DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-15 are pending.
The foreign priority application No.10-2021-0009661 filed on January 22, 2021 in the Republic of Korea has been received and it is acknowledged.
The examiner would like to note that the copy of the priority document has been made of record with the pages out of order.
Claim Objections
Claims 1-15 are objected to because of the following informalities:
The limitation “fluoro atoms” in claims 1, 3, 4, 6 should be amended to recite “fluorine atoms”.
Claims, 2, 5, and 7-15 are objected to as being dependent on the objected claim 1.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The amended claim 1 recites “a substituted or unsubstituted C1 to C10 alkyl group optionally substituted with one or more fluoro atoms, a substituted or unsubstituted C2 to C10 alkenyl group optionally substituted with one or more fluoro atoms, a substituted or unsubstituted C2 to C10 alkynyl group optionally substituted with one or more fluoro atoms, a substituted or unsubstituted C1 to C10 alkoxy group optionally substituted with one or more fluoro atoms, a substituted or unsubstituted C3 to C10 cycloalkyl group optionally substituted with one or more fluoro atoms, a substituted or unsubstituted C3 to C10 cycloalkenyl group optionally substituted with one or more fluoro atoms, a substituted or unsubstituted C3 to C10 cycloalkynyl group optionally substituted with one or more fluoro atoms, or a substituted or unsubstituted C6 to C20 aryl group optionally substituted with one or more fluoro atoms”.
The amended claim 3 recites “a substituted or unsubstituted C1 to C10 alkyl group optionally substituted with one or more fluoro atoms, a substituted or unsubstituted C2 to C10 alkenyl group optionally substituted with one or more fluoro atoms, or a substituted or unsubstituted C2 to C10 alkynyl group optionally substituted with one or more fluoro atoms”.
The amended claim 4 recites “a substituted or unsubstituted C1 to C5 alkyl group optionally substituted with one or more fluoro atoms, a substituted or unsubstituted C2 to C5 alkenyl group optionally substituted with one or more fluoro atoms, or a substituted or unsubstituted C2 to C5 alkynyl group optionally substituted with one or more fluoro atoms”.
The specification of the instant application defines "substituted" as the replacement of at least one hydrogen of a substituent or a compound by deuterium, a halogen, a C1 to C30 alkyl group, a C1 to C10 alkylsilyl group, a C6 to C30 arylsilyl group, a C3 to C30 cycloalkyl group, a C3 to C30 heterocycloalkyl group, a C6 to C30 aryl group, a C2 to C30 heteroaryl group, a C1 to C10 fluoroalkyl group, or a cyano group (see page 9 of the specification of the instant application).
It is not clear if the groups in claims 1, 3, and 4 may be substituted with any of the above-mentioned substituents or only with fluorine atoms.
For the examination of the merits is the considered that:
- claim 1 recites “a substituted or unsubstituted C1 to C10 alkyl group, a substituted or unsubstituted C2 to C10 alkenyl group, a substituted or unsubstituted C2 to C10 alkynyl group, a substituted or unsubstituted C1 to C10 alkoxy group, a substituted or unsubstituted C3 to C10 cycloalkyl group, a substituted or unsubstituted C3 to C10 cycloalkenyl group, a substituted or unsubstituted C3 to C10 cycloalkynyl group, or a substituted or unsubstituted C6 to C20 aryl group”;
-claim 3 recites “a substituted or unsubstituted C1 to C10 alkyl group, a substituted or unsubstituted C2 to C10 alkenyl group, or a substituted or unsubstituted C2 to C10 alkynyl group”; and
-claim 4 recites “a substituted or unsubstituted C1 to C5 alkyl group, a substituted or unsubstituted C2 to C5 alkenyl group, or a substituted or unsubstituted C2 to C5 alkynyl group”.
Claims 2 and 5-15 are rejected as being dependent on the rejected claim 1.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6-11, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-11, 14, 15, and 19 of copending Application No. 18/012,630 (US 2024/0072303).
