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 Claims
Claims 1-9 are pending.
Claims 1, 3, 5 are amended.
Response to Amendment
Amendments filed on 2/19/2026 have been entered.
112 rejection for claim 3 has been withdrawn in view of the amendments.
102 rejection for claim 1, and other dependent claims has been withdrawn in view of the amendments.
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.
Claim 1-3, 5,6, 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-7 of copending Application No. US 2024/0297347 A1 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because application ‘347 teaches a lithium secondary battery comprising a positive electrode; a negative electrode; a separator disposed between the positive electrode and the negative electrode; and a non-aqueous electrolyte, wherein the negative electrode, at least in a charged state, includes a lithium alloy containing magnesium, at the negative electrode, a lithium metal deposits during charge, and the lithium metal dissolves during discharge, and the non-aqueous electrolyte contains a hydrofluoroether and lithium ions. Application ‘347 also teaches the formula for hydrofluoroether that reads on the claimed invention. Claim 6 of application ‘347 includes the use of fluorinated alcohol in the battery, and claim 7 provides examples that match the instant invention. Support for the anions found in the electrolyte are found in the disclosure of application ‘347 (Paragraph 0072) which cites the use of oxalate compound, and a difluorooxalateborate anion. The examples of fluorinated alcohols are found in the disclosure of application ‘347 (Paragraph 0069) which cites the use of 2,2,2-trifluoroethanol, 2,2,3,3,3-pentafluoro-1-propanol, and 2,2,3,3-tetrafluoro-1-propanol. Support for the ppm amount of fluoroalcohol is found in the disclosure of application ‘347 (Paragraph 0070) which cites the use 5 ppm to 1500 ppm. This range includes the range claimed in instant invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yamauchi et al (JP2013048015A; machine translation) in view of Maeda et al (US 20180115020A1).
Regarding Claim 1,
Yamauchi teaches a lithium secondary battery comprising a positive electrode, a negative electrode, a separator, and a non-aqueous electrolyte (Paragraph 0063). The electrolyte contains a non-aqueous solvent, an electrolyte salt, and a fluorine containing compound represented by formulas shown below (Paragraph 0009).
H(CX1X2CX3X4)n(CH2)mOH (wherein, X1, X2, X3 and X4 are the same or different and are -F, -CF3, -OCF3 or -H, X1, X2, X3 and At least one of X4 is -F, n is an integer of 0 to 10, m is an integer of 1 to 6)
F (CX5X6) n (CH2)mOH (wherein X5 and X6 is the same or different, -F or -H, n is an integer of 0 to 10, m is an integer of 1 to 6)
These formulas are akin to a fluoroalcohol. Yamauchi provides examples of these alcohols in Paragraph 0029, CF3CH2OH, CF3CF2CH2OH, CHF2CF2CH2OH. These are the same as shown in the instant specification (paragraph 0024).
Yamauchi teaches the use of lithium metal as the negative electrode material in Paragraph 0076. The use of lithium metal as active material in the negative electrode forms a lithium metal secondary battery that shows lithium metal deposits during charging and dissolution of lithium metal during discharging. This definition of lithium metal batteries is explained in instant specification (Paragraph 0003). Hence, based on the use of lithium metal as active material in Yamauchi, lithium metal deposits would be formed in the battery of Yamauchi.
The electrolyte salt can be lithium difluoro(oxalate)borate (Paragraph 0013) which contains oxalate and lithium ions, and fluorine.
The content of the fluorine containing compound is 1 × 10−6 to 1 × 10−2 mol/kg in the non-aqueous solvent. Considering the molecular weight of the fluorine containing compounds, the above range is within the claimed range of 5 to 1500 ppm.
Yamauchi teaches that the oxalate complex anion including fluorine (electrolyte salt) is present in the nonaqueous electrolyte. Yamauchi does not specifically teach that the concentration of the oxalate anion is 0.1 to 300 mmol/liter.
However, Maeda teaches a nonaqueous electrolyte solution that enables increase in storage characteristics of a battery, and an increase in the cycle characteristics of the battery (Paragraph 0006, 0027). Maeda teaches that the electrolyte contains a hydrofluoroether compound, and an electrolyte salt such as lithium oxalate difluoroborate which contains an oxalate anion including fluorine. Maeda further teaches that the concentration of the electrolyte salt is 0.1 to 3M (mol/L). This is 100 – 3000 mmol/liter. This range overlaps with the claimed range of 0.1-300 mmol/liter. Maeda also states that the when the concentration of the electrolyte salt is 0.1 mol/L or more, a more sufficient ionic conductivity can be attained (Paragraph 0056). Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the mmol/liter range as claimed from the overlapping region in Maeda into the composition of Yamauchi in order to improve the storage characteristics and cycle characteristics of the battery. Yamauchi also provides a solution to improving high-temperature storage characteristics and high-voltage cycle characteristics in a battery (Paragraph 0019).
