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 1-5, 8-11, 13, and 14 are pending. Claims 6, 7, and 12 have been canceled.
The foreign priority application No.10-2021-0002216 filed on January 07, 2021 in the Republic of Korea has been received and it is acknowledged.
Claim Objections
Claims 1-5, 8-11, 13, and 14 are objected to because of the following informalities:
The independent claim 1 recites the limitation “X1 and X2 are each independently -O-; Y is a halogen atom or a substituted or unsubstituted C1-C10 alkoxy group” and further recites “wherein when X1 and X2 are each O, then Y is a halogen atom”.
The examiner suggests that claim 1 is amended to recite “X1 and X2 are each independently -O-; Y is a halogen atom” instead of “X1 and X2 are each independently -O-; Y is a halogen atom or a substituted or unsubstituted C1-C10 alkoxy group”, and the limitation “wherein when X1 and X2 are each O, then Y is a halogen atom” is deleted.
Claims 2-5, 8-11, 13, and 14 are objected to as being dependent on the objected claim 1.
Appropriate correction is required.
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 1-5, 8-11, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN 112625062 A, with machine translation made of record on October 07, 2025) in view of Park (US 2017/0194668).
With regard to claim 1, Liu et al. teach an electrolyte for a lithium-ion battery comprising a lithium salt, a non-aqueous organic solvent, and an additive such as bis(dimethylethylsilyl) fluorophosphate and bis(dimethylvinylsilyl)fluorophosphate (abstract, claims 1-4).
Bis(dimethylethylsilyl) fluorophosphate is represented by the formula:
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and it is an additive of Formula 1 in claim 1, wherein X1 and X2 are -O-, Y is a halogen atom, R1, R3, R4, and R6 are unsubstituted C1 alkyl groups, R2 and R5 are unsubstituted C2 alkyl groups.
Bis(dimethylvinylsilyl)fluorophosphate is represented by the formula:
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and it is an additive of Formula 1 in claim 1, wherein X1 and X2 are -O-, Y is a halogen atom, R1, R3, R4, and R6 are unsubstituted C1 alkyl groups, R2 and R5 are unsubstituted C2 alkenyl groups.
Liu et al. further teach that the electrolyte may include carbonate additives such as vinylene carbonate (claim 6), but fail to teach that the electrolyte comprises fluoroethylene carbonate (FEC) in the claimed amount.
Park teaches a non-aqueous electrolyte for a lithium battery (abstract).
Park further teaches that vinylene carbonate and fluorinated ethylene carbonate (FEC) are additives designed to improve retention of the initial charge with increasing number of charge/discharge cycles (par.0036).
Therefore, it would have been obvious to one of ordinary skill in the art to use fluorinated ethylene carbonate (FEC) in the electrolyte of Liu et al., in order to improve retention of the initial charge with increasing number of charge/discharge cycles.
Park further teaches that an additive such as fluorinated ethylene carbonate (FEC) may represent 0.1 to 6 wt% of the electrolyte (par.0036). This amount is within the claimed range.
Therefore, the electrolyte of Liu modified by Park is equivalent to the electrolyte in claim 1 of the instant application.
With regard to claim 2, bis(dimethylvinylsilyl)fluorophosphate is a compound of Formula 2, wherein Y’ is a halogen atom, R’1, R’3, R’4, and R’6 are unsubstituted C1 alkyl groups, R’2 and R’5 are unsubstituted C2 alkenyl groups.
Bis(dimethylethylsilyl) fluorophosphate is a compound of Formula 2, wherein Y’ is a halogen atom, R’1, R’3, R’4, and R’6 are unsubstituted C1 alkyl groups, R’2 and R’5 are unsubstituted C2 alkyl groups.
With regard to claim 3, bis(dimethylvinylsilyl)fluorophosphate is a compound of Formula 3, wherein Y” is a halogen atom, Ra, Rc, R’d, and R’f are unsubstituted C1 alkyl groups, Rb and R’e are unsubstituted C2 alkenyl groups.
Bis(dimethylethylsilyl) fluorophosphate is a compound of Formula 3, wherein Y” is a halogen atom, Ra, Rc, R’d, and R’f are unsubstituted C1 alkyl groups, Rb and R’e are unsubstituted C2 alkyl groups.
With regard to claim 4, bis(dimethylvinylsilyl)fluorophosphate is the compound of Formula 5.
With regard to claims 5, 11, and 14, Liu et al. teach that the electrolyte may comprise the additive in an amount of 1wt% based on the total mass of the electrolyte (par.0029). This amount is within the claimed ranges.
With regard to claim 8, Liu et al. teach that the electrolyte may further comprise other additives, such as 1,3-propane sultone or 1,3-propylene sultone (claim 6). These compounds meet the limitations for “sultone”.