The copending Application No. 18/012,630 claims an electrolyte for a rechargeable lithium battery comprising a non-aqueous organic solvent, a lithium salt, and an additive, wherein the additive is a composition including a second compound. The second compound is a represented by Chemical Formula 1 or Chemical Formula 2:
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,
wherein in Chemical Formula 1, X1 and X2 are each independently a halogen or -O-L1-R1, at least one of X1 to X2 is -O-L1-R1, L1 is a single bind or a substituted or unsubstituted C1-C10 alkylene group, R1s are each independently a cyano group (-CN), a difluorophosphite group (-OPF2), a substituted or unsubstituted C1-C10 alkyl group, a substituted or unsubstituted C2-C10 alkenyl group, a substituted or unsubstituted C2-C10 alkynyl group, a substituted or unsubstituted C3-C10 cycloalkyl group, a substituted or unsubstituted C3-C10 cycloalkenyl group, a substituted or unsubstituted C3-C10 cycloalkynyl group, or a substituted or unsubstituted C6-C20 aryl group, and wherein X1 and X2 are simultaneously -O-L1-R1, R1s are independently present, or two R1s are linked to form a substituted or unsubstituted monocyclic or polycyclic aliphatic heterocycle or a substituted or unsubstituted monocyclic or polycyclic aromatic heterocycle, and
wherein in Chemical Formula 2 L3 and L5 may be a substituted or unsubstituted C1-C10 alkylene group or a substituted or unsubstituted C6-C30 arylene group, and Y1 to Y3 may be a cyano group (-CN)(claim 1).
The copending Application No. 18/012,630 does not claim that the compounds of Chemical Formulas 1 and 2 are used in combination.
However, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to use the compounds of Chemical Formulas 1 and 2 in combination in the electrolyte of the copending Application No. 18/012,630, because the two compounds are used for the same purpose.
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.) (MPEP 2144.06.I. COMBINING EQUIVALENTS KNOWN FOR THE SAME PURPOSE)
The copending Application No. 18/012,630 further claims that the second compound is included in an amount of 0.1-5.0 parts by weight based on 100 parts by weight of the electrolyte (claim 15).
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to use a combination of a compound of Chemical Formula 1 and a compound of Chemical Formula 2, wherein each compound is comprised in an amount of 0.05-2.5 parts by weight based on 100 parts by weight of the electrolyte.
Therefore, the electrolyte in claims 1 and 2 of the instant application is obvious over the electrolyte in claims 1 and 15 of the copending Application No. 18/012,630.
The copending Application No. 18/012,630 further claims a compound of formula 2-c:
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(claim 14), which is a compound of Chemical Formula 1 in claims 3 and 4 of the instant application wherein R1-R3 are substituted C2 alkyl groups.
The copending Application No. 18/012,630 further claims that one of X1 and X2 in Chemical Formula 1 is a fluoro group and the other is -O-L1-R1, wherein L1 is a single bond or a substituted or unsubstituted C1-C10 alkylene group, R1 is a cyano group (-CN) or a difluorophosphite group (-OPF2)(claim 7), same as in claim 6 of the instant application.
The copending Application No. 18/012,630 further claims a compound of Chemical Formula 1-1:
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, wherein m is an integer from 1 to 5, and R2 is a cyano group (-CN) or a difluorophosphite (-OPF2) (claim 8), same as in claim 7 of the instant application.
The copending Application No. 18/012,630 further claims that each of X1 and X2 in Chemical Formula 1 are -O-L1-R1, and two L1s are each independently a single bond or a substituted or unsubstituted C1-C10 alkylene group, and two R1s are each independently a substituted or unsubstituted C1-C10 alkyl group, or two R1s are linked to form a substituted or unsubstituted monocyclic aliphatic heterocycle or polycyclic aliphatic heterocycle (claim 9), same as in claim 8 of the instant application.
The copending Application No. 18/012,630 further claims a compound of Chemical Formula 1-2:
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wherein L6 is a substituted or unsubstituted C2-C5 alkylene group (claim 10), same as in claim 9 of the instant application.
The copending Application No. 18/012,630 further claims that the Chemical Formula 1-2 is represented by Chemical Formula 1-2a or Chemical Formula 1-2b:
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, wherein R5-R14 are independently hydrogen, a halogen group, or a substituted or unsubstituted C1 to C5 alkyl group (claim 11), same as in claim 10 of the instant application.
