DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/28/2026 has been entered.
Status of Claims
Claims 1, 3, 4, 10-16 are pending.
Claims 5-9 are cancelled.
Claim 1 is amended.
Response to Amendment
Applicant’s amendment filed on 4/28/26 have been entered.
112 rejections in previous office action have been withdrawn in view of applicant’s arguments and remarks.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3-16 are rejected under 35 U.S.C. 103 as being unpatentable over Nakazawa et al (US 20170162906 A1) in view of Shatunov et al (KR 20170018739 A; machine translation) as evidenced by PubChem NIH compound summary (https://pubchem.ncbi.nlm.nih.gov/compound/11600810).
Regarding Claim 1,
Nakazawa teaches an electrolyte for a lithium secondary battery that comprises a lithium salt (Paragraph 0077), an organic solvent (Paragraph 0093), and additives (Paragraph 0162; assistant) that includes cyclic sulfonic acid ester compounds (Paragraph 0210). Nakazawa further provides examples of cyclic sulfonic acid esters used in the electrolyte such as methylene methanedisulfonate (Paragraph 0214 and 0217). This compound per PubChem compound summary provides a chemical structure (as shown below) which is the same as claimed formula 2-2. Nakazawa states that the output characteristics, load characteristics, cycling characteristics or high temperature storage characteristics are improved upon addition of this compound (Paragraph 0218). Nakazawa teaches that the addition of additives can suppress an increase in resistance and improve capacity retention after high temperature storage.
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Nakazawa teaches the use of phosphorus containing organic solvent (Paragraph 0160) and phosphorus containing assistants (Paragraph 0253), but does not teach the use of specific phospholane formula 1-1 as claimed.
However, Shatunov teaches the use of formula 2, and formula 5 in the electrolyte of a secondary battery. Formula 2 and Formula 5 of Shatunov are as shown below.
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Formula 5 in Shatunov is the same as the claimed Formula 2-2. The addition of the formula in Shatunov results in improved cycle characteristics at high temperature, and high operating voltage of lithium batteries (Paragraph 14). The addition of the compound causes improved thermal stability of the SEI film existing on the anode at a high voltage of 4.45 V (Paragraph 45, 46). The instant specification also states that the compounds in Claim 1 when used as an additive form a solid electrolyte interface with low resistance, and the lithium secondary battery has an improved lifetime and high temperature stability. Hence, the objective of Nakazawa, Shatunov and the instant invention aligns, which is to improve thermal stability and reduce resistance.
Shatunov also states that the addition of a disulfone compound to the electrolyte improves the charge-discharge characteristics as well as increase in resistance at high temperatures (Paragraph 52). A sulfolane type compound (Formula 2; instant invention) is a cyclic sulfone type of compound. Hence, Shatunov alludes to the combination of a phospholane and sulfonic/sulfone type of components for electrolytes.
Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the additive in Nakazawa with the phospholane compound of Shatunov in order to improve the SEI layer temperature stability (Paragraph 5). Person of ordinary skill in the art would be motivated to combine the additives of Shatunov and Nakazawa according to known methods to yield predictable results.
Nakazawa does not teach the mixing weight ratio directly, but Nakazawa teaches that for cyclic sulfonic acid ester compounds two or more types may be used in arbitrary combination and ratio, and amount based on 100% by weight of electrolyte can be 10% by weight or less (Paragraph 0218).
Shatunov states that the formula below (which is the general formula on which Formula 5 is based) is used as an additive in the electrolyte at 0.01 to 10% by weight (paragraph 38), and that an appropriate amount may be used as necessary.
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Considering that the amounts of these additives can be varied in the weight percentage ranges provided above, this would indicate that the mixing weight ratio overlaps with the claimed range of 1:5 to 5:1. The weight ratio is not independent to weight percentages of the individual compounds. For example, if total weight of electrolyte is 100 gm, and amount of cyclic sulfonic ester per Nakazawa in the electrolyte is 5 gm (5% by wt), and amount of phospholane in electrolyte per Shatunov is 5 gm (5% by wt). Then the mixing weight ratio between the sulfonic ester and the phospholane compound is 1:1 which lies within the claimed range of 1:5 to 5:1 (in terms of proportion, 0.2 to 5). Similarly, if sulfonic ester is 2 gm (2% by wt) and phospholane is 3 gm (3% by wt) then the mixing weight ratio would be 2:3. Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to mix the two additives of Nakazawa and Shatunov such that they overlap with the claimed weight ratio in order to have better output characteristics, load characteristics, high temperature storage characteristics (Nakazawa, Paragraph 0218; Shatunov, Paragraph 38).
