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 4, 5, 8-13, 16, and 17 are pending. Claims 1-3, 6, 7, 14, and 15 have been canceled.
The foreign priority application No.10-2023-0187737 filed on December 20, 2023 in the Republic of Korea has been received and it is acknowledged.
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 4, 5, 8-13, 16, and 17 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.
The independent claim 17 recites “a first additive selected from at least one of compounds represented by Chemical Formula 1-1 to Chemical Formula 1-2”, but the claim does not include the Chemical Formula 1-1 and Chemical Formula 1-2.
Therefore, it is not clear what is the joint inventor claiming as the invention in claim 17.
Claims 4, 5, 8-13 and 16 are rejected as being dependent on the rejected claim 17.
For the examination of the merit, it is considered that claim 17 includes:
“Chemical Formula 1-1
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, wherein m is an integer from 1 to 5, and R5 is a cyano group (-CN) or a difluorophosphite group (-OPF2);
Chemical Formula 1-2
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, wherein L5 is a substituted or unsubstituted C1 to C5 alkylene group” (see pages 8 and 9 of the specification of the instant application).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 4, 5, 8-10, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 7, 9-13, and 15 of copending Application No. 18/003,110 (US 2023/0307707) in view of Hwang et al. (US 2005/0202316).
The copending Application No. 18/003,110 claims an electrolyte comprising a non-aqueous organic solvent, a lithium salt, and an additive comprising a first compound and a second compound (claim 1).
The first compound may be:
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(claim 5).
The second compound may be represented by Chemical Formula 2-1:
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, wherein m is an integer from 1 to 5, and R5 is a cyano group (-CN) or a difluorophosphite group (-OPF2)(claim 7), or a compound of Chemical Formula 2-2:
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, wherein L4 is a substituted or unsubstituted C2 to C5 alkylene group (claim 9).
The first compound of formula 1-a in claim 5 of the copending application No. 18/003,110 is a “second additive of Chemical Formula 2-2” in claim 17 of the instant application.
The second compound of Chemical Formula 2-1 or 2-2 in claims 7 and 9 of the copending application No. 18/003,110 is a “first additive of Chemical Formula 1-1 or Chemical Formula 1-2” in claim 17 of the instant application.
Therefore, the electrolyte in claims 1, 5, 7, and 9 of the copending application No. 18/003,110 is the electrolyte in claim 17 of the instant application.
The copending Application No. 18/003,110 further claims a rechargeable lithium battery comprising a positive electrode including a positive electrode active material, a negative electrode including a negative electrode active material, and the electrolyte (claim 15), but fails to claim that the positive electrode active material is a cobalt-free lithium nickel-manganese oxide.
Hwang et al. teach a lithium secondary battery including a positive electrode comprising a combination of positive active materials (abstract). The lithium secondary battery has improved cycle life at room temperature and high temperatures and enhanced safety (par.0006, Examples 1-8 in Table 1, par.0047).
Hwang et al. further teach that the positive electrode active material may be a combination of LiNi0.8 Mn0.2O2 and LiCoO2 (Examples 1-8 in Table 1, par.0047).
Therefore, it would have been obvious to one of ordinary skill in the art before the fling date of the claimed invention to use the combination of LiNi0.8 Mn0.2O2 and LiCoO2 of Hwang et al. as positive electrode active material in the positive electrode of the copending Application No. 18/003,110 in order to improve the cycle life at room temperature and high temperatures and to enhance the safety of the battery.
LiNi0.8 Mn0.2O2 is the cobalt-free lithium nickel-manganese-based oxide in claim 17 of the instant application, and a compound of Chemical Formula 14 in claim 16 wherein a4=1, x4=0.8, y4=0.2, z4=0, and b4=0.
The copending Application No. 18/003,110 further claims that the second compound may be represented by the formulas:
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, R8 to R17 are each independently hydrogen, a halogen atom, or a substituted or unsubstituted C1 to C5 alkyl group (claim 10), same as in claim 4 of the instant application.
The copending Application No. 18/003,110 further claims that the second compound may be:
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(claim 11), same as in claim 5 of the instant application.
The copending Application No. 18/003,110 further claims that the first compound and the second compound are in a weight ration of 0.01:1 to 100:1 (claim 2). This is equivalent to a weight ration of the first additive to the second additive of 100: 1 to 0.01:1 in claim 8 of the instant application.
The copending Application No. 18/003,110 further claims that the first compound is included in an amount of 0.1 to 5.0 wt% based on the total weight of the electrolyte (claim 12), and the second compound is included in an amount of 0.1 to 5.0 wt% based on the total weight of the electrolyte (claim 13), same as in claims 9 and 10 of the instant application.
This is a provisional nonstatutory double patenting rejection.
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 4, 5, 8-13, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (WO 2022/158728, with citations from the English equivalent US 2023/0307707) in view of Hwang et al. (US 2005/0202316).
