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 .
Election/Restrictions
Applicant's election with traverse of Group III, an energy device comprising an organophosphate-based compound wherein the negative electrode comprises a negative electrode active material containing a silicon atom in the reply filed on 09/16/2025 is acknowledged. The traversal is on the ground(s) that the office action fails to provide evidence of the utilities of the subgroups (Remarks 09/16/2025 pp. 3 ¶2 ).
Applicant’s Example 1 (paragraphs [0252-0255] of the instant specification) demonstrates utility of Group I (claims 1-8), a non-aqueous electrolytic solution comprising a compound represented by formula A2 in a battery where only a carbonaceous material is used as the negative electrode active material ([0252]). Group II (claim 9) has utility as a flame retardant; Henningson (KR20140041684A, see attached machine translation) teaches utility of a similar class of chemicals (halogenated phosphonates, i.e., phosphonic acid esters) for the use in flame retardants for polymers (Henningson [0009]).
Applicant further cites a lack of search burden (Remarks 09/16/2025 pp. 3 ¶2). This is not found persuasive because the inventions of each group are still drawn to separate classifications and require a separate field of search; Group I is drawn to H01G11/64; Group II is drawn to C07F9/65742; Group III is drawn to H01M4/386 (MPEP 808.02).
Claims 1-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group I (a non-aqueous electrolytic solution) and Group II (organophosphate compound), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09/16/2025.
Applicant's election with traverse of an energy device comprising the species represented by chemical formula B-58 of the compounds presented in pages 55-62 of the instant specification in the reply filed on 09/29/2025 has been acknowledged. The traversal is on the grounds that the members of Species 2 are not patentably distinct (Remarks 09/29/2025 pp. 2 ¶2).
While this argument has been considered, it has not been found persuasive as the different species of claim 2 are still demonstrated to have different performance; as non-limiting examples, the species of Applicant’s Example 13 (Instant specification, [0308]) is shown to have improved capacity retention over the species Example 11 ([0303]) and significantly inferior capacity retention compared to the species of Example 12 ([0307]) (pp. 206 Table 5). Additionally, species with hydrogen atoms substituted with halogens in the tetravalent alkyl group forming rings with the phosphate ester are indicated by the specification as having improved charge/discharge performance, while species without this substitution are easier to produce and store ([0028]), these properties of different species being mutually exclusive. Furthermore, the evidence of record does not appear to show that they are obvious variants.
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Elected species B-58 (3,9-difluoro-2,4,8,10-tetraoxa-3,9-diphosphaspiro[5,5]undecane 3,9-dioxide)
Applicant further cites a lack of search burden (Remarks 09/29/2025 pp. 2 ¶3-5). This is not found persuasive as a search for members of Species 2 such as species B-58 (see above) where the tetravalent alkyl group has no halogen substitution (improving production and storage properties) would not necessarily uncover results for species wherein the tetravalent alkyl group has halogen substitution to improve the charge/discharge performance ([0028]). Furthermore, no evidence of record indicates that the species are obvious variants.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-13 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected member of Species 2, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09/26/2025.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 10, 14, 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (JP2019153443A, cited in IDS filed 11/28/2022; see attached machine translation)
Regarding claims 10, 14, 16, Zhang discloses an energy device (“lithium secondary battery”, [0012]) comprising:
a positive electrode capable of absorbing and releasing metal ions ([0012]);
a negative electrode capable of absorbing and releasing metal ions ([0012]); and
a non-aqueous electrolytic solution ([0012]);
wherein the negative electrode comprises a negative electrode active material containing a silicon atom (“silicon, silicon alloys”, [0086]); and
wherein the non-aqueous electrolytic solution is a non- aqueous electrolytic solution containing the following compound (pp. 10, [0041]):
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Annotated Zhang formula a-8
wherein, in general formula (B2) (see claim 10), X2’ and X3’ represent a fluorine atom (claims 10,16), and Z represents a tetravalent alkyl group in which the number of carbon atoms forming rings together with a part of a halogenated phosphate ester is 5 (claims 10, 14).
Regarding claim 17, Zhang discloses the energy device according to claim 10, wherein the non-aqueous electrolytic solution comprises at least one compound (“other additive”, [0042]) selected from the group consisting of a saturated cyclic carbonate (“ethylene carbonate”, [0064]), a chain carbonate ([0067]), a chain carboxylate ester (“1,1-dicyanoethyl acetate”, [0050]), a cyclic carboxylate ester (“cyclic carboxylic acid esters”, [0062]), an ether compound ([0068-0069]) and a sulfone compound ([0068]).
Regarding claim 18, Zhang discloses the energy device according to claim 10, wherein the total content of the compounds represented by the general formula B2 is 0.001-10% by mass with respect to the total amount of non- aqueous electrolytic solution ([0041]), which falls within the claimed range of 0.001% by mass or more and 30% by mass or less.
Conclusion
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/E.C./Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 1/14/2026