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 .
Response to Amendment
The amendment filed on 03/31/2026 has been entered. Claims 1, 7 and 8 are amended and Claims 1-20 are pending.
Drawings
The corrected drawing sheets filed 03/31/2026 are accepted.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-9 and 11-19 are rejected under 35 U.S.C. 103 as being unpatentable over Tokuda et al. (US 20120308881 A1), hereinafter "Tokuda". Tokuda et al. is analogous prior art to the claimed invention because it pertains to the same field of endeavor, namely non aqueous electrolyte cells.
In regard to Claim 1, Tokuda et al. discloses a lithium ion battery, comprising a positive electrode, a negative electrode, a separator arranged between the positive electrode and the negative electrode, and a non-aqueous electrolyte (Tokuda, [0002, 0469-0470]), and an active material of the positive electrode comprises LiFePO4 (Tokuda, Example 20). Tokuda et al. also discloses the non-aqueous electrolyte consists of an organic solvent, a lithium salt including a specific example wherein the lithium salt is LiPF6, and vinylene carbonate (Tokuda, Example 20).
Further, Tokuda discloses a compound represented by Formula (1) (diisocyanates, i.e. two -N=C=O groups with an organic spacer R1 between them) wherein in formula (1), R1 is one or more of chain, cyclic and aromatic group with 2-20 carbon atoms in a preferred list of additives including dicyclohexylmethane 4,4'-diisocyanate, where it is known that R1 = cyclic + chain with 13 carbon atoms (Tokuda, [0458]).
Next, Tokuda et al. discloses the compacted density of the active material of the positive electrode is between 1 and 4 g/cm3 (Tokuda, [0667]), which overlaps the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obvious. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05. Lastly, it is noted that the group of additives are considered optional based on the language in claim 1 and thus are not required features to be examined.
In regard to Claims 2-3, Tokuda et al. discloses the lithium ion battery according to claim 1. Tokuda et al. also discloses a preferred list of additives including dicyclohexylmethane 4,4'-diisocyanate, where it is known that R1 = cyclic + chain with 13 carbon atoms and corresponds to compound 1 (Tokuda, [0458]).
In regard to Claims 4 and 12, Tokuda et al. discloses the lithium ion battery according to claim 1. Tokuda et al. also discloses wherein a content of the compound represented by Formula (1) in the non-aqueous electrolyte is 0.001-5 wt% based on a total weight of the non-aqueous electrolyte (Tokuda, Claim 13), which anticipates the claimed ranges.
In regard to Claims 5 and 13, Tokuda et al. discloses the lithium ion battery according to claim 1. Tokuda et al. also discloses a cyclic carbonate having a carbon-carbon unsaturated bond in the nonaqueous electrolytic solution in an amount of 0.001-10% (Tokuda, Claim 7), which overlaps the claimed range as well as a specific example wherein vinylene carbonate in the non-aqueous electrolyte is used in a 0.5 wt% (Example 30), which anticipates the claimed ranges.
In regard to Claims 6 and 14-15, Tokuda et al. discloses the lithium ion battery according to claim 1. Tokuda et al. also discloses a specific example wherein the organic solvent is a cyclic carbonate (EC), and linear carbonate (DMC) (Tokuda, Example 20) as well as other examples wherein the organic solvent is a mixture of ethylene carbonate and ethyl methyl carbonate (Tokuda, Examples 26-27).
In regard to Claims 7 and 16, Tokuda et al. discloses the lithium ion battery according to claim 1. Tokuda et al. also discloses a specific example wherein the lithium salt is LiPF6 provided at 1 mol/L (Tokuda, Example 20), which anticipates the claimed range.
In regard to the limitations of Claims 8 and 17, it is noted that the limitations are directed to non-selected options of parent claim 1. For example, claim 1 explicitly recites that the additives are optional, i.e. “optional other additives are selected from the group consisting of 1,3-propane sultone, 1,4-butane sultone, methylene methane disulfonate, fluoroethylene carbonate, ethylene sulfate, methylene methyl disulfonate, lithium difluorophosphate, lithium difluoro(oxalato)borate, tris (trimethylsilane) phosphate, propene sultone, fluorobenzene, vinyl ethylenecarbonate, and combinations thereof. (emphasis added). Accordingly, the limitations of claims 8 and 17 are reasonably considered to be optional limitations which depend upon the selection of an optional additive recited in claim 1, and which in this case have not been selected.