The copending Application No. 18/012,630 further claims compounds of formulas 2-a to 2-d:
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(claim 14), same as the compounds of formulas 2-a to 2-d in claim 11 of the instant application.
The copending Application No. 18/012,630 further claims a rechargeable lithium battery comprising a positive electrode including a positive electrode active material, a negative electrode including a negative electrode active material, and the electrolyte (claim 19), same as in claim 15 of the instant application.
The examiner would like to note that claims 1, 7-11, 14, 15, and 19 of copending Application No. 18/012,630 have been allowed, but the Application No. 18/012,630 did not issue as a patent yet.
This is a provisional nonstatutory double patenting rejection.
Claims 1-7 and 9-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 9-13 of copending Application No. 18/013,824 (US 2023/0344004) in view of Schmitz et al. (US 2017/0040649).
The copending Application No. 18/013,824 claims an electrolyte for a rechargeable battery comprising a non-aqueous organic solvent, a lithium salt, and an additive comprising a first compound of Chemical Formula 1 and a second compound of Chemical Formula 2-1 or Chemical Formula 2-3:
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,
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wherein m is integer from 1 to 5, R10 is a cyano group (-CN) or a difluorophosphite group (-OPF2);
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, wherein X1 may be a halogen, and L1 is a substituted or unsubstituted C2-C5 alkylene group (claim 1).
The first compound is included in an amount of 0.1-5wt% based on the total weight of the electrolyte (claim 10), and the second compound is included in an amount of 0.1-5wt% based on the total weight of the electrolyte (claim 11).
The second compound in Chemical Formula 2-1 or 2-3 is the second compound of Chemical Formula 2 in claims 1, 6, 7 and 9 of the instant application.
The compounds of Chemical Formulas 2-2a and 2-2b wherein R8-R17 are hydrogen atoms in claim 10 of the instant application are obvious over the compound of Chemical Formula 2-3 above wherein X1 is halogen and L1 is C2-3 alkylene.
The first compound is not the first compound in claim 1 of the instant application.
However, Schmitz et al. teach that the first compound of Chemical Formula 1 in claim 1 of the copending Application No. 18/013,824 is functionally equivalent with a compound of formula (IIa):
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as flame retardants for electrolyte compositions (par.0045-0050 and par.0064-0066).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to replace the first compound of Chemical Formula 1 with the compound of formula (IIa) of Schmitz et al. in the electrolyte in claim 1 of the copending Application No. 18/013,824, because both compounds are flame retardants for electrolytes.
Schmitz et al. further teach that in formula (IIa) R3-R5 may be C1-C10 alkyl, C3-C6 cycloalkyl, C6-C12 aryl which may be substituted with one or more F (par.0049).
This compound is a first compound of Chemical Formula 1 in claims 1 and 3-4 of instant application.
Schmitz et al. teach that the compound of formula (IIa) may be triethylphosphate (par.0050), which is a compound of formula 1-a in claim 5.
Therefore, the electrolyte in claims 1, 10, and 11 of the copending Application No. 18/013,824 modified by Schmitz is equivalent to the electrolyte in claims 1, 3-7, 9, 10, 12, and 13 of the instant application.
The copending Application No. 18/013,824 further claims that the composition comprises the first compound and the second compound in a weight ratio of 5:1 to 10:1 (claim 3). This range is within the range in claim 2 of the instant application.
The copending Application No. 18/013,824 further claims that the second compound is a compound of one of the formulas 2-a to 2-d (claim 9), same as in claim 11 of the instant application.
The copending Application No. 18/013,824 further claims that the composition represents 1.0-10wt% based on the total weight of the electrolyte (claim 12). This range is within the range in claim 14 of the instant application.
The copending Application No. 18/013,824 further claims a rechargeable lithium battery comprising a positive electrode including a positive electrode active material, a negative electrode including a negative electrode active material, and the electrolyte (claim 13), same as in claim 15 of the instant application.
The examiner would like to note that claims 1, 3, and 9-13 of copending Application No. 18/013,824 have been allowed, but the Application No. 18/013,824 did not issue as a patent yet.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 3-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 5, 9, 10, and 17 of copending Application No.18/776,080 (US 2025/0210709).
