DETAILED ACTION
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
Applicant amended claims 1, 9, and 18; with claims 2, 7, 10, and 14 being cancelled, claims 1, 3-6, 8-9, 11-13, and 15-20 are pending and considered in the present Office action.
The rejections of the claims are withdrawn in view of the amendments. However, upon further consideration a new ground of rejection is necessitated by amendment.
Applicant’s arguments with respect to the prior art of record are not persuasive for the reasons set forth below.
Response to Arguments
Applicant argues Zeng fails to suggest the concentration of the salt in the solution, making reference to “paragraph [0037] of Zeng” to point out that “Zeng merely states that a lithium hexafluorophosphate (LiPF6) solution having a concentration of 1.0 mol/L is slowly added to the mixed solvent”, thereby concluding that Zeng does not disclose the final electrolyte itself contains LiPF6 at a concentration of 1.0 mol/L. Applicant further concludes that since the concentration of the salt is not suggested, the calculations set forth in the rejection (i.e., LiPF6 salt weight percent, and EP content) are incorrect. Applicant’s arguments are not persuasive for the following reasons.
Applicant’s interpretation of Zeng is inconsistent with the machine translation provided by the examiner on 16 June 2025 (e.g., at [0042]) or how a person having ordinary skill in the art (PHOSITA) would interpret the disclosure of Zeng, as evidenced by the machine translation of Zeng.
A machine translation of Zeng was provided by the examiner along with the non-final Office action, dated 16 June 2025. This machine translation includes paragraph numbers and was obtained from Espacenet. Paragraph [0042] is provided below.
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It is apparent from paragraph [0042] (which was cited in the most recent Office action, dated 24 February 2026, at page 7) that the solvents (i.e., PC, DEC, FB, EP, PP) are mixed in a specific mass ratio and form “the mixed solution”. Then, lithium hexafluorophosphate with a concentration of 1.0 mol/L is slowly added to the mixed solution. By definition, molar concentration M (mol/L) is defined as the amount of a chemical substance (i.e., solute in moles) dissolved per liter of solution. A PHOSITA understands the lithium hexafluorophosphate salt as the solute, which is dissolved in the solvent (solution), as evidenced by Abe (of record), see e.g., [0018], provided below.
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Based on Zeng (i.e., para. [0042] in the machine translation provided 16 June 2025), basic chemistry principles, and as evidenced by Abe, a PHOSITA would understand the disclosed concentration of Zeng (i.e., 1.0 M) refers to the lithium salt (lithium hexafluorophosphate, the solute in moles) per volume (L) of the mixed solution.
Applicant argues the rejection relies on an improper reconstruction of Zeng’s Example 4. Specifically, applicant argues that Zeng does not disclose or suggest modifying multiple electrolyte components simultaneously. Thus, applicant concludes the rejection is based upon improper hindsight.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, Applicant’s argument is not persuasive because Zeng suggests a range for each element modified (i.e., FEC, PS) and a reason to modify each of these elements of the electrolyte. Considering the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages. In other words, one of ordinary skill in the art had reason to pursue the ranges, simultaneously, to determine where in a disclosed set of percentage ranges is the optimum or workable combination of percentages, MPEP 2144.05, II., A. Further, Zeng has recognized FEC is a result effective variable for film forming properties, and PS is a result effective variable for obtaining a wide temperature range and stability at low temperatures, hence further reason to experiment and pursue other values within each range suggested by Zeng to determine a workable combination, MPEP 2144.05, II., B.
Applicant mentions Tables 1-3 and 5, and para. [0118] of the instant disclosure to conclude that “the specification demonstrates electrolyte performance depends on an interdependent relationship between ethyl propionate (EP) and fluoroethylene carbonate (FEC). Applicant summarizes that “[w]hen EP exceeds 10 wt%, high temperature storage stability deteriorates” and “[w]hen the FEC/EP ratio is greater than 0.5 or less than 0.01, at least one of cycling performance, low temperature performance, or high-temperature stability is significantly degraded”, emphasis added, which Examiner takes as an unexpected results argument. These arguments, however, are unpersuasive for the following reasons.
