DETAILED ACTION
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 Amendment and Claim Status
The amendment filed 28 August 2025 has been entered. Applicant’s amendments to the specification and claims have overcome each and every objection and 35 U.S.C. 112 rejection set forth in the Office Action mailed 28 May 2025. Claims 2–9 have been canceled. Claims 1 and 10–15 are pending in the application.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 10–15 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2022/0181615 A1) in view of Han et al. (KR 2017/0111745 A; see attached machine translation) and further in view of Kim et al. (US 2016/0190646 A1).
Regarding Claim 1, Lee discloses an electrolytic solution (see electrolyte, [0024]) for lithium secondary batteries ([0024]), comprising a lithium salt ([0092]), a solvent (see organic solvent, [0092]), and a functional additive, wherein
the functional additive comprises a high-voltage additive constituted by a second high-voltage additive, fluoroethylene carbonate, represented by [Formula 2] ([0103]).
[Formula 2]
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Lee does not specifically disclose wherein the functional additive comprises a high-voltage additive constituted by a mixture of a first high-voltage additive, perfluoro-15-crown-5-ether, represented by [Formula 1], with the second high-voltage additive.
[Formula 1]
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Lee does disclose ([0103]) other additives which can be included in the electrolytic solution to improve lifetime characteristics of the battery, suppress the reduction in battery capacity, and improve discharge capacity of the battery, such as a cyclic ether.
Han discloses an electrolytic solution (see non-aqueous electrolyte, [0031]) for lithium secondary batteries ([0031]), comprising a lithium salt ([0049]), and a solvent (see non-aqueous organic solvent, [0045]). Han teaches ([0003]) that lithium secondary batteries with high energy density and voltage are commercialized and widely used, and that ([0005]) formation of a robust solid electrolyte interface (SEI) film on the surface of the negative electrode prevents reaction between lithium ions and the negative electrode materials during charging and discharging. Han further teaches ([0033]-–[0036]) that the electrolytic solution can comprise a first high-voltage additive (see fluorine-containing ether compound), perfluoro-15-crown-5-ether, for the purpose of forming a stable SEI film that improves the capacity and life characteristics of the lithium secondary battery.
Han and Lee are analogous to the claimed invention as they are in the same field of secondary batteries capable of cycling lithium ions. It therefore would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to include a first high-voltage additive, perfluoro-15-crown-5-ether, in the high-voltage additive mixture comprised in the functional additive of Lee, for the purpose of forming a stable SEI film that improves the capacity and life characteristics of the lithium secondary battery.
Lee does not disclose wherein the functional additive further comprises vinylene carbonate (VC) as a negative electrode film additive.
Kim discloses an electrolytic solution (see electrolyte, [0058]) for lithium secondary batteries ([0058]), comprising a lithium salt ([0069]) and a solvent (see organic solvent, [0069]). Kim teaches ([0098]) that the electrolytic solution may further include a conventional additive to form an SEI film, including vinylene carbonate, and that ([0075]) the presence and thickness of an SEI film on the surface of a negative electrode affects the migration of lithium ions and prevents oxidation of the electrolytic solution on the surface of the negative electrode.
Kim is analogous to the claimed invention as it is in the same field of secondary batteries capable of cycling lithium ions. It therefore would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the electrolytic solution of modified Lee such that the functional additive further comprises vinylene carbonate (VC) as a negative electrode film additive, for the purpose of forming an SEI film which prevents oxidation of the electrolytic solution on the surface of the negative electrode.
Modified Lee does not explicitly disclose wherein: the electrolytic solution comprises the first high-voltage additive in an amount of about 0.4 to 1.0 wt% based on the total weight of the electrolytic solution, and the electrolytic solution comprises the second high-voltage additive in an amount of about 1.0 to 2.0 wt% based on the total weight of the electrolytic solution.
Lee does teach ([0103]) that additives to the electrolytic solution, including fluoroethylene carbonate and cyclic ethers, can be included alone or in a mixture in an amount of 0.1 to 5 wt % based on a total weight of the electrolytic solution in order to improve lifetime characteristics of the battery, suppress the reduction in battery capacity, and improve discharge capacity. Note that when the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP § 2144.05.I). It therefore follows that a person of ordinary skill in the art prior to the effective filing date of the claimed invention would have found it obvious to select the overlapping portions of the ranges for the wt % of the first high-voltage additive and the second high-voltage additive with a reasonable expectation that such selection would successfully result in improved lifetime characteristics of the battery, suppression of a reduction in battery capacity, and improved discharge capacity.
