Tar 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 .
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.
Specification
The specification and drawings have been reviewed and no clear informalities or objections have been noted.
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.
Claim(s) 3-5, 7-17 and 20-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seo (US 2016/0190650) in view of Katou (WO 2014171518A1 with references made to the machine translation).
Regarding claim 3, Seo discloses an electrolytic solution for an alkali metal ion secondary battery, the alkali metal ion secondary battery comprising a positive electrode (13) and a negative electrode (11) containing simple lithium metal (as explicitly stated in paragraph 81 which states that the anode can contain lithium metal), wherein
the positive electrode comprises at least one selected from the group consisting of an alkali metal-containing transition metal composite oxide and an alkali metal-containing transition metal phosphate compound (see paragraph 80 which give several examples of an alkali metal-containing transition metal composite oxide such as LixCoO2), and
the electrolytic solution comprises a compound represented by the following formula (1) (see formula 2 in claim 2 of Seo) and/or a compound represented by the following formula (2) (see formula 3 in claim 2 of Seo).
Seo discloses the addition of an additive to the electrolyte to assist in forming an SEI layer (see paragraph 75). However, Seo does not teach the claimed composition (fluorinated chain carbonate) in the claimed amount.
Katou also discloses a lithium ion secondary battery (see abstract).
Katou, like Seo, teaches a nonaqueous electrolyte for use in a lithium ion battery (see abstract).
Katou goes on to disclose an electrolyte that includes a fluorinated chain carbonate in an amount (0.1 to 70vol% relative to the solvent, see lines 410-421) and states that a preferred carbonate is MTFEC (2,2,2-trifluoroethyl methyl carbonate) because of its voltage resistance and conductivity (see lines 378-382). Katou teaches this electrolytic solution in its proportions in order to generate an electrolyte solution that produces a lower viscosity and an increased conductivity electrolyte while also increasing the oxidation resistance of the electrolyte (lines 410-421).
As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to add the MTFEC additive in the amount disclosed by Katou, to the electrolyte of Seo in order to generate an electrolyte solution that produces a lower viscosity and an increased conductivity electrolyte while also increasing the oxidation resistance of the electrolyte. Furthermore, while modified Seo does not explicitly teach the claimed range, it does teach an overlapping range. As such, arriving at the claimed range would have been obvious to one of ordinary skill in the art at the time of the invention. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP §2144.05(I)).
Regarding claim 4, Seo further discloses the alkali metal-containing transition metal composite oxide can be LixCoO2 (where 0.5<x<1.3, see paragraph 80) which reads on the claimed formula 3-4.
Regarding claims 5 and 8, Seo further discloses the alkali metal-containing transition metal phosphate can be LixCoPO4 (where 0.5<x<1.3, see paragraph 80) which reads on the claimed formula 4.
Regarding claims 7 and 9, Seo further discloses a module containing the secondary battery (see casing 15 and 16 which form a module to house battery cell 12,13,14).
Regarding claims 20-23, Seo further discloses the alkali metal- containing transition metal composite oxide is LiNiO2 (see paragraph 80).
Regarding claims 10-17, Seo discloses that the concentration of the organic fluorinated ether compound is between 5-70wt% of the total weight of the electrolyte but does not explicitly disclose the exact claimed range of 20-50 volume% relative to the total solvent. Due to the large overlap of the two ranges (that disclosed and that claimed), even with the discrepancy between how the concentration is measured in Seo and in the claim, there exists an overlap in the claimed range.
As such, arriving at the claimed range would have been obvious to one of ordinary skill in the art at the time of the invention. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP §2144.05(I)).
Relevant Prior Art
US 2018/0151911 – Discloses a secondary battery with a electrolyte containing the claimed ether (see paragraph 13)
US 2016/0190646 – Discloses a secondary battery with an electrolyte containing the claimed ether (paragraph 84)
US 2016/0190644 – Discloses a secondary battery with an electrolyte containing the claimed ether (paragraph 82)
US 2016/0149265 - Discloses a secondary battery with an electrolyte containing the claimed ether (see claim 14)
Response to Arguments
Applicant's arguments filed 8/21/2026 have been fully considered but they are not persuasive. On page 9, Applicant argues that there is no reason to select the claimed MTFEC from Katou. The Office respectfully disagrees with this argument. The modification of Seo is not randomly picking one of a number of options for additives presented by Katou. Katou expressly teaches that MTFEC is a preferred additive due to its beneficial effects on voltage resistance and conductivity (see lines 379-382 of Katou).
Next, on pages 9-10, Applicant argues unexpected results achieved by the claimed invention and points to examples 22 and 24 of the present application as evidence. The Office respectfully disagrees with this argument. In the examples, there is a specific amount (40%) of the carbonate in these two examples which is not commensurate in scope with the claim’s amount of carbonate present in the electrolyte (30-80% by volume). Furthermore, Applicant’s argument that the MTFEC in the claimed amount is responsible for the unexpected results is contradicted by Applicant’s examples 23 and 25 which replace the chain carbonate with an ester and still produce the same “unexpected” results. As such, this argument is not persuasive.
Finally, on page 10, Applicant argues that Seo and Katou’s teachings would enabled a person of ordinary skill in the art to predict the suppression of dendrite formation. The Office respectfully disagrees with this argument. The motivation for combining references to arrive at the claimed invention does not need to be for the reasons set forth in the instant application. See MPEP §2144(IV) which states: “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J MERKLING whose telephone number is (571)272-9813. The examiner can normally be reached Monday - Thursday 8am-6pm.
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/MATTHEW J MERKLING/Primary Examiner, Art Unit 1725