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", see e.g., MPEP 716.02(d). The currently claimed b/a ratio (FEC/EP) ratio is 0.1≤b%/a%≤ 0.25, while applicant’s unexpected results conclusion is based on a wider range, i.e., 0.01≤b%/a%≤0.5 (as originally filed); applicant’s unexpected results argument, with respect to the b%/a% ratio, is not persuasive because it is not commensurate in scope with the claimed invention.
Further, applicant’s arguments with respect to the EP content are also not persuasive. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance", Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992): Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration”, MPEP 716.02(b), I. In this case, applicant’s mere conclusions (i.e., “[w]hen EP exceeds 10 wt%, high temperature storage stability deteriorates”) are not sufficient to established the results are unexpected and significant. "[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992), MPEP 716.02(b), II. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960), MPEP 716.02(d), II. In this case, applicant has not set forth the performance characteristic/values upon which the conclusion is based. Further, the claim limits the weight percent of EP (a%) as 0%<a%≤10%. Applicant’s argument fails to reference any specific examples within the claimed the range, and does not discuss or compare those values outside the lower (e.g., content of EP is zero) or upper (e.g., EP > 10 wt%) end of the claimed range, thereby making any conclusion of unexpectedness/criticality over the entire claimed range difficult.
Applicant argues the teachings of Abe of broad and generalized, and does not suggest the boron-containing salt in the context of Zeng’s electrolyte system. Applicant’s argument is not persuasive because the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, Abe’s solvent system is similar to Zeng and may include cyclic carbonates (EC, PC, FEC, VC), and linear esters (e.g., DEC, PP, EP), see e.g., [0062-0064, 0069]). Moreover, Abe presents examples showing the combination of lithium hexafluorophosphate with the boron-containing salt and motivation for the combination (i.e., expectation of improving electrochemical characteristics in a high temperature environment, [0082-0084, 0088-0090]. Finally, the examples present narrower values of the boron-containing with the lithium hexafluorophosphate than those recited in the broader disclosure. Thus, Zeng would appreciate the combination of the boron containing salt with lithium hexafluorophosphate in similar solvents in light of the advantage the salt combination offers (i.e., improvements in electrochemical characteristics in a high temperature environment).
Applicant’s argument that the claims distinguish over the prior art with respect to a%+b% are not persuasive because the values suggested by the prior (e.g., 10.19 %) may not overlap with that claimed (4%-10%), but they are very close. The prior art’s suggestion of a%+b%, i.e., 10.19 wt%, is so mathematically close to the claimed value, i.e., 10 wt%, that the difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality, MPEP 2144.05, I, which as detailed earlier in the Response to Arguments section, applicant has not shown.
Moreover, Zeng suggests modifying the amount of FEC between 0.5 wt% - 7 wt% considering the excellent film forming properties thereof lead to oxidation resistance and high voltage cycling ([0031, 0037]), and limits PS between 1-5 wt% to enable a wide temperature range homogeneous electrolyte that remains stable even when stored for a long time in low temperature environments, see e.g., [abstract 0001, 0002, 0024, 0028-0029]. One of ordinary skill in the art would be motivated to select another value for FEC (b%) in the clearly defined range (0.5-7 wt%, e.g., 1wt%) and another value for PS (c%) within the clearly defined range (1-5 wt%, e.g., 1wt%) to determine where in the disclosed set of ranges is the optimum or workable range for obtaining a wide temperature range homogeneous non-aqueous electrolyte solution that is stable even when stored for a long period of time in a low temperature environment, as suggested by Zeng. As a consequence of determining where