DETAILED ACTION
This Office Action is responsive to the December 18th, 2025 arguments and remarks (“Remarks”). The
text of those sections of Title 35, U.S. Code not included in this action can be found in a prior
Office 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 18th, 2025 has been entered.
Response to Amendment
In response to the amendments received on December 18th, 2025:
Claims 1-8 and 10-20 are pending in the current application. Claim 17 is amended. Claim 20 is newly added.
Claim 17 is amended to adjust dependency from Claim 7 to Claim 1. Claim to further limit the group representing the fluorinated cyclic carbonate.
Claim 20 is newly added to be dependent on Claim 1 and to further limit the fluorinated acyclic carbonate.
Applicant’s amendment finds support in the disclosure including the original claims and specification. No new matter has been added.
Status of Claims
Claims 1-8 and 10-19 stand rejected under 35 U.S.C. 103 as described below:
Claims 1-8 and 10-19 are rejected under U.S.C. 103 as being unpatentable over Kim et al. (C.N. Pat. No. 107251307 A) in view of Koh et al. (U.S. Pat. No. 20130224606 A1). The rejections are withdrawn in view of the amendment.
Response to Arguments
The declaration under 37 CFR 1.132 filed December 18th, 2025 is insufficient to overcome the rejection of Claims 1 and 13 based upon Kim et al. (C.N. Pat. No. 107251307 A) in view of Koh et al. (U.S. Pat. No. 20130224606 A1) applied under 35 U.S.C. § 103 as set forth in the last Office action because:
Applicant submits a declaration under 37 C.F.R. 1.132 to provide evidence of unexpected results and differentiate the present disclosure from the prior art. The examples provided in Table 2 represent an electrolyte composition comprising EC (non-fluorinated cyclic carbonate), EMC or DEC (a non-fluorinated acyclic carbonate), DFEMC or TFEMC (a fluorinated acyclic carbonate), and FEC (a fluorinated cyclic carbonate), with or without LiFSI or Esa (para. 6). Example electrolytes EL1-EL3 correspond to the examples in Table 1 of applicant’s specification (para. 5). EL4-EL7 were designed to show the difference in cell performance based on the incorporation of LiFSI (para. 7). However, EL4-EL7 are tested in the form of coin cells with an Si/O anode and NCA cathode; whereas, EL1-EL3 representing the invention, are in the form of pouch cells with an Si/C anode and NCA cathode.
“An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)” (emphasis in original) (see MPEP 716.02(e)).
“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 MPEP 716.02(d)).
The results of EL4-EL7 show that the addition of LiFSI has a negative impact on the cyclic performance with an Si/O anode, coin cell structure (para. 9), rather than an Si/C anode/pouch cell structure of applicant’s invention (note that the pouch cell structure is not claimed). It is wholly unclear how the addition of LiFSI compares applicant’s claimed invention to the closest prior art, as LiFSI is not recited in the claim limitations nor the obviousness rejection. Additionally, applicant appears to show better performance with an Si/C anode rather than an Si/O anode (Table 2 shows EL5 having no LiFSI compared to EL4, EL6, and EL7 in which contain LiFSI). However, as applied to Claim 1, primary reference Kim, deemed as the closest prior art, teaches an Si/C anode material (para. 58). Therefore, the relevance of the test electrolytes EL4-EL7 and the comparison of LiFSI concentrations is not clear.
Electrolyte EL8 is compared to EL9, in which EL8 does not contain a fluorinated acyclic carbonate and EL9 contains TFEMC (a fluorinated acyclic carbonate) (para. 8, 10). To properly compare the results of adding TFEMC, all other variables should be controlled in the experiment as done in EL1-EL3 (Table 2). In this case, EL8 and EL9 differ in the amount of LiPF6, EC, and total solvent (Table 2). As the results presented in Table 3 and Table 4 do not have significant variation, it is not clear if the difference in variables would affect the performance results. Similarly, EL10 is compared to EL11 in which EL10 does not contain a fluorinated acyclic carbonate and EL9 contains DFEMC (a fluorinated acyclic carbonate) (para. 8, 10); EL10 and EL11 also differ in the amount of LiPF6, EC, and solvent. Therefore, an accurate comparison cannot be achieved.
