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 .
Response to Arguments
Applicant's arguments filed September 22, 2025, have been fully considered but they are not persuasive.
Applicant contends that the claimed combination of additives provides an unexpected improvement relative to either additive alone (pp. 5-7). However, while the experimental examples of the instant specification (Example 1 and Comparative Examples 1-3, Table 1) demonstrate an improvement for the combination of additives greater than the sum of their individual contributions, the evidence is not commensurate in scope with the instant claims. See MPEP 716.02(d). The experimental examples are limited to LiPF6/LiFSI in an EC/EMC solvent with a nickel-rich NMC cathode and a narrow range (0.3-0.5 wt%) of additive content. Changing any of these variables would necessarily change the function/effectiveness of any additives, and the cited prior art references have no such limitations.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-8 and 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Utsuki et al (JP 2005222846 A) in view of Lim et al. (KR 20190059256 A; citations refer to US 2020/0251777 A1 as a direct English translation).
Regarding claim 1, Utsuki teaches a non-aqueous electrolyte solution for a lithium-ion battery comprising a lithium salt (LiPF6), an organic solvent (EC/DEC/PC), and an additive (Compound No. 1) corresponding to Formula 2 of the instant claim for L=CH2 (Utsuki [0027] and [0085]).
Utsuki does not teach the use of a second additive comprising a compound of Formula 1. Lim teaches that adding propynyl imidazole carboxylate (Lim Formula 1a; [0073]), which corresponds to Formula 1 of the instant claim for R1=R2=R3=H, to the electrolyte of a lithium-ion battery provides a stable SEI and prevents electrodeposition of dissolved metal, thus improving cycle life and high temperature storage (Lim [0071]-[0073]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add the additive of Lim to the electrolyte of Utsuki in order to improve cycle life and high temperature storage.
Lim teaches that additional additives such as sultones and cyclic carbonates can improve SEI formation (Lim [0078]-[0086]), that suitable cyclic carbonates include vinylene carbonate (Lim [0086]), and that suitable sultones include propane sultone (Lim [0080]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add any of the indicated compounds, including propane sultone and vinylene carbonate, to improve SEI formation.
Regarding claim 2, modified Utsuki teaches 3 wt% Formula 2 (Utsuki [0085]), which falls within the range of the instant claim, and 2 wt% Formula 1 (Lim Example 1, Tables 1 and 2), which falls within the range of the instant claim.
Regarding claim 3, modified Utsuki teaches that the Formula 2 additive is preferably added at 0.5-3 wt% (Utsuki [0057]) and Formula 1 at 0.1-7 wt% (Lim [0075]), for a total loading of 0.6-10 wt%, which overlaps the range of the instant claim. 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).
Regarding claims 4 and 5, the additives are added at 2:3, which falls within the range of the instant claim.
Regarding claim 6, Formula 1a of Lim corresponds to Formula 1a of the instant claim.
Regarding claim 7, Compound No. 1 of Utsuki corresponds to Formula 2a of the instant claim.
Regarding claim 8, modified Utsuki teaches that additional additives such as halogen-substituted cyclic carbonates (FEC), nitrile compounds, phosphate compounds, and borate compounds can improve SEI formation (Lim [0078]-[0089]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add any of the indicated compounds, including cyclic carbonates, nitrile compounds, phosphate compounds, and borate compounds, to improve SEI formation.
Regarding claims 10 and 11, modified Utsuki teaches that sultones are preferably included at 1-5 wt% (Lim [0080]) and cyclic carbonates at 0-3 wt% (Lim [0086]), for a range of ratios of 0:5-3:1, which overlaps the ranges of the instant claims. 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).
Regarding claim 12, modified Utsuki teaches the use of LiPF6 (Utsuki [0085]).
Regarding claim 13, modified Utsuki teaches the use of the electrolyte in a lithium-ion battery (Utsuki [0087]-[0091]).
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.
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/J.A.C/ Examiner, Art Unit 1722
/NIKI BAKHTIARI/ Supervisory Patent Examiner, Art Unit 1722