Regarding Claim 2, and Claim 3,
Yamauchi teaches the formulas in Paragraph 0009
H(CX1X2CX3X4)n(CH2)mOH (wherein, X1, X2, X3 and X4 are the same or different and are -F, -CF3, -OCF3 or -H, X1, X2, X3 and At least one of X4 is -F, n is an integer of 0 to 10, m is an integer of 1 to 6)
F (CX5X6) n (CH2)mOH (wherein X5 and X6 is the same or different, -F or -H, n is an integer of 0 to 10, m is an integer of 1 to 6)
These formulas are akin to the claimed fluoroalcohol formula. Yamauchi provides examples of these alcohols in Paragraph 0029, CF3CH2OH, CF3CF2CH2OH, CHF2CF2CH2OH. These are the formulas for 2,2,2-trifluoroethanol, 2,2,3,3,3-pentafluoro- 1-propanol, and 2,2,3,3-tetrafluoro-1-propanol.
Regarding Claim 5,
Yamauchi teaches the use of lithium difluoro(oxalate)borate (Paragraph 0013). This contains the claimed anion.
Regarding Claim 6,
Yamauchi teaches the use of tetrahydrofuran as an additive that improves the cycle performance and rate performance of the battery (paragraph 0058). Tetrahydrofuran is also cited as one of the ethers in the instant specification (paragraph 0029). Hence, Yamauchi teaches the use of an ether compound in the electrolyte.
Regarding Claim 7,
Yamauchi teaches the use of an ether compound as additive in the electrolyte. Yamauchi teaches tetrahydrofuran which is a cyclic ether compound and does not teach chain alkyl ether compounds.
However, Maeda teaches the use of 1,2-dimethoxyethane, 1,2 -diethoxyethane and 1,2 -dibutoxyethane (Paragraph 0043). These are also examples of alkyl ethers cited in the instant specification (Paragraph 0030). Hence, the alkyl ether compound in Maeda would be represented by the claimed formula. Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use alkyl ether compounds in the non-aqueous solvent in order to achieve excellent battery characteristics, and suppress gas generation (paragraph 0014 and 0015).
Regarding Claim 8,
Yamauchi does not teach the use of saturated hydrofluoroether compound represented by claimed formula Y.
However, Maeda teaches the use of a hydrofluoroether in a non-aqueous electrolyte solution based on formula below. This formula reads on the claimed formula Y.
PNG
media_image1.png
158
338
media_image1.png
Greyscale
Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use this hydrofluoroether compound in order to achieve excellent battery characteristics, and suppress gas generation (paragraph 0014 and 0015).
Regarding Claim 9,
Yamauchi does not teach that the ether compound is 50 vol% or more of the non-aquoues electrolyte.
However, Maeda teaches that the hydrofluoroether is present in the electrolyte in a volume % of 1 to 60%, and preferably 3% to 50% (Paragraph 0053). This range includes the range of the claimed invention. Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the ether compound within claimed range in order to suppress gas generation, and improve battery characteristics (paragraph 0053).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that Yamauchi does not expressly or inherently describe the feature of the oxalate complex anion including fluorine of 0.1 to 300 mmol/L. Applicant argues that Yamauchi teaches away from the claimed mmol/L range. Yamauchi provides a preferable range of 0.5 to 3 mol/liter. Yamauchi may teach that this range is preferable, and that the conductivity tends to decrease outside this range; however, this is not a teaching away, as one of ordinary skill in the art will note that the battery still performs even if the range is lower. Yamauchi does appreciate concentrations lower and above the range by stating “outside the range”. While the art provides a preferable range, it also appreciates that concentrations below may exist, albeit, the performance may not be as efficient. Furthermore, Maeda is cited for teaching the concentration as required and has a teaching as to why the concentration can be modified. Maeda provides a range of the electrolyte salt that overlaps with the claimed range, and is suitable to use in a nonaqueous electrolyte solution in order to provide sufficient ionic conductivity. Hence, one of ordinary skill in the art would be motivated to combine the composition of Yamauchi with the range in Maeda for improved battery characteristics. MPEP 2123 II. states that “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.”
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 SUHANI JITENDRA PATEL whose telephone number is (571)272-6278. The examiner can normally be reached Monday-Friday 8:00 AM - 5:00 PM.
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, Maria Veronica D. Ewald can be reached on 571-272-8519. 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.
/SUHANI JITENDRA PATEL/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783