluorine-containing electrolyte salt is 1M” which is the narrower statement of the limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Use of a narrow limitation that falls within a broader limitation in the same claim may render the claim indefinite when the boundaries of the claim are not discernible. Description of examples and preferences is properly set forth in the specification rather than in a single claim. A narrower limitation or preferred embodiment may also be set forth in another independent claim or in a dependent claim. If stated in a single claim, examples and preferences lead to confusion over the intended scope of the claim. In light of the dependent claims and disclosure the broadest limitation will be used.
Furthermore, the phrase “optionally” and “more optionally” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 11-12 are rejected for depending on claim 5.
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.
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 20220166069).
Regarding claim 1, Lee teaches an electrolyte, comprising: a first solvent as represented by Formula I (P43-48) and a second solvent selected from a compound represented by Formula II, including fluorobenzene (P69-76). A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities.” MPEP 2144.08
Regarding claim 2, Lee teaches in the Formula I: R1 is selected from C1-C3 fluoroalkyl, and optionally, R1 is fluoromethyl; and/or R2 is selected from a hydrogen atom, C1-C3 alkyl, and C1-C3 fluoroalkyl (P43-48 – wherein R1 and R2 may be C2-C5 fluoroalkyl group). A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities.” MPEP 2144.08
Regarding claim 3, Lee teaches in Formula II R3 to R8 are each independently selected from a hydrogen atom, a fluorine atom (P76).
Regarding claim 4, Lee teaches a mass ratio of the first solvent to the second solvent ranges from 0.8 to 0.9, falling within the claimed range of 0.5 to 3 (P55.79; Table 1 – wherein first solvent is 0.8-0.9, and second solvent is 0 to 1). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05- I
Regarding claim 5, Lee teaches an antioxidant, optionally, the antioxidant such as lithium perchlorate, LiClO₄ (P40). While Lee is silent in reciting the lithium perchlorate is an antioxidant, if the composition is the same, it must have the same properties. MPEP 2112.01
Regarding claim 6, Lee teaches using an amount of antioxidant or salt, alone or in combination, that obtains an optimum effect of forming a film for preventing corrosion of a surface of an electrode improving cycle and temperature characteristics (P40-42).
Lee is silent in teaching the amount concentration of the antioxidant ranges from 0.5 wt % to 3 wt %, optionally, from 0.7 wt % to 1.5 wt %, and more optionally, from 0.9 wt % to 1.1 wt %, based on a total weight of the electrolyte; however, Lee teaches that the concentration of the antioxidant, such as LiClO4 is well-known as a result effective variable (P41 – within normally usable range) and the amount used should be high enough to improve low temperature output but low enough that viscosity is not too high decreasing impregnability (P40-41).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to find an amount of the antioxidant, such as lithium perchlorate, that is high enough to help prevent corrosion and low enough to prevent decreased conductivity, and arrive within the claimed range of .5 wt % to 3 wt %. A prima facie case of obviousness may be established even though a prior art reference does not disclose any particular range but teaches that the claimed parameters are known to affect results or properties. “Where 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.” MPEP 2144.05
Furthermore, while Lee is silent in reciting the lithium perchlorate is an antioxidant, if the composition is the same, it must have the same properties. MPEP 2112.01
Regarding claim 7, Lee teaches a fluorine-containing electrolyte salt such as LiTFSI (lithium bis(trifluoromethanesulfonyl)imide (P40).
Regarding claim 8, Lee teaches a concentration of the fluorine-containing electrolyte salt ranges from 0.8 to 4.0 M (P41-42), overlapping the claimed and preferred concentration of 0.5M to 3M, and 1 M. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05- I
Regarding claim 9, Lee teaches a mass ratio of the first solvent to the second solvent. ranges from 0.8 to 0.9, falling within the claimed range of 0.7 to 1.5 (P55.79– wherein first solvent is 0.8-0.9, and second solvent is 0 to 1). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05- I
Regarding claim 10, Lee teaches a mass ratio of the first solvent to the second solvent. ranges from 0.8 to 0.9, overlapping the claimed range of 0.9 to 1.1 (P55.79– wherein first solvent is 0.8-0.9, and second solvent is 0 to 1). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05- I
Regarding claim 11, Lee teaches using an amount of antioxidant or salt, alone or in combination, that obtains an optimum effect of forming a film for preventing corrosion of a surface of an electrode improving cycle and temperature characteristics (P40-42).
