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, 13, and 14 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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 27, 2026 has been entered.
Claim Objections
Claims 1-4, 8-11, 13, and 14 are objected to because of the following informalities:
The limitation “substituted and unsubstituted C6-C50 aryl group” in claim 1, line 16 should be amended to recite “a substituted and unsubstituted C6-C50 aryl group”.
Claim 2 should be amended to include the limitation “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’ “, in order to be consistent with the language of claim 1.
Claim 3 should be amended to include the limitation “wherein when Ra’, Rb’, Rc’, Rd’, Re’, and Rf’ are each a C1-C10 alkyl group, then at least one of Ra’, Rb’, Rc’, Rd’, Re”, and Rf’ is different from at least one of the remaining of Ra’, Rb’, Rc’, Rd’, Re’, and Rf’ “, in order to be consistent with the language of claim 1.
The limitation “sultone; or propane sultone substituted” in claim 8, line 4 should be amended to recite “propane sultone; or propane sultone substituted” (see page 11 of the specification of the instant application).
Claims 4, 8-11, 13, and 14 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(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.
Claim 2 is 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 the independent claim 1, and recites that the compound of Formula 1 comprises a compound of Formula 2:
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, wherein Y’ is a halogen atom or a substituted C1-C10 alkoxy group.
However, claim 1 recites that in the compound of formula 1:
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Y is a halogen atom.
Therefore, claim 2 fails to further limit the subject matter of claim 1.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies 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.
Response to Amendment
The Declaration under 37 CFR 1.132 filed on March 27, 2026 is insufficient to overcome the rejection of claims 1-5, 8-11, 13, and 14 based on Liu et al. (CN 112625062 A, with machine translation made of record on October 07, 2025) in view of Park (US 2017/0194668) as set forth in the last Office action because: the evidence submitted in the Declaration is not commensurate in scope with the claims…
The Declaration shows examples of 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 24 of the specification).
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 a substituted or unsubstituted C1-C10 alkyl group, a substituted or unsubstituted C2-C10 alkenyl group, a substituted or unsubstituted C3-C10 alkynyl group, a substituted or unsubstituted C3-C20 cycloalkyl group, a substituted and unsubstituted C6-C50 aryl group, a substituted or unsubstituted C6-C50 alkylaryl group, or a substituted or unsubstituted C6-C50 heteroaryl group, wherein when “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 tLIPF6, EC:PC:EP:PP solvent mixture, FEC, and the compound of formula 5 in the Examples13-16 of the Declaration 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)
Response to Arguments
Applicant's arguments filed on March 27, 2026 have been fully considered but they are not persuasive.
On page 9 of the Remarks the applicant argues that the unique combination if an additive comprising a compound of Formula 1 in an amount of 0.01wt% to 5wt% and fluoroethylene carbonate (FEC) in an amount of 1wt% to 10wt% provides unexpected and advantageous results. The applicant further argues that Table A on pages 10-11 of the Remarks shows that each of the Examples 13-16 provides improved discharge capacity at -10oC and improved discharge capacity ratio at -10oC relative to Comparative Examples 9 and 10. Table A further shows tat each of the Examples 13-16 provides improved discharge capacity at 25oC relative to Comparative Example 10.
The examiner agrees that the batteries in Examples 13-16 show unexpected superior results when compared to the batteries in Examples 9 and 10. However, the evidence in Examples 13-16 does not show unexpected superior results for the electrolyte in claim 1.
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 24 of the specification).
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 comprising a lithium salt, a non-aqueous organic solvent, 0.01-5wt% of a compound of Formula 1, and 1 to 10wt% FEC,
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 a substituted or unsubstituted C1-C10 alkyl group, a substituted or unsubstituted C2-C10 alkenyl group, a substituted or unsubstituted C3-C10 alkynyl group, a substituted or unsubstituted C3-C20 cycloalkyl group, a substituted and unsubstituted C6-C50 aryl group, a substituted or unsubstituted C6-C50 alkylaryl group, or a substituted or unsubstituted C6-C50 heteroaryl group, wherein when “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 compound of Formula 1 in claim 1 may be represented by a large number of compounds.
The specification of the instant application provides examples of lithium salts and non-aqueous organic solvents on page 5 of the specification.
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 electrolytes comprising tLIPF6, EC:PC:EP:PP solvent mixture, FEC, and the compound of formula 5 in the Examples13-16 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 (see MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention).
Conclusion
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/ANCA EOFF/Primary Examiner, Art Unit 1722
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