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 Arguments
Applicant's arguments filed October 14, 2025 have been fully considered but they are not persuasive.
Here, the applicant asserts that neither Dou nor Egorov teach a known result of DCB as a dinitrile compound to reduce thickness of a film or battery. Here, the applicant asserts that a dinitrile compound having an alkenylene group as a linker between dinitrile groups would have different properties than a dinitrile compound having an alkylene group as a linker between two dinitrile groups. Here, this argument is moot, as neither Dou nor Egorov is relied upon for the office action presented herein.
Further the applicant asserts that in regards to their declaration, that the superior thickness increase rate and capacity prevention rate provided by the specific features of the claimed invention are unexpected in view of the prior art and are commensurate with the claim scope.
This argument has been fully considered but has not been found to be persuasive. As discussed below in the response to amendment, the examples presented by the applicant as demonstrating unexpected results are not commensurate in scope with the claims.
Additionally, in regards to the assertion that neither Cho nor Schmidt teach a combination of DCB and a combination of DCB and the formula of the compound represented by formula 1a, let alone in a weight ratio of 1:0.1 to 1:0.5, wherein the SCB is included in an amount of 1-3 wt%, this argument has been fully considered but has not been found to be persuasive.
Neither Cho nor Schmidt is relied upon as individually teaching the combination. Rather, the combination of Cho and Schmidt is relied upon as teaching the combination. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Additionally, as presented in the rejection contained herein, Cho and Schmidt establish a prima facie case of obviousness in regards to the claimed features, presented below.
Response to Amendment
The declaration under 37 CFR 1.132 filed October 14, 2025 is insufficient to overcome the rejection of claim 1 based upon Cho (US 20080020287 A1), in view of Schmidt (US 20180034106 A1), Dou (US 20200176817 A1), and Egorov (US 20140342242 A1), and in further view of Jeon (US 20120196191 A1) as set forth in the last Office action because:
The affidavit presents that examples 1-4 of the present invention, having 1-4-DCB in an amount of 1-3 weight percent, and the compound of formula 1a in a weight ratio of 1:0.1 to 1:0.5 along with additional additives for SEI formation show lower thickness increase rate and higher capacity retention compared to examples 9-14 and comparative examples 3-4, specifically showing a much lower increase rate and much higher capacity retention.
Additionally, the affidavit presents that the type/amount of the lithium salt and the organic solvent used in the electrolyte solution to not have an impact on thickness increase rate and capacity retention compared to the use/amounts of DCB and the compound of formula 1a.
This assertion by the declarant is insufficient to establish a finding of unexpected results, as the declaration is not commensurate in scope with the claims. As claimed, the second additive is selected from the group consisting of a cyclic carbonate-based compound, a halogen-substituted carbonate-based compound, a sultone-based compound, and a borate based compound. In comparison, the examples presented by the applicant as demonstrating unexpected results, examples 1-4, make use of specifically 0.5 grams of vinyl ethylene carbonate, 4 grams of 1,3-propane sultone, 7 grams of fluoroethylene carbonate, and 0.5 grams of lithium difluoro(oxalate)borate as an additive for forming an SEI.
The specific content and identity of these additives is significantly more limited in scope than the claimed invention. Accordingly, no establishment of unexpected results has been made, as the examples are not commensurate in scope with the claims, as defined by MPEP section 716.02(d): “ Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range.”). There is no indication that the results shown by the declarant would be consistent across the full scope of options presented in claim 1, as examples 1-4 are limited to a specific content of specific chemical compounds that are used as the second additive. The scope of “a group consisting of a cyclic carbonate-based compound, a halogen-substituted carbonate-based compound, a sultone-based compound, and a borate-based compound” is larger than the specifically used 0.5 grams of vinyl ethylene carbonate, 4 grams of 1,3-propane sultone, 7 grams of fluoroethylene carbonate, and 0.5 grams of lithium difluoro(oxalate)borate, and no indication is made that the second additives used in the examples would mean that any cyclic carbonate-based compound, a halogen-substituted carbonate-based compound, a sultone-based compound, and a borate-based compound would have unexpected effects.
