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 .
Claim Interpretation
The Examiner is interpreting “a polymer comprising functional groups compatible with the POSS” as being a polymer that does not undergo phase separation when mixed with the liquid POSS” in light of P15, L4-10 of the instant specification.
The Examiner notes that PEG-POSS is in a liquid phase at room temperature, as evidenced by [0030] of Wang (CN 105932330 A, see also the provided EPO machine generated English translation) and P8, L25-P9, L4 of the instant specification.
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.
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Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-5 and 7-10 of copending Application No. 18/577,195 in view of Rhee et al. (KR 2014-0027671 A, see also the provided EPO machine generated English translation).
Regarding Claims 1-11, copending Application No. 18/577,195 discloses all of the limitations except for:
the polymer comprising functional groups compatible with the liquid POSS;
wherein at least one of the functional groups compatible with the liquid POSS is selected from the group consisting of trifluoroethylene, tert-butyl acrylate, methyl methacrylate, styrene, vinyl pyridine, acrylic acid, chloride, vinyl acetate, vinyl imidazole, acrylamide, lactide, ethylene oxide, and butyl acrylate; and
wherein the functional groups compatible with the liquid POSS have a content ratio of polymer comprised contained therein to liquid POSS of 1:4 to 1:9.5.
Rhee teaches the limitations as set forth in the rejection of record below.
It would have been obvious to one of ordinary skill in the art to form the polymer of copending Application No. 18/577,195 to comprise a polyvinylidene fluoride (PVDF) or a polyacrylonitrile (PAN) in combination with a poly(methyl methacrylate) (PMMA), such that the polymer comprises functional groups compatible with the liquid POSS, wherein at least one of the functional groups compatible with the liquid POSS consists of methyl methacrylate, as taught by Rhee, as such is a known configuration in the art and therefore the skilled artisan would have a reasonable expectation that such would successfully form the solid-liquid hybrid electrolyte membrane desired by copending Application No. 18/577,195
Furthermore, it would have been obvious to one of ordinary skill in the art to form the solid-liquid hybrid electrolyte membrane of copending Application No. 18/577,195 such that the functional group compatible with the liquid POSS has a content ratio of polymer contained therein to the liquid POSS in the encompassing portion of the range taught by Rhee, wherein the skilled artisan would have a reasonable expectation that such would successfully form the solid-liquid hybrid electrolyte membrane desired by copending Application No. 18/577,195.
This is a provisional nonstatutory double patenting rejection.
Claim Objections
Claim 1 is objected to because of the following informalities:
L3 of the claim should recite “…functional groups compatible with the liquid POSS” in order to have consistent antecedent basis throughout the claim set.
The Examiner suggests amending L6-7 to recite “each R is is independently represented by the following formulae 1-1 to 1-4” in order to improve clarity of the claim.
L6 of the claim should recite “Formulae 1-1 to 1-4” in order to have consistent antecedent basis throughout the claim set.
Claim 2 is objected to because of the following informalities: L6-7 recites a duplicate limitation to one set forth in Claim 1. The Examiner requests that the Applicant cancel the duplicate limitation in Claim 2.
Claim 4 is objected to because of the following informalities: L2 of the claim should recite “wherein the polymer comprising functional groups compatible with the liquid POSS comprises…” in order to have correct antecedent.
Claim 6 is objected to because of the following informalities: the claim recites LiClO4 twice (e.g. in L3 and in L4). The Examiner requests that the Applicant cancel one of the recitations of LiClO4.
Claim 7 is objected to because of the following informalities: L3 of the claim should recite “the liquid POSS
Claim 8 is objected to because of the following informalities: L2 of the claim should recite “wherein a POSS
Claim 9 is objected to because of the following informalities: L2 of the claim should recite “wherein an solid-liquid hybrid- electrolyte membrane” in order to set forth and maintain consistent antecedent basis throughout the claim set.
Claim 10 is objected to because of the following informalities: L2 of the claim should recite “the solid-liquid hybrid- electrolyte membrane according to claim 1” in order to have correct antecedent basis.