The copending Application No.18/776,080 claims a rechargeable lithium battery comprising a cathode comprising a cobalt-free lithium nickel-manganese oxide, an anode comprising a negative electrode active material, and an electrolyte comprising a non-aqueous organic solvent, a lithium salt, a first additive, and a second additive which may be represented by the Chemical Formula 2-1 to Chemical Formula 2-6:
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(claim 17).
The copending Application No.18/776,080 further claims that the first additive is represented by the formulas:
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or
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, R6 to R15 being each independently hydrogen, a halogen, or a substituted or unsubstituted C1 to C5 alkyl group (claim 4).
The copending Application No.18/776,080 further claims that the first additive is represented by the formulas:
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or
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(claim 5).
The first and second additives in claims 4, 5 and 17 of the copending Application No.18/776,080 are the first and second additives in claims 1 and 3-11 of the instant application.
The copending Application No.18/776,080 further claims that the first additive is in an amount of 0.1-5wt% based in the total weight of the electrolyte (claim 9), and the second additive is in an amount of 0.1-10wt% based on a total weight of the electrolyte (claim 10).
The ranges in claims 9 and 10 are within the ranges in claim 1.
The range in claim 10 is identical to the range in claim 13 of the instant application.
The range in claim 9 includes the range in claim 12 of the instant application.
Therefore, the electrolyte in claims 4, 5, 9, 10, and 17 of the copending Application No.18/776,080 is equivalent to the electrolyte in claims 1 and 12-14 of the instant application.
The rechargeable battery in claims 4, 5, 9, 10, and 17 of the copending Application No.18/776,080 is equivalent to the rechargeable battery in claim 15 of the instant application.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 103
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.
Claims 1-7 and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (US 2020/0251778) in view of Schmitz et al. (US 2017/0040649).
With regard to claims 1, 3, 6, 7, 12 and 13, Choi et al. teach an electrolyte for a lithium secondary battery, said electrolyte comprising a lithium salt, a non-aqueous organic solvent, and an additive of Formula 1:
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(par.0010-0018).
A specific example of the additive of Formula 1 is the Compound 1:
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(par.0050), which is a second compound of Formula 2 in claims 1 and 6, wherein X1 is a halogen, and X2 is -O-L1-R1, L1 is an unsubstituted C2 alkylene group, and R1 is a cyano(-CN) group.
The Compound 1 is a second compound of Chemical Formula 2-1 in claim 7, wherein m=2 and R5 is a cyano(-CN) group.
Choi et al. further teach that the additive is included in the electrolyte in the range of 0.1-5wt% based on a total weight of the electrolyte (par.0061). This range is within the range for the second compound in claim 1 and it is identical to the range in claim 13 of the instant application.
Choi et al. fail to teach that the electrolyte comprises as additive the first compound of Chemical Formula 1.
Schmitz et al. teach an electrolyte for a lithium rechargeable/secondary battery (abstract, par.0146). The electrolyte comprises at least one flame retardant added to reduce the flammability(par.0045).
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to include a flame retardant of Schmitz et al. in the electrolyte of Cgoi et al., in order to reduce the flammability of the electrolyte.
Schmitz et al. further teach that the flame retardant may be represented by the Formula (IIa):
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, wherein R3-R5 may each independently be a C1-C10 alkyl group, a C3-C6 cycloalkyl, a C6-C12 aryl group, wherein the alkyl, cycloalkyl, aryl may be substituted (par.0047-0049), which is a first compound of Chemical Formula 1 in claims 1 and 3, wherein R1-R3 are unsubstituted or substituted C1-C10 alkyl, unsubstituted or substituted C3-C6 cycloalkyl, unsubstituted or substituted C6-C12 aryl group.
Schmitz et al. further teach that the electrolyte comprises the flame retardant in a range of 1-10wt% (par.0091). This range is within the range for the first compound in claim 1, and includes the range in claim 12 of the instant application.
Therefore, the electrolyte of Choi modified by Schmitz is equivalent to the electrolyte in claims 1, 3, 6, 7, 12 and 13 of the instant application.