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, 8, and 10 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 1 recites the limitation "the group consisting of..." in line 13 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claims 7, 8, and 10 are indefinite as a result of their dependence on indefinite claim 1.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cho (US 20080020287 A1), in view of Schmidt (US 20180034106 A1).
Regarding Claim 1, Cho is an analogous art to the instant application, disclosing a nonaqueous electrolyte (Abstract, “Disclosed is an additive for a non-aqueous electrolyte, which is a compound having a double bond and at least two cyano groups, the two cyano groups being in a trans-formation to the double bond. Also, a non-aqueous electrolyte comprising the additive and an electrochemical device comprising the non-aqueous electrolyte are also disclosed.”) for a lithium secondary battery (Paragraph 0038 – “Preferably, the electrochemical device is a secondary battery. A lithium secondary battery including a lithium metal secondary battery, lithium ion secondary battery, lithium polymer secondary battery or lithium ion polymer secondary battery is more preferred.”). Here, Cho further discloses structure wherein the non-aqueous electrolyte solution comprises a lithium salt (Paragraph 0031, “Particularly, a lithium salt is preferred.”), an organic solvent (Paragraph 0015, “Also, the present invention provides a non-aqueous electrolyte comprising: an electrolyte salt; an organic solvent;”), and a first additive (Paragraph 0048, “and 5 wt % of 1,4-dicyano-2-butene (Formula 2) were added to the solution to provide an electrolyte.”). Additionally, Cho discloses structure which comprises a second additive, their solvent comprising a plurality of cyclic carbonate-based compounds (Paragraph 0032, “Particular examples of the organic solvent include cyclic carbonates,”; Paragraph 0033, “Particular examples of the cyclic carbonates include…”) which are a second additive. Here, it is noted that the language of the instant claim which states “further comprising at least one second additive for forming a solid electrolyte interphase (SEI)” represents intended use.
Additionally, Cho discloses structure wherein the first additive comprises 1,4-dicyano-2-butene (Paragraph 0028, “Particularly, the additive is a compound represented by the above Formula 1 and having a double bond and at least two cyano groups, the cyano groups being in a trans-formation to the double bond. Non-limiting examples of the compound include 1,4-dicyanobutene,”; Paragraph 0048, “and 5 wt % of 1,4-dicyano-2-butene (Formula 2) were added to the solution to provide an electrolyte.”).
Additionally, in regards to the limitation of the instant claim which requires a compound which is represented by Formula 1a, Cho fails to disclose said structure. Accordingly, we look to Schmidt, which is an analogous art to the instant application, disclosing an electrolyte composition (Abstract, “The invention concerns an electrolyte composition,”) which comprises a compound represented by formula 1a (Paragraph 0098, “4-(Fluorodimethylsilyl)butanenitrile is very particularly preferred. This compound corresponds to the formula IIIa”), represented below:
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Here, the compound IIIa of Schmidt comprises structure which matches the compound represented by Formula 1a of the instant claim.
Here, Schmidt discloses that the silane solvent, reduces the corrosion of aluminum (Paragraph 0118, “It is found that the silane solvent reduces the corrosion of the aluminum.”) as well as a reduces the irreversible capacity of a battery comprising the silane solvent compared to one which does not (Paragraph 0120, “The irreversible capacity is determined by taking the difference in capacity between the first and the second charging. This irreversible capacity has a value of: [0121] 21% with the comparative electrolyte without silane solvent; and [0122] 15% with the electrolyte of the invention with silane solvent.”), as well as disclosing an increase in the capacity as a result of the addition of the silane solvent (Paragraph 0123, “Consequently, the capacity of the Li-ion battery is increased by 6% by virtue of the addition of the silane solvent to the electrolyte.”). Accordingly, based on these benefits, it would be obvious to one ordinarily skilled in the art to implement the silane-based solvent in the invention of Cho thereby producing structure which meets the requirements of the instant claim in regards to Formula 1a.