Regarding Claim 3,
Nakazawa teaches that for cyclic sulfonic acid ester compounds two or more types may be used in arbitrary combination and ratio, and amount based on 100% by weight of electrolyte can be 10% by weight or less (Paragraph 0218). This range coincides with the claimed range of 0.05 to 10%.
Regarding Claim 4,
Nakazawa does not teach the weight % of the second formula being in the range of 0.05 to 10%.
However, Shatunov states that the formula below is used as an additive in the electrolyte at 0.01 to 10% by weight (paragraph 38), and that an appropriate amount may be used as necessary.
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Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the second compound in claimed wt% in order to form SEI with high temperature stability.
Regarding Claim 10,
Nakazawa teaches the use of lithium salts such as LiPF6, LiBF4, LiClO4, LiAlF4, LiSbF6, LiTaF6, and LiWF7 and many others in Paragraphs 0077-0087.
Regarding Claim 11,
Nakazawa teaches the use of lithium salts in the electrolyte generally 0.01% by mass or more, and 30% by mass or less (paragraph 0089). Nakazawa also teaches that the salt molar concentration is preferably 0.3 mol/L or more, to 3 mol/L or less. This corresponds to the claimed range of 0.01 to 5 M salt concentration.
Regarding Claim 12,
Nakazawa teaches a battery comprising positive and negative electrode, and electrolyte (paragraph 0406).
Regarding Claim 13,
Nakazawa teaches that the positive electrode consists of active material (lithium transition metal based compound) as below (paragraphs 0372 -0376).
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Nakazawa does not teach the exact formula 7 as claimed.
However, Shatunov teaches the use of LiaNi1-b-c-CobO2-αFα wherein 0.9<=a<=1.8, 0<=b<=0.5, 0<=c<=0.05, 0<α<=2. This formula is a variant of the claimed formula 7. Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use this lithium-nickel composite oxide as active material in the positive electrode (Paragraph 66).
Regarding Claim 14, 15, 16
Nakazawa teaches that for cyclic sulfonic acid ester compounds two or more types may be used in arbitrary combination and ratio., and amount based on 100% by weight of electrolyte can be 10% by weight or less (Paragraph 0218). Hence, one of ordinary skill in the art may select the weight % of the formula 2 between 0 and 4 wt%.
Shatunov states that the formula of formula 1 is used as an additive in the electrolyte at 0.01 to 10% by weight (paragraph 38), and that an appropriate amount may be used as necessary. Hence, one of ordinary skill in the art may select the weight % of the compound 1 between 0 and 4 wt%.
Certain combinations based on weight % above make the total amount of additive to be between 0.2 to 4 wt % as claimed in new claim 14.
Certain combinations based on weight % above make the individual amount of additive (first compound and second compound) to be between 0.2 to 2 wt % as claimed in new claim 16.
Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have the total amount of the additive at 0.2 wt% to 4.0 wt% or individual additive amount from 0.2-2 wt% based on the total weight of the electrolyte in order to inhibit side reactions of LiPF6 and inhibit forming SEIs.
Regarding Claim 15, if total weight of electrolyte is 100 gm, and if sulfonic ester per Nakazawa is 2 gm (2% by wt) and phospholane per Shatunov is 3 gm (3% by wt) then the mixing weight ratio would be 2:3. Similarly, other ratios can be achieved between the range of 2:3 and 3:2. Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to mix the two additives of Nakazawa and Shatunov in the claimed ratio in Claim 15 in order to have better output characteristics, load characteristics, high temperature storage characteristics (Nakazawa; Paragraph 0218).
References of Interest
Moganty et al (US 20200299316 A1)
Stefan et al (US 20150364795A1)
Response to Arguments
Applicant’s arguments, see Page 1, filed 4/28/2026, with respect to 112 rejection of Claim 16 have been fully considered and are persuasive. The 112 rejection of Claim 16 has been withdrawn.
