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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10th, 2026 has been entered
Status of Claims
Claims 1, 4-9, 11, and 12 are pending.
Claims 2, 3, and 10 are cancelled.
Claims 7 and 8 are withdrawn.
Claim 1 has been amended.
Status of Amendment
The amendment filed on April 10th, 2026 has been fully considered, but does not place the Application in condition for allowance.
Status of Pending Objections and Rejections since the Office Action of January 12th, 2026
The 102 rejections of claims 1 and 12 have been withdrawn in view of the Applicant’s amendment.
The 103 rejections of claims 4-6, 9, and 11 have been withdrawn in view of the Applicant’s amendment.
The 102 rejections of claims 2 and 3 are moot because claims 2 and 3 have been cancelled.
The 103 rejection of claim 10 is moot because claim 10 has been cancelled.
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.
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.
Claims 1, 4-6, 9, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Sato (US 2018/0183099 A1) and further in view of Moon (KR 20200104772 A). The combination of the two will be referred to as modified Sato.
Regarding claims 1, 4, 5, and 9, Sato discloses an electrolyte solution comprising an organic solvent [0064], a lithium salt [0065], and a compound represented by Formula 1 (abstract, [0056], and [0058]). For clarity, the claimed structure and the structure disclosed by Sato are included below.
Claimed structure:
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Sato’s Formula 1:
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Sato discloses that both R1 and R2 may be halogens, such as fluorine [0058]. Sato continues to disclose that R3 and R4 may be “an alkyl group having 1-4 carbons…such as an ethyl group” [0058]. This includes the specific structure mentioned in the Applicant’s remarks filed on October 17th, 2025 as well as in paragraph [00134] in the Applicant’s specification as filed. The structure is included below for convenience and clarity:
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Sato fails to teach an electrolyte comprising an auxiliary additive (as required by claim 1) or an auxiliary additive comprising a fluorine-containing carbonate-based compound (as required by claims 4 and 5). Moon is analogous art to Sato because both teach additives for electrolytic solutions for lithium secondary batteries. Moon teaches that an electrolyte for a battery “may further include fluoroethylene carbonate” (Moon, page 14, third paragraph; required by claims 4 and 5). Moon continues to teach that the inclusion of fluoroethylene carbonate may contribute “to the formation of [a] negative electrode film” and “the performance of the electrolyte solution for a lithium secondary battery becomes more excellent” (Moon, page 14, fourth paragraph). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to add fluoroethylene carbonate (as taught by Moon) to the electrolytic solution disclosed by Sato to form a film on the negative electrode and improve the performance of a lithium secondary battery.
Sato also fails to teach the wt.% of the added fluoroethylene carbonate, but Moon teaches that its concentration may be “3 to 5 parts by weight based on the total 100 parts by weight of the lithium secondary battery electrolyte” (Moon, page 14, fifth paragraph). This range overlaps with the range of 1 wt.% to 5 wt.% recited in claim 9. 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). See MPEP 2144.05 (I).
Sato also fails to explicitly teach a weight ratio of the fluoroethylene carbonate relative to the main additive in the electrolyte solution. However, as described above, Sato discloses that their compound is present in the electrolytic solution by 0.01 wt.% to 2.0 wt.%. Moon teaches that the auxiliary additive, the fluoroethylene carbonate, is present by 3 wt.% to 5 wt.% in the electrolytic solution. An example of a pair of their parts by weight (with respect to 100 parts by weight of the total electrolyte solution) of fluoroethylene carbonate and Sato’s compound may be 5 and 2, respectively. This leads to a weight ratio of the auxiliary additive relative to Sato’s additive of 2.5, which is between the claimed range of 1 to 5. Therefore, Sato, modified by Moon, teaches ranges of the weights that result in an overlap of the claimed range of ratios of the additives’ parts by weight. 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). See MPEP 2144.05 (I). Furthermore, given the ranges disclosed by Sato and Moon, it would be well within the abilities of one of ordinary skill in the art to determine the claimed range of the ratio of the additives’ weight percentages through routine optimization. See MPEP 2144.05 (II).
Regarding claim 6, fluoroethylene carbonate contains a ring structure, as seen below:
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Regarding claim 11, Sato teaches that the “content of the phosphinoamine-based compound in the non-aqueous electrolytic solution is preferably …0.01 mass% or more and 2.0 mass% or less…” [0062]. This range overlaps with the claimed range of 0.5 wt.% to 2 wt.%. 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). See MPEP 2144.05 (I).
Regarding claim 12, modified Sato teaches a battery ‘in which a positive electrode and negative electrode are disposed to face each other and an electrolytic solution [understood to contain the organic solvent, lithium salt, and additive described above] are enclosed within a casing” (Sato, [0072]).
Response to Arguments
Although the Applicant’s amendments successfully overcome the anticipation rejections over Sato, the Applicant’s arguments with respect to claims 1, 4-9, 11, and 12 have been considered but are unpersuasive. The Applicant cites Table 1 of their specification and has included an annotated version of said table in their remarks. It is included below.
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One of the Applicant’s arguments is centered around unexpected results that stem from the claimed weight ratio of the auxiliary additive to the additive whose structure is represented by Chemical Formula I. Examples 1, 3, and 4 have a weight ratio within the range claimed in claim 1. Examples 2 and 5 do not. More specifically, example 2 has no auxiliary additive at all which corresponds to a weight ratio lower than the claimed range. Example 5 has a weight ratio of 5.25%, which corresponds to a weight ratio greater than the claimed range. Applicant argues that examples with the weight ratio in the range perform better compared to examples whose weight ratios are outside of the range with respect to five characteristics: initial capacity, initial resistance, high temperature storage characteristics, and room-temperature capacity retention.
