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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 26th, 2026 has been entered.
Claim Status
Applicant’s arguments and claim amendments submitted on May 26th, 2026 have been entered into the file.
Currently claims 1 and 16-17 are amended and claims 7-8 are cancelled, resulting in claims 1-6, 9-18 pending for examination.
Response to Amendment
The amendments filed May 26th, 2026 have been received
In light of applicant’s amendments with respect to the removal of the limitation directed toward the electrolyte being free of 1,3-propane sultone, the 35 USC § 112(a) rejection of claim 16 set forth in the final rejection mailed February 24th, 2026 has been overcome.
In light of applicant’s amendments with respect to the antecedent basis of “the compound”, the 35 USC § 112(b) rejection of claim 16 set forth in the final rejection mailed February 24th, 2026 has been overcome.
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 1-6, 9-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (Korean Patent Publication No. 20190115705 A) (machine translation relied upon) in view of Kawabata (U.S. Patent Publication No. 20210020992 A1) (hereafter “Kawabata”) and Kawasaki (U.S. Patent Publication No. 20190051928 A1) (hereafter “Kawasaki”).
Regarding claim 1, Kim teaches an electrolyte for a lithium secondary battery (Page 1, Paragraph 1), comprising a non-aqueous organic solvent, a lithium salt, and an additive (Page 1, Paragraph 7).
Kim teaches the additive includes a (first) compound represented by Chemical Formula 1 of Kim,
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(Page 2, Paragraph 9). Element A of Kim is considered equivalent to Element L of instant Chemical Formula 2,
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, as Kim teaches A is a substituted or unsubstituted aliphatic chain (corresponding to instant substituted alkylene group) or (-C2H4-O-C2H4-)n (corresponding to instant unsubstituted ether group) (Page 2, Paragraph 10).
Kim teaches that the when A contains a hydrocarbon chain, there are 2-20 carbon atoms (Page 2, Paragraph 11), which overlaps the C1 to C10 alkylene group of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Kim teaches that n of (-C2H4-O-C2H4-)n, is an integer of 1 to 10 (Page 2, Paragraph 10), which overlaps the instant C2 to C10 ether group. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Kim is silent as to the additive including a composition including a first compound represented by Chemical Formula 1,
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, wherein R1 to R4 are each independently hydrogen, a halogen, a C1 to C10 alkyl group that is substituted or unsubstituted with a halogen, or a C2 to C10 alkenyl group, and n1 and n2 are each independently one of integers of 1 to 3.
However, Kawabata discloses an electrolytic solution for a nonaqueous electrolyte battery (Paragraph 0032) comprising a component (II), at least one selected from the group consisting of a cyclic sulfonic acid compound and a cyclic sulfuric ester compound (Paragraph 0034).
Kawabata teaches the component (II), which may be represented more specifically by formula II-1b (Paragraphs 0038, 0040),
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, wherein O is an oxygen atom; S is a sulfur atom; R7 and R8 are each independently selected from a hydrogen atom, a halogen atom and a C1 - C5 substituted or unsubstituted alkyl group; R9 and R10 are each independently selected from a hydrogen atom, a halogen atom, a C1 - C5 substituted or unsubstituted alkyl group and a C1 – C4 substituted or unsubstituted fluoroalkyl group; n2 is an integer of 0 to 4; and n3 is an integer of 0 to 4 (Paragraph 0040).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select n2=0 and n3=0 from the finite lists of possible combinations for n2 and n3, respectively, to arrive at the compound of the instant claim (when n1 and n2 = 1) since the combination of components would have yielded predictable results as an additive in an electrolytic solution, absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
When n2=0 and n3=0, the compound of Kawabata is represented by:
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.
R7 and R8 of Kawabata correspond to R3 and R4 of the instant claim Chemical Formula 1. As stated above, Kawabata teaches R7 and R8 are each independently selected from a hydrogen atom, a halogen atom and a C1 - C5 substituted or unsubstituted alkyl group, which corresponds with R3 and R4 of the instant claim being hydrogen, halogen, or a C1 to C10 alkyl group that is substituted with a halogen, meeting the limitations of the instant claim.