in the disclosed set of ranges is the optimum combination or a workable product, with respect to FEC and PS, the claimed b%/a% ratio (i.e., FEC/EP ratio) and c% (PS) is obtained as shown in the calculation below. Example 4 of Zeng is modified such that FEC is 1 wt%, which is inside Zeng’s disclosed range of 0.5-7 wt% (see [0024]), and PS is 1 wt%, which is inside Zeng’s disclosed range of 1-5 wt% (see [0028]), thereby satisfying 0.5% ≤ c% ≤ 2.5%. Further, when a total weight of the electrolyte (solvent+salt+additve) is taken as 100g, there is 5.7 g of additives (1 g FEC + 2 g ADN + 1 g T4 + 0.5 g T2 + 0.2 g VC + 1 g PS = 5.7 g); the remaining weight (100g - 5.7g = 94.3g) is solvent (y) and salt (x). Knowing x + y = 94.3g and x/y is 0.1266 (calculated from the molar concentration of LiPF6), the mass of the salt (x) and solvent (y) can be calculated (i.e., y = 83.7 g and x = 10.6 g). Provided the weight ratio of EP in the solvent is known (i.e., EC:PC:DEC:FB:EP:PP has a mass ratio of 25:10:30:5:10:20), the amount of EP in the solvent can be calculated (e.g., 83.70 g x 0.1 = 8.37 g); wherein based on a total weight of the electrolyte (i.e., 100g), a weight percent of the EP is 8.37 wt% ((8.37g/100g) x 100%) which satisfies the claimed range 0 < a% ≤ 10. Finally, since b% (FEC) is 1 wt%, and a% (EP) is 8.37 wt%, b%/a% (i.e., 1 wt%/8.37 wt%) is 0.119, thereby satisfying 0.01 < b%/a% ≤ 0.25. The value for a% + b% (i.e., 8.37 wt% + 1 wt%) is 9.37 wt%, which overlaps with that claimed (4%≤a%+b%≤10%), hence obvious particularly because the FEC value (i.e., 1wt%, which is between 0.5-7wt% of Zeng) is expected to provide excellent film forming properties that lead to oxidation resistance and high voltage cycling, and the PS value (i.e., 1 wt%, which is between 1-5 wt% of Zeng) is expected to contribute to a wide temperature range homogeneous electrolyte that remains stable even when stored for a long time in low temperature environments.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3-6, 9, 11-13 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zeng et al. (CN106099187, of record, machine translation previously provided), in view of Targray Product Data Sheet (February 20, 2013, https://www.targray.com/content-data/mediafiles/images/documents/DMMP-Electrolyte-Solution.pdf), and Abe (US 2019/0312310), hereinafter Zeng, Targray, and Abe.
Regarding Claims 1, 3, 6, 9, 11, and 13, Zeng suggests an electrochemical apparatus (lithium ion battery) comprising a positive electrode (LiCoO2), a negative electrode (graphite), a separator (polymer), an electrolyte (e.g., 1M LiFP6 salt, solvents (EC:PC:DEC:FB:EP:PP = 25:10:30:5:10:20), and additives (e.g., FEC, ADN, SN, DENE (T2), VC, PS, and 1,3,6-hexanetrinitrile (T4)), see e.g., [0014-0028], and examples). Zeng suggests the electrolyte comprises ethyl propionate (EP), fluoroethylene carbonate (FEC), and 1,3,6-hexanetricarbonitrile (T4), see e.g., [0020-0022, 0026-0027, 0042] and Example 4.
In Zeng the mass % of the salt with respect to the mass of the solvent can be calculated because the concentration (M) of the salt in the solvent is known (i.e., 1M LiPF6 with respect to the solvents, see e.g., [0042]). That is, the salt concentration in the solvent (i.e., mol/L) can be converted to mass of the salt with respect to mass of the solvent using the molecular weight of the salt (i.e., MW of LiPF6 is 151.905 g/mol, see periodic table), and the density (g/mL) of the solvent (i.e., density of the solvent mixture in the prior art is estimated as ~1.2 g/mL considering different electrolyte compositions are about 1.2 g/mL, see Targray table provided below):
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Weight of the salt with respect to the weight of the solvent is calculated as:
Concentration of salt x (MW of the salt) x (1/density of the solvent) x 100 % = mass % of the salt with respect to the mass of the solvent
Weight of the salt with respect to the weight of the solvent in view of Zeng:
1 (mol/L) LiPF6 x 1L/1000mL x 151.905 g /mol LiPF6 x (mL/1.2g) x 100 % = ~12.66 wt % (Note: when density is reported in g/mL and concentration in mol/L, dimensional analysis is necessary to correct the units, i.e., 1L/1000mL).
