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 .
Response to Amendment
In response to the amendment received December 31, 2025:
Claims 1, 3-4, and 7-13 are pending.
The previous prior art rejection is maintained.
The declaration under 37 CFR 1.132 filed September 2, 2025 is insufficient to overcome the rejection of the claims based upon JP 201604873 (Ishiwatari et al.) in view of US 2014/0272604 (Lim et al.) as set forth in the last Office action because: the data does not show unexpected results. See the Response to Arguments section below for full details.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3-4, 7-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 201604873 (Ishiwatari et al.) in view of US 2014/0272604 (Lim et al.).
As to claim 1, Ishiwatari et al. teach a nonaqueous electrolyte solution, comprising, with respect to a total amount of nonaqueous electrolyte solution:
from 0.1 to 2 mass% (set forth as a particularly preferred range, wherein the most preferred upper limit is 1.5% mass) of a compound represented by compound 2
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(para 0054, one compound under chemical formula 17).
The above (claimed compound 2) is one example of general formula (ii) (para 0015, 0045, 0055).
from 0.1 to 2.0 mass% (preferable range; overlaps with claimed range of 0.1-1.5 mass% thus renders claimed range obvious) of vinylene carbonate (para 0067) (an example of a cyclic carbonate having an unsaturated carbon-carbon bond (para 0065, 0067, 0071);
at least one compound selected from the group consisting of a compound represented by Formula (B) (general formula (i) (para 0014); and
a compound represented by the following Formula (C) (encompassed by the isocyanate compound (para 0057);
and
a carbonate solvent comprising a mixture of a saturated cyclic carbonate and 2 more linear carbonates having 3-5 carbon atoms (the claimed saturated cyclic carbonate is encompassed by the “fluorine atom-free cyclic carbon” of para 0084-0085; the claimed linear carbonates are encompassed by the fluorine free versions of “chain carbonates” in para 0086, wherein combinations can be used (para 0091); note: a specific example includes a solvent having a mixture of ethylene carbonate (claimed saturated cyclic carbonate), dimethyl carbonate, and ethyl methyl carbonate (the latter two being a combination of two linear carbonates having 2-5 carbon atoms) (para 0259)),
wherein
when the nonaqueous electrolyte solution comprises only one of the compounds represented by Formula (B) and represented by Formula (C), the content of the compound with respect to the total amount of the nonaqueous electrolyte solution is 0.01% by mass or higher and 0.49% by mass or less (amount of general formula (i)/Formula B claimed is most preferably 0.01 mass% or more and most preferably 0.5 by mass% or less (para 0043); amount of isocyante/Formula (C) claimed most preferably 0.01 mass% or more and most preferably 0.5 by mass or less% (para 0064)), and
when the nonaqueous electrolyte solution comprises both of the compound represented by Formula (B) and the compound represented by Formula (C), a total content of the compound represented by Formula (B) and the compound represented by Formula (C) with respect to the total amount of the nonaqueous electrolyte solution is 0.01% by mass or higher and 0.80% by mass or less (encompassed by the additive amounts set forth in para 0043 and 0064 above):
Regarding ranges that overlap the claimed range: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” See MPEP §2144.05(I).
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wherein, R1 to R3 are optionally the same or different from each other and each represent a hydrocarbon group having 1 to 10 carbon atoms which optionally has a substituent, with the proviso that at least one of R1 to R3 is a hydrocarbon group having an unsaturated carbon-carbon bond (these compounds are seen para 0021-0043)
OCN—Q—NCO (c)
wherein, Q represents a hydrocarbon group having 3 to 20 carbon atoms, and the hydrocarbon group comprises a cycloalkylene group (these compounds are set forth in para 0057),
wherein the compound of Formula (B) is at least one of Compound 3 and Compound 6, as a specific example is set forth is
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(para 0042, chemical formula 12) (claimed compound 3), and
The compound of Formula (C) is compound 4
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(not depicted as a formula, but set forth as 1,3-bis(isocyantomethyl)cyclohexane (para 0057)).
