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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/30/2026 has been entered.
Status of Claims
Claims 1, 7-9 are pending.
Claims 1 is amended.
Claims 2-6 are cancelled.
Response to Amendment
Amendments filed on 6/30/2026 have been entered.
The terminal disclaimer filed on 6/30/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application no. 18/268,819 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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, 7-10 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, and Claim 10,
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), and the formula for 2,2,2-trifluoroethanol is cited as CF3CH2OH. Hence, Yamauchi teaches using this compound as the fluoroalcohol.
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. This is akin to a oxalate complex anion including fluorine that includes difluorooxalateborate anion.
The content of the fluorine containing compound is 1 × 10−6 to 1 × 10−2 mol/kg in the non-aqueous solvent (Paragraph 0030). Considering the molecular weight of the fluorine containing compounds, the above range is within the claimed range of 10 to 250 ppm. The conversion of 10−4 mol/kg to ppm is ~10 ppm, and the conversion of 10−3 mol/kg to ppm is ~100 ppm. Both of these values lie within the range as shown in Yamauchi and the claimed range. Hence, there is overlap with the claimed range. Per MPEP 2144.05, In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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 choose an overlapping value from Yamauchi for the content of the fluorine compound in order to prevent impairment of the battery characteristics (Paragraph 0030), and form a battery that has excellent high temperature storage characteristics (Paragraph 0007).
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 0.1-150 mmol/liter. Maeda also states that when the concentration of the electrolyte salt is 0.1 mol/L or more, a more sufficient ionic conductivity can be attained (Paragraph 0056). Per MPEP 2144.05, In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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).
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.
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158
338
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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 filed 6/30/2026 have been fully considered but they are not persuasive.
Applicant argues that Yamauchi does not pay any attention to the problem of dendritic deposition of lithium metal, much less mentioning the mechanism of the interaction between the fluoroalcohol and the inorganic fluoride film derived from the oxalate complex. Therefore, it would not have been obvious for a skilled person to select the claimed chemicals from numerous examples, and select the narrow numerical ranges of ppm etc. Examiner disagrees with this argument. In response to applicant's argument that Yamauchi does not mention the mechanism of the interaction between the fluoroalcohol and the inorganic fluoride film derived from the oxalate complex, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant’s arguments regarding the selection of narrow numerical ranges of ppm and mol/L, Examiner disagrees with this. Table 1 presented in the arguments has LiFOB concentration ranging from 100 to 300 mmol/L. The range claimed is 0.1 to 150 mmol/L. Table 1 shows test data for A1, A2, A3, and A5 at 100 mmol/L, and no values at lower than the claimed range, or higher than the range outside between the claimed 150 mmol/L to 300 mmol/L. Similarly, Table 1 shows values for fluoroalcohol concentration at 10, 50, 250, 1000 ppm, while claimed range is between 10 to 250 ppm. Providing test results below the range, and above the range are recommended.
This is not commensurate with a showing of unexpected results. Overcoming a rejection based on unexpected results requires the combination of three different elements: (i) the results must fairly compare with the closest prior art in an affidavit or declaration under 37 CFR 1.132, (ii) the claims must be commensurate in scope, and (iii) the results must truly be unexpected. MPEP 716.02. Additionally, the burden rests with Applicant to establish the results are unexpected and significant. MPEP 716.02(b). To establish unexpected results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. MPEP 716.02(d)(II).
Conclusion
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/SUHANI JITENDRA PATEL/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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