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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/19/2026 has been entered.
Claim Status
This Office action is in response to the remarks filed on 5/19/2026.
Claim 1 has been amended.
Claims 2-9, 11 and 13 have been cancelled.
Claims 1, 10, 12, and 14-18 are currently pending.
Response to Amendment
Despite the amendment the objection to drawings is maintained. A detailed explanation is provided in the objection below.
Response to Arguments
Applicant's arguments filed 5/19/2026 have been considered but they are not persuasive due to the following reasons. The crux of the applicants' argument is that the
Furthermore, The examiner notes that the claims are still not commensurate in scope with the data applicant is relying upon. MPEP 716.02(d). While the applicant has narrowed the claims with respect to the solvents and salts the ranges are still not commensurate in scope with the data of table 1 of the instant specification. The claimed ranges should match the ranges disclosed in the data of the samples used.
Applicant is reminded, “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.” In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972). “(Evidence of nonobviousness consisted of comparing a single composition within the broad scope of the claims with the prior art. The court did not find the evidence sufficient to rebut the prima facie case of obviousness because there was "no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition.") MPEP 716.02(d).
The examiner acknowledges the applicant’s amendment to the claims narrowing the ranges of the solvents to be more in line with the data of table 1 for the argument of surprising and unexpected results, the examiner points out that the “or” language of claim 1 with regards to the 2-methylthiophene removes this argument from consideration. Namely, that if 2-methylthiophene is used the data only has one sample (example 7) used and that sample if claimed, has a very specific range of 10% 2-methylthiophene, 60% dimethoxyethane, and 30% 2-methyltetrahydrofuran along with 0.75M LiFSI and 3 wt% of LiNO3. If the applicant would like to have the argument of surprising and unexpected results fully considered the claims must be commensurate in scope with the data.
If applicant would like to pursue this argument further the examiner recommends either removing the “or 2-methylthiophene” from the claim or adding the exact composition of example 7 from table 1.
In the center of page 6 of 9 of the arguments the applicant has a heading of “Improper Combination of References” yet fails to make any argument as to why the combination of references is not proper. The applicant then goes on to argue surprising and unexpected results that cannot be considered by the examiner until what is claimed is commensurate in scope with the data.
In response to the argument that DOJO uses a two solvent system on page 7 of 9 of the arguments, paragraph [0035] discloses that the “solvents” are a mixture of components that can be more than 2. Furthermore, in the same paragraph of the argument, the applicant maintains that the second solvent disclosed by DOJO is not a cyclic ether when in fact [0036] discloses 2-methylfuran by name.
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, While DOJO does not disclose an example with all three solvents; DOJO does state that the first solvent and the second solvent can each contain multiple solvents therefore envisioning an electrolytic solution with three solvents. DOJO also teaches a non-aqueous electrolyte secondary battery in which a reversible charge/discharge reaction is performed, good cycle performance and charge/discharge efficiency can be obtained, and high capacity and high energy density can be achieved [0013].
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).
Drawings
The drawings were received on 05/19/2026. The amendments to figures 1-2 are acknowledged. The drawings are still objected to for the following reasons:
Regarding figures 1-2. The examiner thanks the applicant for submitting new drawings with clear and concise legends attached. However, the new drawings are still in grayscale and are not clear. The only drawings submitted thus far in true black and white were dated 3/18/2025. Please resubmit these drawing with the legends provided on 05/19/2026. The examiners believes that this will overcome the prior objections to the drawings.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 10, 12, and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over JP2005108724 (A), DOJO et al. in view of US 20190051940 A1; PARK et al.
Regarding claim 1: DOJO discloses an electrolyte solution for a lithium secondary battery [0003], comprising-
a first solvent comprising dimethoxyethane [0037];
a second solvent comprising 2-methylfuran [0036];
a third [0014] solvent comprising 2-methyltetrahydrofuran [0036]
While DOJO does not disclose an example with all three solvents; DOJO does state that the first solvent and the second solvent can each contain multiple solvents therefore envisioning an electrolytic solution with three solvents. DOJO also teaches a non-aqueous electrolyte secondary battery in which a reversible charge/discharge reaction is performed, good cycle performance and charge/discharge efficiency can be obtained, and high capacity and high energy density can be achieved [0013].
Furthermore, “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
DOJO [0035] teaches that the first solvent is greater than 50%, in the instant application the first and second solvents are equivalent to the first solvent in DOJO. The third solvent of the instant application is equivalent to the second solvent taught by DOJO. Therefore, the third solvent would be greater than 5%.
It has been held that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is critical evidence indicating such concentration or temperature is critical. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
DOJO does not disclose the lithium salt comprises LiFSI and lithium nitrate.
PARK discloses a lithium sulfur battery [0064] teaches LiFSI [0053] and Lithium Nitrate [0019].
Park teaches that LiFSI is particularly favored when used in polymer batteries [0053] and has lower corrosiveness and problems such as current collector corrosiveness that used to occur when using LiTFSI as a liquid electrolyte lithium salt may be improved.
PARK [0030] also teaches an electrolyte of the present disclosure is capable of increasing lithium electrode stability by forming a solid membrane on the lithium surface, and exhibits excellent capacity retention and an effect of improving a battery lifespan property when used in a lithium secondary battery.
PARK [0053] teaches away from the use of LiTFSI thereby meeting the claim limitation of excluding its use.
It would have been obvious for one of ordinary skill before the effective filing date to use LiFSI and lithium nitrate of PARK in an electrolyte of DOJO in order to lower corrosiveness and improve the lifespan of the battery. It would have also been obvious to one of ordinary skill in the art to have combined the three solvents in to a solution because a good cycle performance and charge/discharge efficiency can be obtained.
Regarding claim 10: DOJO discloses an electrolyte solution for the lithium secondary battery wherein the lithium salt is LiBF4 [0045].
Regarding claim 12: PARK [0019] teaches potassium nitrate (KNO3).
Regarding claim 14: DOJO discloses an electrolyte solution for the lithium secondary battery according to claim 1, wherein the electrolyte solution is suitable for use in a lithium-sulfur battery [0014].
Regarding claim 15: DOJO discloses a lithium secondary battery comprising a positive electrode; a negative electrode; a separator interposed between the positive electrode and the negative electrode [0014]; and the electrolyte solution for the lithium secondary battery of claim 1 (figure 1, 4 -separator is between the electrodes).
DOJO [0030] discloses a non-aqueous electrolyte secondary battery including a negative electrode, a positive electrode and a non-aqueous electrolyte.
Regarding claim 16: DOJO discloses the lithium secondary battery according to claim 15, wherein the lithium secondary battery is a lithium-sulfur battery [0014].
Regarding claim 17 and 18: DOJO discloses the lithium-sulfur secondary battery according to claim 16, would be expected to inherently exhibit all the claimed limitations, since the electrolyte comprises the three solvents claimed in claim 1.
When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAWRENCE LA RAIA III whose telephone number is (703)756-5441. The examiner can normally be reached Mon-Thur 6:00am-4:00pm.
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/L.L./Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727
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