With regard to claim 2, Choi et al. and Schmitz et al. fail to specifically teach the claimed ratio.
However, Choi et al. teach that the additive (“second compound”) is included in the electrolyte in the range of 0.1-5wt% based on a total weight of the electrolyte (par.0061), and Schmitz et al. teach that the electrolyte comprises the flame retardant (“first compound”) in a range of 1-10wt% (par.0091).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to use the first component and the second component in the claimed ratio, because Choi et al. and Schmitz et al. disclose the content of the additive and of the flame retardant in the electrolyte.
With regard to claims 4 and 5, Schmitz et al. teach that the flame retardant of Formula (IIa) may be triethylphosphate (par.0049).
Triethylphosphate is a first compound of Chemical Formula 1 in claim 4, wherein R1-R3 are unsubstituted C2 alkyl groups.
Triethylphosphate is the compound 1-a in claim 5.
With regard to claim 11, Choi et al. teach that the additive of Formula 1 may be the Compound 1:
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(par.0050), which is the claimed compound 2-b.
With regard to claim 14, Choi et al. further teach that the additive (“second compound”) is included in the electrolyte in the range of 0.1-5wt% based on a total weight of the electrolyte (par.0061).
Schmitz et al. further teach that the electrolyte comprises the flame retardant (“first compound”) in a range of 1-10wt% (par.0091).
Therefore, an additive comprising a first compound and a second compound may be included in the electrolyte in an amount of 1.1-15wt%. This amount is within the claimed range.
With regard to claim 15, Choi et al. teach a lithium secondary battery including a positive electrode, a negative electrode, and the electrolyte (par.0019-0022). The positive electrode comprises a positive electrode active material (par.0072), and the negative electrode comprises a negative electrode active material (par.0083).
Claims 1-5, 8, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Jeon et al. (KR1020170052906A, with attached machine translation) in view of Schmitz et al. (US 2017/0040649).
With regard to claims 1,3, 8, 12, and 13, Jeon et al. teach an electrolyte for a lithium secondary battery, said electrolyte comprising an organic solvent, a lithium salt, and an additive of Chemical Formula 1:
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, wherein X may be P, n is an integer from 0 to 6, and R may be a cyano group (abstract, par.0010-0015).
The additive of Chemical Formula 1 may be the compound of Chemical Formula 3:
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wherein n is an integer from 0 to 4 (par.0042-0044), which is a second compound of Chemical Formula 2 in claim 1, wherein X1 and X2 are -O-L1-R1, L1 are single bonds or C1-C3 unsubstituted alkylene groups, and R1s are cyano(-CN) groups.
The compound above wherein n=1-4 is also second compound of Chemical Formula 2 in claim 1 and 8, wherein X1 and X2 are -O-L1-R1, L1 are single bonds, and R1 are substituted C1-C4 alkyl groups.
Jeon et al. further teach that the additive (“second compound”) is included in an amount of preferably 0.5-5wt% of the electrolyte (par.0047). This range is within the ranges for the second compound in claims 1 and 13 of the instant application.
Jeon et al. fail to teach that the electrolyte comprises as additive the first compound of Chemical Formula 1.
Schmitz et al. teach an electrolyte for a lithium rechargeable/secondary battery (abstract, par.0146). The electrolyte comprises at least one flame retardant added to reduce the flammability(par.0045).
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to include a flame retardant of Schmitz et al. in the electrolyte of Jeon et al., in order to reduce the flammability of the electrolyte.
Schmitz et al. further teach that the flame retardant may be represented by the Formula (IIa):
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, wherein R3-R5 may each independently be a C1-C10 alkyl group, a C3-C6 cycloalkyl, a C6-C12 aryl group, wherein the alkyl, cycloalkyl, aryl may be substituted (par.0047-0049), which is a first compound of Chemical Formula 1 in claims 1 and 3, wherein R1-R3 are unsubstituted or substituted C1-C10 alkyl, unsubstituted or substituted C3-C6 cycloalkyl, unsubstituted or substituted C6-C12 aryl group.
Schmitz et al. further teach that the electrolyte comprises the flame retardant in a range of 1-10wt% (par.0091). This range is within the range for the first compound in claim 1, and includes the range in claim 12 of the instant application.