Modified Lee does not explicitly disclose wherein: the electrolytic solution comprises the negative electrode film additive in an amount of about 1.5 to 2.5 wt% based on the total weight of the electrolytic solution.
Kim teaches ([0100]) that the amount of the additive to form an SEI film may be from about 0.01 to 5 parts by weight, i.e. 0.01 to 5 wt%, based on a total weight of the electrolytic solution for a lithium secondary battery, with Kim teaching ([0075]) that the SEI film prevents oxidation of the electrolytic solution on the surface of the negative electrode. Note that when the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP § 2144.05.I). It therefore follows that a person of ordinary skill in the art prior to the effective filing date of the claimed invention would have found it obvious to select the overlapping portion of the ranges for the wt% of the negative electrode film additive, with a reasonable expectation that such selection would successfully result in formation of an SEI film which prevents oxidation of the electrolytic solution on the surface of the negative electrode.
Regarding Claim 10, modified Lee discloses the electrolytic solution according to Claim 1. Lee further discloses ([0101]) wherein the lithium salt comprises one or more selected from the group consisting of LiPF6, LiBF4, LiClO4, LiCl, LiBr, LiI, LiB10Cl10, LiCF3SO3, LiCF3CO2, LiAsF6, LiSbF6, LiAlCl4, CH3SO3Li, LiN(SO2C2F5)2, Li(CF3SO2)2N, LiC4F9SO3, LiB(C2O4)2, Li(SO2F)2N (LiFSI), and (CF3SO2)2NLi.
Regarding Claim 11, modified Lee discloses the electrolytic solution according to Claim 1. Lee further discloses ([0093]) wherein the solvent comprises a carbonate-based solvent and an ester-based solvent.
Regarding Claim 12, modified Lee further discloses (Lee, [0024]) a lithium secondary battery comprising the electrolytic solution according to Claim 1.
Regarding Claim 13, modified Lee discloses the lithium secondary battery according to Claim 12. Lee further discloses wherein the lithium secondary battery further comprises:
a positive electrode ([0024]) comprising a positive electrode active material comprising Ni, Co, and Mn ([0031]);
a negative electrode ([0024]) comprising one or more selected from among carbon (C)-based and silicon (Si)-based negative electrode active materials ([0077]); and
a separator interposed between the positive electrode and the negative electrode ([0105]–[0106]).
Regarding Claim 14, modified Lee discloses the lithium secondary battery according to Claim 13. Lee further discloses wherein the positive electrode active material comprises the Ni in an amount of about 80 wt% or greater based on the total weight of the positive electrode active material, by teaching ([0032]–[0036]) that the lithium nickel cobalt manganese-based oxide positive electrode active material can have the chemical formula LiNiyCozMnwO2 (i.e. [Formula 1] of Lee wherein v = p = 0 and x = 1) wherein y is in a range of 0.5 to 0.95 ([0036]) and y + z + w = 1 ([0041]). This range of 0.5 ≤ y ≤ 0.95 disclosed by Lee overlaps with the claimed range of 80 wt% or greater; Note that where the claimed range overlaps or lies inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP § 2144.05.I).
Further, Lee teaches ([0036]) that higher capacity may be achieved as an amount of the nickel among the transition metals is increased. A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious (MPEP § 2144.05.II). In the instant case, the wt% of Ni comprised in the positive electrode active material based on the total weight of transition metals present in the positive electrode active material is a variable that achieves the recognized result of affecting the capacity, as disclosed by Lee, thus making the wt% of Ni comprised in the positive electrode active material based on the total weight of transition metals present in the positive electrode active material a result effective variable. Therefore, in addition to the prima facie case of obviousness established above, it would further have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the wt% of Ni comprised in the positive electrode active material based on the total weight of transition metals present in the positive electrode active material to lie within the range of about 80 wt% or greater via routine experimentation, for the purpose of achieving a higher capacity.