Also, it appears that applicant attempts to show unexpected results for the presence of TFEMC or DFEMC as a fluorinated acyclic carbonate; however, primary reference Kim clearly teaches a TFEMC (fluorinated acyclic carbonate) additive present in an amount within the claimed range (para. 33), as applied in the rejection of Claim 1. Therefore, it is wholly unclear how the comparison differentiates the invention and the prior art. Further, Claims 1 and 13 do not require the fluorinated acyclic carbonate to include TFEMC or DFEMC. “Evidence of superior properties in one species [is] insufficient to establish the nonobviousness of a subgenus containing hundreds of compounds” (see MPEP 2145). Therefore, the results are not sufficient in proving unexpected results for any fluorinated acyclic carbonate as implied by the scope of Claim 1. Therefore, the declaration is not commensurate with the scope of the claimed invention and is not sufficient in overcoming the rejection of Claims 1 and 13.
The declaration does not show direct or indirect comparison of the claimed subject matter to the closest prior art and establish the differences there between; applicant does not cite any prior art of record to clearly point out the features of the prior art that are different from the claimed invention and used in comparison. Evidence should clearly indicate the features of the claimed invention in which produce unexpected results and the claims should be narrowed to encompass said features to overcome the rejection of record.
Therefore, the declaration is insufficient in proving unexpected results.
Upon correction of the deficiencies in the declaration, Examiner further recommends appropriate amendment to narrow Claims 1 and 13 to include the conditions in which unexpected results can be established. The claimed composition include compounds represented by a broad genus, while the evidence of unexpected results rather supports a limited electrolyte composition comprising LiPF6, EC, EMC or DEC, and DFEMC or TFEMC. Further, the claimed amounts represented by volume or weight percentages encompass a broad range in which a sufficient number of tests inside and outside the claimed range is not provided to establish unexpected results (see MPEP 716.02(d)(II)).
Applicant’s arguments filed in the “Remarks” on December 18th, 2025 have been fully considered as further described below:
Applicant presents arguments to Claims 1 and 13 in which are based on the claims as amended and the declaration filed under 37 C.F.R. 1.132. Applicant states that the results presented in the declaration provide evidence of unexpectedly superior cycle performance and reduced thickness changes in which would not readily flow from Kim as modified by Koh (see pg. 11 of the “Remarks”). As described above, the filed declaration includes deficiencies such as variation in testing variables that should be controlled, and the lack of clear and accurate comparison between the closest prior art. Further, the evidence of unexpected results is not commensurate with the scope of the claimed invention. Applicant also presents arguments regarding the compatibility of LiFSI with the aluminum current collector of Kim (pgs. 11-12 of the “Remarks”). However, the recitation of LiFSI and the use thereof is not included in the claim limitations nor obviousness rejection. Therefore, applicant’s arguments are deemed unpersuasive.
Cited Prior Art
Previously Cited Kim et al. (C.N. Pat. No. 107251307 A) (“Kim et al.”)
Previously Cited Koh et al. (U.S. Pat. No. 20130224606 A1) (“Koh et al.”)
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.
Claims 1-8 and 10-20 are rejected under U.S.C. 103 as being unpatentable over Kim et al. (C.N. Pat. No. 107251307 A) in view of Koh et al. (U.S. Pat. No. 20130224606 A1).
Regarding Claim 1, Kim et al. teaches a battery (electrochemical cell) comprising an anode, cathode, and an electrolyte composition (para. 6). The anode active material can include a silicon-carbon composite in which consists of at least a carbon material and a silicon material (para. 58). The electrolyte composition includes a solvent, a salt (electrolyte salt), and one or more additives (para. 6). The additive can include 2,2,2-trifluoroethyl methyl carbonate (methyl 2,2,2-trifluoroethyl carbonate) in which is a fluorinated acyclic carbonate meeting the limitations of the claimed formula R1-OCOO-R2 (wherein R1 is an C1-C4 alkyl group and R2 is a C1-C4 fluoroalkyl group) (para. 33).