Here, Cho further discloses the presence of the DCB within a range of 0.01 to 10 weight percent (Paragraph 0029, “The additive is used in the non-aqueous electrolyte in a controlled amount to improve the overall quality of an electrochemical device. Preferably, the additive may be used in an amount of 0.01 [to about] 10 wt % in the non-aqueous electrolyte.”), specifically disclosing an embodiment which comprises 5 weight percent (Paragraph 0048, “and 5 wt % of 1,4-dicyano-2-butene (Formula 2) were added to the solution to provide an electrolyte.”). Accordingly, though Cho fails to specifically disclose structure which reads upon the limitation of the instant claim, which requires structure wherein the weight percentage of the DCB is from 0.5% to 3%, Cho discloses an encompassing range. Here, where an encompassing range is disclosed by the prior art, a prima facie case of obviousness exists, as per MPEP section 2131.03, which reads: “When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with "sufficient specificity" to constitute an anticipation of the claims. Compare ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).”).
Accordingly, the encompassing range of Cho, which is 0.01 to 10 wt%, presents a prima facie case of obviousness for the 1-3 wt% range of the instant claim.
Here, in regards to the limitation of the instant claim which requires structure wherein a weight ratio of the DCB to the compound represented by Formula 1a is in a range of 1:0.1 to 1:0.5, Schmidt discloses that the content of the silane solvent which is the compound represented by formula 1a (which is Schmidt’s formula 3a) may be 0.5 to 5.0 percent by weight (Paragraph 0043, “According to one embodiment, the concentration by weight of solvent of formula (I) in the composition is from 0.5 to 5%.”; Paragraph 0041, “According to one embodiment, the solvent of formula (I) is more specifically of formula (IIIa):”). Additionally, as Cho discloses that the preferred composition which comprises their solvent which is the compound of formula 1a is a composition which comprises multiple solvents (Paragraph 0055, “The electrolyte of the invention comprises one or more lithium salts and one or more solvents.”), it would be obvious to one ordinarily skilled in the art to select the minimum content of each solvent that demonstrates beneficial effects (Paragraph 0050, “It has in particular been discovered that the use of a solvent of silane type in combination with LiFSI makes it possible to eliminate problems of corrosion due to impurities present in the LiFSI and, in the case of a LiFSI of high purity, to accelerate the formation of the passivation layer on the metal of the cathode.”; “Paragraph 0051, It has also been discovered that, in a case of LiTDI, the addition of solvent of silane type makes it possible to reduce the irreversible capacity of the Li-ion battery.“), so as to achieve the beneficial effects of each of the one or more solvents in the composition. Therefore, this disclosure of Schmidt therefore makes obvious a composition which comprises 0.5 percent by weight of the compound represented by formula 1a.
Here, where the combined composition of Schmidt, and Cho comprises 0.5 weight percent of the compound represented by the instant claim’s formula 1a, and makes obvious a DCB range of 1-3 wt% via a prima facie case of obviousness, the combined art therefore reads upon and makes obvious structure where 1-3 wt% percent to 0.5 weight percent is a ratio of 1:0.5 to 1:0.16, which falls within the range of the instant claim, being between 1:0.1 and 1:0.5.
Additionally, in regards to the second additive Cho discloses structure wherein the solvent comprises a plurality of cyclic carbonate-based compounds (Paragraph 0032, “Particular examples of the organic solvent include cyclic carbonates,”; Paragraph 0033, “Particular examples of the cyclic carbonates include…”). Here, Cho further discloses a specific embodiment which comprises an organic solvent containing ethylene carbonate and ethyl methyl carbonate (Paragraph 0048, “To an organic solvent containing ethylene carbonate (EC) and ethyl methyl carbonate (EMC) in a ratio of 1:2 (EC:EMC, v/v),”). Here, where the instant claim requires structure where the non-aqueous electrolyte comprises a second additive, it can be understood that of the two ingredients of the solvent, one can be identified as the solvent, where the other is an additive in the solvent. Here, it is noted that the language of the instant claim which states “further comprising at least one second additive for forming a solid electrolyte interphase (SEI)” represents intended use.