Regarding Claim 15, modified Lee further discloses (Lee, [0109]) a vehicle comprising a lithium secondary battery according to Claim 12.
Response to Arguments
Applicant’s arguments in the Remarks filed 28 August 2025 regarding the 35 U.S.C. 103 claim rejections have been fully considered but they are not persuasive.
Applicant argues (p. 6–8 of Remarks) that the specification’s experimental evidence (Table 1; FIG. 1) demonstrates a synergistic and unexpected improvement in capacity retention when VC, the first high-voltage additive, and the second high-voltage additives are combined in the claimed compositional window. Applicant specifically argues that Examples 1 and 3 illustrate an improvement over the Comparative Examples which can be attributed to synergy, as the improvements for Examples 1 and 3 are greater than what would be expected with a simple additive model. This argument is not persuasive for the following reasons:
Firstly, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.”, i.e. 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 MPEP § 716.02(d)). In the instant case, the argued unexpected results do not appear to be commensurate in scope with the claimed invention. For instance, Example 2 (Table 1) comprises VC, the first high-voltage additive, and the second high-voltage additive in ratios within the scope of amended Claim 1, however Example 2 exhibits significantly lower initial capacity and capacity retention rate results than either Example 1 or Example 3. It thus appears to be the case that unexpected results are not observed for at least part of the claimed ranges.
Secondly, evidence relied upon for unexpected results should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (see MPEP § 716.02(b).I). In the instant case, Example 3 for instance cannot be directly compared to a Comparative Example which comprises VC, the first high-voltage additive, and the second high-voltage additive in amounts of 2.0, 1.0, and 0, respectively, in order to establish that the result of Example 3 is indeed a synergistic effect between the three components and not simply the effect of the first high-voltage additive being present in an amount of 1.0 (i.e., no control experiment is provided to show the base-line effect of the first high-voltage additive in an amount of 1.0 wt%).
Thirdly, to establish advantageous results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (see MPEP § 716.02(d).II). In the instant case, there appear to be insufficient tests to show the criticality of the claimed range. For instance, only Comparative Example 5 includes a test with a component wt.% outside of the claimed ranges. Furthermore, no Comparative Examples or Examples include the first high-voltage additive or second high-voltage additive in wt.% other than the end points of the claimed ranges. Additionally, all Comparative Examples and Examples only include VC at one wt.% (2.0). Thus, the criticality of the claimed ranges does not appear to be established with the results present in the specification.
Applicant also argues (p. 6 Remarks) that nothing in the cited art provides a motivation to combine the three components of VC, first high-voltage additive, and second high-voltage additive at the claimed ratios with a reasonable expectation of success. This argument is not persuasive. As set forth in the rejection of Claim 1 above:
Lee ([0103]) discloses the inclusion of the second high-voltage additive.
Teaching reference Han further provides a motivation for inclusion of the first high-voltage additive, namely that the first high-voltage additive can promote formation of a stable SEI film that improves the capacity and life characteristics of the lithium secondary battery (Han [0033]-–[0036]).
Lee further teaches ([0103]) inclusion of the high-voltage additives in an amount of 0.1 to 5 wt% based on a total weight of the electrolytic solution in order to improve lifetime characteristics of the battery, suppress the reduction in battery capacity, and improve discharge capacity; as the disclosed range overlaps with the claimed range, a prima facie case of obviousness is established.
Teaching reference Kim provides a motivation for inclusion of VC as an additive to form an SEI film (Kim [0098]), namely that the presence and thickness of an SEI film on the surface of a negative electrode affects the migration of lithium ions and prevents oxidation of the electrolytic solution on the surface of the negative electrode (Kim [0075]).
Kim further teaches (Kim [0100]) that the amount of the additive to form an SEI film may be from about 0.01 to 5 parts by weight, i.e. 0.01 to 5 wt% based on a total weight of the electrolytic solution for a lithium secondary battery in order to form the SEI film; as the disclosed range overlaps with the claimed range, a prima facie case of obviousness is established.
Thus as set forth in the rejection of Claim 1 above, a person of ordinary skill in the art would have been motivated, in light of the cited art, to combine the three components above in the claimed ratios; Applicant’s argument is therefore not persuasive.
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.M.F./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725