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 .
DETAILED ACTION
This Office action regarding Application No. 17/787,469 to Ueda, assigned to GS YUASA International Ltd., Korea, filed 06/20/2022 and published on 02/02/2023 as U.S. PG Publication 2023/0033180, is in response to applicant’s request for continued examination, RCE, and claims amendment filed 03/30/2026. Applicant’s response has been given full consideration.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/30/2026 has been entered.
Status of the Claims
In the request for continued examination, RCE, filed 03/30/2026 applicant has amended the claims of the application by adding new claims 8-20. The status of the claims stand as follows:
Original 1-2, 5,
Previously presented 3-4, 6-7
4.3 New 8-20
Claims 1-20 are currently pending in this application, and all the claims are under full consideration.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS .—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 13, which depends on claim 1, recites the limitation,”…where the air permeability resistance is 30 seconds or more.”. This range includes all conceivable values greater than 30 seconds. However, independent claim 1, upon which claim 13 depends., recites the limitation, “… a separator with a permeability resistance of 150 seconds on less.”, which is narrower than the range recited in dependent claim 13 (30 seconds or more); thus, the range of independent claim 1 (150 seconds less) is included in the wider range of dependent claim 13 (30 seconds or more). Therefore, dependent claim 13 does not specify a further limitation of the air permeability recited in independent claim 1, and so does not further limit claim 1.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements
Declaration Under 37 CFR 1.132
In the response filed 03/30/2026 applicant has filed declaration under CFR 1.132 to overcome the previously presented rejection dated 12/31/2025 under 103 over Nagao (U.S. PG Publication 2022/02043600) and notes that experimental test was conducted to demonstrate that a nonaqueous electrolyte energy storage device satisfying the following requirements (1) the negative electrode comprises metal lithium (or has a surface region capable of precipitating metal lithium during charge, in claim 5); (2) the nonaqueous electrolyte comprises a fluorinated solvent; and (3) the air permeability resistance of the separator is 150 seconds or less provides the significant effects, as compared to a nonaqueous electrolyte energy storage device not satisfying at least one of the following requirements (2) or (3). The declaration then cites results of working examples in Table B that employes fluorinated solvents. However, the working Examples 1 to 4 employes mixtures of five fluorinated solvents, namely fluoroethylene carbonate (FEC), 2,2,2-trifluoroethylmethylcarbionate (TFEMC); 3,3,4,4-tetrafluorotetrahydrofuran (TFTHF), 2-2,2,2-trifluoro ethoxy ethyl methyl ether (TFEME) and N,N-dimethylsulfamoyl fluoride (DMSF). While the fluorinated solvents employed in the working examples are only five in number the claim is directed towards a whole class of “fluorinated solvents” that includes all conceivable organic solvents that are fluorinated and may include fluorinated hydrocarbons, fluorinated ethers, fluorinated carbonates, fluorinated acyclic hydrocarbons, fluorinated cyclic hydrocarbons, fluorinated aromatic, fluorinated nonaromatic and other classes of fluorinated organic solvents. The working examples employ a very limited number of fluorinated solvents, namely five solvents only, and the results obtained cannot be representative of the much wider claimed class of fluorinated organic solvents.
Therefore, the results presented in the declaration are not commensurate with the scope of the claims, and therefore, do not present any conclusive results regarding the effect of all claimed fluorinated solvents. Therefore, the declaration presented by applicant cannot be fully relied upon to an equivocally provide the significant effects in terms of suppression of short circuit as well as the high discharge capacity retention rate, as compared to a nonaqueous electrolyte energy storage device not satisfying at least one of the abovementioned requirements (2) or (3) as noted and presented in the declaration (Declaration page 5).
Claim Rejections – 35 USC § 103
The text of those sections of Title 35 U.S. Code not included in this section can be found in the prior Office Action.
Claim 1-2, 4-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nagao (U.S. PG Publication 2022/0204360).