Therefore, the electrolyte of Jeoni modified by Schmitz is equivalent to the electrolyte in claims 1, 3, 8, 12 and 13 of the instant application.
With regard to claim 2, Jeon et al. and Schmitz et al. fail to specifically teach the claimed ratio.
However, Jeon et al. teach that the additive (“second compound”) is included in an amount of preferably 0.5-5wt% of the electrolyte (par.0047), and Schmitz et al. teach that the electrolyte comprises the flame retardant (“first compound”) in a range of 1-10wt% (par.0091).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to use the first component and the second component in the claimed ratio, because Jeon et al. and Schmitz et al. disclose the content of the additive and of the flame retardant in the electrolyte.
With regard to claims 4 and 5, Schmitz et al. teach that the flame retardant of Formula (IIa) may be triethylphosphate (par.0049).
Triethylphosphate is a first compound of Chemical Formula 1 in claim 4, wherein R1-R3 are unsubstituted C2 alkyl groups.
Triethylphosphate is the compound 1-a in claim 5.
With regard to claim 14, Jeon et al. teach that the additive (“second compound”) is included in an amount of preferably 0.5-5wt% of the electrolyte (par.0047). Schmitz et al. further teach that the electrolyte comprises the flame retardant (“first compound”) in a range of 1-10wt% (par.0091).
Therefore, an additive comprising a first compound and a second compound may be included in the electrolyte in an amount of 1.5-15wt%. This amount is within the claimed range.
With regard to claim 15, Jeon et al. teach a lithium secondary battery comprising a positive electrode including a positive electrode active material, a negative electrode including a negative electrode active material, and the electrolyte interposed between the positive electrode and the negative electrode (par.0064).
Claims 1-5 and 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over Pavel et al. (KR 1020170018739A, with machine translation provided by the applicant on December 22, 2022) in view of Schmitz et al. (US 2017/0040649).
With regard to claims 1, 3, 8, 12, and 13, Pavel et al. teach an electrolyte for a lithium battery comprising a lithium salt, an organic solvent, and a compound of Chemical Formula 1:
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X is a halogen atom and R1 and R2 are independently substituted or unsubstituted C1-C20 alkyl groups, substituted or unsubstituted C2-C20 alkenyl groups, substituted or unsubstituted C2-C20 alkynyl group, substituted or unsubstituted C6-C20 aryl group or heteroaryl group, and R1 and R2 may be connected to form a ring with each other(abstract).
Specific examples of the compound of Chemical Formula 1 are the compounds of formulas 4-7:
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,
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,
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, and
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(claim 6), which are equivalent to the second compound of Chemical Formula 2 in claims 1 and 8, wherein X1 and X2 are -O-L1-R1, L1 is a single bond, R1 are substituted or unsubstituted C1-C2 alkyl groups bonded to each other to form a ring.
Pavel et al. further teach that the compound is included in the electrolyte in an amount of 0.5-3wt% based on the total weight of the electrolyte (claim 8). This range is within the ranges for the “second compound” in claims 1 and 13.
Pavel et al. fail to teach that the electrolyte comprises as additive the first compound of Chemical Formula 1.
Schmitz et al. teach an electrolyte for a lithium rechargeable/secondary battery (abstract, par.0146). The electrolyte comprises at least one flame retardant added to reduce the flammability(par.0045).
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to include a flame retardant of Schmitz et al. in the electrolyte of Pavel et al., in order to reduce the flammability of the electrolyte.
Schmitz et al. further teach that the flame retardant may be represented by the Formula (IIa):
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, wherein R3-R5 may each independently be a C1-C10 alkyl group, a C3-C6 cycloalkyl, a C6-C12 aryl group, wherein the alkyl, cycloalkyl, aryl may be substituted (par.0047-0049), which is a first compound of Chemical Formula 1 in claims 1 and 3, wherein R1-R3 are unsubstituted or substituted C1-C10 alkyl, unsubstituted or substituted C3-C6 cycloalkyl, unsubstituted or substituted C6-C12 aryl group.
