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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/15/2026 has been entered.
Status of the Claims
The amendment/remarks submitted 01/15/2026 have been entered and fully considered. Claims 1 and 4-18 are pending. Claims 2-3 are cancelled. Claims 17-18 are new. Claims 1, 4, and 14 are amended. Claims 1 and 4-18 are examined herein.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4-7 and 11-18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0198924 A1 (“Kim”) in view of US 2019/0252724 A1 (“Shatunov ‘724”).
Regarding claims 1, 4-7, 11-15, and 17, Kim discloses a non-aqueous electrolyte for a rechargeable battery. The electrolyte comprises a lithium salt, a non-aqueous organic solvent, and an electrolyte additive (Abstract). The additive (“first compound”) comprises a salt of an anion with Cs+ ([0017]). The anion is represented by
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where R1 and R2 are each a fluoro group or a C1-C4 fluoroalkyl group ([0020]-[0021]).
In examples, the additive is cesium bis(trifluoromethanesulfonyl)imide included in an amount of 0.5 wt % based on the total amount of the non-aqueous electrolyte ([0070]). This anticipates the claimed Chemical Formulas 1 and 1-2. See also the broader discussion of the structure of the additive at [0020]-[0024] and the amount of the additive at [0032]-[0033].
Kim does not expressly disclose a second compound represented by Chemical Formula 2 or that the first compound and the second compound are included in a weight ratio of 1:0.4 to 1:1.
Shatunov ‘724 discloses an electrolyte for a lithium secondary battery, the electrolyte comprising an additive comprising a compound which contains a difluorophosphite (—OPF2) group (Abstract). In an example, the additive (“second compound”) is represented by
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and is included in an amount of 0.5 wt% based on a total amount of the non-aqueous electrolyte ([0098]). This anticipates the claimed Chemical Formulas 2 and 2-1 and one of the compounds listed in Group 1. See also the broader discussion of the structure of the additive at [0026]-[0029] and the amount of the additive at [0039].
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include the additive taught by Shatunov ‘724 to improve the cycle-life characteristics of the lithium secondary battery and greatly reduce the generation of gas at a high temperature ([0030]) and to include the additive in the above amount to prevent a resistance include thereby improving cycle-life characteristics ([0039]).
This results in a weight ratio of the first compound to the second compound of 1:1 and a total weight of the composition (in instant claim 15) of 1.0 wt%.
Regarding claim 16, modified Kim discloses the electrolyte of claim 1. Kim further discloses a lithium secondary battery comprising a cathode employing a cathode active material, an anode employing an anode active material, and the non-aqueous electrolyte ([0010]).
Regarding claim 18, modified Kim discloses the electrolyte of claim 1. Kim further discloses the non-aqueous electrolyte comprises a mixture of a cyclic carbonate with a linear carbonate ([0042]) and exemplifies ethylene carbonate (EC), ethyl methyl carbonate (EMC) and diethyl carbonate (DEC) at a volume ratio of 30:50:20 ([0070]). Therefore, the cyclic carbonate (EC) and linear carbonate (EMC+DEC) are provided at a volume ratio of 3:7.
Claims 1, 4-5 and 8-17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0198924 A1 (“Kim”) in view of KR 10-2017-0018739 A (“Shatunov ‘739” – attached machine translation cited herein).
Regarding claims 1, 4-5, 8-15, and 17, Kim discloses a non-aqueous electrolyte for a rechargeable battery. The electrolyte comprises a lithium salt, a non-aqueous organic solvent, and an electrolyte additive (Abstract). The additive (“first compound”) comprises a salt of an anion with Cs+ ([0017]). The anion is represented by
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where R1 and R2 are each a fluoro group or a C1-C4 fluoroalkyl group ([0020]-[0021]).
In examples, the additive is cesium bis(trifluoromethanesulfonyl)imide included in an amount of 0.5 wt % based on the total amount of the non-aqueous electrolyte ([0070]). This anticipates the claimed Chemical Formulas 1 and 1-2. See also the broader discussion of the structure of the additive at [0020]-[0024] and the amount of the additive at [0032]-[0033].
Kim does not expressly disclose a second compound represented by Chemical Formula 2 or that the first compound and the second compound are included in a weight ratio of 1:0.4 to 1:1.
Shatunov ‘739 discloses an electrolyte for a lithium battery including: a compound expressed by
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X is a halogen atom; R1 and R2 are independently substituted or unsubstituted C1-C20 alkyl groups, independently substituted or unsubstituted C2-C20 akenyl groups, substituted or unsubstituted C2-C20 akynyl groups, substituted or unsubstituted C6-C20 aryl group, or substituted or unsubstituted heteroaryl groups; and R1 and R2 can form a ring by being connected to each other (Abstract).
In an example, the compound (“second compound”) is represented by Chemical Formula 4
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and is included in an amount of 0.5 wt% based on the total weight of the electrolyte (Example 8; [0037], [0140]). This anticipates the claimed Chemical Formulas 2, 2-2, and 2-2a and one of the compounds listed in Group 1. See also the broader discussion of the structure of the additive at [0017]-[0043] and the amount of the additive at [0046].
