DETAILED ACTION
Response to Amendment
Amendments, filed on December 22, 2025, have been entered in the above-identified application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
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Claims 1 – 6, 8, 11 - 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,631,896 B2 (Ha et al.). Although the claims at issue are not identical, they are not patentably distinct from each other because Ha et al. discloses the claimed invention with regard to everything but the use of a linear, cyclic or mixture thereof ether solvent (claims 1 and 4). This rejection is maintained for the reasons of record set forth in Paragraph No. 4 of the Office Action mailed on August 26, 2025.
Regarding the amended negative limitations, the Examiner notes that the listed solvents possible include many only linear solvents or include cyclic solvents other than those excluded, hence overlapping/encompassing the claimed scope. Regarding the amended volume percentage, while not explicit in the below identified claimed scope, the examples of these references clearly teach overlapping/encompassing volume percentages.
Applicants are reminded that while it is generally prohibited from using the disclosure of a potentially conflicting patent or application in an Double Patenting analysis, there are two exceptions permitted by the MPEP. Specifically, “those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent”. In the instant case, the amount of the additive (solvent) that reads on the heterocyclic compound is clearly supporting subject matter as the heterocyclic compound is claimed as being added and a skilled artisan would have to consult the specification to determine at what volume percentage was the claimed scope directed towards. The Examiner notes that while there is no example explicit in the claimed range, Ha et al. clearly teach that the 11 - ~43 volume percentage examples exhibit the best properties (Tables 1 and 2).
As such, the Examine deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the volume ratio of the heterocyclic compound meeting the claimed limitations through routine experimentation, especially given the teaching in Ha et al. regarding ranges of 11 - ~43 volume percent exhibiting the highest number of cycles to reach 80% retention (Tables 1 and 2, as noted above). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 1 – 6, 8 and 11 - 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of the four references listed in the table below. Although the claims at issue are not identical, they are not patentably distinct from each other because each of these references taken individually disclose the claimed invention with regard to an electrolyte solution as set forth in the table below. This rejection is maintained for the reasons of record set forth in Paragraph No. 5 of the Office Action mailed on August 26, 2025.
Regarding the amended negative limitations, the Examiner notes that the listed solvents possible include many only linear solvents or include cyclic solvents other than those excluded, hence overlapping/encompassing the claimed scope. Regarding the amended volume percentage, while not explicit in the below identified claimed scope, the examples of these references clearly teach overlapping/encompassing volume percentages.
Applicants are reminded that while it is generally prohibited from using the disclosure of a potentially conflicting patent or application in an Double Patenting analysis, there are two exceptions permitted by the MPEP. Specifically, “those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent”. In the instant case, the amount of the additive (solvent) that reads on the heterocyclic compound is clearly supporting subject matter as the heterocyclic compound is claimed as being added and a skilled artisan would have to consult the specification to determine at what volume percentage was the claimed scope directed towards.
Double Patenting
reference
Electrolyte solution for Li-S battery
Lithium salts (inc. recitations per claim 12)
Organic solvents (linear, cyclic ether)
Additive (and nomenclature used) – for claims 1 – 4
Volume ratios as in claims 9 and 10
Battery structure per claim 13
2023/0238584 A1
Claim 1
Claims 1, 6
Claims 1, 10: “second solvent”
Claims 1, 9: “first solvent”
See below
Claim 13
2022/0393242 A1
(now 12,401,065)
Claim 1
Claims 1, 4
Claims 1, 8: “second solvent”
Claims 1, 3: “first solvent”
See below
Claim 10
2022/0393243 A1
Claim 1
Claims 1, 6
Claims 1, 11; “second solvent”
Claims 1, 5: “first solvent”
See below
Claim 14
12,183,889 B2
Claim 1
Claim 1; also See below
Claim 1
Claim 1
Claim 3; also See below
Claim 6
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 – 6, 8 and 11 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Ha et al. (U.S. Patent No. 11,631,896 B2 and WO 2020/105981, published 5-28-2020). See US ‘896 B2 for column+line citations. This rejection is maintained for the reasons of record set forth in Paragraph No.’s 7 and 12 (for claims 5, 6 and 8) of the Office Action mailed on August 26, 2025.