Schmitz et al. further teach that the electrolyte comprises the flame retardant in a range of 1-10wt% (par.0091). This range is within the range for the first compound in claim 1, and includes the range in claim 12 of the instant application.
Therefore, the electrolyte of Pavel modified by Schmitz is equivalent to the electrolyte in claims 1, 3, 8, 12, and 13 of the instant application.
With regard to claim 2, Pavel et al. and Schmitz et al. fail to specifically teach the claimed ratio.
However, Pavel et al. teach that the compound of Chemical Formula 1 (“second compound”) is included in an amount of preferably 0.5-3wt% of the electrolyte (claim 8), and Schmitz et al. teach that the electrolyte comprises the flame retardant (“first compound”) in a range of 1-10wt% (par.0091).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to use the first component and the second component in the claimed ratio, because Pavel et al. and Schmitz et al. disclose the content of the additive and of the flame retardant.
With regard to claims 4 and 5, Schmitz et al. teach that the flame retardant of Formula (IIa) may be triethylphosphate (par.0049).
Triethylphosphate is a first compound of Chemical Formula 1 in claim 4, wherein R1-R3 are unsubstituted C2 alkyl groups.
Triethylphosphate is the compound 1-a in claim 5.
With regard to claim 9, the compounds of formulas 4-7 in claim 6 of Pavel et al. are second compounds of Chemical Formula 2-2 wherein L4 is a substituted or unsubstituted C2-C3 alkylene group.
With regard to claim 10, the compounds of formulas 4 and 5 in claim 6 of Pavel et al. are second compounds of Chemical Formula 2-20, wherein R8-R11 are a hydrogan atom or an unsubstitiuted C1 alkyl group.
The compounds of formulas 6 and 7 in claim 6 of Pavel et al. are second compounds of Chemical Formuls 2-2b, wherein R12, R13, R16, and R17 are hydrogen atoms, R14 and R15 are hydrogen atoms or C1 alkyl groups.
With regard to claim 11, the compound of formula 4 in claim 6 of Pavel et al. is the claimed compound 2-c.
With regard to claim 14, Pavel et al. teach that the compound of Chemical Formula 1 (“second compound”) is included in an amount of preferably 0.5-3wt% of the electrolyte (claim 8). Schmitz et al. further teach that the electrolyte comprises the flame retardant (“first compound”) in a range of 1-10wt% (par.0091).
Therefore, an additive comprising a first compound and a second compound may be included in the electrolyte in an amount of 1.5-13wt%. This amount is within the claimed range.
With regard to claim 15, Pavel et al. teach a lithium battery comprising a positive electrode, a negative electrode, and an electrolyte (claim 11). The positive electrode comprises a positive electrode active material (par.0071), and the negative electrode comprises a negative electrode active material (par.0082).
Response to Arguments
Applicant's arguments filed on March 19, 2026 have been fully considered but they are not persuasive.
The examiner would like to note that the objection to the specification is withdrawn after the applicant’s amendment to the specification.
On pages 13-20 of the Remarks the applicant argues that the prior art of record does not show the claimed combination of a first compound of Chemical Formula 1 and a second additive of Chemical Formula 2.
Tables 1 and 2 on pages 14-19 of the Remakes show that batteries comprising in the electrolyte a first compound selected from compounds of formulas 1-a, 1-b, and 1-c, and a second compound selected from compounds of formulas 2-a and 2-d have improved thermal stability without reducing cycle life when compared to batteries wherein the electrolyte comprises only a first compound selected from compounds of formulas 1-a, 1-b, and 1-c, or a second compound selected from compounds of formulas 2-a and 2-d.
The examiner acknowledges the superior results of the batteries shown in Examples 1-42 when compared to the batteries in the Comparative Examples.
The examiner would like to point out that Examples 1-42 show batteries comprising electrolytes including electrolyte a first compound selected from compounds of formulas 1-a, 1-b, and 1-c, and a second compound selected from compounds of formulas 2-a and 2-d.
The first compound of formula 1-a:
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(page 33 of the specification of the instant application) is a first compound of Chemical Formula 1 in claim 1, wherein R1-R3 are unsubstituted C2 alkyl groups.
