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 filed 06/20/2022 and assigned to GS Yuasa International Ltd., Korea (U.S. PG Publication 2023/0033180; published 02/02/2023) is in response to applicants arguments/remarks and claims amendment filed 09/16/2025.
Status of the Claims
In the response filed 09/16/2025 claims 1-5 are as previously precented, and new claims 6 and 7 have been added. The status of the claims stand as follows:
Original 1-2, 5
3.2 Previously presented 3-4
3.3 New 6-7
Claims 1-7 are currently pending in this application.
Declaration Under 37 CFR 1.132
In the response filed 09/16/2025 applicant has filed a declaration under 37 CFR 1.132 to overcome the previously presented rejection dated 03/21/2025 under 103 over Nagao (U.S. PG Publication 2022/0204360) and discloses that the results of additional examples 1-2 and additional comparative examples 1-6. The declaration states using solvents other than carbonates, a significant effect of the discharge capacity retention ratio can be achieved by combining a fluorinated solvent with a separator with an air permeability resistance of 150 seconds or less, and that this affect is independent of the type and concentration of salt in the nonaqueous electrolyte. The declaration states that in comparative examples 5, where no fluorinated solvent is used, and in comparative example 6, where fluorinated solvent is used, the retention rates are extremely low. However, the discharge capacity retention rate for additional C. Ex. 5 and C. Ex. 6 are 97 and 96 comparable to the other results. It is noted however that the concentration of the salt and the discharge capacity retention rate (%) are not claimed subject matter of the claimed nonaqueous electrolyte energy storage device. 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 solvents used, and air permeability of the separator. Therefore, the declaration presented by applicant cannot be fully relied upon to unequivocally establish the synergic effect of the claimed fluorinated solvents and the air permeability of the separator.
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, 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Nagao (U.S. PG Publication 2022/0204360)
This rejection was previously presented in the non-final Office action dated 03/21/2025 and is maintained in this Office action, and is appropriately modified to address new claim 6 and claim 7.
Regarding Claim 1 and 5 Nagao discloses a lithium secondary battery (Nagao Fig. 2, 3, claims 17, paragraph 0024), 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 023), 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 I E).
The method of manufacturing the nonaqueous electrolyte lithium-ion battery in claim 5 includes a 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 preparing a separator (Nagao paragraph 0245).
Regarding air permeability resistance of the separator of claim 1, 2, 5, 6, and 7 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, and 35 seconds or more and 90 seconds or less in claims 6 and 7. 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).
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 characteristics and 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 09/16/2025 applicant arguers that claim 1 is combination of the requirement of the negative electrode comprise a lithium metal, an electrolyte comprising fluorinated solvent and air permeability of the separator is 150 second (Remarks page 4) and then argues that the cited reference fails to teach or suggest the specific combination (Remarks page 5). Applicant then presents the results from working examples (1-4) and comparative examples (1-5), and notes that Comparative examples 1 and 5 the electrolyte include no fluorinated solvent. And comparative examples 2 and 5 separator is excess of 150 seconds in air permeability was used (Remarks page 6). Applicant then points to the filed declaration under 37 CFR 1.132 and argue that Nagao disclosure is similar to the comparative examples (Remarks page 7-9).
Regarding the declaration presented by applicant is discussed above in this Office action.
Examiner notes that the reference of obviousness rejection under 103 over Nagao renders obviousness the claimed invention. Nagao teaches a lithium secondary battery and the negative electrode comprising lithium metal; thus, meeting the first part of claim 1. Nagao also discloses the electrolyte include fluorinated solvents; thus, meeting the second part of claim 1. Nagao also discloses air permeability of the separator that includes the claimed range; thus, meeting the third condition of claim 1. Therefore, applicant’s argument that Nagao does not disclose the required combination of claim 1 and the presented declaration under 37 CFR 1.132 do not overcome the previously presented rejection, and the rejection is still considered proper and is maintained in this Office action. This Office action is made final.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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