Note: The general teaching of Ishiwatari et al., which encompasses (but does not exemplify) an electrolyte including all of the claimed additives, renders the claimed invention obvious, as it sets forth reasons as to why to add of the individual components within an electrolytic solution, and how the amount added is within optimization/discovery of workable ranges.
For clarity’s sake:
Regarding adding claimed Formula B (compound 3 or compound 6) – this material is recognized to improve battery swelling (indication of gas generation) and provide high storage characteristic, wherein in addition to the preferred overlapping amount, it is set forth that an effective amount is used to provide these desired effects (para 0043). (Note: The total amount of B and C individually and together overlap the claimed amount.)
Regarding adding Compound 2 – this material is recognized to improve high characteristics, wherein in addition to the preferred overlapping amount, it is set forth that an effective amount is used to provide the desired effect (para 0055).
Regarding adding claimed Formula C (isocyanate; compound 4) – this material is added to improve high-temperature storage characteristics, wherein in addition to the preferred overlapping amount, it is set forth that an effective amount is used to provide the desired effect (para 0057, 0064). (Note: The total amount of B and C individually and together overlap the claimed amount.)
Regarding adding vinylene carbonate (cyclic carbonate having a carbon-carbon unsaturated bond ) – this material is added to improve cyclic characteristics while avoiding high temperature deterioration and avoid gas generation (para 0065, 0071).
Regarding adding the claimed saturated cyclic carbonate (fluorine atom-free cyclic carbonate) is to prevent a decrease in dielectric constant and thus prevent a decrease in electrical conductivity, to preserve large-current discharge characteristics of the battery, the preserve the stability of the negative electrode, and achieve good cycle characteristics, to maintain viscosity at an appropriate range, and to achieve favorable load characteristics of the electrolyte solution (para 0084-0085, which also provides for a preferable amount (amount not currently claimed)).
Regarding adding the claimed 2 or more linear carbonates having 3-5 carbon atoms is to set viscosity of the electrolyte solution in an appropriate range, to suppress a decrease in ion conductivity, to achieve large-current discharge characteristics, and to prevent a decrease in electrical conductivity due to a decrease in the dielectric constant of the electrolyte solution (para 0086-0087, 0091 which also provides for a preferable amount (amount not currently claimed)).
Accordingly, all compounds of the claimed electrolyte above are set forth to be added by Ishiwatari et al. to provide the desired characteristics as set forth above; additionally the amounts of all the materials to be are set forth to be result effective variables (set forth above; also applicable to a total amount of Formula B and Formula C). It would have been obvious to one having ordinary skill in the art at the time the invention was made to add compound 2, formula B (compound 3, compound 6), formula C (compound 4), vinylene carbonate (cyclic carbonate having a carbon-carbon unsaturated bond), a carbonate solvent comprising a mixture of a saturated cyclic carbonate and two or more linear carbonates having 3-5 carbon atoms, each meeting the claimed amount (when claimed amounts are present), since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
Ishiwatari et al. do not teach adding from 0.01 to 3 mass% of lithium difluorophosphate.
However, in the same field of endeavor (battery electrolyte), Lim et al. teach the use of a combination of lithium difluorophosphate (LiDFP) and vinylene carbonate (in Ishiwatari et al., set forth above), and a sultone-based compound (similar to compound 2 claimed (cyclic sulfonic ester present)); also within Ishiwatari et al., set forth above) (abs). The lithium difluorophosphate is added in 0.05-5 wt% (para 0025) (overlaps claimed amount, thus renders it obvious). The motivation for adding 0.05-5 wt% lithium difluorophosphate is to improve the low-temperature output and high-temperature cycle characteristics, while minimizing side reactions and to prevent swelling after high-temperature storage (para 0024, 0068). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to include 0.05-5 wt% lithium difluorophosphate to improve the low-temperature output and high-temperature cycle characteristics, while minimizing side reactions and to prevent swelling after high-temperature storage. In addition to having lithium difluorophopshate in 0.05-5 wt% (para 0025), the motivation for adding the prescribed amount additionally shows that the amount added is a result effective variable – as less than 0.05 wt% may provide insignificant improvement to the low-temperature output and high-temperature cycle characteristics, and more than 5 wt% increases side reactions in the electrolyte solution decreasing the lifetime and resistance characteristics of the battery (para 0024). Claimed ranges of a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result, which is different in kind and not merely in degree from the results of the prior art. (MPEP 2144.08). Discovery of optimum of result effective variable in known process is ordinarily within the skill of art. (In re Boesch, 205 USPQ 215 (CCPA 1980).) Selection of optimum ranges within the prior art's general condition is obvious. (In re Aller, 105 USPQ 233(CCPA 1955))
As to claim 3, Ishiwatari et al. teach an electrolyte further comprising a fluorine atom-containing cyclic carbonate (cyclic carbonate which has a fluorine atom (para 0072).