Lee is silent in teaching the amount concentration of the antioxidant ranges from 0.7 wt % to 1.5 wt % based on a total weight of the electrolyte; however, Lee teaches that the concentration of the antioxidant, such as LiClO4 is well-known as a result effective variable (P41 – within normally usable range) and the amount used should be high enough to improve low temperature output but low enough that viscosity is not too high decreasing impregnability (P40-41).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to find an amount of the antioxidant, such as lithium perchlorate, that is high enough to help prevent corrosion and low enough to prevent decreased conductivity, and arrive within the claimed range of .7 wt % to 1.5 wt %. A prima facie case of obviousness may be established even though a prior art reference does not disclose any particular range, but teaches that the claimed parameters are known to affect results or properties. “Where 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.” MPEP 2144.05
Regarding claim 12, Lee teaches Lee teaches using an amount of antioxidant or salt, alone or in combination, that obtains an optimum effect of forming a film for preventing corrosion of a surface of an electrode improving cycle and temperature characteristics (P40-42).
Lee is silent in teaching the amount concentration of the antioxidant ranges from 0.9 wt % to 1.1 wt %, based on a total weight of the electrolyte; however, Lee teaches that the concentration of the antioxidant, such as LiClO4 is well-known as a result effective variable (P41 – within normally usable range) and the amount used should be high enough to improve low temperature output but low enough that viscosity is not too high decreasing impregnability (P40-41).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to find an amount of the antioxidant, such as lithium perchlorate, that is high enough to help prevent corrosion and low enough to prevent decreased conductivity, and arrive within the claimed range of 0.9 wt % to 1.1 wt %. A prima facie case of obviousness may be established even though a prior art reference does not disclose any particular range but teaches that the claimed parameters are known to affect results or properties. “Where 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.” MPEP 2144.05
Regarding claim 13, Lee teaches a secondary battery, comprising the electrolyte according to claim 1 (P45)
Regarding claim 14, Lee is silent in teaching a battery module comprising the secondary battery of claim 13; however, it would have been obvious to one of ordinary skill in the art to use the secondary battery within a battery module to provide protection for the battery and to fit within a device. Accommodating the secondary battery in a well-known battery module that accomplishes the same goal as the battery, of providing charge would have been reasonably obvious to one of ordinary skill in designing such a system with the expectation of reasonable success in doing so. MPEP 2143
Regarding claim 15, modified Lee teaches batteries can be miniaturized and used for personal devices, or used for electric vehicles and power storage devices (P3-6).
Modified Lee is silent in teaching a battery pack, comprising the battery module according to claim 14; however, it would have been obvious to one of ordinary skill in the art to use the battery module within a battery pack based on design needs to provide increased capacity with improved stability within a device, as a power storage device. Accommodating the secondary battery in a well-known battery pack that accomplishes the same goal as the battery module, of providing charge would have been reasonably obvious to one of ordinary skill in designing such a system with the expectation of reasonable success in doing so. MPEP 2143
Regarding claim 16, modified Lee teaches secondary batteries are used within electrical device (P3-6). In the background section Lee teaches batteries can be used in devices, while Lee does not expressly teach or show an example using the invented battery, it would be obvious to use the battery of Lee in an electrical device to have a device with a battery that has high storage characteristics. Additionally, the court has held that the selection of a known material and/or entity based on its suitability for its intended use supported a prima facie obviousness determination.
Regarding claim 17, modified Lee teaches secondary batteries are used within electrical device (P3-6). In the background section Lee teaches batteries can be used in devices, while Lee does not expressly teach or show an example using the invented battery, it would be obvious to use the battery module of modified Lee in an electrical device to have a device with a battery that has high storage characteristics. Additionally, the court has held that the selection of a known material and/or entity based on its suitability for its intended use supported a prima facie obviousness determination.
Regarding claim 18, modified Lee teaches secondary batteries are used within electrical device (P3-6). In the background section Lee teaches batteries can be used in devices, while Lee does not expressly teach or show an example using the invented battery, it would be obvious to use the battery pack of modified Lee in an electrical device to have a device with a battery that has high storage characteristics. Additionally, the court has held that the selection of a known material and/or entity based on its suitability for its intended use supported a prima facie obviousness determination.
Conclusion
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/Amanda Rosenbaum/Examiner, Art Unit 1752
/Helen Oi K CONLEY/Primary Examiner, Art Unit 1752
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