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 .
This action is in response to applicant’s arguments filed 02/04/2026. Claims 1-13 are currently pending for examination on the merits.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 1-3 and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (KR 20200020169 with citations made from English equivalent US 2021/0202993) (Shin) (of record).
Regarding claim 1, Shin discloses a composition for an electrolyte of a lithium secondary battery ([0138]; title; abstract), comprising: a lithium salt ([0011]; abstract); a polyalkylene carbonate-based first polymer (referenced by Shin as a second oligomer) having a weight average molecular weight of 1,000 g/mol to 150,000 g/mol ([0092]; see also [0012]-[0014]; abstract), suggesting the claimed range of 1,000 g/mol to 1,500,000 g/mol. Shin further discloses that an amount of the first polymer (second oligomer) can be 4.5 wt% based on a total weight of the composition ([0138]-[0139]), suggesting the claimed range of 0.1 wt% to 30 wt%. Shin further discloses that the composition comprises a polyethylene oxide-based second polymer (referenced by Shin as a first oligomer) having a weight average molecular weight of 500 g/mol to 200,000 g/mol ([0068]; see also [0012]-[0014]; abstract), overlapping the claimed range of 200 g/mol to 2,000 g/mol. Furthermore, given the above values, Shin necessarily discloses that a weight average molecular weight of the second polymer (first oligomer) is in a range of 1/300 (500/150,000) to 200 (200,000/1,000) times the weight of the average molecular weight of the first polymer (second oligomer), overlapping the claimed range of 1/3,000 to 1/3. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Therefore, absent any showing of unexpected results or criticality, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have configured the weight average molecular weights of the first polymer (second oligomer) and the second polymer (first oligomer) to meet the claimed ranges based on the overlapping ranges disclosed by Shin. Shin further discloses that the composition comprises an organic solvent (abstract; [0043]).
Regarding claim 2, Shin discloses all of the limitations as set forth above for claim 1. Shin further discloses that the first polymer (second oligomer) comprises a unit represented by the Formula 2:
PNG
media_image1.png
156
270
media_image1.png
Greyscale
wherein in the Formula 2, Rg, Rh, Ri, and Rj are each independently an alkyl group having 1 to 5 atoms, and s is an integer of 1 to 50 (see [0013]-[0014]), which suggests the claimed Formula 1.
Regarding claim 3, Shin discloses all of the limitations as set forth above for claim 1. Shin further discloses that the second polymer (first oligomer) comprises a unit represented by Formula 1:
PNG
media_image2.png
188
190
media_image2.png
Greyscale
wherein in Formula 1, Ra, Rb, Rc, and Rd are each independently an alkyl group having 1 to 3 carbon atoms, and p is an integer of 1 to 50 (see [0012]-[0013]), suggesting the claimed Formula 2.
Regarding claim 7, Shin discloses all of the limitations as set forth above for claim 1. As set forth above, Shin discloses that the weight average molecular weight of the second polymer (first oligomer) is in a range of 1/300 (500/150,000) to 200 times the weight of the average molecular weight of the first polymer (second oligomer), overlapping the claimed range of 1/1,000 to 1/5. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Therefore, absent any showing of unexpected results or criticality, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have configured the weight average molecular weights of the first polymer (second oligomer) and the second polymer (first oligomer) to meet the claimed ranges based on the overlapping ranges disclosed by Shin.
Regarding claim 8, Shin discloses all of the limitations as set forth above for claim 1. As set forth above, Shin discloses that the amount of the first polymer (second oligomer) can be 4.5 wt% based on the total weight of the composition ([0138]-[0139]), suggesting the claimed range of 0.1 wt% to 20 wt%.
Regarding claims 9 and 10, Shin discloses all of the limitations as set forth above for claim 1. Shin further discloses that the second polymer (first oligomer) and the first polymer (second oligomer) are mixed in a weight ratio of (10 to 50) : (50 to 90) ([0101]). Thus, Shin necessarily discloses that an amount of the second polymer (first oligomer) is in a range of 11.1 wt% ((10/90)*100) to 100 wt% ((50/50)*100) based on a total weight of the first polymer (second oligomer), overlapping the claimed ranges of 0.01 wt% to 50 wt% and 0.02 wt% to 40 wt%. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Therefore, absent any showing of unexpected results or criticality, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have configured the mixing ratio of the first polymer (second oligomer) and the second polymer (first oligomer) to meet the claimed ranges based on the overlapping range disclosed by Shin.
Regarding claim 11, Shin discloses all of the limitations as set forth above for claim 1. Shin further discloses that the composition comprises a polymerization initiator ([0034]; [0102]).
Regarding claim 12, Shin discloses a gel polymer electrolyte for a lithium secondary battery comprising a polymerization product of the composition for claim 1 ([0031]-[0034]; [0097]-[0105]; [0138]-[0142]).
