DETAILED ACTION
Claims 1, 3-8, 12, 21 and 23-32 are pending as amended on 10 April 2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant’s amendments to the claims and the remarks/arguments as well as the Declaration under 37 C.F.R. 1.132 of Shuhei Sawa, all filed 10 April 2026 have been entered and fully considered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on7 January 2026 was filed after the mailing date of the first Office action on 6 January 2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Newly submitted claims 28-29 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims 28-29 are directed to an energy device which is different from the elected invention of an electrolytic solution.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 28 and 29 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Amendment and Arguments
The amendment to the claims filed on 10 April 2026 does not comply with the requirements of 37 CFR 1.121(c) because the status identifier of claims 5, 6 should be “withdrawn”. Amendments to the claims filed on or after July 30, 2003 must comply with 37 CFR 1.121(c) which states:
(c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement (e.g., Claims 1–5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.
(2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn—currently amended.”
(3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of “original,” “withdrawn” or “previously presented” will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of “withdrawn” or “previously presented.” Any claim added by amendment must be indicated with the status of “new” and presented in clean version, i.e., without any underlining.
(4) When claim text shall not be presented; canceling a claim.
(i) No claim text shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.”
(ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim.
(5) Reinstatement of previously canceled claim. A claim which was previously canceled may be reinstated only by adding the claim as a “new” claim with a new claim number.
Since the reply filed on 10 April 2026 appears to be bona fide, in the interest of compact prosecution and as a courtesy to Applicant, the amendment has been entered and fully examined.
Applicant's arguments in light of the Declaration under 37 C.F.R. 1.132 of Shuhei Sawa have been fully considered but they are not persuasive.
Applicant argues that the additional comparative example presented in the Declaration under 37 C.F.R. 1.132 of Shuhei Sawa together with Example 4-1 to 4-6 as well as comparative example 4-1 and 4-2 provides support of the criticality of the claimed ratio range in suppressing the discharge resistance increase rate of the battery. The examiner notes that the additional comparative example presented in the Declaration does not contain the claimed chain sulfonate ester, while the claims require the presence of chain sulfonate ester. Thus Applicant's showing fails to provide evidence of the criticality of the claimed lower end mass ratio .
Further, the claims are directed to a wide range of chain sulfonate ester, however, Applicant’s showing is a result of a particular alkyl methanesulfonate ester, i.e. ethyl methanesulfonate (instant specification, [0185]), thus Applicant's showing is not commensurate in the scope with the claims. MPEP 716.02(d) states: 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). See also In re Peterson, 315 F.3d 1325, 1329-31,65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003); In re Grasselli, 713 F.2d 731,741,218 USPQ 769, 777 (Fed. Cir. 1983).
Applicant further argues that Tokuda does not discloses the density of the electrolyte is about 1 g/ml. However, Tokuda teaches that the chain carbonate such as ethyl methyl carbonate can be incorporated into the non aqueous electrolyte as the main solvent in an amount of 85 vo.% ([0093] and [0099]), which has a density of about 1.006g/mL. Thus it is reasonable to assume the density of the electrolyte is close to that of ethyl methyl carbonate. Additionally, the examiner notes that Tokuda further discloses that lithium difluorophosphate can be present in an amount of 8% by mass([0142]-[0144]), which is also within the range estimated by the examiner.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Claim Rejections - 35 USC § 103
Claims 1, 3, 4, 7, 8, 12 and 21 stand, and new claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Tokuda.
Tokuda teaches a non-aqueous electrolytic solution comprises a main electrolyte preferably lithium difluorophosphate ([0126]-[0128]), additional electrolyte([0142]), a non-aqueous solvent([0044] and [0153]), cyclic carbonate having an unsaturated bond([0033]-[0034] and [0045]), a chain sulfonic ester having 1-4 carbon atoms such as methyl methanesulfonate, ethylethanesulfonate ([0066]), which meets the claimed formula(1) wherein R1 and R2 are both methyl or both ethyl, i.e., C2 linear aliphatic hydrocarbon.
Tokuda teaches that the main electrolyte is preferably present in an amount of 0.7 mol/L to 1.5 mol/L ([0139] and [0141]), which is equivalent to about 7.6 % to 16 % by mass calculated by the examiner based on a molecular mass of about 107.9 of lithium difluorophosphate; and the sulfonic ester is preferably present in an amount of about 0.2 to 5% ([0068]) , thus the mass ratio of the sulfonate ester to the fluorophosphate is about 1:80 to 2:3 calculated by the examiner (i.e., 0.2/16 to 5/7.6), which overlaps with the claimed ratio. Tokuda further discloses that lithium difluorophosphate can be present in an amount of 8% by mass([0142]-[0144]), thus a mass ratio of 0.2/8 to 5/8, which also overlaps with the claimed ratio.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include the fluorophosphate and the sulfonate ester at the instantly claimed ratio range since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Claims 1, 3, 4, 7, 8, 12, 21 and 23 stand, and new claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Ohashi.
