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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 24 July 2026 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
Applicant’s arguments have been fully considered but are not persuasive.
Applicant argues that Abe is directed to a different electrolyte additive system wherein an organic phosphorus compound represented by Abe's general formula (I) as the essential component responsible for improving electrochemical characteristics. However, the instant claims do not exclude an organic phosphorus compound or components other than the claimed.
Applicant argues that the chain sulfonate ester is merely one optional additive selected from broad lists of additional additives, the fluorophosphate is merely one optional lithium salt selected from broad lists of electrolyte salts, and Abe does not expressly disclose the claimed chain sulfonate ester and fluorophosphate being used together. The examiner notes that it has been held that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of these combinations less obvious, citing Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804 (Fed. Cir. 1989). It is also well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992).
Applicant argues that Abe's examples do not specifically disclose a non-aqueous electrolytic solution containing the presently claimed chain sulfonate ester and the presently claimed fluorophosphate in the claimed mass ratio. The examiner notes that “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). MPEP2123, II.
Applicant argues that Abe does not teach the claimed mass ratio of the chain sulfonate ester to the fluorophosphate, neither a result-effective variable. The examiner disagrees. Abe expressly teaches that lithium difluorophosphate is present in an amount of about 0.04 to 0.4M ([0094]), 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. Abe further teaches that sufficient amount of the sulfonate-containing compound has the effect of improving high-temperature cycle properties ([0089]), and sufficient proportion of the lithium salt in the nonaqueous solvent results in exhibiting the effect of improving electrochemical characteristics at high temperatures ([0094]). Thus Abe recognizes that the amount of both the lithium salt and of the sulfonate compound are result-effective variable.
Applicant argues that there is no motivation to combine Abe and Ohashi as Ohashi is directed to a solvent comprising an aromatic isocyanate. The examiner acknowledges that Ohashi requires the presence of an aromatic isocyanate in the solvent, however, Ohashi discloses that methyl methanesulfonate as one of the known additive that aids for improving capacity retention and cycle characteristics after high-temperature storage([0591], [0614] and [0626]), thus the effect of the additive is not limited to an aromatic isocyanate-containing solvent, and it is prima facie obviousness to use a known material based on its suitability for its intended use. 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).
As to the amount of the methanesulfonate, Ohashi teaches that the concentration of the aid is in the range of usually 0.1% by weight to 5% by weight with respect to the total nonaqueous electrolytic solution ([0652]), and one of ordinary skill in the art would have been motivated to adjust the amount in order to obtain desired capacity retention and cycle characteristics (Ohashi, [0614]).
Claim Rejections - 35 USC § 103
Claims 25, 27 and 30-32 stand, and new claims 34-36 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Abe.
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, lithium difluorophosphate and lithium monofluorophosphate ([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 1:4.3), which overlaps/encompasses with the claimed ranges.
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).
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.
Claim 33 stands, and new claims 37-38 are rejected under 35 U.S.C. 103 as being unpatentable over Abe as applied to claims 25, 27, 30-32, 34-36 and 39 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 disclose the claimed sulfonate wherein both R1 and R2 are aliphatic saturated hydrocarbons, or an alkyl R2 group.
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]), which meets the claimed R1 and R2, both being methyl group.
Ohashi teaches that the concentration of the aid is in the range of usually 0.1% by weight to 5% by weight with respect to the total nonaqueous electrolytic solution ([0652]).
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 and its amount 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).
Thus the mass ratio of the methyl methanesulfonate to the fluorophosphate is about 1:4.3 to 100:4.3 , estimated by the examiner based on 1 % methanesulfonate and 0.04 to 0.4M, i.e., 0.43% to 4.3% of fluorophosphate (i.e., 1:4.3 to 1:0.43), which overlaps/encompasses 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.
Claims 25, 27 and 30-32, 34-36 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over US2015/0050562A1(Abe’562), which is listed in Applicant’s information disclosure statement.
Abe’562 teaches an nonaqueous electrolytic solution comprises an electrolyte, a nonaqueous solvent containing both cyclic carbonate and chain ester ([0037]), at least one kind of cyclic carbonate having an unsaturated bond such as a carbon-carbon double bond or a fluorine atom, a sulfonate ester such as 2-propynyl methane sulfonate ([0031]), which meets the claimed formula (I) wherein R1 is methyl and R2 is propynyl group, and lithium difluorophosphate (LiPO2F2) ([0062]).
Abe’562 teaches that the LiPO2F2 is preferably present in 0.04 M to 0.4 M ([0062]), 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 ([0046] and [0047]) ; and the 2-propynyl methanesulfonate or other linear sulfonate can be present in an amount of 0.3 to 3 mass% exemplified as 1% ([0033] and Table 1), thus the mass ratio of the sulfonate ester to the fluorophosphate is about 10:43 to 100:43 , calculated by the examiner (i.e., 1:0.043 to 1:0.43), which overlaps/encompasses with the claimed ranges.
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).
Abe’562 teaches the embodiment wherein the non-aqueous solvent is a combination of a cyclic carbonate and a linear ester ([0037] and [0051]), thus absence of a chain ether, aromatic isocyanate compound or phosphorus-containing organic compound.
Claim 33 and 37-38 are rejected under 35 U.S.C. 103 as being unpatentable over Abe’562 as applied to claims 25, 27, 30-32, 34-36 and 40 above in view of Ohashi.
The teachings of Abe’562 are set forth above.
While teaching sulfonate compound containing carbon-carbon triple bond can be added to the electrolytic solution to improve electrochemical properties in a broad temperature range ([0020]), Abe’562 does not expressly disclose the claimed sulfonate wherein both R1 and R2 are aliphatic saturated hydrocarbons, or an alkyl R2 group.
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]), which meets the claimed R1 and R2, both being methyl group.
Ohashi teaches that the concentration of the aid is in the range of usually 0.1% by weight to 5% by weight with respect to the total nonaqueous electrolytic solution ([0652]).
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 and its amount of Ohashi in the electrolytic solution of Abe’562. 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’562 ([0020]).
Thus the mass ratio of the methyl methanesulfonate to the fluorophosphate is about 1:4.3 to 100:4.3 , estimated by the examiner based on 1 % methanesulfonate and 0.04 to 0.4M, i.e., 0.43% to 4.3% of fluorophosphate (i.e., 1:4.3 to 1:0.43), which overlaps/encompasses 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.
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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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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