Regarding claim 13, Shin discloses a lithium secondary battery ([0112]) comprising: a positive electrode including a positive electrode active material; a negative electrode including a negative electrode active material; a separator interposed between the positive electrode and the negative electrode; and the gel polymer electrolyte of claim 12 ([0113]-[0127]; [0140]-[0141]).
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (KR 20200020169 with citations made from English equivalent US 2021/0202993) (Shin) (of record) in view of Ahn et al. (US 2020/0220212) (Ahn) (of record).
Regarding claim 4, Shin discloses all of the limitations as set forth above for claim 2. Shin fails to explicitly disclose, however, that the first polymer (second oligomer) comprises a unit represented by the claimed Formula 3.
Ahn teaches a similar composition for an electrolyte of a lithium secondary battery (title; abstract), comprising a polyalkylene carbonate-based polymer (referenced as an oligomer) that comprises a unit represented by Formula 1-1 ([0026]-[0031]). When R2 is an alkylene group with two carbon atoms, and n is given a value of at least 5 in the Formula 1-1, Formula 1-1 overlaps in scope with the claimed Formula 3, particularly when n is given a value of at least 4 in the claimed Formula 1. However, for illustration purposes only, examiner reproduces modified Formula 1-1 below in which n in Formula 1-1 is only given a value of 2 in order to visually show the overlap in scope. Ahn further teaches that configuring the polymer to have this formula gives the polymer improved conductivity and adhesion to an electrode, which can then improve the cycle performance and safety of the battery ([0002]; [0017]; [0033]-[0034]; [0046]-[0047]; [0055]; [0059]).
PNG
media_image3.png
441
1196
media_image3.png
Greyscale
Modified Formula 1-1, Ahn
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the polyalkylene carbonate-based first polymer disclosed by Shin to have a unit corresponding in scope with the claimed Formula 3, as taught by Ahn, because they would have had a reasonable expectation that doing so would improve the polymer’s conductivity and adhesion to an electrode and improve the cycle performance and safety of the battery.
Regarding claim 5, modified Shin discloses all of the limitations as set forth above for claim 4. As shown above in the modified Formula 1-1, Ahn clearly shows that the corresponding value for B in the claimed Formula 3 is:
PNG
media_image4.png
160
232
media_image4.png
Greyscale
wherein R’ is a substituted or unsubstituted alkylene group of 1 to 10 carbon atoms, a substituted or unsubstituted cycloalkylene group of 3 to 10 carbon atoms, a substituted or unsubstituted bicycloalkylene group of 6 to 20 carbon atoms, or a substituted or unsubstituted arylene group of 6 to 20 carbon atoms (see [0026]-[0031]; [0060]-[0062]), suggesting the claimed Formula B-1. Therefore, since modified Shin includes the teachings from Ahn regarding Ahn’s Formula 1-1, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Shin to have satisfied all of the limitations in claim 5.
Regarding claim 6, Shin discloses all of the limitations as set forth above for claim 1. Shin fails to explicitly disclose, however, that the first polymer (second oligomer) is represented by claimed Formula 3-1 or claimed Formula 3-2.
Ahn teaches a similar composition for an electrolyte of a lithium secondary battery (title; abstract), comprising a polyalkylene carbonate-based polymer (referenced as an oligomer) that comprises a unit represented by Formula 1-1 ([0026]-[0031]). When R1 is an alkylene group with one carbon atom, R2 is an alkylene group with two carbon atoms, and n is given a value of at least 5 in the Formula 1-1, Formula 1-1 overlaps in scope with the claimed Formula 3-1, particularly when n1 is given a value of at least 4 in the claimed Formula 3-1. The only difference remaining between Formula 1-1 and the claimed Formula 3-1 is that R’ in Formula 1-1 is not specifically a cycloalkylene group with 9 carbon atoms. However, Ahn further teaches that R’ in Formula 3-1 may be a cycloalkylene group having 9 carbon atoms, as illustrated by Formula R’-4 (see [0060]-[0065]). Thus, it is clear that Ahn teaches a polymer that overlaps in scope with the claimed Formula 3-1. What’s more, since Ahn teaches that units C and C’ in Formula 1-1 may be formed as a (meth)acrylate group according to Formula C-2 (see [0065]-[0067]), it is clear that the polymer taught by Ahn also overlaps in scope with the claimed Formula 3-2, specifically when a and a’ and b and b’ in Formula 3-2 are each equal to one (see Modified Formula 1-1 below). For illustration purposes only, examiner reproduces modified Formula 1-1 below in which n in Formula 1-1 is only given a value of 2, R’ is replaced with the cycloalkylene group of Formula R’-4, and units C and C’ are each replaced with the (meth)acrylate group in Formula C-2 in order to visually show the overlap in scope. Ahn further teaches that configuring the polymer to have this formula gives the polymer improved conductivity and adhesion to an electrode, which can then improve the cycle performance and safety of the battery ([0002]; [0017]; [0033]-[0034]; [0046]-[0047]; [0055]; [0059]).