With regard to claim 17, Lee et al. teach a rechargeable battery comprising a positive electrode comprising a positive electrode active material, a negative electrode comprising a negative electrode active material, and an electrolyte including LiPF6, a mixture of organic solvents, compound 1-a in an amount of 2wt% and compound 2-a in an amount of 2wt%:
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and
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(par.0182, par.0188-0191, par.0193, par.0196, Example 1 in Table 1, par.0198).
Lee et al. also teach a rechargeable battery comprising a positive electrode comprising a positive electrode active material, a negative electrode comprising a negative electrode active material, and an electrolyte including LiPF6, a mixture of organic solvents, compound 1-a in an amount of 2wt% and compound 2-d in an amount of 2wt%:
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and
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(par.0182, par.0188-0191, par.0193, par.0197, Example 4 in Table 1, par.0198).
LiPF6 is a lithium salt in claim 17, and meets the limitations of claim 12.
The compound 1-a above is a “second additive of Chemical Formula 2-2” in claim 17.
The compound 2-a above is a first additive of Chemical Formula 1-1 in claim 17, wherein m=2 and R5 is a difluorophosphite group (-OPF2).
The compound 2-d above is a first additive of Chemical Formula 1-2 in claim 17, wherein L is a substituted C2 alkylene group.
Lee et al. fail to teach the claimed positive active material.
Hwang et al. teach a lithium secondary battery including a positive electrode comprising a combination of positive active materials (abstract). The lithium secondary battery has improved cycle life at room temperature and high temperatures and enhanced safety (par.0006, Examples 1-8 in Table 1, par.0047).
Hwang et al. further teach that the positive electrode active material may be a combination of LiNi0.8 Mn0.2O2 and LiCoO2 (Examples 1-8 in Table 1, par.0047).
Therefore, it would have been obvious to one of ordinary skill in the art before the fling date of the claimed invention to use the combination of LiNi0.8 Mn0.2O2 and LiCoO2 of Hwang et al. as positive electrode active material in the positive electrode of Lee et al, in order to improve the cycle life at room temperature and high temperatures and to enhance the safety of the battery.
LiNi0.8 Mn0.2O2 is the cobalt-free lithium nickel-manganese-based oxide in claim 17,
Therefore, the battery of Lee modified by Hwang is equivalent to the battery in claims 12 and 17 of the instant application.
With regard to claim 4, the compound 2-d above is a first additive of Chemical Formula 1-2a, wherein R6 is a C1 alkyl and R7-R9 are hydrogen atoms.
With regard to claim 5, the compound 2-a above is a first additive of Chemical Formula 1-1a-1.
The compound 2-d above is a first additive of Chemical Formula 1-2a-2.
With regard to claim 8, Lee et al. teach that the compound 2-a (‘first additive”) and the compound 1-a (“second additive”) are used in a weight ratio of 1:1 (see Example 1 in Table 1, par.0198). This ratio is within the claimed range.
With regard to claims 9 and 10, Lee et al. teach that the compound 2-a (‘first additive”) and the compound 1-a (“second additive”) are each used in an amount of 2 wt% (see Example 1 in Table 1, par.0198). These amounts are within the claimed ranges.
With regard to claim 11, Lee et al. teach that the mixture of organic solvents is a mixture of ethylene carbonate (EC), ethylmethyl carbonate (EMC) and dimethyl carbonate (DMC)(par.0191).
With regard to claim 13, Lee et al. teach that the electrolyte comprises 1.5M LiPF6 (par.0190). This amount is within the claimed range.
With regard to claim 16, LiNi0.8 Mn0.2O2 is a compound of Chemical Formula 14 wherein a4=1, x4=0.8, y4=0.2, z4=0, and b4=0.
Response to Arguments
Applicant’s arguments with respect to claims 4, 5, 8-13, 16, and 17 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The examiner would like to note that:
-the rejection of claims 2-5 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph is withdrawn after the cancelation of claims 2 and 3 and the applicant’s amendment to claim 5;
-the provisional rejection of claims 1-6 and 14 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 8, 10, 11, 14, and 19 of copending Application No. 18/012,630 (US 2024/0072303) is withdrawn after the applicant’s amendments to the claims;
-the provisional rejection of claims 1, 3-10, and 14 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 9-11, and 14 of copending Application No. 18/013,824 (US 2023/0344004) in view of Schmitz et al. (US 2017/0040649) is withdrawn after the applicant’s amendments to the claims;
-the provisional rejection of claims 1-9 and 14 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5-7, 10, 11, 13, and 15 of copending Application No.18/003,110 (US 2023/0307707) is withdrawn after the applicant’s amendments to the claims;
-the rejection of claims 1-14 under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (WO 2022/158728, with citations from the English equivalent US 2023/0307707) is withdrawn after the applicant’s amendments to the claims; and
-the rejection of claims 15 under 35 U.S.C. 103 as being unpatentable over Lee et al. (WO 2022/158728, with citations from the English equivalent US 2023/0307707) in view of Hwang et al. (US 2005/0202316) is moot after the cancelation of the claim.
However, new grounds of rejection for claims 4, 5, 8-13, 16, and 17 are shown in paragraphs 4-9 above.
Conclusion
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ANCA EOFF/Primary Examiner, Art Unit 1722
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