As to claim 4, Ishiwatari et al. teach the content of the fluorine atom-containing cyclic carbonate is 0.01% by mass or higher and particularly preferably not more than 5% by weight by mass or less with respect to a total amount of the nonaqueous electrolyte solution (para 0075).
As to claim 7, Ishiwatari et al. teach a nonaqueous electrolyte battery, comprising: a positive electrode and a negative electrode, which are capable of absorbing and releasing metal ions; and a nonaqueous electrolyte solution (para 0055), wherein the nonaqueous electrolyte solution is the nonaqueous electrolyte solution according to claim 1 (see the rejection to claim 1 for Ishiwatari et al.’s teaching towards the electrolyte of claim 1, incorporated herein but not reiterated herein for brevity’s sake).
As to claim 8, Ishiwatari et al. teach wherein a positive electrode active material contained in the positive electrode is a metal oxide including LiNI1-x-yCoxMnyO2 (para 0218; note – subscripts appear more clearly in the foreign language document) (although the bounds of x, y, and z are not set in Ishiwatari et al.’s teaching, at the very least, it would overlap the ranges of the claimed formula, as it requires the same elements within the composition (i.e. wherein M claimed is Mn, and wherein x, y in Ishiwatari et al. are both 0.25) (note: claimed is Lia1Nib1Coc1Md1O2 (1) wherein, al, b1, c1, and d1 represent numerical values of 0.90≤a1≤1.10, 0.50≤ b1≤ 0.98, 0.01≤c1≤0.50, and 0.01≤ d1≤ 0.50, satisfying b1 + c1 + d1 = 1, and M represents at least one element selected from the group consisting of Mn, Al, Mg, Zr, Fe, Ti, and Er). (“In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” See MPEP §2144.05(I).)
As to claim 9, Ishiwatari et al. teach wherein the negative electrode comprises a negative electrode active material that comprises metal particles alloyable with Li, and a graphite (combination of active material A can be used, including silicon based materials, such as silicon or silicon oxide, tin-based materials, and graphite (para 0157, 0158-0159, 0165-0166).
As to claim 10, Ishiwatari et al. teach the metal particles alloyable with Li are metal particles comprising at least one metal selected from the group consisting of Si, Sn, As, Sb, Al, Zn, and W (Si and Sn appreciated (para 0165-0166).
As to claim 11, Ishiwatari et al. teach the metal particles alloyable with Li are composed of Si or Si metal oxide (para 0165).
As to claim 12, Ishiwatari et al. teach wherein the negative electrode active material that comprises the metal particles alloyable with Li and the graphite is a composite and/or a mixture of metal particles and graphite particles (as both combinations are appreciated. (para 0157, 0158-015, 0165-0166).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishiwatari et al. in view of Lim et al., as applied to claims 1, 7, and 9, above, and further in view of US 20170317380 (Takijiri et al.).
As to claim 13, Ishiwatari et al. do not teach the content of the metal particles alloyable with Li is 0.1% by mass or higher and 25% by mass or less with respect to a total amount of the negative electrode active material that comprises the metal particles alloyable with Li and the graphite.
