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 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 19-20 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 19 recites the limitation "the alcohol" in line 13. There is insufficient antecedent basis for this limitation in the claim, and the provenance of “the alcohol” is unclear. For purposes of examination, “the alcohol” will be interpreted to mean “alcohol”, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
Claim 20 is indefinite due to its dependence on the indefinite claim 19 and because it does not cure the indefiniteness of “the alcohol” as recited therein.
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 1-2, 4-11, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 10,967,295 (“’295”). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-30 of ‘295 overlap in scope with instant claims 1-2, 4-11, and 19-20. The only limitation of the instant claims 1-2, 4-11, and 19-20 that is not recited in the claims of ‘295 is that the crude salt is provided in solid form. However, as defined in Col. 3, lines 52-65 of ‘295, “crude” LiFSI is a LiFSI synthesis product that contains reactive solvents in the form of “solvent residues”. By virtue of this definition provided in ‘295, a person having ordinary skill in the art would understand a “solvent residue” to be a small portion of solvent that remains entrained in the solid crude salt and that the crude salt would therefore be provided in the solid form.
Claims 1-2 and 4-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,172,104 (“’104”) in view of Sun (CN 108373142 A, 2018) (the translation provided with the attached original document is referenced below). The only limitation of the instant claims 1-2 and 4-20 that is not recited in the claims of ‘104 is that the reactive solvent of ‘104 is an alcohol. However, Sun teaches that methanol is a suitable solvent to use in the preparation of LiFSI (Sun, [0037]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention for the reactive solvent in claim 1 of ‘104 to have been an alcohol, as Sun teaches that methanol (an alcohol) is a suitable solvent for preparing LiFSI (Sun, [0037]) and therefore would be present in crude LiFSI prepared by Sun’s method. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
Allowable Subject Matter
Claim 3 is 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.
Claims 1-2 and 4-20 would be allowable if the Double Patenting rejections over U.S. Patent No. 10,967,295 and U.S. Patent No. 12,172,104 in view of Sun (CN 108373142 A, 2018) were overcome.
The following is a statement of reasons for the indication of allowable subject matter: Su (CN 108373142 A, 2018), Luo (WO 2018/201711 A1) (the translation provided with the attached original document is referenced below), Hou (CN 105731399 A, 2016) (the translation provided with the attached original document is referenced below), and Huang (“Thermal behavior of ionic liquids containing the FSI anion and the Li+ cation”, 2010) are considered to be the closest prior art to the instant application.
Regarding claims 1 and 19, and their dependent claims 2-18 and 20, Luo teaches a method of processing a lithium salt that is either a lithium bis(fluorosulfonyl) imide (LiFSI) salt (Luo, [0032], [0029]) or a lithium bis(trifluoromethanesulfonyl)imide (LiTFSI) salt, the method comprising:
a process (Luo, [0032]), that includes:
providing, in solid form, a crude lithium salt containing the lithium salt (Luo, [0032], “crystals were precipitated by adding toluene”);
contacting the crude lithium salt with at least one first anhydrous organic solvent (Luo, [0032], dry dimethyl carbonate) so as to dissolve the crude lithium salt and thereby create a solution containing the lithium salt (Luo, [0032], “dry dimethyl carbonate solvent was added, dissolved”):
the solubility of the lithium salt in the at least one first anhydrous organic solvent is more than 90% (Luo, [0032], dimethyl carbonate; as stated in instant Specification, Table I, LiFSI has a solubility of more than 90% in dimethyl carbonate), which falls within the claimed range of at least about 35%, at room temperature (Instant Specification, Table I, where the provided solubilities are presumed to be at room temperature), which falls within the claimed range of below 25°C; and
wherein the at least one first anhydrous organic solvent is a non-reactive solvent (Luo, [0032], dimethyl carbonate is a non-reactive solvent);
subjecting the solution to a vacuum so as to remove the at least one first anhydrous organic solvent (Luo, [0032], “a large amount of dimethyl carbonate was removed under reduced pressure”) to obtain a solid mass (Luo, [0032], “toluene was added to carry out recrystallization”: recrystallization involves dissolution and precipitation of a solid product, implying that the product is solid after removing dimethyl carbonate under reduced pressure and prior to adding toluene; even if Luo did not teach that the mass was solid, it would have been obvious a person having ordinary skill in the art to evaporate all of the dimethyl carbonate before recrystallization because starting from a solid is a routine condition for affecting recrystallization);
treating the solid mass with at least one second anhydrous organic solvent in which the lithium salt is insoluble (Luo, [0032], recrystallization in toluene) so as to remove at least a portion of any coordinated or solvated portion of the at least one first anhydrous organic solvent remaining in the solid mass after the subjecting of the solution to the vacuum to create a combination having an insoluble portion (Luo, [0032], traces of dimethyl carbonate would be removed under reduced pressure); and
isolating the insoluble portion in an inert atmosphere (Luo, [0032], “the obtained solid was dried under reduced pressure”, where a reduced pressure atmosphere is inert).