Regarding claims 1, 3, 4, 7, 8, 12, 21 and 24, Ohashi teaches a nonaqueous electrolytic solution contains an electrolyte, a nonaqueous solvent such as a combination of a cyclic carbonate and a chain carbonate ([0553]), one or more compounds selected from a monofluorophosphate and a difluorophosphate, a carbonate that contains an unsaturated bond and/or a halogen atom such as vinyl carbonate and fluoroethylene carbonate ([0024], [0141], [0143] and [0171]), and an additive such as methyl methanesulfonate ([0591], [0614] and [0625]), which meets the claimed formula(1) wherein R1 and R2 are both methyl.
Ohashi teaches that the total proportion of the monofluorophosphate and/or the difluorophosphate is preferably 3% by weight or less with respect to the total amount of the nonaqueous electrolytic solution ([0468] and Tables 1 and 2), and the additive such as methyl methanesulfonate is present in the range of usually 0.1% by weight to 5% by weight with respect to the total nonaqueous electrolytic solution ([0652]), thus the mass ratio of the sulfonate ester to the fluorophosphate is about 0.03 to 1.68, calculated by the examiner (i.e., 0.1/3 to 5/3), which overlaps with the claimed ratio.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include the fluorophosphate and the sulfonate ester at the instantly claimed ratio range since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding claim 23, Ohashi teaches the embodiment wherein the non-aqueous solvent is a combination of carbonates ([0553] and [0750]), thus absence of a chain ether.
Claims 1, 3, 4, 7, 8, 12, 23-27 and 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over US2014/0030610A1 (Abe).
Regarding claims 1, 3, 4, 7, 8, 12 and 24, Abe teaches a non-aqueous electrolytic solution comprises an electrolyte, a non-aqueous solvent containing both a cyclic carbonate and a linear ester ([0013][0023] and [0063] ), at least one cyclic carbonate having a carbon-carbon double bond or a fluorine atom ([0066]), 2-propynyl methanesulfonate or other linear sulfonate ([0085] and [0088]), which meets the claimed formula (I) when R1 is methyl and R2 is propynyl group, and one or more of LiPF6 and lithium difluorophosphate ([0093]).
Abe teaches that lithium difluorophosphate is present in an amount of about 0.04 to 0.4M ([0094] and [0141]), which is equivalent to about 0.43 % to 4.3 % by mass estimated by the examiner based on a molecular mass of about 107.9 of lithium difluorophosphate and the density of the main solvent of ethyl methyl carbonate is 1.006g/mL ([0073] and [0075]); and the 2-propynyl methanesulfonate or other linear sulfonate can be present in an amount of 1% or less ([0089]), thus the mass ratio of the sulfonate ester to the fluorophosphate is about 10:43 to 100:43 , calculated by the examiner (i.e., 1:0.43 to 1:0.43), which overlaps with the claimed range.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include the fluorophosphate and the sulfonate ester at the instantly claimed ratio range since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding claims 23-27 and 30-31, Abe teaches the embodiment wherein the non-aqueous solvent is a combination of a cyclic carbonate and a linear ester ([0063]), thus absence of a chain ether or aromatic isocyanate compound.
Claims 21 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Abe as applied to claims 1, 3, 4, 7, 8, 12, 23-27 and 30-31 above, in view of Ohashi.
The teachings of Abe are set forth above.
While teaching linear sulfonate compound can be added to the electrolytic solution to improve high temperature cycle properties ([0088]), Abe does not expressly discloses the claimed sulfonate wherein both R1 and R2 are aliphatic saturated hydrocarbons.
Ohashi teaches that methyl methanesulfonate can be added to non aqueous electrolytic solution to improve capacity retention and cycle characteristics after high temperature storage ([0591], [0614] and [0625]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to include methyl methanesulfonate of Ohashi in the electrolytic solution of Abe. The rationale to do so would have been the motivation provided by the teachings of Ohashi that to do so would predictably improve capacity retention and cycle characteristics after high temperature storage ([0591], [0614] and [0625]), which is desirable by Abe ([0089]), and further since it has been held that it is prima facie obviousness to use a known material based on its suitability for its intended use, in the instant case, a linear sulfonate for improving high temperature cycle characteristics. See MPEP 2144.06(II) and 2144.07; In re Fout, 675 F2d 297, 213 USPQ 532 (CCPA 1982); Sinclair & Carroll Co v Interchemical Corp, 325 US 327, 65 USPQ 297 (1945); In re Leshin, 227 F2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc v Ag-Bag Corp, 857 F2d 1418, 8 USPQ2d 1323 (Fed Cir 1988).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-2721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AIQUN LI/ Ph.D., Primary Examiner, Art Unit 1766
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