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 .
Status of the Claims
The amendment/remarks submitted 04/30/2026 have been entered and fully considered. Claims 1, 4-5, 11, and 13-19 are pending. Claims 2-3, 6-10, and 12 are cancelled. Claim 19 is new. Claims 1, 11, and 17 are amended. Claims 1, 4-5, 11, and 13-19 are examined herein.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 4-5, 13-16, and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the claim recites “wherein when Chemical Formula 2 is represented by Chemical Formula 2-1 … and m is an interger [sic] from 1 to 5, then, in Chemical Formula 2-1, R4 is a cyano group.” Similar recitations for Chemical Formulas 2-2a and 2-2b are recited. However, the various R groups (e.g. the R4 in Chemical Formula 2-1) in the broader recitation of Chemical Formulas 2-1, 2-2a, and 2-2b are undefined; they are only further defined within the “then” clauses. It is not clear if the groups in the “then” clause are required, or if other unrecited R groups are excluded. This renders the scope of the claim indefinite. Claims 4-5, 13-16, and 18 depend from claim 1 and do not resolve the issue; therefore, they are rejected for the same reason.
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, 4-5 and 11, 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0198924 A1 (“Kim”) in view of US 2020/0251778 A1 (“Choi”).
Regarding claims 1, 4-5, 11, 13-15, 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.
Choi discloses an electrolyte for lithium secondary batteries including an additive (Abstract). In an example, the additive is represented by Compound 1:
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The additive comprises a difluorophosphate (-PF2) group having excellent electrochemical reactivity for a terminal group, thereby inhibiting the decomposition of an organic solvent such as ethylene carbonate (EC) to reduce generation of gas, and consequentially may reduce a resistance increase rate ([0052]). In addition, the difluorophosphate forms a stable thin film on a surface of a substrate through complexation reaction with metal ions, for example, copper ions (Cu2+), dissolved from the metal substrate. Due to the formation of the thin film, additional dissolution of metal from the substrate is inhibited, and as a result, over-discharge is inhibited when the battery is left alone, and thus battery characteristics is improved ([0054]). The cyano group (-CN) at the other terminal end may form a SEI film having a high concentration of cyano ions, being chemically stable with high polarity. Accordingly, resistance at the interface between the electrolyte and the negative electrode may be reduced, and lithium ion conductivity may be improved, thus leading to increase in low-temperature discharge voltage ([0057]). In an example, Compound 1 is included in an amount of 0.5 wt% ([0102]). For these reasons, 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 of Compound 1 in the same amount as taught by Choi.
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, 13-16, and 18 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” – attached machine translation cited herein).
Regarding claims 1, 4-5, 13-16, and 18, 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 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 7:
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Shatunov discloses examples wherein additives are included in amounts of 0.1 wt%, 0.25 wt%, and 0.5 wt% (Examples 1-8). The additive included in the amount of 0.5 wt% is represented by a different chemical formula, however it was shown to have similar properties to the above additive. 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 of Chemical Formula 7 in an amount of 0.5 wt% 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, 4-5, 11, and 13-18 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, 4-5, 11, and 13-18 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.
Allowable Subject Matter
Claim 19 is allowed.
The following is an examiner’s statement of reasons for allowance: Applicant’s argument regarding unexpected results, see pp. 13-16, filed 04/30/2026, have been fully considered and are persuasive. The prior art does not disclose or render obvious the electrolyte of claim 19.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments, see pg. 10, filed 04/30/2026, with respect to the rejection(s) of claim(s) 1, 4-7, 11, and 13-18 under 35 USC 103 over Shatunov ‘724 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of US 2020/0251778 A1 (“Choi”).
Applicant's arguments, see pp. 11-12, filed 04/30/2026, with respect to the rejection(s) of claim(s) 1, 4-7, 11, and 13-18 under 35 USC 103 over Shatunov ‘739 have been fully considered but they are not persuasive. While the second compound represented by Chemical Formula 2 of Shatunov ‘739 appears to be excluded from claim 1 (see the rejection under 35 USC 112(b) above), Shatunov ‘739 also discloses a compound represented by Chemical Formula 7:
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This reads on the instant Chemical Formula 2-2b when R11, R12, R15, and R16 are hydrogen and R13 and R14 are unsubstituted C1 alkyl groups. Therefore, the rejection over Shatunov ‘739 is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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.
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, 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
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