In view of the foregoing calculations, the salt concentration of Zeng (i.e., 1M LiPF6) suggests the amount of salt is ~ 12.66 wt % salt with respect to the solvents EC:PC:DEC:FB:EP:PP, see e.g., [0042]. In addition to the solvents (e.g., EC:PC:DEC:FB:EP:PP) and salt (e.g., LiPF6), other additive are present in the electrolyte (see e.g., Example 4 which includes 4 wt% FEC + 2 wt% ADN + 1 wt% T4 + 0.5 wt% T2 +0.2 wt% VC + 4 wt% PS = 11.7 wt% total additives, where the weight percents of these additives are reported with respect to the total weight of the electrolyte, [0042]). Thus, in Example 4, when a total weight of the electrolyte (solvent+salt+additve) is taken as 100g, 11.7g of this total is made of the additives (i.e., 4g FEC + 2g ADN +1g T4 + 0.5g T2 + 0.2g VC + 4g PS = 11.7g) and 4g is the amount of FEC (i.e., 4g FEC/100g x 100% = 4 wt% FEC); the remaining weight (100g - 11.7g = 88.3g) is solvent (y) and salt (x). Knowing x + y = 88.3g and x/y is 0.1266, the mass of the salt (x) and solvent (y) can be calculated (i.e., y = 78.38g and x = 9.92g). Further, provided the weight ratio of EP in the solvent is known (i.e., EC:PC:DEC:FB:EP:PP has a mass ratio of 25:10:30:5:10:20), the amount of EP in the solvent x can be calculated (78.38g x 0.1 = 7.84g); based on a total weight of the electrolyte (i.e., 100g), a weight percent of the EP in Example 4 is 7.84 wt% (7.84g/100g) which satisfies the claimed range 0 < a% ≤ 10.
Zeng includes LiPF6 salt in the electrolyte, but does not suggest the electrolyte further comprises a boron containing lithium salt comprising at least one of LiDFOB, LiBOB, LiBF4, or Li2B4O4, such that the weight percent of the boron containing lithium salt g% is g%<1%. However, Abe suggests lithium salts (e.g., LiPF6) in an amount of 0.7M-1.6M (see e.g., [0085-0088], and Tables 1-4); LiPF6 may be combined with a second salt (e.g., LiBF4, LiBOB, LiDFOB, etc). The second salt is present in an amount of 0.001 M to 0.5 M and an improvement in the electrochemical characteristics in a high temperature environment is exhibited, see e.g., [0082-0084, 0088-0090]. It would be obvious to one having ordinary skill in the art the lithium salt of Zeng is composed of two salts comprising LiPF6 (e.g., ~1M) and a boron containing salt (i.e., LiBF4, LiBOB, etc) in an amount between 0.001M to 0.5M with the expectation of improving electrochemical characteristics in a high temperature environment, as suggested by Abe. A boron containing lithium salt concentration of 0.01M (which is between 0.001M to 0.5M, and preferable as suggested by Abe in [0084]), is equivalent to less than 1 wt% (note: the density of the solvent is estimated based on typical solvent density values disclosed in Targray, presented earlier):
0.01 mol/L LiBOB) x (193.79g LiBOB/mol) x (1L/1000mL) x (mL/1.2g) x (100%) = ~0.2 wt% LiBOB with respect to the solvent.
Thus, Abe suggests the mass percent of the borate salt with respect to the total electrolyte is less than 1 % (i.e., <0.2%) considering the electrolyte includes (LiPF6, solvents, and other additives). (See MPEP 2144.05, I., and II., In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages, see Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382.). Please note the calculation of a% (EP) provided earlier does not included the amount of boron containing lithium salt in the total weight of the electrolyte; however, considering the amount of boron containing lithium salt with respect to total weight of the electrolyte is very small (e.g., < 1%, Zeng suggest 0.2wt%), it is expected to have little impact on the resulting a% (EP) value, such that the prior art a% is still expected to either overlap with, or be close to, that claimed, thus still obvious.