The additive can include a fluorinated cyclic carbonate compound such as monofluoroethylene carbonate also known as 4-fluoroethylene carbonate (para. 33). The content of the additive is in the amount of 0.1 to 10.0 wt.% relative to the total weight of the electrolyte composition (para. 33), overlapping the claimed ranges of 0.5 wt.% to 70 wt.% of a fluorinated acyclic carbonate compound and 0.5 wt.% to 10 wt.% of a fluorinated cyclic carbonate compound. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See 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). It would have been obvious to one of ordinary skill in the art to use the teachings of Kim et al. to provide a battery with an electrolyte composition exhibiting advantageous functions such as providing a sufficiently low interfacial resistance between the electrode and electrolyte composition (para. 17).
Kim et al. does not teach the solvent comprising at least one non-fluorinated cyclic carbonate in an amount of from 8 to 50% by volume (vol%), the vol% being based on the total volume of the solvent.
Koh et al. teaches an electrolyte solution comprising an amount of the non-fluorinated cyclic carbonate in a preferable amount of 30 vol. % based on the total volume of the solvent (para. 96), within the claimed range of 8 to 50% by volume. Further, Koh et al. teaches the solvent compatibility decreasing when the non-aqueous electrolyte solution contains too large of an amount of non-fluorinated cyclic carbonate while solubility of the electrolyte salt decreases when too small of an amount is used (para. 96). Including the non-fluorinated cyclic carbonate in the amount described provides improved load characteristics and cycle characteristics of the lithium secondary battery (para. 96).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrolyte composition of Kim et al. to include a solvent comprising the non-fluorinated cyclic carbonate in a preferable amount of 30 vol. % based on the total volume of the solvent as taught by Koh et al., within the claimed range of 8 to 50% by volume. One of ordinary skill in the art would be motivated to perform the described modification to improve load and cycle characteristics of the lithium secondary battery as taught by Koh et al.
Regarding Claim 2, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 1 above. As applied to Claim 1, the anode can be a silicon-carbon composite in which is equivalent to a Si/C composite material as claimed (para. 58). It would have been obvious to one of ordinary skill in the art to use the teachings of Kim et al. to provide a battery with an electrolyte composition exhibiting advantageous functions such as providing a sufficiently low interfacial resistance between the electrode and electrolyte composition (para. 17).
Regarding Claim 3, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 1 above. As applied to Claim 1, the fluorinated acyclic carbonate can be 2,2,2-trifluoroethyl methyl carbonate (methyl 2,2,2-trifluoroethyl carbonate) (para. 33). It would have been obvious to one of ordinary skill in the art to use the additive specified by Kim et al. to provide an electrolyte composition for high voltage batteries with advantageous functions such as exhibiting a sufficiently low interfacial resistance (para. 17).
Regarding Claim 4, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 3 above. As applied to Claim 3, Kim et al. teaches the fluorinated acyclic carbonate comprising 2,2,2-trifluoroethyl methyl carbonate (methyl 2,2,2-trifluoroethyl carbonate) (para. 33). It would have been obvious to one of ordinary skill in the art to use the additive specified by Kim et al. to provide an electrolyte composition for high voltage batteries with advantageous functions such as exhibiting a sufficiently low interfacial resistance (para. 17).
Regarding Claim 5, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 3 above. Kim et al. teaches the additive comprising a fluorinated acyclic carbonate such as 2,2-difluoroethyl methyl carbonate (methyl 2,2-difluoroethyl carbonate) (para. 33). It would have been obvious to one of ordinary skill in the art to use the additive specified by Kim et al. to provide an electrolyte composition for high voltage batteries with advantageous functions such as exhibiting a sufficiently low interfacial resistance (para. 17).
Regarding Claim 6, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 1 above. As applied to Claim 1, Kim et al. teaches the content of the additive in which can be a fluorinated acyclic carbonate compound ranging from 0.1 to 10 wt.% based on the total weight of the electrolyte composition (para. 33), overlapping the claimed range of 0.5 wt.% to 10 wt.% (see MPEP § 2144.05, I). It would have been obvious to one of ordinary skill in the art to use the additive content specified by Kim et al. to provide an electrolyte composition for high voltage batteries with advantageous functions such as exhibiting a sufficiently low interfacial resistance (para. 17).
