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 .
CARBONATE SOLVENTS FOR NON-AQUEOUS ELECTROLYTES FOR METAL AND METAL-ION BATTERIES
Examiner: Adam Arciero S.N. 17/602,590 Art Unit: 1727 March 6, 2026
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 27, 2025 has been entered. Claims 1-6, 18, 21-22, 33, 44-45, 47, 50 and 64-66 are currently pending.
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 Rejections - 35 USC § 103
The claim rejections under 35 USC 103(a) as being unpatentable over Uchida on claims 1-6, 18, 21, 33, 45, 47, 50 and 64-66 are withdrawn because Applicant’s arguments are persuasive.
The claim rejections under 35 USC 103(a) as being unpatentable over Uchida and Kishi on claim 22 is withdrawn.
The claim rejections under 35 USC 103(a) as being unpatentable over Uchida on claims 1-6, 18, 33, 44-45, 47, 50 and 64-66 are withdrawn because Applicant’s arguments are maintained.
Claim(s) 1-6, 18, 21, 33, 44-45, 47, 50 and 64-66 is/are rejected under 35 U.S.C. 103 as being unpatentable over Amine et al. (US 2005/0227143 A1).
As to Claims 1-6, 18, 44-45, 47, 50 and 64-66, Amine discloses a magnesium-ion or sodium-ion cell, comprising: a cathode active material of a lithium composite oxide on an aluminum current collector; a graphite negative electrode; a separator membrane; and a non-aqueous electrolyte comprising a conducting salt and methyl propyl carbonate, ethyl methyl carbonate, diethylene carbonate or dipropyl carbonate as a solvent (paragraphs [0014, 0057 and 0074]). The compound taught by Amine is structurally very close to the amended compound. The courts have held that a prima facie case of obviousness exists when chemical compounds have very close structural similarities and similar utilities, see MPEP 2144.09, I. At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the compound of Amine to read on the amended claimed compound because Amine teaches that an improvement in a cell normally susceptible to damage from overcharging is provided (Abstract). Amine discloses an electrolyte without any corrosion inhibitors (paragraph [0057]). Amine teaches the same cathode material and non-aqueous electrolyte as disclosed in the original disclosure and claims of the present invention and therefore it is the position of the Office that the battery of Uchida intrinsically has the claimed upper potential limit for the cathode, the claimed “low-corrosiveness” of the electrolyte, the claimed upper voltage limit of the battery, and the claimed suppressed anodic dissolution of aluminum in the current collector, see MPEP 2112.
As to Claim 21, Amine discloses a salt such as LiBF3C2F5 or lithium tetrafluoroborate (paragraph [0031]).
As to Claim 33, Amine discloses wherein the carbonate compound of formula (I) can be the only solvent in the electrolyte (paragraph [0057]). At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the electrolyte of Amine to comprise the claimed compound as the only solvent because Amine teaches that an improvement in a cell normally susceptible to damage from overcharging is provided (Abstract).
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Amine et al. (US 2005/0227143 A1) as applied to claims 1-6, 18, 21, 33, 44-45, 47, 50 and 64-66 above and in further view of Kishi et al. (US 2006/0068282 A1).
As to Claim 22, Amine discloses lithium tetrafluoroborate as a salt (paragraph [0031]). Amine does not disclose the claimed salt.
However, Kishi teaches of a metal-ion battery comprising: an electrolyte salt of lithium tetrafluoroborate or a sulfonylamide salt (claim 10). Kishi is recognizing the use of these salts in a non-aqueous electrolyte as functionally equivalent and the courts have held that the substitution of one known element for another yields predictable results to one of ordinary skill in the art, see KSR, MPEP 2143, I, B. At the time of the invention, it would have been obvious to one of ordinary skill in the art to substitute a sulfonylamide salt for the salt of Amine because Kishi teaches that a battery having high output performances and excellent cycle performances is provided (paragraph [0012]).
Response to Arguments
Applicant’s arguments, see Remarks, filed April 27, 2025, with respect to the rejections under Uchida have been fully considered and are persuasive.
Applicant's arguments filed April 27, 2025, with respect to the rejections under Amine have been fully considered but they are not persuasive.
Applicant’s principle arguments are:
a) Amine’s silence to the presence of corrosion inhibitors does not teach having an electrolyte free of corrosion inhibiters (claim 1).
b) Amine does not teach the claimed compound or the provided advantageous effects (claims 1 and 44).
In response to Applicant’s arguments, please consider the following comments:
a) Amine provides specific examples for the electrolyte comprising diethylene carbonate (which is very close in structure to the claimed compound) for a metal-ion battery that does not comprise any corrosion inhibitors, and none of the examples comprise any corrosion inhibitors and the disclosure further does not teach the need or presence for any (paragraphs [0057 and 0074]). In the alternative, it would have been obvious to one of ordinary skill in the art to choose to not add a corrosion inhibitor because there are a finite number of known options (using a corrosion inhibitor or not) and in addition, Amine does not teach the need for any, see KSR, MPEP 2143, I, E. At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the compound of Amine to not comprise corrosion inhibitors because Amine does not teach the presence or need for any and teaches that an improvement in a cell normally susceptible to damage from overcharging is provided (Abstract).
b) Amine teaches of methyl propyl carbonate, ethyl methyl carbonate, or dipropyl carbonate as a solvent which is a carbonate compound that is very similar in structure to the claimed compound. The only difference is the methyl, ethyl or propyl group of Amine equates to the claimed R2 group. However, the courts have held that a prima facie case of obviousness exists when chemical compounds have very close structural similarities and similar utilities, see MPEP 2144.09, I. In response to applicant's argument that Amine does not recognize the claimed effects, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Applicant has not provided significant unexpected results to overcome the rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM ARCIERO whose telephone number is (571)270-5116. The examiner can normally be reached Monday-Friday 8:00-5 ET.
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/ADAM A ARCIERO/Primary Examiner, Art Unit 1727