The weight percent of FEC in Example 4 is 4 wt% such that the b%/a% ratio is 0.5 (i.e., 4 wt%/7.84 wt%), which does not overlap with the claimed b%/a% ratio range (i.e., 0.1 < b%/a% ≤ 0.25); further, the weight percent of PS in example 4 is 4 wt%, which does not overlap with the claimed range (0.5% ≤ c% ≤ 2.5%). However, Zeng suggests modifying the amount of FEC between 0.5 wt% - 7 wt% considering the excellent film forming properties thereof lead to oxidation resistance and high voltage cycling ([0031, 0037]), and limits PS between 1-5 wt% to enable a wide temperature range homogeneous electrolyte that remains stable even when stored for a long time in low temperature environments, see e.g., [abstract 0001, 0002, 0024, 0028-0029]. One of ordinary skill in the art would be motivated to select another value for FEC (b%) in the clearly defined range (0.5-7 wt%) and another value for PS (c%) within the clearly defined range (1-5 wt%) to determine where in the disclosed set of ranges is the optimum or workable range for obtaining a wide temperature range homogeneous non-aqueous electrolyte solution that is stable even when stored for a long period of time in a low temperature environment, as suggested by Zeng. As a consequence of determining where in the disclosed set of ranges is the optimum combination or a workable product, with respect to FEC and PS, the claimed b%/a% ratio (i.e., FEC/EP ratio) and c% (PS) is obtained as shown in the calculation below.
Calculation C: Example 4 of Zeng is modified such that FEC is 2 wt%, which is inside Zeng’s disclosed range of 0.5-7 wt% (see [0024]), and PS is 2 wt%, which is inside Zeng’s disclosed range of 1-5 wt% (see [0028]), thereby satisfying 0.5% ≤ c% ≤ 2.5%. Further, when a total weight of the electrolyte (solvent+salt+additve) is taken as 100g, there is 7.7 g of additives (2 g FEC + 2 g ADN + 1 g T4 + 0.5 g T2 + 0.2 g VC + 2 g PS = 7.7 g); the remaining weight (100g - 7.7g = 92.3g) is solvent (y) and salt (x). Knowing x + y = 92.3g and x/y is 0.1266 (calculated from the molar concentration of LiPF6), the mass of the salt (x) and solvent (y) can be calculated (i.e., y = 81.93 g and x = 10.37 g). Provided the weight ratio of EP in the solvent is known (i.e., EC:PC:DEC:FB:EP:PP has a mass ratio of 25:10:30:5:10:20), the amount of EP in the solvent can be calculated (e.g., 81.92 g x 0.1 = 8.19 g); wherein based on a total weight of the electrolyte (i.e., 100g), a weight percent of the EP is 8.19 wt% ((8.19g/100g) x 100%) which satisfies the claimed range 0 < a% ≤ 10. Finally, since b% (FEC) is 2 wt%, a% (EP) is 8.19 wt%, b%/a% (i.e., 2 wt%/8.19 wt%) is 0.24, thereby satisfying 0.01 < b%/a% ≤ 0.25. The value for a% + b% (i.e., 8.19 wt% + 2 wt%) is 10.19 wt%, which does not overlap with that claimed (4%≤a%+b%≤10%), but is so mathematically close that the difference between the claimed range is virtually negligible absent any showing of unexpected results or criticality. As shown and described in detail under the Response to Argument section, lower values of FEC (e.g., 1 wt%) and PS (e.g., 1wt%) result in EP (a%), b%/a%, and a%+b% values that overlap with that claimed (e.g., EP (a%) = 8.37 wt%, b%/a% = 1 wt%/8.37wt% = 0.119, and a%+b% = 8.37 wt% + 1 wt% = 8.37 wt%). One of ordinary skill in the art would be motivated to select another value for FEC (b%) in the clearly defined range (0.5-7 wt%, e.g., 1 wt%) and another value for PS (c%) within the clearly defined range (1-5 wt%, e.g., 1 wt%) to determine where in the disclosed set of ranges is the optimum or workable range with the expectation of obtaining a wide temperature range homogeneous non-aqueous electrolyte solution that is stable even when stored for a long period of time in a low temperature environment, as suggested by Zeng.