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 5, 7-8, and 10 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 5 recites the limitation "wherein the functional group compatible with the POSS is selected from the group consisting of…”.
The Examiner notes that Claim 5 depends on Claim 1, which sets forth a plurality of functional groups compatible with the liquid POSS and therefore it is unclear which functional group compatible with the liquid POSS of the functional groups compatible with the liquid POSS the limitation is referring to.
For purpose of examination, the Examiner will interpret the claim to recite “wherein at least one of the functional groups compatible with the liquid POSS is selected from the group consisting of…”.
Claim 7 recites the limitation "wherein the functional group compatible with the POSS has…”.
The Examiner notes that Claim 7 depends on Claim 1, which sets forth a plurality of functional groups compatible with the liquid POSS and therefore it is unclear which functional group compatible with the liquid POSS of the functional groups compatible with the liquid POSS the limitation is referring to.
For purpose of examination, the Examiner will interpret the claim to recite “wherein the functional groups compatible with the liquid POSS have…”.
Claim 8 recites the limitation "the lithium salts" in L3. There is insufficient antecedent basis for this limitation in the claim.
The Examiner notes that Claim 8 depends on Claim 1, which sets forth a single lithium salt and therefore it is unclear if Claim 8 is referring to the lithium salt set forth in Claim 1 or if Claim 8 requires an additional lithium salt.
For purpose of examination, the Examiner will interpret the claim to recite “wherein a content ratio of the liquid POSS to the lithium salt is 10:1 to 1:5” in light of P16, third paragraph of the instant specification.
Claim 10 recites the limitation "the electrolyte film" in L2. There is insufficient antecedent basis for this limitation in the claim.
For purpose of examination, the Examiner will interpret the claim to recite “wherein the solid-liquid hybrid electrolyte membrane has a thickness of 1 µm to 200 µm”.
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 1-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Rhee et al. (KR 2014-0027671 A, cited on the IDS dated September 26, 2024, see also the provided EPO machine generated English translation).
Regarding Claims 1-5 and 11, Rhee discloses a lithium secondary battery ([0040]) comprising a positive electrode ([0040]);
a negative electrode ([0040]); and
a solid-liquid hybrid electrolyte membrane ([0040]) comprising:
a liquid polyhedral oligomeric silsesquioxane (POSS) represented by the following Formula 1 below; a polymer; and a lithium salt ([0020], wherein the POSS is in a liquid phase at room temperature):
[Formula 1]
PNG
media_image1.png
378
460
media_image1.png
Greyscale
wherein, each R may be chosen to be a polyethylene glycol group with 1 repeating unit of ethylene oxide ([0024]-[0025], [0029]).
The Examiner notes that when R is polyethylene glycol, such reads on Formula 1-1 wherein L1 and L2 are a C2 alkylene group, R1 is hydrogen, and m and n are 1.
It would have been obvious to one of ordinary skill in the art to utilize a polyethylene glycol group with 1 repeating unit of ethylene oxide as each R in Formula 1, as disclosed by Rhee, wherein the skilled artisan would have a reasonable expectation that such would successfully form the solid-liquid hybrid electrolyte membrane desired by Rhee.
Modified Rhee further discloses wherein the polymer is not particularly limited may be chosen to comprise a polyvinylidene fluoride (PVDF), a polyacrylonitrile (PAN), a poly(methyl methacrylate) (PMMA), or a combination thereof ([0021]).
It would have been obvious to one of ordinary skill in the art to form the polymer to comprise a polyvinylidene fluoride (PVDF) or a polyacrylonitrile (PAN) in combination with a poly(methyl methacrylate) (PMMA), as disclosed by modified Rhee, as such is not particularly limited and therefore the skilled artisan would have a reasonable expectation that such would successfully form the solid-liquid hybrid electrolyte membrane desired by modified Rhee.
Thus, modified Rhee discloses wherein the polymer comprises functional groups compatible with the liquid POSS, wherein such comprises a polyvinylidene fluoride (PVDF) or a polyacrylonitrile (PAN) as a main chain or a side chain and at least one of the functional groups compatible with the liquid POSS consists of methyl methacrylate.