Luo, does not explicitly teach that the process is a “reactive-solvent-reduction” process. However, as the synthesis of LiFSI of Luo is by reaction of HFSI with lithium carbonate in water, it is inherent that solvent purification steps would remove water in a “reactive-solvent-reduction” fashion. It has been held that where claimed and prior art products are produced by identical or substantially similar methods, a prima facie case of anticipation or obviousness has been established. MPEP 2112.01, citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In other words, if the prior art teaches or at least suggests the claims' positive method steps, it matters not whether the prior art also teaches or suggests the features of the intended result of performing said steps. It would not be reasonable to expect different results when performing identical or at least substantially similar steps. Accord, MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (stating that “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention”). See also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (stating the “general rule that merely discovering and claiming a new benefit of an old process cannot render the [old] process again patentable”). In the instant case, it would not be reasonable to expect when performing the substantially similar method of Luo, which shares the features with the instant invention of dissolution of the crude solid LiFSI synthesized by reaction of HFSI with Li2CO3 in anhydrous dimethyl carbonate, followed by concentration and contacting with a second anhydrous solvent.
Similarly, Luo, does not explicitly teach that the solid crude lithium salt contains one or more reactive solvents coordinated or solvated with the lithium salt. However, Huang teaches that LiFSI is highly hygroscopic (Huang, Page 21842, Col. 1, lines 51-52). Since Luo teaches precipitation of LiFSI from an aqueous solution, it would be unreasonable to expect that the crude LiFSI, so produced, would be free of adsorbed water. Indeed, while Luo is silent to water being coordinated with the crude lithium salt, the very fact that Luo, purifies the crude LiFSI by first dissolving in dry dimethyl carbonate (Luo, [0032]) strongly suggests that the intention is to replace water with the non-reactive dimethyl carbonate.
In the same vein, Luo does not explicitly teach that dissolving the crude lithium salt in the at least one first anhydrous organic solvent also dissolves the one or more reactive solvents. However, this would necessarily occur when dissolving the crude LiFSI containing adsorbed water (the reactive solvent), which is an inherent feature of the method of Luo, as discussed above.
Similarly, Luo does not explicitly teach that subjecting the solution of crude LiFSI in the at least one first anhydrous organic solvent to a vacuum also removes at least a portion of the one or more reactive solvents. However, this would necessarily occur when subjecting the crude LiFSI solution in dimethyl carbonate to a vacuum (Luo, [0032]), as the water present in solution would be sufficiently volatile to be removed in vacuo.
Luo does not explicitly teach that the contacting of the crude lithium salt with at least one anhydrous organic solvent is done so under an inert condition. However, Hou teaches an analogous method for purifying LiFSI by recrystallization under an inert atmosphere (Hou, [00106], nitrogen protection). Additionally, Huang teaches that LiFSI is highly hygroscopic (Huang, Page 21842, Col. 1, lines 51-52).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have modified the method of Luo to incorporate protection under an inert nitrogen atmosphere during purification, as taught by Hou (Hou, [00106]). As Huang teaches that LiFSI is highly hygroscopic (Huang, Page 21842, Col. 1, lines 51-52), a person having ordinary skill in the art would have been motivated to incorporate a protective atmosphere in the method of Luo to prevent the LiFSI salt from taking up moisture in the air during the purification process.
Luo does not explicitly teach that the at least one first anhydrous organic solvent is selected to replace at least a portion of molecules of the one or more reactive solvents bonded to ions from the crude lithium salt in the solution. However, as discussed above, Luo’s selection of dry dimethyl carbonate to dissolve the crude LiFSI combined with the fact that the reaction took place in water (Luo [0032]), as well as the known feature of LiFSI being highly hygroscopic (Huang, Page 21842, Col. 1, lines 51-52), strongly suggest that removing adsorbed water was a motivation for selecting said first anhydrous organic solvent. Moreover, the mental step of selecting the first anhydrous organic solvent is not given patentable weight; since dimethyl carbonate inherently replaces water in the coordination sphere of LiFSI following dissolution, performing the selection of the solvent makes no difference in the function of the method.
However, neither Luo nor the other cited prior art references teach or suggest flushing the insoluble portion with at least one dry inert gas so as to remove traces of the at least one second anhydrous organic solvent and provide a flushed insoluble portion; and subjecting the flushed insoluble portion to a pressure of less than about 100 Torr so as to obtain a reduced-reactive-solvent lithium salt. Specifically, the method of Luo teaches removing the residual second anhydrous organic solvent in vacuo (Luo, [0032]), which would be at a pressure of less than about 100 Torr, but neither Luo nor the other cited prior art references teach or suggest an intermediate flushing step with at least one dry inert gas.
Regarding claim 3, none of the cited prior art references teach or suggest that removing at least a portion of each of the at least one first anhydrous organic solvent and the alcohol from the solution occurs immediately after contacting the crude salt with at least one first anhydrous organic solvent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3590. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
Prosecution Insights