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, 3-8 are currently pending.
Claim 2 has been canceled.
Claim 1 has been amended.
Claims 7 and 8 have been newly added.
Status of Amendment
The amendment filed on 08/15/2025 has been fully considered, but does not place the application in condition for allowance.
This Action has been made final.
Status of Rejections Pending since the Office Action of 22 May 2025
All the rejections from the previous Office Action are maintained in view of Applicant’s amendment and argument. The rejections have been modified to reflect the amendments.
Claim Interpretation
Claim 1 recites the limitation of “the first solvent having a permittivity of less than 10, the second solvent having a permittivity of more than 50”. According to [0008] and [0017] of the instant specification, it appears that “permittivity” and “dielectric constant” are interchangeably used throughout the instant specification. Therefore, for the purpose of this Office Action, “permittivity” is considered to be referred to the dielectric constant of the solvent.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 7 and 8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 7, claim 7 recites the limitation of “substantially an entire amount of the magnesium fluoride is dissolved in the solvent”. However, the original disclosure does not provide any support for this limitation. Applicant pointed in the Remarks filed on 08/15/2025 that support for claim 7 can be found in Examples of the present application, but Example 1 and 2 merely state that MgF2 was dissolved and does not point out that the entire amount of MgF2 was dissolved in the solvent (see [0037-0038]). Claim 8 is rejected for being dependent from claim 7.
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.
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.
Claim(s) 1, 3-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Amiruddin et al., U.S. Publication No. 2011/0136019 A1 in view of He et al., CN 107275671 A.
Regarding claims 1, 6, 7, and 8, Amiruddin teaches a lithium ion secondary battery comprising an electrolytic solution [0020], wherein the electrolytic solution comprising:
A lithium salt [0030];
A solvent including a first solvent (solvents that are liquid at room temperature; [0031]); and a second solvent (solvents that are solid at room temperature; [0030]).
Amiruddin teaches the material for the first solvent to be dimethyl carbonate or ethyl methyl carbonate [0067], which are the same materials as the first solvent for the instant invention (see instant claim 4 and [0021] of the instant specification).
Amiruddin further teaches that the material for the second solvent is ethylene carbonate ([0030] and [0067]), which is the same material as the second solvent for the instant invention (see instant claim 5, and [0022] of the instant invention.
Therefore, the first solvent (dimethyl carbonate or ethyl methyl carbonate) of Amiruddin is expected to have a dielectric constant/permittivity of less than 10, and the second solvent (ethylene carbonate) of Amiruddin is expected to have a dielectric constant/permittivity of more than 50. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (See MPEP 2112.01, Part II).
Amiruddin teaches that a volume ratio of the second solvent (ethylene carbonate) to a total amount of the first and second solvent is 5 to about 80 volume percent [0069], overlapping with the claimed range of 6% or more and 12% or less. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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).
Additionally, Amiruddin teaches that the relative amounts of the solvent components can be selected to provide desired ion conductivity over the desired operating temperatures of the battery, and a person of ordinary skill in the art will be motivated to modify the relative amounts of solvent components to obtain a desired ion conductivity over the desired operating temperatures of the battery [0069]. [W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Amiruddin does not specifically teach that the electrolytic solution comprising magnesium fluoride.
However, He teaches an electrolytic solution for a lithium battery comprising an organic solvent, a lithium salt, and a nano-additive, wherein the nano-additive comprising magnesium fluoride (MgF2) (see page 2 of the English translation, Para.07).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing of the claimed invention to add magnesium fluoride nano-additives to the electrolytic solution of Amiruddin, because such modification would result in a more stable, safer and longer service life for the battery as taught by He (page 2 of the English translation, Para.08).
Regarding the limitation of “[substantially an entire amount of] magnesium fluoride is dissolved in the solvent including the first and second solvent”, the Examiner wishes to point out the MgF2 of modified Amiruddin is capable of being dissolved the solvent, because both the first and second solvents are Amiruddin are made of the same material as the claimed invention. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (See MPEP 2112.01, Part II).
Regarding claim 3, modified Amiruddin further teaches that a content of the magnesium fluoride is 0.01 %to 10% by mass (He: Abstract), overlapping with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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).
Regarding claim 4, Amiruddin teaches that the first solvent is dimethyl carbonate or ethyl methyl carbonate [0067].
Regarding claim 5, Amiruddin teaches that the second solvent is ethylene carbonate ([0030] and [0067]).
Response to Arguments
Applicant's arguments filed on 08/15/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that “neither Amiruddin nor He disclose or suggest the invention according to present claim 1 by providing an electrolytic solution capable of improving initial capacity and a capacity retention rate of a lithium-ion secondary battery during high-rate charge and during high-rate discharge”, 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 further argues that [0008] of He describes that the “particle size” of “nano additives” is 5-20 nm and that the “nano additives” easily aggregate if the particle size is lower than 5 nm and the nano additives when dispersed would not result in the effect of the present application (see page 6 of Remarks).
The Examiner wishes to point out that the particle size of the nano additives of He is 5 to 20 nm and therefore not easily aggregated. Moreover, regarding the limitation of “magnesium fluoride is dissolved in the solvent including the first and second solvent”, the Examiner wishes to point out the MgF2 of modified Amiruddin is capable of being dissolved the solvent, because both the first and second solvents are Amiruddin are made of the same material as the claimed invention. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (See MPEP 2112.01, Part II).
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.
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/NIKI BAKHTIARI/ Supervisory Patent Examiner, Art Unit 1722