However, Takijiri et al. teach of a mixture of silicon oxide (metal particles alloyable with Li, specifically a silicon metal oxide version) with graphite as an active material wherein the silicon oxide is 1-20% weight of the active material (para 0031) (lies within claimed range). The motivation for having a mixture of silicon oxide (metal particles alloyable with Li, specifically a silicon metal oxide version) with graphite as an active material wherein the silicon oxide is 1-20% weight of the active material is to improve battery capacity, input-output characteristics, and cycle characteristics. Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to having a mixture of silicon oxide (metal particles alloyable with Li, specifically a silicon metal oxide version) with graphite as an active material wherein the silicon oxide is 1-20% weight of the active material (as taught by Takijiri et al. and applied to Ishiwatari et al.) to improve battery capacity, input-output characteristics, and cycle characteristics.
Response to Arguments
Applicant's argument and declaration filed December 31, 2025 have been fully considered but they are not persuasive.
Applicant argues that Lim renders obvious the addition of lithium difluorophosphate in 0.05-5 wt% and not the claimed 0.01 to 3 mass % together with 0.1-2.0 mass% of
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(compound 2), 0.1-1.5 mass% of vinylene carbonate, and compounds 3,5, and 4 in their prescribed amount, as well as a mixture of saturated cyclic carbonate and 2 or more linear carbonate having 2-3 carbon atoms regarding an improvement in gas generation and that such a result cannot be predicted.
Examiner respectfully disagrees. Lim et al. teaches a combination of lithium difluorophosphate with vinylene carbonate and a sultone-based compound (similar to compound 2, having one sulfonate group rather than two) for low-temperature output characteristics, high-temperature cycle characteristics, output characteristics after high-temperature storage, and swelling (abs). Swelling is indicative of gas evolution, showing that the gas generation improvement is expected. Expected beneficial results are evidence of obviousness (see MPEP 716.02(c)(II)). Additionally, example 1-9 is the only example having fluorophosphate. Accordingly, MPEP 716.02(d)(II) is not met (as sufficient testing within and outside the claimed range is not shown). Accordingly, the data in the disclosure does not provide any proof that the claimed invention (all materials together) provide an unexpected result (over for example, what Lim provides). For non-limiting example, would the same results be observed if a mixture of saturated cyclic carbonate and 2 or more linear carbonate having 2-3 carbon atoms is not present? Is the swelling/gas generation decrease a result of having difluorophosphate, vinylene carbonate, and a sultone-based compound (i.e. a compound with a sulfonate group) – which is within Lim et al.’s expectations? Examiner suggests Applicant review MPEP 716.02 in full to see the burden that must be met to show unexpected results. Additionally, Examiner would like to set forth that reasons for adding all of the compounds disclosed in Ishiwatari is also set forth in the rejection above; see pp 6-8, incorporated herein but not reiterated herein. It is unclear why the claimed invention (which teaches what benefit each component of the mixture adds) unobvious over the prior art. Thus, the arguments are not persuasive, and the rejection of record is maintained.
Regarding the December 31, 2025 Declaration and pp 5-6 of the remarks:
Applicant argues that the December 31, 2025 Declaration shows unexpected results, specifically shown in Table A – additional example 2 and additional comparative example 2 differs by an amount of compound 5 (lithium difluorophosphate), 1.20 mass% and 4 mass %, respectively, which leads to a difference in internal resistance (103 vs 99) (p 5 of the remarks; section 4 of the December 31, 2025 Declaration).
Examiner respectfully disagrees. Examiner submits that a statement that a difference between 103 and 99 is small (difference of 4, about a 4% difference). It is unsure why this difference is significant. Applicant has the burden of showing/explaining that the results are unexpected. See MPEP 716.02(b). Thus, the arguments are not persuasive, and the rejection of record is maintained.
Applicant argues that Additional Comparative Example 5 and Additional Comparative Example 6 is inferior in ratio of internal resistance increase rate compared to example 1-9 (at 100 vs 99 of additional example 2), wherein such a small difference is significant for high temperature storage (exponential difference over time) (remarks p 5; December 31, 2025 Declaration section 5). Thus, the arguments are not persuasive, and the rejection of record is maintained.
Examiner respectfully disagrees. No data has been shown regarding exponential differences given one data point at 60 degrees C for 168 hours. Thus, MPEP 716.02(b) has not been met. Examiner suggests Applicant review MPEP 716.02 in full to see the burden that must be met to show unexpected results. Thus, the arguments are not persuasive, and the rejection of record is maintained.
