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
The amendment filed on 12 February 2026 has been entered. Claims 1, 2, 8, and 13 are amended. Claims 8-18 remain withdrawn from consideration, and claims 1-7 are examined herein.
The previous rejections relying upon Wang et al. as a primary reference are withdrawn due to Applicant’s amendment.
The previous rejection under 35 USC 102(a)(1) as anticipated by Kawakami et al. is withdrawn due to Applicant’s amendment.
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 1-7 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.
Regarding claim 1, the shift to using the closed transitional phrase, “consisting essentially of” in the claim preamble (Line 1), in combination with open “comprises” language for limiting the solvent (Line 27) and disclosure pertaining to the solvent in the specification renders it unclear precisely what compounds may be present in the solvent while falling within the scope of the claim. As the applicant points out in the remarks of 12 February 2026, the transitional phrase “consisting essentially of” is understood to exclude any additional items that materially affect the basic and novel characteristics of the claimed invention. [Remarks p. 17, see also MPEP 2111.03(III)] The instant disclosure involves formation of a protective film as part of the basic and novel characteristics of the invention (e.g. [0046]) It is further noted that one disclosed possible solvent component (to which the limitation of Claim 1, line 27 is presumably open), an aromatic fluorine-containing solvent, is disclosed as taking part in forming a protective film. ([0066]) Given this disclosure, it is unclear whether claim 1 is to be considered open to such additional solvent components that contribute to the protective film-forming attributes of the claimed invention. If the claim is to be considered so open, what additional solvent components would be excluded by the “consisting essentially of” transitional phrase?
In addition, in line 22 of claim 1, there is unclear antecedent basis for “the groups”. It is not clear whether this refers to all earlier recited groups or just those in the immediately preceding clause at lines 17-21 of the claim (i.e. limiting R15 and R16)
In addition, in line 25 of claim 1, there is no clear antecedent basis for “the heteroatom”. There are several earlier recitations of heteroaryl or heteroarylene groups, but it isn’t clear if this is intended to refer to an atom within some or all of these groups, or to something else.
Claims 2-7 depend from claim 1 and are indefinite for the same reasons.
Regarding claim 2, with the current amendment, claim 1 has been amended to recite an electrolyte “consisting essentially of . . . a compound of formula I . . .”. This would be understood to limit the claim to one compound of formula 1. Claim 2 recites an electrolyte according to claim 1 “wherein the compound of formula 1 comprises at least one of the following compounds . . .” This is inconsistent with claim 1 as amended.
Regarding claim 3, with the current amendment, claim 1 has been amended to recite an electrolyte “consisting essentially of . . . a compound of containing sulfur-oxygen double bonds; . . .”. This would be understood to limit the claim to one such compound. As an initial matter, claim 3 is indefinite because it is unclear whether “further comprising a compound containing sulfur-oxygen double bonds” is referring to the same compound already recited or to an additional such compound. In addition, claim 3 recites that “the compound containing sulfur-oxygen double bonds is a compound of formula (II-A), a compound of formula (II-B), or a combination of the compounds: . . .” (italics added) This is inconsistent with claim 1 as amended, which is limited to one such compound.
Regarding claim 4, with the current amendment, claim 1 has been amended to recite an electrolyte “consisting essentially of . . . a compound of containing sulfur-oxygen double bonds; . . .”. This would be understood to limit the claim to one such compound. Claim 3 recites that “the compound containing sulfur-oxygen double bonds comprises at least one of the following compounds . . .” (italics added) This is inconsistent with claim 1 as amended, which is limited to one such compound.
Regarding claim 5, the claim recites an electrolyte according to claim 1, “further comprising a cyclic carbonate compound”. It is unclear whether this is the same cyclic carbonate compound already recited in line 27 of claim 1, or an additional cyclic carbonate compound. Claims 6 and 7 depend from claim 5 and are indefinite for the same reason.
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.
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 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami et al. (JP 2018-163867A)
Regarding claim 1, Kawakami et al. discloses an electrolyte including an electrolyte (i.e. a lithium salt) ([0011] and [0221]), a non-aqueous solvent [0011], a fluorine-containing cyclic carbonate [0011], a compound represented by the formula R1-O-R2-CN [0012], further containing at least one compound selected from a group consisting of several members including a sulfur-containing organic compound, organic compound having a cyano group other than that represented by the formula given above, and several other members. ([0017])
Kawakami et al. further teaches that the organic compound having a cyano group can be a compound of formula 2-4-3 ([0095], p30, [0106] of original document; machine translation [0107]-[0110] describes formula 2-4-3). Examples of compounds of formula 2-4-3 are listed in Fig. 19 of p37 of the original document, with a subset reproduced below, and wherein in the reproduced and annotated figure, the circled species A, B, and C represent claimed species of formula 1.
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These compounds correspond to instant formula 1 with R11 being a covalent bond, R12 and R13 being C2 or C3 alkylidene groups, and R14 being either substituted C3 alkylidene or substituted C3 alkenylene groups, with substituents that are alkyl groups. Notwithstanding the 112b rejection above concerning the antecedent basis for “the groups”, note that [0023] of the instant specification includes “arbitrarily substituted” alkyl groups with the definition of “alkyl group” relied upon in the application, which is understood to include, e.g. 2-cyanoethyl or 2-cyanopropyl substituents.