Please note the calculations of b%/a% do not included the amount of boron containing lithium salt in the total weight of the electrolyte; however, considering the amount of boron containing lithium salt with respect to the total weight of the electrolyte is very small (e.g., < 1%, Zeng suggest 0.2wt%), it is expected to have very little impact on the resulting ratio b%/a%, such that the prior art b%/a% is still expected to either overlap with, or be close to, that claimed.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. See MPEP 2144.05 I., and II.
Regarding Claims 4, and 11, Zeng suggests 0.25≤c/b≤5 in light of the modification FEC and PS; FEC and PS were both modified under the rejection of claim 1 to 2 wt% (or 1wt%), see Calculation C; thus, c/b is 2/2 = 1 which is between 0.25 and 5. Zeng also suggests an unsaturated cyclic carbonate (e.g., VC, see rejection of claim 1), wherein a weight percentage b% (e.g., FEC, 1 wt%, see Calculation C) and d% (i.e., VC, 0.2 wt.%, Example 4) satisfies 1≤b%+d%≤6 (e.g., 1 wt% + 0.2 wt% = 1.2 which is between 1 and 6 wt%).
Regarding Claim 5, and 12, Zeng suggests the electrolyte further comprises a dinitrile compound comprising at least one of adiponitrile, succinonitrile, or ethylene glycol bis(2-cyanoethyl) ether (e.g., ADN), wherein a weight percent of the dinitrile compound is e% and e≤2 (i.e., ADN 2 wt.%, Example 4) and e/b ≥ 0.3 (i.e., the wt% of FEC was modified under the rejection of claim 1 to 2 wt% (or 1wt%), see Calculation C, where e/b is 2/1 = 2, which is greater than 0.3).
Regarding Claim 6, and 13, as set forth under the rejection of claim 1, Zeng suggests a weight percent of the trinitrile compound (i.e., 1,3,6-hexanetricarbonitrile, T4, Example 4) based on the total weight of the electrolyte is f% and f<2.5% (i.e., Example 4 includes T4 at 1 wt.%).
Regarding Claim 18, Zeng suggests the use of the electrochemical apparatus in digital, energy storage, power and military aerospace fields ([0004]), thereby suggesting an electronic apparatus comprising the electrochemical apparatus. The other features of claim 18 have already been covered in the rejection of claims 1, and 9, hence not repeated here for brevity.
Claim(s) 8 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zeng, Targray and Abe in view of Kim (US 2020/0044287, of record), hereinafter Kim.
Regarding Claims 8 and 15, Zeng does not suggest a propynyl compound. However, Kim suggests an electrolyte for a battery ([0099-0103]) comprising organic solvents ([0107-0112]) and additives ([0115-0116]), where one of the additives has the Formula 2c-1 (i.e., prop-2-ynyl imidazole-1-caroxylate) and included in an amount of 0.05 wt% to 5 wt% ([0105]), e.g., 0.8 weight %, [0156], thereby satisfying h<1. Kim suggests the inclusion of the additive of Formula 2c-1 stabilizes the SEI, suppress metal dissolution, controls film resistance increases, and reduces the short circuit occurrence rate, see e.g., [0105] and Table 2. It would be obvious to one having ordinary skill in the art the electrolyte of Zeng includes an additional additive of prop-2-ynyl imidazole-1-caroxylate (Formula 2c-1) with the expectation of stabilizing the SEI, suppressing metal dissolution, controlling film resistance increases, and reducing short circuit occurrence rate.