With regard to claim 9, Liu et al. teach that the fluorophosphate additive and the other additive may be used in a ratio of 1:1 (par.0031). Therefore, the other additive may be used in an amount of 1wt% based on the total mass of the electrolyte (par.0029).
With regard to claim 10, Liu et al. teach a lithium-ion battery comprising a positive electrode sheet comprising a positive electrode active material, a negative electrode sheet containing a negative electrode active material, and a separator placed between the positive electrode sheet and the negative electrode sheet. The electrolyte is held by the separator (par.0035, par.0057).
With regard to claim 13, bis(dimethylvinylsilyl)fluorophosphate of Liu et al. (claim 1) is the compound of Formula 5.
Response to Arguments
Applicant's arguments filed on January 06, 2026 have been fully considered but they are not persuasive.
The examiner would like to note that:
-the objection to the specification is withdrawn following the applicant’s amendments to the specification;
-the objections to claims 3 and 4 are withdrawn after the applicant’s amendments to the claims;
-the rejection of claims 1-13 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is withdrawn after the applicant’s amendment to claim 1; and
-the rejection of claims 1-11 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Liu et al. (CN 112625062 A, with machine translation made of record on October 07, 2025) is withdrawn after the applicant’s amendment to claim 1; and
-the rejection of claims 12 under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN 112625062 A, with machine translation made of record on October 07, 2025) in view of Park (US 2017/0194668) is moot after the cancelation of the claim.
However, new grounds of rejection for claims 1-5, 8-11, 13, and 14 are shown in paragraphs 5 and 6 above.
On page 13 of the Remarks the applicant argues that Park’s disclosure focuses on cycle retention, not low- or high-temperature discharge performance, which teaches away from the applicant’s claimed improvement.
The examiner would like to point out that Liu et al. (CN 112625062 A, with machine translation made of record on October 07, 2025) teach that the electrolyte may include carbonate additives such as vinylene carbonate (claim 6).
Park (US 2017/0194668) teaches that vinylene carbonate and fluorinated ethylene carbonate (FEC) are additives designed to improve retention of the initial charge with increasing number of charge/discharge cycles (par.0036).
Therefore, it would have been obvious to one of ordinary skill in the art to use fluorinated ethylene carbonate (FEC) in the electrolyte of Liu et al., in order to improve retention of the initial charge with increasing number of charge/discharge cycles.
The electrolyte of Liu modified by Park is the electrolyte of claim 1 of the instant application.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.") (MPEP 2144. IV. RATIONALE DIFFERENT FROM APPLICANT’S IS PERMISSIBLE)
On page 14 of the Remarks the applicant argues that the data in Tables 1 and 2 shows that an electrolyte including an additive of Formula 1 and fluoroethylene carbonate (FEC) in an amount of 0.5 to 10wt% based on the total weight of the electrolyte provides synergistic, superior and unexpected results. The lithium batteries of Examples 5-8 demonstrate consistent, superior performance metrics across multiple embodiments when compared to the battery cells of Comparative Examples 4-6.
The examiner would like to note that the batteries of Examples 5-8 show lithium batteries comprising the electrolytes of Examples 1-4 (pages 25-26 of the specification).
The electrolyte of Example 1 comprises 1mol/l LiPF6, EC:PC:EP:PP in a volume ratio of 2:1:4:3, 0.25wt% of the compound of Formula 5:
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, and 5wt% FEC (page 24 of the specification).
The electrolyte of Example 2 comprises comprises 1mol/l LiPF6, EC:PC:EP:PP in a volume ratio of 2:1:4:3, 0.5wt% of the compound of Formula 5,
and 5wt% FEC (page 25 of the specification).
The electrolyte of Example 3 comprises 1mol/l LiPF6, EC:PC:EP:PP in a volume ratio of 2:1:4:3, 1wt% of the compound of Formula 5, and 5wt% FEC (page 25 of the specification).
The electrolyte of Example 4 comprises 1mol/l LiPF6, EC:PC:EP:PP in a volume ratio of 2:1:4:3, 2wt% of the compound of Formula 5, and 5wt% FEC (page 25 of the specification).
However, claim 1 recites an electrolyte comprising:
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.
The specification of the instant application provides examples of the additive of Formula 1 on page 4, and examples of lithium salts and non-aqueous organic solvents on page 5 of the specification.
Additionally, claim 1 does not limit the amount of the additive of Formula 1.
The electrolyte of claim 1 may be encompassed a large number of possible combinations of lithium salts, non-aqueous organic solvents, and additives of Formula 1.
The examiner would also like to note that claim 1 recites that FEC may be comprised in an amount of 0.5wt% to 10wt%, and the batteries in Examples 5-8 only show electrolytes comprising FEC in an amount of 5wt%.
Therefore, the Examples 5-8 are not commensurate with the scope of claim 1 and are not sufficient to show unexpected superior results of 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)
Conclusion
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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