The first compound of formula 1-b:
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(page 34 of the specification of the instant application) is a first compound of Chemical Formula 1 in claim 1, wherein R1-R3 are unsubstituted C3 alkenyl groups.
The first compound of formula 1-c:
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(page 34 of the specification of the instant application) is a first compound of Chemical Formula 1 in claim 1, wherein R1-R3 are C2 alkyl groups substituted with fluorine atoms.
The second compound of formula 2-a:
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(page 34 of the specification of the instant application) is a second compound of Chemical Formula 2 in claim 1, wherein X1 is F and X2 is -O-L1-R4, L1 is an unsubstituted C2 alkylene group, R4 is a difluorophosphite group (-OPF2).
The second compound of formula 2-d:
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(page 35 of the specification of the instant application) is a second compound of Chemical Formula 2 in claim 1, wherein X1 and X2 are -O-L1-R4, L1 are single bonds and R4s are unsubstituted alkyl groups bonded to form a monocyclic aliphatic heterocycle.
However, claim 1 is much broader, and recites that the first compound is represented by the Chemical Formula 1:
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and the second compound is represented by the Chemical Formula 2:
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wherein
R1 to R3 are each independently a substituted or unsubstituted C1 to C10 alkyl group, a substituted or unsubstituted C2 to C10 alkenyl group, a substituted or unsubstituted C2 to C10 alkynyl group, a substituted or unsubstituted C1 to C10 alkoxy group, a substituted or unsubstituted C3 to C10 cycloalkyl group, a substituted or unsubstituted C3 to C10 cycloalkenyl group, a substituted or unsubstituted C3 to C10 cycloalkynyl group, or a substituted or unsubstituted C6 to C20 aryl group,
X1 and X2 are each independently a halogen, or -O-L1-R4,
one or more of X1 and X2 is -O-L1-R4,wherein L1 is a single bond or a substituted or unsubstituted C1 to C10 alkylene group, and R4s are each independently a cyano group (-CN), a difluorophosphite group (- OPF2), a substituted or unsubstituted C1 to C10 alkyl group, a substituted or unsubstituted C2 to C10 alkenyl group, a substituted or unsubstituted C2 to C10 alkynyl group, a substituted or unsubstituted C3 to C10 cycloalkyl group, a substituted or unsubstituted C3 to C10 cycloalkenyl group, a substituted or unsubstituted C3 to C10 cycloalkynyl group, or a substituted or unsubstituted C6 to C20 aryl group, and
when X1 and X2 are simultaneously -O-L1-R4,
R4s are each independently present, or
two R4s are linked to form a substituted or unsubstituted monocyclic or polycyclic aliphatic heterocycle or a substituted or unsubstituted monocyclic or polycyclic aromatic heterocycle.
The combination of the first compound of Chemical Formula 1 and the second compound of Chemical Formula 2 in claim 1 is encompassed by a large number of combinations of compounds.
The Examples 1-42 showing electrolytes including combinations of a first compound selected from compounds of formulas 1-a, 1-b, and 1-c, and a second compound selected from compounds of formulas 2-a and 2-d are not sufficient to show unexpected superior results for the electrolyte in claim 1 of the instant application.
Therefore, the evidence submitted in Tables 1 and 2 is not sufficient to overcome the prior art rejections of record because the evidence is not commensurate in scope with the claimed invention.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, 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) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100°C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110°C and 130°C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60°C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100°C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.). (MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention)
The examiner would also like to point out that the comparative examples are not similar to the prior art of record because the second compounds of formulas 2-a and 2-d are not similar to the second compounds in the prior art references of record Jeon et al. (KR1020170052906A) and Pavel et al. (KR 1020170018739A).
Therefore, the rejection of claims 1-7 and 11-15 under 35 U.S.C. 103 as being unpatentable over Choi et al. (US 2020/0251778) in view of Schmitz et al. (US 2017/0040649) and the rejection Claims 1-5 and 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over Pavel et al. (KR 1020170018739A, with machine translation provided by the applicant on December 22, 2022) in view of Schmitz et al. (US 2017/0040649) are maintained.
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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/ANCA EOFF/Primary Examiner, Art Unit 1722
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