The initial capacity of examples 1, 3, and 4 are 1733 mAh, 1734 mAh, and 1729 mAh, respectively while the initial capacity of examples 2 and 5 are 1706 mAh and 1710 mAh, respectively. The largest difference in performance is between examples 3 and 5, and that difference is only 24 mAh, a small percentage of the initial capacity of the examples with the claimed weight ratios. The Examiner’s position is that this is not a significant difference and therefore does not represent unexpected results.
The initial resistance of examples 1, 3, and 4 are 39.3 mΩ, 39.6 mΩ, and 39 mΩ, respectively. The initial resistance of examples 2 and 5 are 39.9 mΩ and 41.6 mΩ, respectively. The largest difference in performance is between examples 4 and 5 and that difference is only 1.6 mΩ, a small percentage of the resistance of the examples with the claimed weight ratios. The Examiner’s position is that this is not a significant difference and therefore does not constitute unexpected results.
The capacity retention of the initial capacity of examples 1, 3, and 4 after storage in a high temperature environment for 14 weeks is 86.4%, 86.7% and 85.7%, respectively. The capacity retention of examples 2 and 5 are 74.7% and 84.8%, respectively. The difference between examples 3 and 2 is 12%. The Examiner agrees with the Applicant that this constitutes unexpected results. Therefore, it would be expected that a battery with a weight ratio lower than the claimed range would have subpar performance compared to a battery with a weight ratio within the claimed range which establishes a criticality of the lower bound of the claimed range. The difference between examples 3 and 5, however, is only 1.9%. The Examiners position is that this is not a significant difference and therefore does not constitute unexpected results. Therefore, the Applicant has not provided evidence that having a weight ratio whose value is greater than the claimed range would have poor results and thus does not establish a criticality of the upper bound of the claimed range.
The capacity recovery of the initial capacity of examples 1, 3, and 4 after storage in a high temperature environment for 14 weeks is 87.5%, 87.7%, and 86.6%, respectively. The capacity recovery of examples 2 and 5 are 75.9% and 85.8%, respectively. The difference between examples 2 and 3 is 11.8%. The Examiner agrees with the Applicant that this constitutes unexpected results. The difference between examples 3 and 5, however, is only 1.9%. The Examiner’s position is that this is not a significant difference and therefore does not constitute unexpected results. Therefore, the Applicant has not provided evidence that having a weight ratio whose value is greater than the claimed range would have poor results and thus does not establish a criticality of the upper bound of the claimed range.
The capacity retention of examples 1, 3, and 4 at room temperature is 82.8%, 83.9%, and 82.1%, respectively. The capacity retention of examples 2 and 5 at room temperature is 79.2% and 80.8%, respectively. The largest difference is between examples 2 and 3, which is 4.7%. The Examiners position is that this is not a significant difference and therefore does not constitute unexpected results.
In summary, with respect to the Applicant’s argument regarding the performance of batteries with weight ratios within the claimed range compared to batteries with weight ratios outside of the claimed range, the Applicant has established some criticality of the range. The Applicant’s results show that having weight ratios beneath the claimed range has effects on the batteries’ high temperature storage characteristics. However, the Applicant has not established a criticality of the range with respect to the upper-bound of the claimed range. This conclusion is important with respect to the discussion of the Applicant’s argument regarding the size of the range of weight ratios taught by the combination of Sato and Moon.
The Applicant’s also argues that the numerical range taught by Sato and Moon is too broad to render the Applicant’s claimed range obvious. The Examiner disagrees. It has been established above that the Applicant has successfully established a criticality of the lower bound of the range, but has not established such a criticality of the upper range. The Applicant correctly states that the largest possible range of the weight ratios taught by the combination of Sato and Moon is 0.25 – 1000. The Examiner agrees that this range is broad, but still technically overlaps with the claimed range of 1 to 5. Although the Applicant has established the criticality of the lower bound of this range, the Examiner’s position is that 0.25 is sufficiently close enough to 1 to still render the claimed range obvious. Since the Applicant did not establish a criticality of the upper bound of the range, the upper limit of 1000 that is taught by Sato and Moon still renders the claimed range obvious. The Applicant alleges that one of ordinary skill in the art would not be able to derive the claimed range without undue experimentation. The Examiner respectfully disagrees. Even if the Examiner were to accept the premise that the range is inappropriately broad, experimental optimization that began with using values from the lower bound of the range taught by Sato and Moon would readily give results that align with the claimed range of 1 to 5.
In response to the Applicant's argument that that there is no disclosure or suggestion that would motivate one of ordinary skill in the art to design a relative weight ratio, 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).
The Applicant also argues that there is no motivation to combine Sato and Moon. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Moon teaches that an inclusion of the auxiliary additive within the weight range taught by Moon may cause “the performance of the electrolyte solution for a lithium secondary battery becomes more excellent”, as stated above in the 103 rejection over Sato in view of Moon. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to use the auxiliary additive taught by Moon in order to achieve the aforementioned benefit.
The Applicant’s argument that Sato’s failure to suggest an auxiliary additive and Moon’s failure to recognize or disclose the claimed phosphinoamine-based compound is unpersuasive. This argument is ultimately a piecemeal argument against each individual reference. In response to the 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN K BLACKWELL-RUDASILL whose telephone number is (571)270-0563. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m.
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/R.B.R./Examiner, Art Unit 1722
/ANCA EOFF/Primary Examiner, Art Unit 1722
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