Regarding Claim 6, modified Rhee discloses all of the limitations as set forth above and further discloses wherein the lithium salt is not particularly limited and may be chosen to comprise one selected from the group consisting of LiPF6, LiBF4, LiBOB, LiClO4, and a combination thereof ([0039]).
It would have been obvious to one of ordinary skill in the art to utilize LiPF6, LiBF4, LiBOB, LiClO4, or a combination thereof as the lithium salt, as disclosed by modified Rhee, as such is not particularly limited and therefore the skilled artisan would have a reasonable expectation that such would successfully form the solid-liquid hybrid electrolyte membrane desired by modified Rhee.
Regarding Claim 7, modified Rhee discloses all of the limitations as set forth above and further discloses wherein a content of the liquid POSS in the solid-liquid hybrid electrolyte membrane is 5 wt% to 50 wt% based on the total weight of the solid-liquid hybrid electrolyte membrane ([0020], [0035]).
Therefore, modified Rhee discloses wherein the functional groups compatible with the liquid POSS have a content ratio of polymer contained therein necessarily and inherently greater than 0 wt% and less than 95 wt% based on the total weight of the solid-liquid hybrid electrolyte membrane.
In light of the above, modified Rhee discloses wherein the functional groups compatible with the liquid POSS have a content ratio of polymer contained therein to the liquid POSS of greater than 0 and less than 1:19, which encompasses the instantly claimed range of 1:4 to 1:9.5.
It would have been obvious to one of ordinary skill in the art to form the solid-liquid hybrid electrolyte membrane such that the functional group compatible with the liquid POSS have a content ratio of polymer contained therein to the liquid POSS in the encompassing portion of the range disclosed by modified Rhee, wherein the skilled artisan would have a reasonable expectation that such would successfully form the solid-liquid hybrid electrolyte membrane desired by modified Rhee.
Regarding Claim 8, modified Rhee discloses all of the limitations as set forth above and further discloses wherein a content of the liquid POSS in the solid-liquid hybrid electrolyte membrane is 5 wt% to 50 wt% based on the total weight of the solid-liquid hybrid electrolyte membrane ([0020], [0035]).
Therefore, modified Rhee discloses wherein a content of the lithium salt is necessarily and inherently greater than 0 wt% and less than 95 wt% based on the total weight of the solid-liquid hybrid electrolyte membrane.
In light of the above, modified Rhee discloses wherein a content ratio of the liquid POSS to the lithium salt is greater than 0 and less than 1:19, which encompasses the instantly claimed range of 10:1 to 1:5.
It would have been obvious to one of ordinary skill in the art to form the solid-liquid hybrid electrolyte membrane to have a content ratio of the liquid POSS to the lithium salt in the encompassing portion of the range disclosed by modified Rhee, wherein the skilled artisan would have a reasonable expectation that such would successfully form the solid-liquid hybrid electrolyte membrane desired by modified Rhee.
Regarding Claim 9, modified Rhee discloses all of the limitations as set forth above and further discloses in the exemplary embodiments wherein an ion conductivity of the solid-liquid hybrid electrolyte membrane is from 3.5 x 10-7 to 4.0 x 10-6 S/cm at room temperature ([0054], Table 1), which overlaps with the instantly claimed range of 8.0 x 10-7 to 2.0 x 10-4 S/cm at 25°C.
For example, the Examiner notes that increasing the amount of the liquid POSS in the solid-liquid hybrid electrolyte membrane increases the ionic conductivity of the solid-liquid hybrid electrolyte membrane.