Kawakami et al. further teaches that the sulfur-containing organic compound can be a compound containing sulfur-oxygen double bonds, including examples of chain sulfonate esters (e.g. methyl methanesulfonate), cyclic sulfonate esters (e.g. 1,3-propane sultone), chain sulfate esters (e.g. 1,2-ethylene sulfate), and cyclic sulfates (e.g. dimethyl sulfate), and combinations thereof (machine translation [0078]-[0080], [0083], [0087])
Kawakami et al. does not specifically teach a composition consisting essentially of a solvent, lithium salt, compound of formula 1, and a compound containing sulfur-oxygen double bonds.
Based on the teachings cited above, due to the direct suggestion of an electrolyte composition in paragraphs [0011]-[0017], it would have been obvious to one having ordinary skill in the art at the time the invention was made to have provided an electrolyte including specifically a lithium salt, a compound comprising sulfur-oxygen double bonds, a compound represented by the formula R1-O-R2-CN, and a fluorine containing cyclic carbonate, for example, in order to provide an electrolyte having improved charge/discharge efficiency and rate characteristic after a high-temperature storage durability test, as well as reduced gas generation. [0020]
Within such an electrolyte, the solvent can be considered to comprise the fluorine-containing cyclic carbonate and the compound represented by the formula R1-O-R2-CN, which would appear to meet the claim as best understood.
Regarding claim 3, Kawakami teaches the electrolyte of claim 1 and further teaches the electrolyte further comprises a compound containing sulfur-oxygen double bonds comprising the claimed compounds, including examples of chain sulfonate esters (e.g. methyl methanesulfonate is a claimed species of II-A), cyclic sulfonate esters (e.g. 1,3-propane sultone is a claimed species of II-B), chain sulfate esters (e.g. 1,2-ethylene sulfate is a claimed species of II-A), and cyclic sulfates (e.g. dimethyl sulfate is a claimed species of II-B), and combinations thereof (machine translation [0079], [0080], [0083], [0087]). Kawakami teaches the content of the compound can be 0.01% by mass or more and 10% by mass or less (machine translation [0087]), which meets the claimed range.
Regarding claim 4, Kawakami teaches the electrolyte of claim 3 and further teaches the compound containing sulfur-oxygen double bonds comprising at least one of the claimed species ([0080], [0083], [0087] lines 1-2). Specific examples include 1,3-propane sultone (II-11), 1-fluoro-1,3-propane sultone, 2-fluoro-1,3- propane sultone, and 3-fluoro-1,3-propane sultone (II-18 through II-20), 1-methyl-1,3-propane sultone, 2-methyl-1,3-propane sultone, and 3-methyl-1,3-propane sultone (II-12 through II-14), 1,4-butane sultone (II-17), methylenemethane disulfonate (II-21), and 1,2-ethylene sulfate (II-16).
Regarding claim 5, Kawakami teaches the electrolyte of claim 1 and further teaches the solvent comprises a cyclic carbonate compound comprising a compound of formula III, such as monofluoroethylene carbonate, 4,4-difluoroethylene carbonate, and 4,5-difluoroethylene carbonate (machine translation [0016], [0048]-[0049]).
Regarding claim 6, Kawakami teaches the electrolyte of claim 5 and further teaches wherein based on a total weight of the electrolyte, the content of the cyclic carbonate compound is 0.01% by mass or more and 10% by mass or less (machine translation [0050]), which is within the claimed range.
Regarding claim 7, Kawakami teaches the electrolyte of claim 5, and further teaches the cyclic carbonate compound comprises at least one of the following compounds monofluoroethylene carbonate (III-1) and 4,5-difluoroethylene carbonate (III-8) (machine translation [0016], [0048]-[0049], [0050] lines 1-2).
Response to Arguments
Applicant's arguments filed 12 February 2026 have been fully considered but they are not fully persuasive.
The examiner agrees that the previous rejections based on anticipation of the claims by Kawakami et al. and Wang et al. have been overcome by the amendment. The examiner further agrees that Kawakami requires a compound represented by the formula R1-O-R2-CN as part of their electrolyte. However, for reasons described above, it is not clear that the current claim language excludes such a compound, as argued by applicant. It is the examiner’s position based on the totality of the record that the R1-O-R2-CN compound might reasonably be considered part of a solvent that comprises a cyclic carbonate compound, a compound represented by the formula R1-O-R2-CN, and potentially other solvent components. This is particularly the case due to solvent components disclosed by Applicant (e.g. an aromatic fluorine-containing solvent [0066]) that appear to contribute to the protective film-forming attributes of the electrolyte that seem to be part of the advantages of the instantly claimed invention. Such film formation is similarly attributed to Kawakami’s compound represented by the formula R1-O-R2-CN (Kawakami [0025]). It would seem inconsistent to argue that the current claim language excludes Kawakami’s R1-O-R2-CN compound from the solvent while being open, e.g. to a film-forming aromatic fluorine-containing solvent as disclosed by applicant.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Barton, whose telephone number is (571) 272-1307. The examiner can normally be reached on M-F 9:30 AM – 6:00 PM.
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/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 12 June 2026
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