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 .
The Applicant’s amendment filed on 11/06/2025 was received. Claims 1, 3 were amended. Claim 2 was cancelled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/06/25 has been entered.
Claim Rejections - 35 USC § 103
The claim rejections under 35 U.S.C. 103 as being unpatentable over Sakamoto et al. (US 20190372165 A) on claims 1, 3, 4 are withdrawn because Applicant amended independent claim 1.
Claims 1, 3, 4 are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami et al. (US 20140038062 A1) in view of Minami et al. (US 20160226106 A1).
Regarding to claim 1: Kawakami et al. discloses a nonaqueous electrolytic solution for secondary batteries (par. 1). The nonaqueous electrolytic solution comprises lithium fluorosulfonate, a lithium salt except lithium fluorosulfonate, and a nonaqueous solvent (par. 220). The lithium salt except lithium fluorosulfonate can be lithium bis(oxalato)borate (par. 235). The nonaqueous solvent can comprise an amount of carboxylate ester greater than 5% by volume (par. 271), an amount of ethylene carbonate from 25% to 35% by volume, an amount of dimethyl carbonate from 30% to 40% by volume, and an amount of ethylmethyl carbonate from 30% to 40% by volume (par. 261) (all volume percentage is relative to the volume of the nonaqueous solvent). The carboxylate ester can be methyl acetate, ethyl acetate, methyl propionate, ethyl propionate (par. 269)
Kawakami et al. fail to explicitly disclose the concentration of the lithium bis (oxalato)borate is from 0.01 M to less than 0.04M. However, Minami et al. disclose that a nonaqueous electrolyte secondary battery (abstract). The nonaqueous electrolyte can comprise lithium bis(oxalato)borate (LiBOB). The amount of LiBOB is in the range of 0.01 M to 0.15 M (par. 50). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the amount of LiBOB of Minami et al. as the amount of LiBOB of Kawakami et al. because Minami et al. teach LiBOB can inhibit an increase in resistance due to charge-discharge cycles (par. 8).
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 to claim 3: Kawakami et al. discloses methyl propionate is a preferred carboxylate ester (par. 270).
Regarding to claim 4: Kawakami et al. discloses the secondary battery comprises:
the nonaqueous electrolytic solution according to claim 1;
a positive electrode; and
a negative electrode (par. 523).
Response to Arguments
Applicant’s arguments filed on 11/26/2025 have been fully considered but they are not persuasive. Applicant primarily argues:
Sakamoto does not teach or suggest the concentration of the carboxylate ester is from 0.01 % by volume to less than 10% by volume relative to the volume of the non-aqueous solvent, and the concentration of the lithium bis (oxalato)borate is from 0.01 M to less than 0.04 M.
The combined use of the carboxylate ester and LiBOB enables improved input and output characteristics of the battery and reduction in the amount of gas generation at the same time. The carboxylate ester contributes to improved input and output characteristics of the battery and LiBOB suppresses the decomposition of carboxylate ester.
The effect of reducing the amount of gas generation is little even if LiBOB is added in a concentration of 0.2 M or more, and the excess amount of LiBOB will lower input and output characteristics.
the concentration of LiBOB in a range from 0.01 M to less than 0.04 M can achieve both the reduction in the amount of generated gas and improvement of the input/output characteristics as shown in Table 1.
The upper limit (0.04 M) of the LiBOB concentration is an optimum value. The LiBOB concentration higher than this upper limit degrades the input/output characteristics.
Criticality associated with the claimed concentration (0.01% - 10%) of the carboxylate ester. Applicant alleged “adding 0.01% by volume or more of a carboxylate ester, especially a chain carboxylate ester, to the non-aqueous electrolyte, the input and output characteristics of the battery are improved”.
Sakamoto does not teach or suggest that the concentration of the carboxylate ester is from 0.01% by volume to less than 10% by volume relative to the volume of the non-aqueous electrolyte.
The use of both elements (Carboxylate ester and LiBOB) and the concentration control of these elements (Carboxylate ester and LiBOB) are essential for achieving the technical advantages of the present invention.
Sakamoto does not teach or suggest "the non-aqueous electrolyte comprising ethylene carbonate, ethylmethyl carbonate, dimethyl carbonate, and their respective concentration range.”