It is further noted that Kim suggests the use of carbonic acid methyl 2-propynyl ester (Formula 4); it too reduces the number of short circuits that occurred (i.e., Comparative Example 3, 3/6) compared to no additive (i.e., Comparative Example 1, 4/6), see Table 1. It would be obvious to one having ordinary skill in the art the additive is carbonic acid methyl 2-propynyl ester with the expectation of reducing short circuit occurrence rate. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."), MPEP 2144.05, I. See also In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.). In this case, the prior art range (i.e., 1%) and claimed range (i.e., <1%) are so mathematically close the difference between the claimed and prior art range is virtually negligible absent any showing of unexpected results or criticality. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The presence of Formula 4 at 1 wt% (Comparative Example 3) has been shown to have an effect on short circuit occurrence rate compared to no additive (i.e., 0 wt%, Comparative Example 1); specifically, compared to 0 wt% Formula 4 additive, the addition of Formula 4 additive reduced the short circuit occurrence rate from 67% to 50%, see e.g., Table 2. One of ordinary skill in the art would be motivated to try other values of Formula 4 (i.e., above that of Comparative Example 1, > 0 wt%, and less than Comparative Example 3, < 1wt%) to determine another workable range for short circuit occurrence rate.
Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zeng, Targray, and Abe in view of Yamamoto (US 2009/0081556, of record), hereinafter Yamamoto.
Regarding Claims 16-17, Zeng suggests the positive electrode includes an active material ([0039), but does not suggest the active material is formed into a layer and applied on a current collector, a compacted density of the layer, or the particle size of the active material. However, Yamamoto suggests the positive active material has an average particle diameter of 13 microns, and is formed as a layer on a current collector; a positive electrode active material layer having a compact density of 3.7 g/cm3 ([0042-0045]). It would have been obvious to a person having ordinary skill in the art to use the particle diameter and active material layer on a current collector as disclosed by Yamamoto because such sizes and features are well known in the art. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. Further, the aforementioned density allows sufficiently high capacity and electrolyte infiltration, [0032, 0037], hence would have been obvious to one of ordinary skill in the art. The x value (i.e., 3.7) suggested by Yamamoto suggest a%/x is between 0.5 and 3; in the rejection of claim 1 a% was calculated as 8.37 w% (see Calculation C), hence a%/x is ~ 2.3 (i.e., 8.37/3.7). Further, the prior art suggests “y/b%” is between 0.1 and 100 since Zeng suggests a b% value (FEC) of 1 wt% (as detailed under the rejection of claim 1 in Calculation C) and Yamamoto suggests y is 13; thus, y/b% is 13 (i.e., 13/1wt%), which is between 0.1 to 100.
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zeng, Targray, and Abe in view of Ohashi (JP 2009158464), hereinafter Ohashi.
Regarding Claims 19-20, Zeng suggests the use of dinitrile and trinitrile compounds (i.e., succinonitrile, adiponitrile, HTCN) for the purpose of stabilizing the positive electrode to compensate for the high temperature gas production problem, see e.g., [0037, 0042, 0054] and examples; Zeng does not suggest the trinitrile compound comprises 1,2,3-tris(2-cyanoethoxy) propane. However, Ohashi suggests the use of one or more nitriles compounds having 2-4 cyano groups (e.g., dinitriles: succinonitrile, adiponitrile, etc.; and trinitrile: 1,3,5-pentanetricarbonitrile, 1,2,3-tris(2-cyanoethoxy) propane, etc.) to stabilize the positive electrode, thereby suppressing reactions during charging during high temperature situations and suppressing gas generation and deterioration of battery characteristics, see e.g., [0013, 0021]. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Provided both 1,2,3-tris(2-cyanoethoxy) propane) and HTCN are both trinitrile compounds used for the same purpose (i.e., stabilize the positive electrode), it would be obvious to one having ordinary skill in the art to combine 1,2,3-tris(2-cyanoethoxy)propane) with HTCN, with the expectation of stabilizing the positive electrode, as suggested by Ohashi and Zeng.
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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/ANNA KOROVINA/Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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