R9 and R10 of Kawabata correspond to R1 and R2 of the instant claim Chemical Formula 1. As stated above, R9 and R10 are each independently selected from a hydrogen atom, a halogen atom, a C1 - C5 substituted or unsubstituted alkyl group and a C1 – C4 substituted or unsubstituted fluoroalkyl group, which corresponds with R1 and R2 of the instant claim being hydrogen, halogen, a C1 to C10 alkyl group that is substituted with a halogen, meeting the limitations of the instant claim.
Kawabata teaches the compound (II) contained in the nonaqueous electrolytic solution to form a stable coating film on positive and negative electrode surfaces (Paragraph 0084).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the additive composition of the electrolytic solution of Kim to incorporate the teachings of Kawabata in which a first compound represented by the formula II-1b of Kawabata is included. Doing so would advantageously result in a stable coating film formed on the positive and negative electrode surfaces, as recognized by Kawabata.
Kim is silent as to the first compound being included in an amount of 0.2 wt% to 2 wt% based on the total weight of the electrolyte for a lithium secondary battery.
However, Kawasaki discloses an electrolytic solution for a lithium ion secondary battery (Paragraphs 0013, 0069) comprising an additive including a cyclic disulfonic acid ester (Paragraph 0074). Kawasaki teaches the cyclic disulfonic acid ester component represented by Formula (C) (Paragraphs 0079-0080),
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and more preferably represented by compounds such as compound 1 (Paragraph 0082),
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, which overlaps with cyclic disulfonic acid ester compounds described in the instant disclosure (methylenemethane disulfonate) (Page 3, Line 14) and those taught by Kawabata, as described above.
Kawasaki teaches the content of the cyclic disulfonic acid ester in the electrolyte solution is preferably 0.01% by mass or more and 10% by mass or less. Kawasaki teaches that when the content of the cyclic disulfonic acid ester is included in this range, a sufficient film effect can be obtained as well as an increase in electrolyte viscosity and suppression of resistance increase (Paragraph 0086).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrolytic solution comprising a compound represented by Chemical Formula II-1b of Kim in view of Kawabata to incorporate the teachings of Kawasaki in which the cyclic disulfonic acid ester compound is contained in the electrolyte from 0.01 – 10 wt%. Doing so would advantageously result in a sufficient film effect as well as an increase in electrolyte viscosity and suppression of resistance increase, as recognized by Kawasaki.
The range of the content of the first compound of Kim in view of Kawasaki and Kawabata overlaps with the weight of the first compound in the electrolyte of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Kim is silent as to the first compound and the second compound are included in a weight ratio of 1 : 1.5 to 1 : 4.
However, as discussed above, Kim in view of Kawasaki and Kawabata teaches the first compound (cyclic disulfonic acid ester) included at a range of 0.01 wt% to 10 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Paragraph 0086). Kim teaches the second compound (first additive including a compound represented by Chemical Formula 1) included at a range of 0.01 wt% to 5 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Page 3, Paragraph 10
Therefore, the upper and lower limits of the weight ratio of the first compound to the second compound is calculated as follows:
When first compound is 0.01 wt% of electrolyte solution and second compound is 5 wt% of electrolyte solution : 0.01 : 5 = 1 : 500
When first compound is 10 wt% of electrolyte solution and second compound is 0.01 wt% of electrolyte solution : 10 : 0.01 = 1 : 0.001
When expressed as fractions, the weight ratio of the first compound and the second compound calculated above may be expressed as 0.002 (1:500) and 1000 (1:0.001). Therefore, Kim in view Kawasaki and Kawabata teach the weight of the first compound to the second compound to lie within 0.02-1000.
When expressed as fractions, the instant weight ratio of the first compound and the second compound may be expressed as 0.7 (1:1.5) and 0.25 (1:4). Therefore, the limitations of the instant claim require the weight of the first compound to the second compound to lie within 0.25-0.7.
The weight ratio of the first compound to the second compound of Kim in view of Kawasaki and Kawabata overlaps with that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Regarding claim 2, Kim teaches the electrolyte for a lithium secondary battery of claim 1, wherein the n1 and n2 are each independently an integer of 1 or 2.
As discussed above in the rejection of claim 1, Kim in view of Kawabata teaches the first compound
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when n2=0 and n3=0, which corresponds with n1 = 1 and n2 = 1, meeting the instant claimed limitations.
Regarding claim 3, Kim teaches the electrolyte for a lithium secondary battery of claim 1.