Regarding Claim 7, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 1 above. As applied to Claim 1, Kim et al. teaches the additive comprising a fluorinated cyclic carbonate such as monofluoroethylene carbonate in which is also known as 4-fluoroethylene carbonate (para. 33). It would have been obvious to one of ordinary skill in the art to use the additive specified by Kim et al. to provide an electrolyte composition for high voltage batteries with advantageous functions such as exhibiting a sufficiently low interfacial resistance (para. 17).
Regarding Claim 8, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 1 above. As applied to Claim 1, Kim et al. teaches the content of the additive in which can be a fluorinated cyclic carbonate compound ranging from 0.1 to 10 wt.% based on the total weight of the electrolyte composition (para. 33), overlapping the claimed range of 1 wt.% to 9 wt.% (see MPEP § 2144.05, I). It would have been obvious to one of ordinary skill in the art to use the additive content specified by Kim et al. to provide an electrolyte composition for high voltage batteries with advantageous functions such as exhibiting a sufficiently low interfacial resistance (para. 17).
Regarding Claim 10, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 1 above. Kim et al. teaches the solvent of the electrolyte composition comprising a non-fluorinated acyclic carbonate such as dimethyl carbonate (para. 32). It would have been obvious to one of ordinary skill in the art to use the solvent specified by Kim et al. to provide an electrolyte composition for high voltage batteries with advantageous functions such as exhibiting a sufficiently low interfacial resistance (para. 17).
Regarding Claim 11, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 1 above. Kim et al. teaches the electrolyte composition comprising an additive such as 1,3-propane sultone in which is a cyclic sultone (para. 33). It would have been obvious to one of ordinary skill in the art to use the additive specified by Kim et al. to provide an electrolyte composition for high voltage batteries with advantageous functions such as exhibiting a sufficiently low interfacial resistance (para. 17).
Regarding Claim 12, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 1 above. Kim et al. teaches the electrolyte composition being advantageously used in batteries including high-voltage batteries and capacitors such as supercapacitor and hybrid capacitors in which are energy storage devices (para. 79-81). Kim et al. further teaches electronic devices such as cell phones comprising at least one battery in which it would be obvious to one of ordinary skill in the art to use the battery containing the electrochemical cell as described in an electronic device (para. 28). It would have been obvious to one of ordinary skill in the art to use the electrochemical cell comprising the electrolyte composition specified by Kim et al. in high voltage batteries to provide advantageous functions such as exhibiting a sufficiently low interfacial resistance (para. 17).
Regarding Claim 13, Kim et al. teaches a method of improving cycle performance at high voltage operations of an electrochemical cell (para.114) comprising an anode, cathode, and an electrolyte composition (para. 6), wherein the anode active material can be a silicon-carbon composite (comprising at least a carbon material and a silicon material) (para. 58), and the method comprising the addition of an additive to an electrolyte system (para. 84). The electrolyte composition can comprise one or more additives (para. 6). The additive can include 2,2,2-trifluoroethyl methyl carbonate (methyl 2,2,2-trifluoroethyl carbonate) in which is a fluorinated acyclic carbonate meeting the limitations of the claimed formula R1-OCOO-R2 (wherein R1 is an C1-C4 alkyl group and R2 is a C1-C4 fluoroalkyl group) (para. 33). The content of the additive is in the amount of 0.1 to 10.0 wt.% relative to the total weight of the electrolyte composition (para. 33), overlapping and within the claimed range of 0.5 wt.% to 70 wt. % of a fluorinated acyclic carbonate compound (see MPEP § 2144.05, I). The additive can comprise a fluorinated cyclic carbonate compound present in the amount of 0.1 to 10 wt.% relative to the total weight of the electrolyte composition (para. 33), overlapping the claimed range of 0.5 wt.% to 10 wt.% (see MPEP § 2144.05, I).
Kim et al. does not teach the solvent comprising at least one non-fluorinated cyclic carbonate in an amount of from 8 to 50% by volume (vol%), the vol% being based on the total volume of the solvent.