Applicant's arguments for claim rejections under 35 USC 103, filed 4/28/26 have been fully considered but they are not persuasive.
Applicant argues that Nakazawa does not teach or suggest Formula 2-2 as taught in amended claim 1. Per 103 rejection in this office action, Nakazawa is used as prior art to show the use of the compound as represented by claimed Formula 2-2, whereas Shatunov is used as prior art to show the use of the compound as represented by claimed Formula 1-1. A known method of making the electrolyte solution is by adding the lithium salt, organic solvents, and additives in their given proportion and forming a solution. Based on examples shown in Nakazawa (Paragraph 0420), Shatunov (Paragraph 115) and the instant specification, the method of making the electrolyte is similar. It would be obvious to combine the two prior art references in a lithium battery according to known methods in order to yield predictable results related to SEI stability, and high temperature storage improvements. Upon further consideration from last office action, Examiner has reapplied the previously cited art with specific compound details, and weight information to support the rejection as stated in the 103 rejection section of this office action.
Applicant argues that the combination of Nakazawa and Shatunov does not appear to disclose the claimed ratio in amended claim 1. 103 rejection section above for Claim 1 further elaborates and shows examples of how the weight % of Nakazawa and Shatunov when combined can lead to the mixing weight ratio as claimed in instant invention. Hence, applicant’s argument is not persuasive. Applicant argues that Nakazawa does not teach or suggest the particular ratio, but examiner asserts that combining the additives taught in Nakazawa and Shatunov based on values within the given weight % results in the claimed weight ratio and hence, would render it obvious.
Applicant argues that the cited combination does not appear to account for the fact that amended claim 1 is no longer directed merely to a class of phospholane and sulfone compounds, but instead recites two specific, discrete chemical species in a defined cooperative ratio. Applicant argues the rejection does not articulate a rationale as to why one of ordinary skill in the art would navigate the vast array of possible compounds encompassed by Nakazawa and Shatunov reference so as to arrive at Formula 1-1 and Formula 2-2 of the instant application. In response, "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).” Further, “There is no absolute correlation between the size of the prior art genus and a conclusion of obviousness. See, e.g., Baird, 16 F.3d at 383, 29 USPQ2d at 1552.” As previously stated, teachings in Nakazawa and Shatunov suggest that each derivative disclosed within the expressly defined formula is predictably functional for use in a lithium battery device as there is no teaching away from any of the compounds within the defined formula.
Within the unexpected results section, Applicant argues that the office alleges that “the updated table 1 provided by applicant is incomplete, and lacking data related to DCIR after storage at 60 C for the reference samples”, and that the observed improvements tie directly to the claimed ratio: moving outside the window degrades gas or resistance performance. Examiner disagrees with this. Based on the instant specification, during high temperature storage a rate of increase in DCIR may be further suppressed, and an increase in DCIR may be considerably reduced. Hence, the results related to DCIR after storage appear to be necessary to establish performance trends. Examiner contends that updated data table is incomplete.
Applicant argues that the present record contains comparative evidence directed to the ratio window recited in amended claim 1. Examiner maintains their remark related to breadth of data being insufficient outside of the amended claimed range. Only one data point is lower, and one data point is higher than the claimed range.
Applicant argues that the data supports unexpected results of superior resistance characteristics. The data point for Example 3 and reference sample 1 in terms of initial DCIR is the same at 120 m.ohm. Hence, Examiner asserts that data does not support unexpected results of superior resistance.
Regarding remarks related to comparative examples 1-7 not supporting the mixing weight claim ratio, Examiner asserts that the comparative examples do not show data related to a mixture of the two compounds, and hence is not utilized in the comparison between the data of mixture within weight ratio and data of mixture outside the weight ratio. This comparison is needed to substantiate any unexpected results based on instant invention. Based on the above, 103 rejection of Claim 1 is proper.
Conclusion
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/SUHANI JITENDRA PATEL/Examiner, Art Unit 1783
/MARIA V EWALD/ Supervisory Patent Examiner, Art Unit 1783
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