As discussed above, Kim in view of Kawabata teaches the first compound of the general formula (II-1b), which is further exemplified by compound 2-1 of Kawabata (Paragraph 0047):
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. As is seen by this compound, Kawabata teaches that R7, R8, R9, and R10, corresponding to instant R3, R4, R1, and R2, respectively, are hydrogen, meeting the instant claimed limitations.
Regarding claim 4, Kim teaches the electrolyte for a lithium secondary battery of claim 1.
As discussed above, Kim in view of Kawabata teaches the first compound of the general formula (II-1b), which is further exemplified by compound 2-1 of Kawabata (Paragraph 0047):
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, which is referred to in the art as methylenemethane disulfonate, meeting the instant claimed limitations.
Regarding claim 5, Kim teaches the electrolyte for a lithium secondary battery of claim 1.
As discussed above in the rejection of claim 1, Kim teaches the additive includes a second compound represented by Chemical Formula 1 of Kim,
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(Page 2, Paragraph 9), which is equivalent to the instant compound represented by Chemical Formula 2.
Further discussed above, Kim teaches that A is a C2 to C20 hydrocarbon chain (Page 2, Paragraph 11). This would result in a molecule,
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, where m is 2-20.
The range of m of the compound of Formula 1 of Kim overlaps with that of the instant claim (1 to 5). Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Regarding claim 6, Kim teaches the electrolyte for a lithium secondary battery of claim 5, wherein the second compound is represented by Chemical Formula 2-1a
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(Chemical Formula 1-1 of Kim) (Page 2, Paragraph 13).
Regarding claim 9, Kim teaches the electrolyte for a lithium secondary battery of claim 1.
Kim teaches the second compound (first additive including a compound represented by Chemical Formula 1) included at a range of 0.01 wt% to 5 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Page 3, Paragraph 10). The range of the second compound of Kim overlaps with that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Regarding claim 10, Kim teaches the electrolyte for a lithium secondary battery of claim 1.
As discussed above, Kim teaches the first compound (first additive including a compound represented by Chemical Formula 1) included at a range of 0.01 wt% to 5 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Page 3, Paragraph 10). The range of the second compound of Kim overlaps with that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
As discussed above, Kim in view of Kawasaki and Kawabata teaches the first compound (cyclic disulfonic acid ester) included at a range of 0.01 wt% to 10 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Paragraph 0086). The range of the first compound of Kim in view of Kawasaki and Kawabata overlaps with that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Regarding claim 11, Kim teaches the electrolyte for a lithium secondary battery of claim 1.
Kim is silent as to the composition is included in an amount of 0.7 wt% to 3 wt% based on the total weight of the electrolyte for a lithium secondary battery.
However, as discussed above, Kim in view of Kawasaki and Kawabata teaches an additive for an electrolyte which is a composition including the first compound (cyclic disulfonic acid ester) included at a range of 0.01 wt% to 10 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Paragraph 0086). Also discussed above, Kim teaches the second compound (first additive including a compound represented by Chemical Formula 1) included at a range of 0.01 wt% to 5 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Page 3, Paragraph 10).
Therefore, the upper and lower limits of the weight percent of the composition in the electrolyte is calculated as follows:
When first compound is 0.01 wt% of electrolyte solution and second compound is 0.01 wt% of electrolyte solution : 0.01 wt% + 0.01 wt% = 0.02 wt%
When first compound is 10 wt% of electrolyte solution and second compound is 5 wt% of electrolyte solution : 10 wt% + 5 wt% = 15 wt%
Therefore, Kim in view of Kawasaki and Kawabata teach the weight percentage of the additive composition (comprised of the first and second compounds) is between 0.02 wt% and 15 wt%.
The weight percent of the composition based on the total weight of the electrolyte taught by Kim in view of Kawasaki and Kawabata overlaps with that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Regarding claim 12, Kim teaches a lithium secondary battery, comprising a positive electrode including a positive electrode active material (Page 5, Paragraph 9; Page 6, Paragraph 1); a negative electrode including a negative electrode active material (Page 5, Paragraph 9; Page 7, Paragraph 3); and the electrolyte for a lithium secondary battery of claim 1 (Page 1, Paragraph 5).
Regarding claim 13, Kim teaches the lithium secondary battery of claim 12, wherein the positive electrode active material is at least one type of lithium composite oxide (Paragraph 0060).