Regarding the amended negative limitations, the Examiner notes that the listed solvents possible include many only linear solvents or include cyclic solvents other than those excluded, hence overlapping/encompassing the claimed scope.
Regarding the amended volume percentage, the Examiner notes that while there is no example explicit in the claimed range, Ha et al. clearly teach that the 11 - ~43 volume percentage examples exhibit the best properties (Tables 1 and 2).
The Examine therefore deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the volume ratio of the heterocyclic compound meeting the claimed limitations through routine experimentation, especially given the teaching in Ha et al. regarding ranges of 11 - ~43 volume percent exhibiting the highest number of cycles to reach 80% retention (Tables 1 and 2, as noted above). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Applicants have set forth arguments of unexpected results, but the Examiner deems that the present claims are not reasonably commensurate in scope to the showing of unexpected results. Amendment to positively recite that the organic solvent includes at least dimethoxyethane and the additive is selected from the group recited in claim 4 (cancelling claims 2 and 3) would be deemed to place claim 1 in condition for allowance as being reasonably commensurate in scope to the showing of unexpected results set forth by Applicants in their Tables 1 – 3.
Response to Arguments
The Double Patenting rejection of claims in view of Ha et al.
Applicants’ arguments have been considered but are not found persuasive. While the Examiner acknowledges that the claimed weight percentage (and, as noted by Applicants) volume percentage falls outside the scope of the present claimed volume ratio, the broader disclosure in Ha et al. renders obvious the claimed volume ratio as being within the disclosed volume ratios in the different examples. While prosecution in Ha et al. may have led to the narrower range being claimed, the fact that Ha et al. qualifies as prior art and clearly provides examples both above and below the claimed range as ‘working embodiments’, means that the entirety of the claimed range would have been recognized as a skilled artisan as an ‘obvious variant’ to the claimed range (i.e. the difference akin to being a 103-based rejection versus a 102 for the claimed scope).
The Double Patenting rejection of claims in view of other, various references
Applicants’ arguments have been considered but are moot in view of the new ground(s) of rejection. In so far as they apply to the present rejection of record, Applicant(s) have set forth amended limitations which have excluded some of the previously recited double patenting rejections as the Examiner deems they fail to provide sufficient specificity for the claimed volume percentage range. The remaining five double patenting rejections either explicitly claim overlapping ranges (
The rejection of claims under 35 U.S.C § 102 and 103 – Ha et al.
Applicant(s) argue(s) that Ha et al. claims a range outside the presently claimed volume ratio. While this is found persuasive to remove Ha et al. under 35 USC 102, this is not found persuasive under 35 USC 103 because the Tables in Ha et al. provide clear guidance that their invention readily envisions a wide range of volume percentage being suitable … including noting that the 11 - ~43% range of examples appears to exhibit the best properties (see Tables in Ha et al.).
Regarding the argument that Ha et al. should not apply due to the showing of unexpected results, the Examiner reminds Applicants that the claims must be reasonably commensurate in scope to the showing of unexpected results to distinguish over the art of record. The present showing requires a specific organic solvent to be included, excludes specific classes of solvents (already present in claim 1), and requires a fairly narrow showing of the additive (while the examples only use 2-methyl-furan, the Examiner deems the compounds of claim 4 are sufficiently similar to be ‘reasonably commensurate’ in scope). As the present claim 1 does not include all these aspects, the arguments of unexpected results are not found persuasive at this time.
The rejection of claims under 35 U.S.C § 102 and/or 103 – other art than Ha et al.
The above noted rejection has been withdrawn in view of Applicants’ arguments, which have been found persuasive.
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.
Applicants’ amendment resulted in embodiments not previously considered (i.e. amended scope of claim 1) which necessitated the new grounds of rejection, and hence the finality of this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
February 26, 2026