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 1-4, 8-11, and 13-15 are pending. Claims 5-7 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
Claim 2 is objected to because of the following informalities: the limitation “an unsubstituted C1-C10 alkyl group, an unsubstituted C2-C10 alkenyl group” in claim 2 should be amended to read “an unsubstituted C1-C10 alkyl group, or an unsubstituted C2-C10 alkenyl group”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 depends on claim 1, and recites that the compound of Formula 1 is represented by Formula 2:
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, wherein Y’ is a halogen, R1’, R2’, R3’, R4’, R5’, and R6’ are each independently an unsubstituted C1-C10 alkyl group or an unsubstituted C2-C10 alkenyl group, wherein when R1’, R2’, R3’, R4’, R5’, and R6’ are each a C1-C10 alkyl group, then at least one of R1’, R2’, R3’, R4’, R5’, and R6’ is different from at least one of the remaining of R1’, R2’, R3’, R4’, R5’, and R6’.
However, this compound is already recited in claim 1.
Claim 3 depends on claim 1, and recites that the compound of Formula 1 is represented by Formula 3:
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, wherein Y” is a halogen, Ra’, Rb’, Rc’, Rd’, Re’, and Rf’ are each independently an unsubstituted C1-C10 alkyl group or an unsubstituted C2-C10 alkenyl group, wherein when Ra’, Rb’, Rc’, Rd’, Re’, and Rf’ are each a C1-C10 alkyl group, then at least one of Ra’, Rb’, Rc’, Rf’, Rr’, and Rf’ is different from at least one of the remaining of Ra’, Rb’, Rc’, Rf’, Rr’, and Rf’.
However, this compound is already recited in claim 1.
Therefore, claims 2 and 3 fail to further limit the subject matter of claim 1.
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements.
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 1-4, 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 claims 1, 11, and 14, 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. 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 ranges in claims 1, 11, and 14.
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 claims 1, 11, and 14 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 claim 8, Liu et al. teach that the electrolyte may further comprise other additives, such as 1,3-propane sultone (claim 6).
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.
Allowable Subject Matter
Claim 15 is allowed.
The Declaration under 37 CFR 1.132 filed on March 27, 2026 shows that the batteries in Examples 13-16 give unexpected superior results when compared to the batteries in the Comparative Examples 9 and 10 (see pages 3-6 of the Declaration).
Examples 13-16 show electrolytes including 1.2M LiPF6, a solvent mixture EC:PC:EP:PP in a volume ratio of 2:1:4:3, and the following additives:
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(see page 2 of the Declaration and page 24 of the specification).
Compound of Formula 5 is represented by the formula:
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(see page 24 of the specification).
Response to Arguments
Applicant's arguments filed on July 24, 2026 have been fully considered but they are not persuasive.
On page 10 of the Remarks the applicant argues that Park et al. do not teach the applicant’s EC/PC/EP/PP solvent, do not teach the presently claimed combination of the additive of Formula 1 and FEC, and do not teach that the combination would improve discharge capacity or discharge-capacity ratio at low temperature.
The examiner would like to point out that claims 1-4, 8-11, 13, and 14 are rejected under 35 U.S.C. 103 over Liu et al. (CN 112625062 A, with machine translation made of record on October 07, 2025) in view of Park (US 2017/0194668). However, these claims do not recite an EC/PC/EP/PP solvent.
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 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 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. teach that the electrolyte may comprise the additive in an amount of 1wt% based on the total mass of the electrolyte (par.0029).
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).
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.
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."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below) (MPEP 2144. IV. RATIONALE DIFFERENT FROM APPLICANT’S IS PERMISSIBLE)
On page 10 of the Remarks the applicant argues that Table A shows that the claimed combination provides unexpected and advantageous results. Table A evaluates electrolytes including the following features: an additive of Formula 1 in an amount of 0.01-5wt% based on the total weight of the electrolyte and FEC in an amount of 1-10wt% based on the total weight of the electrolyte. The unexpected and advantageous results are discussed on pages 11-14 of the Remarks.
The examiner would like to point out that Table A refers to the unexpected superior results of the Examples 13-16 when compared to Comparative Examples 9 and 10 (see Table A on page 13 of the Remarks).
The Examples 13-16 show the following compositions:
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(see page 12 of the Remarks).
Compound of Formula 5
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is a compound of Formula 1 in claim 1, wherein X1 and X2 are each -O-, Y is a fluorine atom, R1 and R4 are unsubstituted C2 alkenyl groups, R2, R3, R5, and R6 are unsubstituted C1 alkyl groups.
However, claim 1 recites an electrolyte including a lithium salt, a non-aqueous organic solvent, FEC, and a compound of Formula 1:
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, wherein X1 and X2 are each independently -O-, Y is a halogen atom, R1, R2, R3, R4, R5, and R6 are each independently an unsubstituted C1-C10 alkyl group, or unsubstituted C2-C10 alkenyl group, wherein when R1, R2, R3, R4, R5, and R6 are each a C1-C10 alkyl group, then at least one of R1, R2, R3, R4, R5, and R6 is different from at least one of the remaining of R1, R2, R3, R4, R5, and R6.
The specification of the instant application provides examples of lithium salts and non-aqueous organic solvents on page 5.
The electrolyte of claim 1 may be encompassed by a large number of possible combinations of lithium salts, non-aqueous organic solvents, and additives of Formula 1.
The electrolytes comprising 1.2M LiPF6, EC:PC:EP:PP solvent mixture, FEC, and the compound of formula 5 in the Examples 13-16 are not commensurate in scope with claim 1, and are not sufficient to show unexpected superior results for the electrolytes in claim 1 of the instant application.
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)
On page 14 the applicant argues that that claim 1 has been amended to limit the scope of the Formula 1, so the evidence in Table 1 is commensurate with the scope of claim 1.
The examiner disagrees and would like to point out that electrolytes comprising a compound of formula 5:
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are not representative electrolytes comprising the claimed compound of Formula 1 in claim 1:
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, wherein X1 and X2 are each independently -O-, Y is a halogen atom, R1, R2, R3, R4, R5, and R6 are each independently an unsubstituted C1-C10 alkyl group, or unsubstituted C2-C10 alkenyl group, wherein when R1, R2, R3, R4, R5, and R6 are each a C1-C10 alkyl group, then at least one of R1, R2, R3, R4, R5, and R6 is different from at least one of the remaining of R1, R2, R3, R4, R5, and R6.
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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