Sakamoto does not teach or suggest all the elements (carboxylate ester, LiBOB, ethylene carbonate, ethylmethyl carbonate, dimethyl carbonate) and their respective concentration range as recited in the amended claim 1.
Sakamoto does not teach or suggest claims 3 and 4.
In response:
Applicant’s argument is moot because newly cited Kawakami reference teaches an amount of carboxylate ester greater than 5% by volume and newly cited Minami reference teaches the concentration of LiBOB in the range of 0.01 M to 0.15 M. The motivation to use the concentration of LiBOB of Minami as the concentration of LiBOB of Kawakami is to inhibit resistance increase as described in paragraph 3 above. 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).
Newly cited Kawakami reference teaches the nonaqueous electrolytic solution can comprise both LiBOB and carboxylate ester. The additional features which the instant applicant relies on (i.e., improving input and output characteristics and reducing gas generation) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In addition, the recitation that said the combination of the carboxylate ester and LiBOB to improve input and output characteristics and to reduce gas generation does not confer patentability to the claim since the recitation of an intended use does not impart patentability to otherwise old compounds or compositions. In re Tuominen, 671 F.2d 1359, 213 USPQ 89 (CCPA 1982). See MPEP 2111.02, 2112.01 and 2114-2115.
The results presented in Table 1 in the instant specification do not show the amount of gas generation when LiBOB is above 0.04M or 0.2M with the presence of MP. Therefore, there is no data showing the effect of reducing the gas generation is little when LiBOB is added to a concentration above 0.04M or 0.2M. There is no data showing the negative impact of the excess amount of LiBOB to the input and output characteristics.
The data of the reduction of the gas generation between Examples 1-4 and Comparative Example 1 support the criticality of the lower limit of the concentration (0.01M) of LiBOB. However, there is no data showing the amount of the gas generation when using both LiBOB and MP (carboxylate ester) and controlling the concentration of LiBOB above the upper limit (0.04M). The Reference Examples 1-2 containing LiBOB outside the claimed range also show the similar amount of gas generation (~100) compared to Examples 1-4. It is unclear the reduction of gas generation is due to presence of LiBOB and/or absence of MP.
The results presented in Table 1 in the instant specification do not show the amount of gas generation when LiBOB is above 0.04M with the presence of MP. The presence of MP is critical as Applicant emphasizes the combined use of the carboxylate ester and LiBOB. There is no data showing the amount of the reduction of the generated gas and the amount of the degradation of the input/output characteristics when LiBOB is added more than 0.04M.
There is no date to show the criticality of the lower and upper limits (0.01% and 10%) of carboxylate ester to the input/output characteristics. A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997). Conclusory statements, that the claimed concentration range is unsupported by comparative data, are insufficient to overcome the prima facie case of obviousness.
Applicant’s argument is moot because newly cited Kawakami reference teaches an amount of carboxylate ester greater than 5% by volume. 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).
There is no data showing the technical impact when both elements (carboxylate ester and LiBOB) are used and the concentrations of the elements (carboxylate ester and LiBOB) are respectively more than the upper limits of the claimed range.
Applicant’s argument is moot because newly cited Kawakami reference teaches the nonaqueous solvent comprising ethylene carbonate, ethylmethyl carbonate, dimethyl carbonate, and their respective concentration range. 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).
Applicant’s argument is moot because newly cited Kawakami reference teaches the nonaqueous solvent can comprise carboxylate ester, ethylene carbonate, ethylmethyl carbonate, dimethyl carbonate, and their respective concentration range. Kawakami reference further teaches an example of the lithium salt except lithium fluorosulfonate can be lithium bis(oxalato)borate. Therefore, the nonaqueous electrolytic solution can comprise all the elements. Kawakami is silent on the concentration of LiBOB. However, the newly cited Minami reference teaches the concentration of the lithium bis (oxalato)borate from 0.01 M to 0.15M. One of ordinary skill in the art could use the concentration recommended by Minami as the concentration of LiBOB of Kawakami as Minami teaches the resistance increase could be inhibited due to LiBOB. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Applicant’s argument is moot because newly cited Kawakami reference teaches claims 3 and 4 as described in paragraph 3 above.
Conclusion
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/PIN JAN WANG/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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