Regarding Claim 1, 2, 5, 6, 7, 13 and 20 Nagao discloses a lithium secondary battery (Nagao Fig. 2, 3, claims 17, paragraph 0024-0026), having an electrolytic solution containing a lithium compound electrolyte and an organic solvent (Nagao paragraph 0248), the secondary battery considered equivalent to the nonaqueous electrolyte energy storage device; and a method of manufacturing the secondary battery comprising preparing a positive electrode (Nagao paragraph 0221), and a negative electrode (Murakami paragraph 0231), the negative electrode comprising a lithium metal negative electrode (Nagao paragraph 0238) disclosed among other metals silicon metal and tin metal (Nagao paragraph 0238). Choosing lithium metal from among the disclosed three metals would have been obvious to try to a person of ordinary skill in the art since such a choice constitutes choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (See MPEP 2143 IE).
The method of manufacturing the nonaqueous electrolyte lithium-ion battery in claim 5 includes a step of preparing an electrolyte (Nagao paragraph 0248-0252).
Regarding the nonaqueous electrolyte comprising a fluorinated solvent recited in claim 1 Nagao discloses examples of non-aqueous electrolytes that include 4-trifluoromethyl-1,3- dioxolan-2-one; pentafluoropropyl methyl ether; 2,2,3,3-tetrafluoropropyl difluoromethyl ether, and solvents in which an additional fluoro group has been introduced into any of these organic solvents (Nagao paragraph 0250, 252), all are fluorinated solvents. Choosing the fluorinated solvents from among the other solvent would have been obvious to try by the skilled person in the art since it constitutes choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (MPEP 2143 I E). The method further includes a step of preparing a separator (Nagao paragraph 0245).
Regarding air permeability resistance of the separator of claim 1, 2, 5, 6, 7, 13, and 20 Nagao discloses in order to ensure that the separator provides favorable permeation of the electrolyte during battery use (during charging and discharging), the air permeability determined by the Gurley method prescribed in JIS P 8117 is preferably at least 50 seconds/100 cc but not more than 300 seconds/100 cc, and is more preferably at least 50 seconds/100 cc but not more than 200 seconds/100 cc (Nagao paragraph 0246).
It is noted that the applicant discloses the same Gurley tester for measuring the air permeability and states the "air permeability resistance" is a value measured by a "Gurley tester method" in accordance with JIS-P 8117 (2009)." (Instant Specification as filed paragraph 0013). The disclosed range preferably at least 50 seconds/100 cc but not more than 300 seconds/100 cc, and is more preferably at least 50 seconds/100 cc but not more than 200 seconds/100 cc (Nagao paragraph 0246) includes the claimed range of the air permeability resistance 150 seconds or less as recited in claim 1, 50 seconds or more and 80 seconds or less as in claim 2; 150 seconds or less as in claim 5; 35 seconds or more and 90 seconds or less in claims 6 and 7; 30 seconds or more as in claim 13; and 30 seconds or more and 90 seconds or less as in claim 20. According to the MPEP "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)
Regarding claim 4 Nagao discloses that in a charge/discharge test of the cell a charging maximum voltage is 4.35 V (Nagao paragraph 0356).
Regarding claim 8, 11, 12, 15, 18, 19 Nagao discloses the electrolyte solution contains electrolyte and organic solvent (Nagao paragraph 0248); thus, it is non-aqueous, and it contains electrolyte salt (Nagao paragraph 0249), and the electrolytes used disclosed are lithium salts (Nagao paragraph 0249) as recited in claim 11, and include LiPF6 (Nagao paragraph 0249) as recited in claim 12 and 19.
Regarding claim 9, 10, 16, 17 Nagao in one embodiment discloses the electrolyte solution is 1.0 mol/l (i.e., mole per liter) of LiPF6 (Nagao paragraph 0323), which is include in the claimed ranges of claim 9 (0.1 mol/dm3 or more and 2.5 mol/dm3 or less), claim 10 (1 mol/dm3 or more and 2.5 mol/dm3 or less), claim 16 (1 mol/dm3 or more and 2.5 mol/dm3 or less) , and claim 17 (1 mol/dm3 or more and 2.5mol/dm3 or less) [Note 1 dm3 = 1 liter). It would have been obvious to a person of ordinary skill to have used this salt in a fluorinated solvent since Nagao, as noted above, discloses an organic solvent having a fluorine substituent is preferable, as the safety of the obtained lithium secondary battery is improved (Nagao paragraph 0252).