Kim is silent as to the positive electrode active material represented by Chemical Formula 3: LiaM11-y1-z1M2y1M3z1O2 wherein, in Chemical Formula 3, 0.9 ≤ a ≤1.8, 0 ≤ y1 <1, 0 ≤ z1 < 1, 0 ≤ y1+z1< 1, and M1, M2, and M3 are each independently one selected from a metal of Ni, Co, Mn, Al, Sr, Mg, or La, and a combination thereof.
However, Kim teaches that the positive active material represented by Chemical Formula 4: Lip(NixCoyMez)O2 wherein 0.9 ≤ p ≤ 1.1, 0.5 ≤ x ≤ 0.98, 0 < y ≤ 0.3, 0 < z ≤ 0.3, x+y+z=1, and Me is at least one from Al, Mn, Mg, Ti, and Zr (Page 6; Paragraphs 6-8).
The following equivalences between the elements and their subscript variables is denoted in the table below, where the underline denotes an inclusive boundary of the range.
Element in Formula of Kim
Subscript of Element in Formula of Kim
Subscript Range of Formula of Kim
Element of Instant Compositional Formula
Subscript of Instant Compositional Formula
Subscript Range of Instant Compositional Formula
Li
p
0.9 – 1.1
Li
a
0.9 – 1.8
Ni
x
0.5 – 0.98
M1
1-y1-z1
0 - 1
Co
y
0 – 0.3
M2
y1
0 - 1
Me
z
0 – 0.3
M3
z1
0 - 1
O
2
-
O
2
-
Kim teaches the variable Me as a placeholder for atoms including Al, Mn, Mg, Ti, and Zr which corresponds with the variable M3 of the instant formula, which is a placeholder for metal atoms such as Ni, Co, Mn, Al, Sr, Mg, or La.
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select Al, Mn, or Mg from the finite lists of possible combinations for Me of Kim to arrive at M3 of the instant claim since the combination of components would have yielded predictable results as a positive electrode active material absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
Further, Kim teaches the elements Ni and Co in the Formula 4 taught by Kim, which corresponds with M1 and M2, of the instant Formula 3, as M1 and M2 are each independently selected from a metal of Ni, Co, Mn, Al, Sr, Mg, or La.
Further, Kim teaches the subscripts y and z corresponding to y1 and z1, respectively, of the instant compositional formula. Kim teaches y and z are both within the range of 0 to 0.3 (inclusive). Therefore, 0 < y+z ≤ 0.6, which lies within the instant limitation 0 ≤ y1+z1< 1, meeting the instant claimed limitations of Formula 3.
As illustrated in the table above, the subscripts of the elements of the formula of Kim lie within the range of the subscripts of the elements in the instant compositional formula, meeting the instant claimed limitations. See MPEP 2144.05 (I).
Regarding claim 14, Kim teaches the lithium secondary battery of claim 12, wherein the positive electrode active material is at least one type of lithium composite oxide (Page 6, Paragraph 2).
Kim is silent as to the positive electrode active material represented by Chemical Formula 3-1: Lix2Niy2Coz2Al1-y2-z2O2, wherein, in Chemical Formula 3-1, 1 ≤ x2 ≤1.2, 0.5 ≤ y2 < 1, 0 ≤ z2 < 0.5
However, as discussed above, Kim teaches that the positive active material represented by Chemical Formula 4: Lip(NixCoyMez)O2 wherein 0.9 ≤ p ≤ 1.1, 0.5 ≤ x ≤ 0.98, 0 < y ≤ 0.3, 0 < z ≤ 0.3, x+y+z=1, and Me is at least one from Al, Mn, Mg, Ti, and Zr (Page 6; Paragraphs 6-8).
The following equivalences between the elements and their subscript variables is denoted in the table below, where the underline denotes an inclusive boundary of the range.