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include the additive taught by Shatunov ‘739 to improve the cycle-life performance of the lithium battery ([0050]-[0051], [0164]).
This results in a weight ratio of the first compound to the second compound of 1:1 and a total weight of the composition (in instant claim 15) of 1.0 wt%.
Regarding claim 16, modified Kim discloses the electrolyte of claim 1. Kim further discloses a lithium secondary battery comprising a cathode employing a cathode active material, an anode employing an anode active material, and the non-aqueous electrolyte ([0010]).
Regarding claim 18, modified Kim discloses the electrolyte of claim 1. Kim further discloses the non-aqueous electrolyte comprises a mixture of a cyclic carbonate with a linear carbonate ([0042]) and exemplifies ethylene carbonate (EC), ethyl methyl carbonate (EMC) and diethyl carbonate (DEC) at a volume ratio of 30:50:20 ([0070]). Therefore, the cyclic carbonate (EC) and linear carbonate (EMC+DEC) are provided at a volume ratio of 3:7.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 4-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of copending Application No. 18/012,630 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims represent a patentably indistinct combination of limitations recited in the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 4-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/489,734 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims represent a patentably indistinct combination of limitations recited in the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 01/15/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning (Section A), it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In an inventive example, Shatunov ‘724 discloses an additive (i.e. second compound) that corresponds to one of the compounds in Group 1 (in instant claims 11 and 17) that is included in an amount of 0.5 wt% based on a total amount of the non-aqueous electrolyte ([0098]). The additive is provided to improve the cycle-life characteristics of the lithium secondary battery and greatly reduce the generation of gas at a high temperature ([0030]) and included in the above amount to prevent a resistance include thereby improving cycle-life characteristics ([0039]).
In an inventive example, Shatunov ‘739 discloses a compound (i.e. second compound) that corresponds to one of the compounds in Group 1 (in instant claims 11 and 17) that is included in an amount of 0.5 wt% based on the total weight of the electrolyte (Example 8; [0037], [0140]). The additive is provided to improve the cycle-life performance of the lithium battery ([0050]-[0051], [0164]) and included in the above amount to improve the life characteristic of the lithium battery without increasing the internal resistance of the electrolyte ([0047]).
When including the inventive compounds of Shatunov ‘724 and Shatunov ‘739 from the inventive examples in the inventive amounts, the claimed ratio is rendered obvious.
Applicant argues that the amended scope of claim 1 is fully commensurate with evidence and alleges the presence of unexpected results resulting therefrom (Sections B and C). Applicant’s arguments are not persuasive. 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).
In this case, data for two compounds of the first compound (Chemical Formulas 1-1 and 1-2) and data for four compounds of the second compound (Chemical Formulas z-1, z-2, z-3, z-4) have been provided. It is not clear that the entire range of Chemical Formulas 1 and 2 would appreciate the results.
Regarding the ratio, data for the compounds of Chemical Formulas 1-1 and 1-2 and the compounds of Chemical Formulas z-1, z-2, and z-3; and data for the compounds of Chemical Formulas 1-1 and 1-2 and the compound of Chemical Formula z-4 are provided at ratios of 1:1.5 and 1:2. The claim recites a weight ratio of 1:1 to 1:2. It is not clear that the entire range of the weight ratio would appreciate the results.
Regarding the weight percentage of the compounds, data for Chemical Formulas 1-1 and 1-2 in an amount of 0.5 wt% are provided; data for Chemical Formulas z-1, z-2, and z-3 in amounts of 0.5 and 1 wt% are provided; and data for Chemical Formula z-4 in amounts of 0.75 and 1 wt% are provided. No weight percentage for the second compound is recited in the broadest claim and the weight percentage for the first compound is broader than that reflected in the data.
Applicant argues the solubility shows the presence of the criticality of <2.0 wt% (Section D). However, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). It is noted that the only tested concentration of the first compound that falls within the claimed range is 0.5 wt%.
Applicant argues new claim 17 further shows criticality and unexpected results. The Office respectfully disagrees. While the Office appreciates that claim 17 recites the structure of the compounds shown in the Examples, the points above regarding the amounts of the compounds still stand.
Applicant argues new claim 18 is not disclosed by the cited prior art. However, Kim discloses the non-aqueous electrolyte comprises a mixture of a cyclic carbonate with a linear carbonate ([0042]) and exemplifies ethylene carbonate (EC), ethyl methyl carbonate (EMC) and diethyl carbonate (DEC) at a volume ratio of 30:50:20 ([0070]). Therefore, the cyclic carbonate (EC) and linear carbonate (EMC+DEC) are provided at a volume ratio of 3:7. Applicant’s arguments regarding an improvement in electrolyte conductivity and stability are unsupported by evidence.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Scott Carrico whose telephone number is (571)270-5504. The examiner can normally be reached Monday-Friday 9:15AM-6PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at 571-272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Robert Scott Carrico
Primary Examiner
Art Unit 1727
/Robert S Carrico/Primary Examiner, Art Unit 1727