Regarding claim 14 Nagao discloses that in an embodiment in the charge/discharge test the cycle retention rate (50th /1st ) of the battery was 96.2% (Nagao paragraph 0395, Table 1). This value being close to the claimed capacity at 25th with respect to the 5th i.e. equivalent to the retention rate 25th/5th , of 97%. Thus, the values do not overlap but are very close. According to the MPEP, “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nagao (U.S. PG Publication 2022/0204360) as applied to claim 1, in view of Murakami et al. (U.S. PG Publication 2020/0067055)
The discussion of Nagao as applied to claim 1 is fully incorporated here, and is relied upon for the limitation of the claim in this section.
Regarding claim 3 Nagao discloses the lithium secondary battery has a positive electrode and a negative electrode, and a separator sandwiched between the positive electrode and the negative electrode (Nagao paragraph 0213, 0255). Nagao discloses the separator includes material in the form of porous films composed of materials includes polyolefin resin (Nagao paragraph 0245), considered equivalent to the claimed substrate resin. Nagao, however, is silent about the separator having inorganic particles dispersed in the substrate resin.
Murakami discloses an electricity storage device comprising a positive electrode, a negative electrode, and a separator (Murakami paragraph 0039), wherein the positive electrode and negative electrode are combined via the separator (Murakami paragraph 0040) and the separator being disposed between a positive electrode and a negative electrode (Murakami paragraph 0087); and the separator has porous layer comprising polyolefin resin (Murakami paragraph 0055) considered equivalent to the substrate resin. Murakami discloses the separator contains an ionic compound (Murakami paragraph 0065) and the ionic compound composed of a cation and anion such as inorganic metal sulfates, metal nitrates, metal phosphates, metal carbonates, metal perchlorates etc. (Murakami paragraph 0066) considered equivalent to the inorganic particles. Murakami discloses the ionic compound is highly dispersed in the polyolefin resin (Murakami paragraph 0078), and the separators disclosed have permeability in the range 45- 75 seconds/100 cc (Murakami Table 2). Murakami disclose the disclosed separator has high ion conductivity and heat resistance and has a small amount of metal impurities, thereby enabling to improve input/output characteristics and safety of the electricity storage device (Murakami paragraph 0087).
Therefore, it would have been obvious to a person of ordinary skill in the art to have modified the separator in the battery of Nagao by the separator disclosed by Murakami having a substrate resin and inorganic particles dispersed therein to improve input/output characteristic sand safety of the electricity storage device as disclosed by Murakami (Murakami paragraph 0087). Such a modification is considered the use of known technique to improve similar devices (methods, or products) in the same way (MPEP 2143 IC).
Response to Argument
In the response filed 03/30/2026 applicant traverses the rejection of the claims under 103 over Nagao (U.S. PG Publication 2022/0204360) and the rejection of claim 3 also under 103 over Nagao in view of Murakami et al. (U.S. PG Publication 2020/0067055). Applicant argues the applied reference of Nagao uses mixed solvents in the working examples. But also mentions that fluorinated solvent is particularly preferred.
Examiner notes that the disclosure of “the fluorinated solvent is particularly preferred” meets the claim limitation regarding the fluorinated solvent. Examiner also notes that the disclosure of Nagao regarding the air permeability of between 50 seconds to 300 seconds (Nagao paragraph 0246) meets the claims limitations of the air permeability.
Applicant then argues that as the experimental data shown in Table B of the enclosed declaration the results show significant effects in terms of suppression of short circuit as well as the high discharge capacity retention rate, as compared to a nonaqueous electrolyte energy storage device not satisfying at least one of the abovementioned requirements (2) or (3) (Remarks page 6); and then further discusses the results regarding said significant effect (Remarks page 7-8). However, examiner notes as presented above in this Office action the solvents in the working examples are only five fluorinated solvent and the results obtained for these few solvents (five in number) cannot be extended to a whole class of “fluorinated solvent” as recited in claim 1. Therefore, the results presented in the declaration and used as evidence to establish the significant effect of fluorinated solvents on providing said significant effect is not commensurate with the scope of the claim.
Therefore, the previously applied reference of Nagao renders obvious the claimed invention and the previously presented rejection is still considered proper and valid. Furthermore, the declaration under 37 CFR 1.132 does not overcome the rejection under 103 over Nagao as argued by applicant.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMAR M KEKIA whose telephone number is (571)270-5918. The examiner can normally be reached 9:00am-5:00 pm,
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/OMAR M KEKIA/Examiner, Art Unit 1722
/ANCA EOFF/Primary Examiner, Art Unit 1722
