DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 25 December 2025 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Response to Amendment and Arguments
The amendment to the claims filed on 25 December 2025 does not comply with the requirements of 37 CFR 1.121(c) because the status identifier of claims 5, 6, 9-11, 13 and 14 should be “withdrawn”.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of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application.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by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).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 25 December 2025 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 amendment does not distinguish from Tokuda.
Applicant's arguments in light of the amendment have been fully considered but they are not persuasive.
Applicant argues that the claimed mass ratio of the content of the chain sulfonate ester to the content of the fluorophosphate as amended is critical in forming the protective coating that leads to the suppression of the normal temperature discharge resistance increase rate. The examiner acknowledges that instant Table 4 shows that a ratio higher than 82/18, i.e., 5:1 (83.33/16.67) results in higher resistance increase rate, however, Applicant fails to provide evidence to support the criticality of the lower end point of the ratio, i.e., 20/80 as amended. As set forth in previous Office action, Tokuda teaches a mass ratio of the sulfonate ester to the fluorophosphate is about 1:80 to 2:3, the higher endpoint of Tokuda is within the claimed range. Therefore the rejection over Tokuda is maintained and reiterated below in its entirety.
Claim Rejections - 35 USC § 103
Claims 1, 3, 4, 7, 8, 12 and 21-22 stand 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.
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 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over US2011/0091768A1 (Ohashi).
Regarding claims 1, 3, 4, 7, 8, 12 and 21-22, 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.
Conclusion
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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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766