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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/24/2026 has been entered.
Status of the Claims
The amendment/remarks submitted 07/24/2026 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. Claims 1, 11, and 17 are amended. Claims 1, 4-5, 11, and 13-19 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, 4-5, 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 10-2020-0104650 A (“Jung” – machine translation cited herein).
Regarding claims 1, 4-5, and 13-15, 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.
Jung discloses a compound represented by the following formula 1 (“second compound”) useful as an additive for a lithium secondary battery:
[formula 1]
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where X1 is
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n is an integer from 1 to 4, and X2 is a coordination functional group such as a cyano group ([0034]-[0042]). Jung is therefore considered to disclose the compound represented by the claimed Chemical Formula 2-1 with sufficient specificity. 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 Jung to suppress the generation of hydrofluoric acid, suppress the expansion of the battery, and improve reliability ([0045], [0055]-[0056]).
The additive is provided in an amount of 0.2 to 5 parts by weight per 100 parts by weight of the total electrolyte for the lithium secondary battery as this maximizes the effect of improving reliability, particularly room temperature lifespan characteristics and high temperature stability ([0071]-[0072]). The claimed amount of the second compound and the weight ratio of the first compound and the second compound would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention in view of Jung teaching the amount maximizes the effect of improving reliability, particularly room temperature lifespan characteristics and high temperature stability and the amount of the additive taught by Kim, as above.
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, 11, and 13-18 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 Chemical Formula 2
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where R3 to R6 are independently one or more selected from the group consisting of hydrogen, a C1-C10 alkyl group, and a halogen ([0030]-[0032]). This compound differs from the claimed Chemical Formula 2-2a in that Shatunov does not expressly disclose the alkyl group is a C1 to C5 alkyl group, at least one of R7 to R10 is a halogen group or a substituted or unsubstituted C1 to C4 alkyl group and at least one of R7 to R10 is different from the remainder of R7 to R10. However, given the relative size of the genus disclosed by Shatunov and the size the claimed species, that Shatunov discloses the R3 to R6 are independently selected, and that Shatunov discloses that compounds falling within the (broader) Chemical Formula 1 improve cycle performance ([0050]-[0054]), including the claimed species would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention. See MPEP 2144.08.
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 claims 11 and 17, modified Kim discloses the electrolyte of claim 1. While Shatunov does not expressly disclose the second compound is
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please consider the following. Shatunov discloses the genus represented by Chemical Formula 2 (see above for more details)
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Shatunov further expressly discloses species from within that genus of Chemical Formulas 4 and 5:
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and
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, respectively.
Given the above discussion regarding the genus and the further disclosure of Chemical Formulas 4 and 5, the claimed second compound (corresponding to where only one of R3 to R6 of Shatunov is a methyl group, rather than zero as in Chemical Formula 4 or four as in Chemical Formula 5), that Shatunov discloses the R3 to R6 are independently selected, and that Shatunov discloses that compounds falling within the (broader) Chemical Formula 1 improve cycle performance ([0050]-[0054]), 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 claimed second compound. See MPEP 2144.08.
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
The provisional nonstatutory double patenting rejection is maintained for the reasons above.
Applicant’s arguments, see pg. 10, filed 07/24/2026, with respect to the 112(b) rejection have been fully considered and are persuasive. The rejection of claims 1, 4-5, 13-16, and 18 under 35 USC 103 has been withdrawn.
Applicant’s arguments, see pp. 12-15, filed 07/24/2026, with respect to the rejection(s) of claim(s) 1, 4-5, 11, and 13-18 under 35 USC 103 over Choi have been fully considered and are persuasive. In particular, it is noted that Choi does not disclose the compound of Chemical Formula 2-1 where m is 1. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of KR 10-2020-0104650 A (“Jung”).
Applicant's arguments filed, see pp. 15-17, filed 07/24/2026, with respect to the rejection(s) of claim(s) 1, 4-5, 11, and 13-18 under 35 USC 103 over Shatunov have been fully considered but they are not persuasive.
A new ground of rejection has been presented over Shatunov regarding Chemical Formula 2-2a. It is the position of the Office that given the relative size of the genus disclosed by Shatunov and the size the claimed species, that Shatunov discloses the R3 to R6 are independently selected, and that Shatunov discloses that compounds falling within the (broader) Chemical Formula 1 improve cycle performance ([0050]-[0054]), including the claimed species would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention. See MPEP 2144.08. Applicant is advised that while the rejection over Shatunov is based on the claimed Chemical Formula 2-2a, similar reasoning may apply to Chemical Formula 2-2b.
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
Prosecution Insights