Koh et al. teaches an electrolyte solution comprising an amount of the non-fluorinated cyclic carbonate in a preferable amount of 30 vol. % based on the total volume of the solvent (para. 96), within the claimed range of 8 to 50% by volume. Further, Koh et al. teaches the solvent compatibility decreasing when the non-aqueous electrolyte solution contains too large of an amount of non-fluorinated cyclic carbonate while solubility of the electrolyte salt decreases when too small of an amount is used (para. 96). Including the non-fluorinated cyclic carbonate in the amount described provides improved load characteristics and cycle characteristics of the lithium secondary battery (para. 96).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrolyte composition of Kim et al. to include a solvent comprising the non-fluorinated cyclic carbonate in a preferable amount of 30 vol. % based on the total volume of the solvent as taught by Koh et al., within the claimed range of 8 to 50% by volume. One of ordinary skill in the art would be motivated to perform the described modification to improve load and cycle characteristics of the lithium secondary battery as taught by Koh et al.
Regarding Claim 14, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 1 above. Kim et al. teaches a non-fluorinated cyclic carbonate such as propylene carbonate (para. 32). It would have been obvious to one of ordinary skill in the art to use the additive specified by Kim et al. to provide an electrolyte composition for high voltage batteries with advantageous functions such as exhibiting a sufficiently low interfacial resistance (para. 17).
Regarding Claim 15, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 10 above. As applied to Claim 10, Kim et al. teaches a non-fluorinated acyclic carbonate such as dimethyl carbonate (para. 32). It would have been obvious to one of ordinary skill in the art to use the additive specified by Kim et al. to provide an electrolyte composition for high voltage batteries with advantageous functions such as exhibiting a sufficiently low interfacial resistance (para. 17).
Regarding Claim 16, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 6 above. As applied to Claim 6, Kim et al. teaches the content of the fluorinated acyclic carbonate compound from 0.1 to 10 wt.% based on the total weight of the electrolyte composition (para. 33), overlapping the claimed range of 2 wt.% to 5 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 (see MPEP § 2144.05, I). It would have been obvious to one of ordinary skill in the art to use the additive content specified by Kim et al. to provide an electrolyte composition for high voltage batteries with advantageous functions such as exhibiting a sufficiently low interfacial resistance (para. 17).
Regarding Claim 17, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 1 above. As applied to Claim 1, Kim et al. teaches the additive comprising a fluorinated cyclic carbonate such as monofluoroethylene carbonate in which is also known as 4-fluoroethylene carbonate (para. 33). It would have been obvious to one of ordinary skill in the art to use the additive specified by Kim et al. to provide an electrolyte composition for high voltage batteries with advantageous functions such as exhibiting a sufficiently low interfacial resistance (para. 17).
Regarding Claim 18, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 8 above. As applied to Claim 8, Kim et al. teaches the content of the fluorinated cyclic carbonate compound from 0.1 to 10 wt.% based on the total weight of the electrolyte composition (para. 33), overlapping the claimed range of 2 wt.% to 5 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 (see MPEP § 2144.05, I). It would have been obvious to one of ordinary skill in the art to use the additive content specified by Kim et al. to provide an electrolyte composition for high voltage batteries with advantageous functions such as exhibiting a sufficiently low interfacial resistance (para. 17).
Regarding Claim 19, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 1 above. Kim et al. further teaches the electrolyte salt including LiPF6 (lithium hexafluorophosphate) (para. 31). One of ordinary skill in the art would have been motivated to utilize the teachings of Kim et al. to provide a battery with an electrolyte composition exhibiting advantageous functions such as providing a sufficiently low interfacial resistance between the electrode and electrolyte composition (para. 17).
Regarding Claim 20, Kim et al. is modified by Koh et al. teaching all claim limitations as applied to Claim 1 above. As applied to Claim 1, the fluorinated acyclic carbonate can be 2,2,2-trifluoroethyl methyl carbonate (methyl 2,2,2-trifluoroethyl carbonate) (para. 33). It would have been obvious to one of ordinary skill in the art to use the additive specified by Kim et al. to provide an electrolyte composition for high voltage batteries with advantageous functions such as exhibiting a sufficiently low interfacial resistance (para. 17).
Conclusion
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/C.R.D./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729