Applicant argues Table A shows criticality of the composition in the recited ranges and performance regarding gas generated during charged storage and low ratio of internal resistance not within the comparative examples, wherein criticality/performance could not have been predicated by Ishiwatari and Lim (remarks p6; December 31, 2025 Declaration section 6).
Examiner respectfully disagrees. Regarding the gas generation, Lim at the very least suggests that a combination of multiple components in the claimed composition leads to decreased swelling (abs). Examiner suggests Applicant review MPEP 716.02 in full to see the burden that must be met to show unexpected results. Thus, the arguments are not persuasive, and the rejection of record is maintained.
Applicant argues that Ishiwatari never discloses/suggests that the addition of difluorophosphate salt and thus could not predict a reduction in gas generated, addressing Ishiwatari in view of Lim.
Examiner respectfully disagrees. Lim et al. teaches a combination of lithium difluorophosphate with vinylene carbonate and a sultone-based compound (similar to compound 2, having one sulfonate group rather than two) for low-temperature output characteristics, high-temperature cycle characteristics, output characteristics after high-temperature storage, and swelling (abs). Swelling is indicative of gas evolution, showing that the gas generation improvement is expected. Expected beneficial results are evidence of obviousness (see MPEP 716.02(c)(II)). Thus, the arguments are not persuasive, and the rejection of record is maintained.
Applicant reiterates the previous arguments to the rejection (pp5-6 of the remarks; December 31, 2025 Declaration).
Examiner submits that Declaration has been addressed in full above. Those responses are incorporated herein but are not reiterated herein for brevity’s sake.
Applicant argues that no motivation is present to derive the composition of claim 1.
Examiner respectfully disagrees. Obviousness (regarding the overlapping ranges) has been set forth in the rejection above. Additionally, motivation for combining Lim et al. has been set forth. See the rejection to claim 1 for full details of the combination, incorporated herein but not reiterated in full herein for brevity’s sake. Motivation regarding the combination with Lim et al. is set forth herein.
“The motivation for adding 0.05-5 wt% lithium difluorophosphate is to improve the low-temperature output and high-temperature cycle characteristics, while minimizing side reactions and to prevent swelling after high-temperature storage (para 0024, 0068). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to include 0.05-5 wt% lithium difluorophosphate to improve the low-temperature output and high-temperature cycle characteristics, while minimizing side reactions and to prevent swelling after high-temperature storage. In addition to having lithium difluorophopshate in 0.05-5 wt% (para 0025), the motivation for adding the prescribed amount additionally shows that the amount added is a result effective variable – as less than 0.05 wt% may provide insignificant improvement to the low-temperature output and high-temperature cycle characteristics, and more than 5 wt% increases side reactions in the electrolyte solution decreasing the lifetime and resistance characteristics of the battery (para 0024). Claimed ranges of a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result, which is different in kind and not merely in degree from the results of the prior art. (MPEP 2144.08). Discovery of optimum of result effective variable in known process is ordinarily within the skill of art. (In re Boesch, 205 USPQ 215 (CCPA 1980).) Selection of optimum ranges within the prior art's general condition is obvious. (In re Aller, 105 USPQ 233(CCPA 1955))”
Thus, the argument is not persuasive, and the rejection of record is maintained.
Applicant argues that the dependent claims are distinct from the prior art of record for the same reason as the independent claim.
Examiner respectfully disagrees. The rejection with respect to the independent claim has been maintained, and thus the rejections to the dependent claims are maintained as well.
With respect to the arguments regarding the 103 rejections, Applicant argues that the prior art used to render obvious the rejected claims (Takijiri) do not cure the deficiencies of the rejection applied to the independent claim (Ishiwatari). Applicant does not argue how the combination is not proper. Therefore, the Examiner maintains the obviousness rejections and upholds the rejection to the independent claim, as above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENIA WANG whose telephone number is (571)272-4942. The examiner can normally be reached a flex schedule, generally Monday-Thursday 5:30 -7:30(AM) and 9:00-4:30 ET.
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/EUGENIA WANG/Primary Examiner, Art Unit 1759