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 .
Claim Status
Claims 1-12 are pending and have been rejected to.
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.
Claims 1-8 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over U.S.
Pre-Grant Publication 2022/0278368, hereinafter Morinaka and further in view of U.S. Pre-Grant Publication 2018/0248226, hereinafter Kono.
Regarding claim 1, Morinaka teaches a nonaqueous electrolyte solution that comprises
of a first and second additive, a nonaqueous organic solvent, and a solute (Abstract). The first
additive contains a cyclic sulfonyl group (represented in formula [1]) and the second additive
may be a silyl group that contains an unsaturated hydrocarbon group (represented in formulas
[5-1] to [5-20]). These formulas encapsulate the claimed functional groups of the instant claim 1. The purpose of the additives in this electrolyte solution is to ‘improve high-temperature
storage characteristics and low-temperature characteristics’ [0057].
However, Morinaka fails to teach the cyclic sulfonyl and silyl groups linked to each
other.
Kono teaches a linked additive for non-aqueous electrolyte solutions that also contains a
cyclic sulfonyl group. This compound was synthesized using a halide and a reactant such as 3-
hydroxysulfolane [0059] in order to link the cyclic sulfonyl group and silyl group with an oxygen
(L group of claims 2-6). Similar to Morinaka, Kono teaches that the purpose of this additive is
for ‘high storage stability and improving cycle characteristics and suppressing gas generation for
a power storage device’ [0027].
Therefore, it would have been obvious to the ordinarily skilled artist before the effective
filing date of the claimed invention to link the cyclic sulfonyl and silyl groups of Morinaka using
the method of Kono in order to improve high temperature characteristics as taught by
Morinaka (Abstract) and Kono ([0026-0027]). One of ordinary skill in the art would have found it
obvious at the time of filing to reduce the total number of additives in a battery by linking two
to form one additive because one would appreciate that doing so would decrease the number
of components, simplifying the process and ensuring a more homogeneous mixture of additives
due to linkage. Moreover, as Morinaka and Kono teach the unlinked and linked additives for the
same purpose it would be obvious to one of ordinary skill to try the linked additives with an
expectation of similar results MPEP 2143 and 2144.06.
Regarding claims 2-6, Morinaka and Kono teach the compound of claim 1. Additionally,
Morinaka teaches a first additive with a cyclic sulfonyl group that has four carbons in the cyclic portion (represented by Formula [1]). Attached to this cyclic group is one ether group and
hydrogens wherein the silyl group can contain two methyl groups and two unsaturated alkenes
(represented by Formula [5-1]).
Regarding claim 7, Morinaka and Kono teach the compound of claim 1. Additionally,
Morinaka teaches that this additive is in a nonaqueous electrolyte solution used in a
nonaqueous electrolyte secondary battery (Abstract).
Regarding claim 8, Morinaka and Kono teach the compound of claim 1. Additionally,
Morinaka teaches that the nonaqueous electrolyte solutions consists of the first and second
additives, a nonaqueous organic solvent, and a solute (Abstract). The solute used in this
nonaqueous electrolyte solution are lithium salts, sodium salts, or a combination thereof
[0176].
Regarding claim 10, Morinaka and Kono teach the compound of claim 8. Additionally,
Morinaka teaches that the solute in the nonaqueous electrolyte that overlap with the instant
claim 10 can be LiPF6, LiBF4, LiSbF6, LiAsF6, LiClO4, LiCF3SO3, LiC4F9SO3, LiAlO2, LiCl, LiI, or LiAlCl4, preferably LiPF6 [0176].
Regarding claim 11, Morinaka and Kono teach the compound of claim 1. Additionally,
Morinaka teaches a nonaqueous electrolyte solution secondary battery that comprises of the
nonaqueous electrolyte solution, a positive electrode that consists of a positive electrode active
material, a negative electrode that consists of a negative electrode active material, and a
separator ([0192], [0193], and [0221]).
Regarding claim 12, Morinaka and Kono teach the compound of claim 11. Additionally,
Morinaka teaches that the nonaqueous electrolyte solution consists of the first and second
additives that make up the compound of instant claim 1.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Morinaka and Kono
as applied to claim 8 above, and further in view of U.S. Pre-Grant Publication 2004/0214091,
hereinafter Lim.
Regarding claim 9, Morinaka and Kono teach a nonaqueous electrolyte solution that
comprises of a first and second additive, a nonaqueous organic solvent, and a solute (Morinaka,
Abstract). The first additive contains a cyclic sulfonyl group (Morinaka, represented in formula
[1]) and a silyl group that contains an unsaturated hydrocarbon group (Morinaka, represented
in formulas [5-1] to [5-20]). These additives are linked using the method of Kono [0059].
However, Morinaka and Kono fail to explicitly teach the compound having a weight
percent of 0.001 wt% to about 20 wt%, with respect to the total weight of the electrolyte.
Lim teaches an electrolyte of a lithium battery that includes a non-aqueous organic
solvent, a lithium salt, and a compound additive such as a sulfone-based compound, a
carbonate-based compound, and a sulfoxide compound that substantially include aromatic
hydrocarbon groups (Lim, abstract). The compound additive is added in an amount of 0.1 to 50
wt % based on the total amount of electrolyte. This addition effect is not realized sufficiently
when the compound is used in an amount of less than 0.1 wt%, and the cycle life characteristics
of the battery are decreased when the compound is used in an amount exceeding 50 wt % (Lim,
[0038]). Therefore, the amount of additive is an art recognized result effective variable.
Therefore, it would have been obvious to someone of the ordinary skill in the art before
the effective filing date of the claimed invention to have optimized the amount of Morinaka
and Kono’s additive in order to improve the cycle life characteristics as taught by Lim. In
optimizing the additive amount, one would arrive at the claimed relationship, barring evidence
to criticality or unexpected results. Moreover, in the case where the claimed ranges "overlap or
lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP
2144.05).
Response to Arguments
Applicant's arguments filed June 23, 2026 have been fully considered but they are not persuasive. Regarding the 35 U.S.C. 103 rejection of claims 1-8 and 10-12, Morinaka teaches that the R groups represented by general formula 5 are methyl or ethyl groups and are attributed to output characteristics such as improved high temperature cycle characteristics and high temperature storage characteristics without increasing the internal resistance upon the formation of a film on an electrode [0161]. Therefore, linking the cyclic sulfonyl group and silyl groups of Morinaka using the method of Kono to produce the compound of instant claim 6 would still result in high storage characteristics due to the presence of the ethyl and methyl groups. This modified first additive of Morinaka can be used in combination with at least one of the second additive of Morinaka represented by formulas 2-4 (Abstract) in order to further improve high temperature characteristics ([0098], [0123], and [0148]). Additionally, Kono states the general compound represented by formula 1 is synthesized by reacting a halide with 3-hydroxysulfolane [0059]. This concept taught by Kono of reacting a halide with the alcohol group of 3-hydroxysulfolane can be applied to Morinaka because the same starting material of 3-hydroxysulfolane is taught [0073-0075] and would react with the compound represented by formula 5 due to the fact that the R groups of formula 5 can be saturated or unsaturated methyl or ethyl groups that may have a fluorine atom ([0159] and [0161]). It would be obvious to choose from the finite number of options described for the R group of formula 5 with an expectation that each material in the list would perform its function and is therefore described as art recognized equivalent for that purpose, barring evidence to the contrary (MPEP 2143).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/M.K.H./Examiner, Art Unit 1724 /BRIAN R OHARA/Examiner, Art Unit 1724