PNG
media_image5.png
367
1215
media_image5.png
Greyscale
Modified Formula 1-1, Ahn
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the polyalkylene carbonate-based first polymer disclosed by Shin to have a unit corresponding in scope with the claimed Formula 3-1 or Formula 3-2, as taught by Ahn, because they would have had a reasonable expectation that doing so would improve the polymer’s conductivity and adhesion to an electrode and improve the cycle performance and safety of the battery.
Response to Arguments
Applicant's arguments filed 02/04/2026 have been fully considered but they are not persuasive.
Applicant argues that Shin fails to make obvious the claimed weight average molecular weight ratio between the first and second polymers because Shin fails to recognize the ratio between these values as a result-effective variable. Examiner respectfully disagrees. While Shin does not explicitly disclose a preferred range for a ratio between the weight average molecular weight of the first and second polymers, Shin does disclose preferred ranges for the individual weight average molecular weights of the first and second polymers. Indeed, Shin is clear that the individual molecular weights of these polymers are result-effective, where keeping the weight average molecular weight of the first polymer (second oligomer) within the range of 1,000 g/mol to 150,000 g/mol helps to maintain dispersibility ([0092]), and keeping the weight average molecular weight of the second polymer (first oligomer) within the range of 500 g/mol to 200,000 g/mol helps to suppress decomposition of the lithium salt and prevent a side reaction caused by lithium ions ([0068]). Thus, in optimizing the individual molecular weights of the first and second polymers within the above ranges, one of ordinary skill in the art would also necessarily be optimizing a ratio between these two values. Where each of the constituent parts of a parameter are optimized, the parameter itself is optimized. To be sure, one of ordinary skill in the art would have also been motivated to find an optimum ratio between these molecular weights because this would lead to the combined benefits of the two individual optimal ranges. Furthermore, given that Shin gives no boundaries for this ratio, one of ordinary skill in the art would have reasonably found that a ratio between the weight average molecular weight of the second polymer to that of the first polymer would be anywhere between 1/300 (500/150,000) to 200 (200,000/1,000) based on the possible individual weights for these polymers. Since this range overlaps with the claimed ratio range of 1/3,000 to 1/3, it is clear that a prima facie case of obviousness exists. See MPEP §2144.05. With respect to the Board decision cited by applicant, examiner notes that Board decisions are not precedential; thus, the facts of the cited decision do not necessarily relate to the instant case, and examiner is not bound by its fact-specific findings.
Applicant further points to Table 1 as evidence of criticality for the claimed ratio range. However, examiner notes that Table 1 does not include enough data to conclusively show criticality for the claimed ratio. While Comparative Examples 5 and 6 show deteriorated performance for values outside of the claimed range of 1/3,000 to 1/3, Table 1 does not have any examples at or near the endpoints of the claimed range. Indeed, the ratio of 1/1 in Comparative Example 5 and 1/4,000 in Comparative Example 6 are well outside of the claimed ratio range. Thus, it is unclear based merely on these two examples whether or not the specific endpoints of the claimed range are critical. Furthermore, the molecular weight of the second polymer in Comparative Example 5 is outside of the claimed range of 200 g/mol to 2,000 g/mol, and the molecular weight of the first polymer in Comparative Example 6 is outside of the claimed range of 1,000 g/mol to 1,500,000 g/mol. Thus, it is also unclear if the deteriorated performance in Comparative Examples 5 and 6 is due solely to the weight ratio being outside of the claimed range of 1/3,000 to 1/3. Thus, because applicant has failed to provide a sufficient showing of unexpected results or criticality for the claimed ratio range, the prima facie case of obviousness in view of Shin still stands.
Finally, applicant notes that none of the exemplary embodiments disclosed by Shin have a molecular weight ratio within the claimed range. However, examiner emphasizes that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP §2123(II)), and “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments” (see MPEP 2123(I)). Thus, given the broad disclosure of Shin, one of ordinary skill in the art would have been well equipped to explore and optimize the various possibilities of the weight average molecular weight ratio between the first and second polymers to reach the claimed ratio with a reasonable expectation of success. The mere fact that there are numerous possibilities is not evidence of non-obviousness where no criticality exists, especially where this type of optimization is routine in the art.
As such, claims 1-13 stand rejected.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDON C DARBY whose telephone number is (571)272-1225. The examiner can normally be reached Monday - Friday: 7:30am - 5:00pm.
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, Katelyn Smith can be reached at (571) 270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/B.C.D./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
Prosecution Insights