In regard to Claim 9, Tokuda et al. discloses the lithium ion battery according to claim 1. Tokuda et al. also discloses wherein the compacted density of the active material of the positive electrode is between 1 and 4 g/cm3 (Tokuda, [0667]), which overlaps the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obvious. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.
In regard to Claim 11, Tokuda et al. discloses the lithium ion battery according to claim 1. Tokuda et al. also discloses a preferred list of additives including dicyclohexylmethane 4,4'-diisocyanate, where it is known that R1 = *-cyclohexyl-CH2-cyclohexyl-* (Tokuda, [0458]), which corresponds to R1 being selected from the first structure in the listed structures wherein * represents binding position.
In regard to Claims 18-19, Tokuda et al. discloses the lithium ion battery according to claim 1. Tokuda et al. also discloses wherein, a compacted density of a material of the negative electrode is preferably 1- 1.9g/cm3 (Tokuda, [0524]), which anticipates the claimed ranges.
Claims 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Tokuda et al. (US 20120308881 A1), hereinafter "Tokuda" as applied to claim 1 above in view of Xiao et al. (US 20200274148 A1), hereinafter "Xiao". Tokuda and Xiao et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely non aqueous electrolyte cells.
In regard to Claims 10 and 20, Tokuda et al. discloses the lithium ion battery according to claim 1. Tokuda et al. also discloses the voltage range of the battery in a specific example is 2.5-4V (Tokuda, [0733]), which significantly overlaps the claimed ranges. However, Tokuda et al. is silent as to the cell capacity in Ah and the mass of the electrolyte injected, which is needed to calculate the liquid injection coefficient of the lithium ion battery.
Xiao et al. discloses a lithium ion battery, comprising a positive electrode, a negative electrode, a separator arranged between the positive electrode and the negative electrode, and a non-aqueous electrolyte (Xiao, Abstract), an active material of the positive electrode comprises LiFePO4 (Xiao, [0142]), the non-aqueous electrolyte comprises an organic solvent, a lithium salt, and vinylene carbonate (Xiao, [0143]). Xiao et al. also discloses that while excess electrolyte (“flooded” electrolyte conditions) benefits cycling life, cell specific energy (Ah) decreases rapidly as the cell weight increases (g) thus, this ratio (E/C) is equivalent to the liquid injection coefficient in g/Ah and is optimized in Xiao to a range of 1-6 g/Ah (Xiao, [0139]), with a specific example provided with a coefficient of 3.0 g/Ah (Xiao, [0026]), which anticipates the claimed ranges. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide the cell of Tokuda with a liquid injection coefficient within the range taught in Xiao et al. as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Xiao et al. and as doing so would amount to nothing more than routine optimization for the skilled artisan in order to yield predictable results.
Response to Arguments
Applicant's arguments filed 03/31/2026 have been fully considered but they are not persuasive. In response to applicant's argument regarding claim 1, that the invention is not obvious over the prior art because there is no mention of the intention to alleviate performance issues due to Fe dissolution, it has been held that a recitation with respect to the manner in which the claimed article is intended to be employed does not differentiate the claimed article from a prior art article satisfying the claimed structural limitations (see MPEP 2114(II)). Therefore, while there is no intended use language in the claim, the argument has been considered, however it is noted that the prior art Tokuda et al. would reasonably be capable of performing the functions as argued because Tokuda discloses all of the limitations of independent claim 1, which allows for the prior art to perform the functions as claimed.
In regard to applicants’ argument that Tokuda merely lists these technical features in a scattered manner across different sections, a 35 U.S.C. 103 rejection does not require specific examples demonstrating the use of each and every combination of features in order to show the combination would have been known to the skilled artisan and in the instant case would amount to an obvious variation of known materials, in the same field based on design incentive or other market forces as the variations are predictable to one of ordinary skill in the art.
Lastly, in regard to applicants’ argument that the claimed invention achieves unexpected results, it is noted the results achieved in the current application are in applicants’ own words “The synergistic effect between the compound of Formula (1) and VC is the key innovation” and as discussed in the 35 U.S.C 103 rejection above Tokuda et al. discloses a formula 1 compound (Tokuda, [0458]) and VC (Tokuda, Example 20) which when combined would reasonable comprise the same structure of the key innovation and would necessarily achieve the same results, absent any evidence to the contrary.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH MAX OTERO whose telephone number is (571)272-2559. The examiner can normally be reached M-F Generally 7:30-430.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Buie-Hatcher can be reached at (571) 270-3879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.M.O./Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/Supervisory Patent Examiner, Art Unit 1725
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