Regarding Claim 10, Cho discloses structure which comprises a lithium secondary battery comprising a lithium secondary battery (Paragraph 0038, “Preferably, the electrochemical device is a secondary battery. A lithium secondary battery including a lithium metal secondary battery, lithium ion secondary battery, lithium polymer secondary battery or lithium ion polymer secondary battery is more preferred.”) comprising a positive electrode including a positive electrode active material (Paragraph 0049, “As a cathode active material, LiCoO.sub.2 was used.”), a negative electrode including a negative electrode active material (Paragraph 0050, “As an anode active material, artificial graphite was used.”), and a separator disposed between the negative electrode and the positive electrode (Paragraph 0051, “A polyolefin-based separator was inserted between the cathode and the anode to provide an electrode assembly,”), and the non-aqueous electrolyte solution made obvious by modified Cho as in regards to Claim 1 (Paragraph 0051, “and the above non-aqueous electrolyte was injected to the electrode assembly”).
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cho (US 20080020287 A1), in view of Schmidt (US 20180034106 A1), as applied to Claim 1 above, in further view of Cho (US 20190148776) (Referred to hereafter as Cho-2019, for the purpose of clarity).
Regarding Claim 7, modified Cho makes obvious the invention of Claim 1. Additionally, in regards to the limitation of the instant claim which requires structure wherein the first additive further comprises 1,3,6-hexane tricarbonitrile (1,3,6-HTCN), though Cho fails to disclose said structure. Accordingly, we look to Cho-2019, which is an analogous art to the instant application, disclosing structure which comprises a lithium battery comprising a non-aqueous electrolyte (Abstract, “A lithium battery includes: a cathode having a mixture density of 3.9 g/cc or greater; an anode; and an electrolyte including a non-aqueous organic solvent”). Here, Cho-2019 discloses structure which comprises 1,3,6-hexanetricarbonitrile as a second additive (Paragraph 0102, “and 2.0 wt % of 1,3,6-hexanetricarbonitrile (1,3,6-HTCN) was further added thereto as the second additive.”) in their battery’s electrolyte.
Here, Cho-2019 discloses structure wherein the second additive is a hydrocarbon comprising three cyano groups, which improves the stability of the lithium battery (Paragraph 0049, “The second additive that is a hydrocarbon compound including three cyano groups (CN groups) may improve the stability of the lithium battery by reducing a degree of thickness variation of the lithium battery at a high temperature.”). Additionally, Cho-2019 further discloses that the presence of 1,3,6-HTCN results in a higher discharge capacity retention rate compared to an embodiment where it is not present, which results in an improved battery lifespan (Paragraph 0133, “Thus, it may be confirmed that the lithium battery prepared according to Example 5 (where the electrolytes include 1,3,6-HTCN as the second additive) had a higher discharge capacity retention rate than the lithium battery prepared according to Example 6 (where the electrolyte does not include the second additive), thereby having improved lifespan characteristics at a high temperature (45° C.).”). Accordingly, based on this benefit it would be obvious to one ordinarily skilled in the art to make use of the 1,3,6-HTCN additive of Cho-2019 as a second additive in the electrolyte of Cho.
Regarding Claim 8, modified Cho makes obvious the invention of Claim 8. Additionally, Cho-2019 discloses structure where the 1,3,6-hexane tricarbonitrile is present in an amount of 3 weight percent or less based on a total weight of the non-aqueous electrolyte solution, disclosing structure where the compound is within a weight range of 0.5 to 2 weight percent, based on a total weight of the electrolyte (Paragraph 0052, “An amount of the second additive may be from 0.5 to 5 wt %, for example 0.5 to 4 wt %, for example 0.5 to 3 wt %, or for example 0.5 to 2 wt %, based on the total weight of the electrolyte.”), as well as disclosing a specific embodiment where 1,3,6-HTCN is present in a weight percentage of 2 weight percent (Paragraph 0102, “and 2.0 wt % of 1,3,6-hexanetricarbonitrile (1,3,6-HTCN) was further added thereto as the second additive.”).
Conclusion
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/J.W.E./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725