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
In regards to the 112(b) rejections presented in the previous office action of record, the applicant’s arguments are persuasive, and the rejections of claims 1, 7, 8, and 10 on the grounds of indefiniteness are withdrawn.
Applicant’s arguments with respect to claim(s) 1 and 10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Specifically, in regards to the limitation directed towards the content of the second additive, this feature is addressed by Cho in view of Shi (CN 107919498 A).
In regards to the amendment to claim 1, the applicant states that the amended claim excludes LiFSI. This is incorrect, as claim 1 does not specifically include LiFSI, instead requiring a non-aqeuous electrolyte solution comprising a lithium salt, wherein the lithium salt is one selected from the group consisting of the lithium salt is one selected from the group consisting of LiCl, LiBr, LiI, LiBF4, LiClO4, LiB10Cl10, LiAlCl4, LiAlO4, LiPF6, LiCF3SO3, LiCH3CO2, LiCF3CO2, LiAsF6, LiSbF6, LiCH3SO3, LiN(SO2CF2CF3)2, LiN(SO2CF3)2), and a mixture thereof. As the solution contents are presented in a “comprising form” the list is unbounded, and in addition to the components required by claim 1, other components may also be present. Accordingly, the solution may comprise LiFSI in addition to the lithium salts presented in claim, and be in agreement with the claim.
Additionally, where the applicant asserts that the examples presented in the affidavit of 10/14/2025 are now commensurate in scope with the claimed invention, this argument has been fully considered, but is not persuasive.
The affidavit of 10/14/2025 specifically cites examples 1-4 as presenting unexpected results, presenting that they show a much lower thickness increase rate and much higher capacity retention, compared to comparative examples 3-5. Accordingly, for the purpose of determining if the examples are commensurate in scope with the claimed invention, examples 1-4 are considered.
Specifically, in regards to the second additive feature, examples 1-4 comprise second additives which are a mix of 0.5g VEC, 4g PS, 7g FEC, and 0.5g LiODFB. In comparison, amended claim 1 requires that the second additive is selected from the group consisting of VEC, PS, FEC, and LiODFB, where each of which is included in an amount of 0.5 wt% to 12 wt% based on the total weight of the non-aqueous electrolyte solution. Here, the examples all present a specific content of each additive, requiring that they all be present, while in comparison, amended claim 1 only requires that at most one of the second additives be present, and allows for contents of the second additive that are significantly different from the contents present in the examples presented in the affidavit as being evidence of unexpected results. As the affidavit’s evidence of unexpected results is directed towards thickness increase rate and capacity retention, and where the second additives are additives for forming a solid electrolyte interphase, it is considered that SEI formation is strongly linked with thickness increase rate, as the expansion of the SEI is the thickness increase in question. Additionally, where SEI formation causes a reduction in capacity, the second additive content which influences SEI formation would further affect capacity retention.
Accordingly, without any evidence or indication to the contrary, it is not clear that the trend that the affidavit presents as unexpected results would carry across the full range of claimed second additive contents. Additionally, the affidavit of 10/14/2025 comprises a statement in paragraph 6 that the additives of the composition have an impact on the thickness increase rate and capacity retention. Based on this statement, it must be considered that the additive contents presented in the examples indicated as showing unexpected results have a material effect on the thickness increase rate and capacity retention.
Accordingly, the evidence presented as demonstrating unexpected results is not commensurate in scope with the claimed invention.
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 2008/0020287 A1), in view of Schmidt (US 2018/0034106 A1), and further in view of Shi (CN 107919498 A, with EPO machine translation used for citation purposes).
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, in regards to the limitation which requires that the lithium salt is one selected from the group consisting of LiCl, LiBr, LiI, LiBF4, LiClO4, LiB10Cl10, LiAlCl4, LiAlO4, LiPF6, LiCF3SO3, LiCH3CO2, LiCF3CO2, LiAsF6, LiSbF6, LiCH3SO3, LiN(SO2CF2CF3)2, LiN(SO2CF3)2), Cho teaches the use of lithium salts (Paragraph 0031, “Particularly, a lithium salt is preferred”) with anions which include PF6-, BF4-, Cl-, I-, ClO4-, AsF6-, CH3CO2-, CF3SO3-, N(CF3SO2)2- and C(CF2SO2)3- (See paragraph 0031). Accordingly, Cho therefore teaches LiCl, LiI, LiBF4, LiClO4, LiPF6, LiASF6, LiCH3CO2, LiCF3SO3, LiN(SO2CF2CF3)2, and LiN(SO2CF3)2).
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 (Paragraphs 0120-0122, “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: 21% with the comparative electrolyte without silane solvent; and 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…”), further disclosing the use of fluoroethylene carbonate (Paragraph 0033, “fluoroethylene carbonate (FEC)”). However, Cho fails to specifically disclose a weight percentage content based on the total weight of the nonaqueous electrolyte solution. Therefore, we look to Shi, which is an analogous art to the instant application, being directed towards the art of non-aqueous electrolyte solutions for lithium secondary batteries (Abstract, “The invention discloses a lithium ion battery non-aqueous electrolyte”).
Here, Chi discloses that their electrolyte comprises an cyclic carbonate additive, including ethylene vinyl acetate and fluoroethylene carbonate (See 0015), and a cyclic sultone additive, preferably including 1,3-propane sultone (See paragraph 0016). Chi discloses that these additive as are present in a content of 0.1 to 10% relative to a total mass of the electrolyte solution (Paragraph 0032, “These additives may be added according to the usual addition amounts in the art, for example, 0.1% to 10%, preferably 1% to 5%, more preferably 3% to 5%, relative to the total mass of the electrolyte solution”). Further, Chi discloses that these additives can form a more stable SEI film on the surface of the negative electrode, thereby significantly improving cycling performance of the lithium ion battery (Paragraph 0032, “These additives can form a more stable SEI film on the surface of the graphite negative electrode, thereby significantly improving the cycling performance of the lithium ion battery.”).
Based on this disclosure of Shi, it would therefore be obvious to one ordinarily skilled in the art to add ethylene vinyl acetate, fluorethylene carbonate, or 1,3-propane sultone to the electrolyte solution of Cho, in a weight percent content of 0.1% to 10% based on a total weight of the electrolyte solution, thereby forming a more stable SEI film and improving cycling performance of the lithium battery, as well as making obvious the limitation of the instant claim.
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, though the second additives made obvious by Shi are directed towards SEI formation.
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) and (CN 107919498 A, with EPO machine translation used for citation purposes), 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/J.W.E./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725
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