It would have been obvious to one of ordinary skill in the art to utilize an amount of the liquid POSS in the solid-liquid hybrid electrolyte membrane such that an ionic conductivity of the solid-liquid hybrid electrolyte membrane is between 8.0 x 10-7 to 2.0 x 10-4 S/cm at 25°C, as disclosed by modified Rhee, wherein the skilled artisan would have a reasonable expectation that such would successfully form a solid-liquid hybrid electrolyte membrane having a high ionic conductivity, as desired by modified Rhee.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable Rhee et al. (KR 2014-0027671 A, cited on the IDS dated September 26, 2024, see also the provided EPO machine generated English translation), as applied to Claim 1 above, and further in view of Wang (CN 105932330 A, see also the provided EPO machine generated English translation).
In another interpretation, the following is relied upon.
Regarding Claim 8, modified Rhee discloses all of the limitations as set forth above and further discloses wherein a content of the liquid phase polyhedral oligomeric silsesquioxane in the solid phase-liquid phase hybrid electrolyte membrane is 5 wt% to 50 wt% based on the total weight of the solid phase-liquid phase hybrid electrolyte membrane ([0020], [0035]).
Therefore, modified Rhee discloses wherein a content of the lithium salt is necessarily and inherently greater than 0 wt% and less than 95 wt% based on the total weight of the solid phase-liquid phase hybrid electrolyte membrane.
Furthermore, Yang teaches an electrolyte membrane comprising a polymer, a POSS, and a lithium salt, wherein the electrolyte membrane comprises 1 part by weight of the polymer, 0.02-0.8 parts by weight of the POSS, and 0.01-3 parts by weight of the lithium salt ([0010]).
For example, Yang teaches in an exemplary embodiment wherein the electrolyte membrane comprises about 43 wt% of the polymer, about 35 wt% of the POSS, and 22 wt% of the lithium salt ([0086]).
The Examiner notes that the above exemplary embodiment of Yang has a content of the polymer, the POSS, and the lithium salt that fall within the suitable ranges disclosed by modified Rhee and a content ratio of the POSS to the lithium salt of about 1:0.6, which falls within the instantly claimed range of 10:1 to 1:5.
It would have been obvious to one of ordinary skill in the art to form the solid phase-liquid phase hybrid electrolyte membrane of modified Rhee to have a content of the polymer comprising the functional groups compatible with the liquid POSS, the liquid POSS, and the lithium salt that fall within the ranges taught by Yang, such that the solid phase-liquid phase hybrid electrolyte membrane has a content ratio of the liquid POSS to the lithium salt that falls within the instantly claimed range of 10:1 to 1:5, wherein such falls within the suitable ranges disclosed by modified Rhee and therefore the skilled artisan would have a reasonable expectation that such would successfully form the solid-liquid hybrid electrolyte membrane desired by modified Rhee.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Rhee et al. (KR 2014-0027671 A, cited on the IDS dated September 26, 2024, see also the provided EPO machine generated English translation), as applied to Claim 1 above, and further in view of Xue et al. (CN 110994013 A, see also the provided EPO machine generated English translation).
Regarding Claim 9, modified Rhee discloses all of the limitations as set forth above and further discloses wherein the solid-liquid hybrid electrolyte membrane has a strong mechanical strength such that it can maintain its performance even when its thickness is reduced ([0013]).
However, modified Rhee remains silent regarding the specific thickness and consequently does not disclose wherein a thickness of the solid-liquid hybrid electrolyte membrane is from 1 to 200 µm.
Xue teaches a thin-film electrolyte membrane for a lithium secondary battery comprising POSS, wherein the electrolyte membrane has a thickness preferably in the range from 50 to 300 µm ([0008], [0070]), which overlaps with the instantly claimed range of 1 to 200 µm.
It would have been obvious to one of ordinary skill in the art to form the solid-liquid hybrid electrolyte membrane of modified Rhee to have a thickness in the overlapping portion of the range taught by Xue, as such is a known suitable thickness in the art for a thin-film electrolyte membrane and therefore the skilled artisan would have a reasonable expectation that such would successfully form the solid-liquid hybrid electrolyte membrane desired by modified Rhee.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIMBERLY WYLUDA whose telephone number is (571)272-4381. The examiner can normally be reached Monday-Thursday 7 AM - 3 PM EST.
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/KIMBERLY WYLUDA/Primary Examiner, Art Unit 1725
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