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 Objections
Claim 2 is objected to because of the following informalities: “V1” should be rewritten as “V1”. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: “V2” should be rewritten as “V2”. Appropriate correction is required.
Per claims 8 and 10-11, abbreviation of the compounds should be in parenthesis.
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 1-17 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.
Claim 1 recites “0 < A/(V1-4.1) ≤ 4” and “optionally, 0 < A/(V1-4.1) ≤ 3”. 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 1 recites the broad recitation 0 < A/(V1-4.1) ≤ 4, and the claim also recites “optionally, 0 < A/(V1-4.1) ≤ 3” which is the narrower statement of the range/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.
Claim 3 recites “0 < A x V2 ≤ 1.2” and “optionally, 0 < A x V2 ≤ 1”. 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 1 recites the broad recitation 0 < A x V2 ≤ 1.2, and the claim also recites “optionally, 0 < A x V2 ≤ 1” which is the narrower statement of the range/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.
Claim 4 recites “0.02 < V2 ≤ 2.5” and “optionally, 0.1 < V2 ≤ 2”. 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 1 recites the broad recitation 0 < A x V2 ≤ 1.2, and the claim also recites “optionally, 0 < A x V2 ≤ 1” which is the narrower statement of the range/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.
Claim 7 recites the boron-containing salt comprises the compound shown in Formula 1… optionally…. It is unclear what requirement is needed for the structure of the boron-containing salt. Thus, the metes and bounds of the claim are not clear, and the claim is indefinite.
Alternatively, 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 7 recites the broad Formula 1, Formula 2, and Formula 3, and the claim also recites “optionally” specific compound of Formulas 1-3, which is the narrower statement of the range/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.
Per claim 9, 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 9 recites the broad 0.5% ≤ d ≤ 10%, and the claim also recites “optionally, 1% ≤ d ≤ 6%,” which is the narrower statement of the range/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.
Claim 9 recites “optionally…”. It is unclear what requirement is needed for claim 9 (just a presence of an film-forming additive and/or mass percentage of the additive. Thus, the metes and bounds of the claim are not clear, and the claim is indefinite.
Claim 10 recites “optionally…”. It is unclear what requirement is needed for claim 10 (cyclic and/or linear carbonate additive or the specific compound, and likewise with sulfate additives). Thus, the metes and bounds of the claim are not clear, and the claim is indefinite.
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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Hamazaki et al. (JP 2013-191390).
Regarding claims 1-2 and 6-7, Hamazaki discloses a secondary battery comprising a positive electrode plate comprising a positive electrode active material, and an electrolytic solution comprising a boron-containing salt that comprises the compounds as presently claimed (Abstract, claim 1, [0010].
Additionally, Hamazaki discloses a positive electrode containing a positive active material that operates at a potential of 4.4 V or higher and the boron-containing salt has a content of 0.01-10 mass% (Abstract), which overlaps the claims range and that all values within the range appears to be functionally equivalent. 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. Although Hamazaki fails to explicitly disclose 0 < A/(V1-4.1) ≤ 4 , it would have been obvious to choose any mass% of the boron-containing salt within the claimed range and the upper-limit potential of the positive electrode active material to satisfy the claimed relationship based on the desired cycle life and that choosing the values of the content of the boron-containing salt and having an upper-limit potential of the positive electrode active material would have rendered the claimed relationship obvious in the absence of showing criticality.
Regarding claim 3-5, Hamazaki discloses the negative electrode active material as claimed [0059-0060 and 0064], however, fails to explicitly disclose the upper-limit potential of the negative electrode material is 0.02-2.5 V as presently claimed. However, it is the examiner's position that the reference to Hamazaki teaches the same material as claimed and therefore, would be expected to inherently satisfy the claimed potential of the negative electrode material.
It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC § 102 or on prima facie obviousness under 35 USC § 103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977).
Additionally, Hamazaki discloses a boron-containing salt having a content of 0.01-10 mass% (Abstract), which overlaps the claims range and that all values within the range appears to be functionally equivalent. 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, both the potential of the negative electrode material and content of the boron-containing salt, disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549. Although Hamazaki fails to explicitly disclose 0 < A x V2 ≤ 1.2 , it would have been obvious to choose any mass% of the boron-containing salt within the claimed range and the upper-limit potential of the negative electrode active material to satisfy the claimed relationship based on the desired cycle life and that choosing the values of the content of the boron-containing salt and having an upper-limit potential of the negative electrode active material would have rendered the claimed relationship obvious in the absence of showing criticality.
Regarding claim 8, please see [0048].
Regarding claims 9-10, please see [0049].
Regarding claim 11, please see [0024-0025].
Regarding claim 12, Hamazaki discloses LiMdO2, wherein Md is a transition metals [0051]. Although Hamazaki fails to explicitly disclose an embodiment or example requiring LiNi, 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. positive electrode active material ( 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)
Regarding claims 13-17, please see Fig. 1, [0002], [0073], and [0091].
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Hamazaki et al. (JP 2013-191390) in view of Lim et al. (US 2014/0377656)
Hamazaki discloses the negative electrode active material as claimed [0059-0060 and 0064], however, fails to explicitly disclose the upper-limit potential of the negative electrode material is 0.02-2.5 V as presently claimed. It is known in the battery art that negative electrode has a lower potential relative to the positive electrode.
Lim discloses a negative electrode for a secondary battery comprising a negative electrode active material of hard carbon, graphite-based carbon, and silicon-based [0036], which is similar material to that of Hamazaki, wherein the potential is .75-1.545 V [0010].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hamazaki’s negative electrode active material to be within the claimed range, since Lim discloses that this is a known property of a negative electrode active material and to prevent safety problems [0006].
Additionally, Hamazaki discloses a boron-containing salt having a content of 0.01-10 mass% (Abstract), which overlaps the claims range and that all values within the range appears to be functionally equivalent. 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, both the potential of the negative electrode material and content of the boron-containing salt, disclosed by Hamazaki in view of Lim because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549. Although Hamazaki in view of Lim fails to explicitly disclose 0 < A x V2 ≤ 1.2 , it would have been obvious to choose any mass% of the boron-containing salt within the claimed range and the upper-limit potential of the negative electrode active material to satisfy the claimed relationship based on the desired cycle life and that choosing the values of the content of the boron-containing salt and having an upper-limit potential of the negative electrode active material would have rendered the claimed relationship obvious in the absence of showing criticality.
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.
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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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