Element in Formula of Kim
Subscript of Element in Formula of Kim
Subscript Range of Formula of Kim
Element of Instant Compositional Formula
Subscript of Instant Compositional Formula
Subscript Range of Instant Compositional Formula
Li
p
0.9 – 1.1
Li
x2
1 – 1.2
Ni
x
0.5 – 0.98
Ni
y2
0.5 - 1
Co
y
0 – 0.3
Co
z2
0 – 0.5
Me
z
0 – 0.3
Al
1-y2-z2
0 - 0.5
O
2
-
O
2
-
Kim teaches the variable Me as a placeholder for atoms including Al, Mn, Mg, Ti, and Zr. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select Al from the finite lists of possible combinations for Me of Kim to arrive at the compound of the instant claim since the combination of components would have yielded predictable results as a positive electrode active material absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
As illustrated in the table above, the subscripts of the elements of the formula of Kim lie within the range of the subscripts of the elements in the instant compositional formula, meeting the instant claimed limitations. See MPEP 2144.05 (I).
Regarding claim 15, Kim teaches the lithium secondary battery of claim 1, wherein the negative electrode active material includes a Si-C composite including a Si- based active material and a carbon-based active material (Page 7, Paragraph 8).
Regarding claim 16, Kim teaches the electrolyte of claim 1.
As discussed above in the rejection of claim 6, Kim teaches a first additive (additive of the instant claim) that is the second compound of the instant claim, represented by Chemical Formula 2-1a
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(Chemical Formula 1-1 of Kim) (Page 2, Paragraph 13).
As discussed above, the modification of Kim in view of Kawabata resulted in the addition of the cyclic sulfonic acid compound (first compound) to the (first additive of Kim) composition. Kawabata teaches the first compound represented by the general formula II-1b is preferably compound 2-1,
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(methylenemethane disulfonate), further meeting the instant claimed (Paragraph 0047) of the additive consisting of methylenemethane disulfonate and a compound represented by Chemical Formula 2-1a.
Regarding claim 17, Kim teaches the electrolyte of claim 10.
As discussed above, Kim teaches the first compound (first additive including a compound represented by Chemical Formula 1) included at a range of 0.01 wt% to 5 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Page 3, Paragraph 10). The range of the second compound of Kim overlaps with that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
As discussed above, Kim in view of Kawasaki and Kawabata teaches the first compound (cyclic disulfonic acid ester) included at a range of 0.01 wt% to 10 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Paragraph 0086). The range of the first compound of Kim in view of Kawasaki and Kawabata overlaps with that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Kim and Kawabata as applied to claims 1-6, 9-17 above, and further in view of Kang (U.S. Patent Publication No. 20150188126 A1).
Regarding claim 18, Kim teaches the lithium secondary battery of claim 15.
As discussed above in the rejection of claim 15, Kim teaches the negative electrode active material includes a Si-C composite (Page 7, Paragraph 8).
Kim teaches the silicon-carbon composite including carbon and silicon particles wherein the average diameter of the silicon particles in the composite are in the range of 10 nm to 200 nm (Page 7, Paragraph 8).
The range of the average particle diameter of the silicon particles in the silicon-carbon composite of Kim overlaps with the range of average particle diameter of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Kim is silent as to the Si content in the Si-C composite.
However, Kang discloses a lithium secondary battery with enhanced electrochemical characteristics (Paragraph 0001) including a negative electrode comprising a silicon-carbon composite as a negative active material (Paragraph 0012). Kang teaches that the content of silicon particles in the silicon-carbon composite is preferably in the range of 3 volume% to 60 volume%. Kang teaches that when the content of silicon particles is greater than 60%, volume expansion of the silicon may not be sufficiently suppressed but when the content of silicon particles in the composite is less than 3 volume %, the reduced amount of silicon results in energy density that is too low (Paragraph 0036).
Absent unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the mass percentage of silicon present in the silicon carbon composite to be within the range of 3 wt% to 7 wt% of the Si-C composite, since it has been held where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involved only routine skill in the art. See MPEP 2144.05.
In the present invention, one would have been motivated to modify the silicon-carbon composite of Kim to incorporate the teachings of Kang described above and to further optimize the weight percentage of silicon to be within the claimed range of the instant claim in order to achieve suppression of silicon and sufficient energy density. The ordinary artisan would recognize that by tuning the volume percent of silicon present in the silicon-carbon composite, a balance can be achieved between suppression excessive expansion due to silicon and achieving a high enough energy density. Further, the ordinary artisan would recognize that a routine optimization in volume of the silicon would necessarily result in an optimization in mass, and the effects of silicon content on the Si-C composite characteristics taught by Kang motivates optimizing the mass percentage of silicon to lie within the instant claimed range.
Response to Arguments
For clarity of the record, the arguments submitted by applicant on April 21st, 2026 are addressed below:
In the arguments submitted on April 21st, 2026, applicant argues that the Office relies on Kim in view of Kawasaki and Kawabata to cure the deficiency of Kim with respect to the weight ratio of the first compound and second compound in the composition. Applicant argues that the Office’s ratio is derived from separately disclosed endpoint concentrations for different additives, rather than from any teaching in the cited art of a single specific additive concentration. Thus, applicant argues that the cited references do not identify the claimed ratio itself as a preferred or critical parameter.
The arguments have been fully considered but are not persuasive.
In response to applicant’s arguments, the Examiner presents that Kim in view of Kawasaki and Kawabata were relied upon to teach the desired ranges of the first and second compound in the additive composition of the electrolyte. It is well within the ambit of one of ordinary skill in the art before the effective filing date of the claimed invention to use the aforementioned teachings to calculate the weight ratio of the first compound to the second compound in the composition, as shown in the Final Office Action mailed February 24th, 2026. No inventive effort is required by the ordinary artisan, as the ratio is determined by using the teachings of Kawasaki and Kawabata which previously modified Kim. By dividing the endpoint concentrations of the additives taught by Kawasaki and Kawabata, the ratio of the first compound to the second compound calculated is therefore taught by the prior art to overlap the instant claimed range, establishing prima facie obviousness.
In the arguments submitted on April 21st, 2026, applicant argues that Tables 1 and 2 of the specification exemplify how when the first compound and second compound are present in the critical claimed weight ratios, superior and unexpected results are provided that rebut any prima facie case of obviousness. Applicant argues that in particular, Examples 1-3 maintain high performance whereas Comparative Examples 6 and 7 exhibit a significantly higher increases in internal resistance when left at high temperatures as shown in Tables 1&2.
The arguments have been fully considered but are not persuasive.
In response to applicant’s arguments, the Examiner presents that according to applicant’s arguments, the claimed weight ratios of Examples 1-3 are superior because the ratios lying outside of the claimed range, exemplified by Comparative Examples 6 and 7, exhibit “significantly higher increases in internal resistance.” However, upon inspection of the increase in internal resistance of the aforementioned Examples in Tables 1 and 2, the Examiner notes that applicant appears to argue that the internal resistance increase in Comparative Examples 6 and 7 is “significantly different” however the ΔDC-IR of Examples 2 and 3 is 118.5% while Comparative Example 6 ΔDC-IR is 118.8%. Thus, there is a difference of 0.3% between Examples 2-3 and Comparative Example 6. Further, it is not convincing that this different is significant, as argued by applicant, especially when the difference in ΔDC-IR between Example 1 and Examples 2-3 is 2.4% which is a larger difference than 0.3% between the Examples and Comparative Examples described above.
Further, the Examiner notes that while applicant has provided that the results are different owing to the adjusted ratio of the first compound to the second compound, applicant has not provided why such a result is unexpected. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Additionally, the Examiner presents that Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP 716.02(d) II. Additionally, the claims must be commensurate in scope with the proffered data to provide a nexus between the claims and the data establishing evidence of unexpected results. See MPEP 716.02(d).
As shown in Table 1, the Examples 1-3 and Comparative Examples 6-7 cited by applicant in their arguments exemplify chemical Formula 1a as the first compound and chemical Formula 2-1a as the second compound in the composition. However, the instant claim 1 to which the arguments are directed limit the first compound represented by Chemical Formula 1 the second compound represented by Chemical Formula 2, which are broader than the chemical formulas 1a and 2-1a of the cited examples, respectively.
Therefore, the Examiner presents that applicant’s arguments directed toward the unexpected results occurring as a result of a weight ratio of the first compound to the second compound lying within the instant claimed range are not commensurate in scope with the Examples of the disclosure. In other words, the examples relied upon in the disclosure to argue unexpected results are examples in which the Chemical Formula is specifically represented by Formula 1A and Formula 2-1a of the disclosure. Therefore, there are certainly not enough a sufficient number of tests, for example additional examples of other compounds which may be embodied by broad Chemical Formula 1 and Chemical Formula 2 of the instant claim, to establish unexpected results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLIVIA A JONES whose telephone number is (571)272-1718. The examiner can normally be reached Mon-Fri 7:30 AM - 4:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at (571) 270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/O.A.J./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
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