DETAILED ACTION
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
This office action is responsive to the amendment filed on 03/23/26. The applicant has overcome the objection. However, applicant’s response has not yet satisfactorily overcome the prior art rejections. Refer to the aforementioned amendment for specific details on applicant's rebuttal arguments and/or remarks. Therefore, the present claims are now finally rejected over the same art/grounds of rejection as formulated hereinbelow and for the reasons of record:
Election/Restrictions
Claims 9 and 12-18 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/04/25. Examiner’s note: notice that claim 9 have been withdrawn from consideration, it was inadvertently included as one of the rejected claims but it status identifier must be corrected/changed to “withdrawn” as claim 9 was non-elected by the applicant.
Claim Objections
Claim 9 is objected to because of the following informalities: the status identifier of claim 9 must be corrected/changed to “withdrawn”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 5-8 and 10 are rejected under 35 U.S.C. 102a1 as being anticipated by Du et al 2021/0020978.
As to claims 1, 5-8, 10:
Du et al disclose that it is known in the art to make electrolytes for lithium secondary batteries (0001-0002) comprising multiple components including one or more solvents, Li-salts and additives (Abstract; 0004; 0022-0036).
In particular, Du et al disclose the electrolyte containing more than one organic solvents, i.e., a solvent and a co-solvent (0088); a lithium salt such as LiBF4, LiTFSI, LiBOB, LiClO4, LiAsF6, LiN(CF3SO2)2, LiI, LiCl and the likes (0030; 0089) which may be present at least 2M or 3M, at between 1-3 M (0031).
Du et al teach LiPF6 and/or LiDFOB (lithium difluoro-bisoxalato borate) (the fluorine element additive) (0030); LiNO3 (the nitrogen element additive) (0030); and vinylene carbonate (the carbonate-based compound) (0054; 0060-61; 0115-0116; 0130). Du et al teach different electrolyte compositions with different concentrations, weight percent and/or amounts of material (0022-0036; 0058; 0062). In this case, it bears noting that Du et al readily envision different electrolyte compositions with different additives and/or combinations thereof.
Thus, the present claims are anticipated.
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.
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 2-4 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Du et al 2021/0020978 as applied to claim 1 above, and further in view of Kim et al 10347941.
Du et al are applied, argued and incorporated herein for the reasons manifested supra. However, the preceding reference does not expressly disclose the specific organic solvent and co-solvent and the specific solvent/co-solvent volume ratio and the specific additive weight percent.
As to claims 2-3, 4-5:
In the same field of applicant’s endeavor, Kim et al disclose that it is known in the art to make electrolytes for lithium-based batteries wherein the electrolyte contains solvents, a Li-salt and additives (Abstract; COL 2, lines 14-65; COL 8, lines 1-40). In particular, Kim et al disclose the use of dimethyl ether (COL 2, lines 25-26; COL 8, lines 24-25); 1,2-dimethoxyethane; diethylene glycol dimethyl ether; triethylene glycol dimethyl ether (the organic solvents) (COL 2, lines 16-22; COL 8, lines 15-21). In addition, Kim et al disclose the use of TTE (1,1,2,2-tetrafluoroethyl-2,2,3,3-tetrafluoropropyl either (the co-solvent) (COL 2, lines 23-25; COL 8, lines 22-24). Kim et al teach different electrolyte compositions with different concentrations, weight percent and/or amounts of material (COL 2, lines 14-65; COL 8, lines 1-40). In this case, it bears noting that Kim et al readily envision different electrolyte compositions with different additives and/or combinations thereof.
By compounding the above teachings, it would have been within the ambit of a skilled artisan prior to the effective filing date of the claimed invention to use the specific organic compounds of Kim et al as the organic solvent and co-solvent in the electrolyte of Du et al as Kim et al teach that such specifically disclosed organic compounds assist in improving cycle characteristics and durability, and in providing a large-capacity lithium secondary battery with enhanced electrochemical properties. Further, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. Stated differently, combining prior art elements according to known methods to yield predictable results is prima-facie obvious. KSR International Co. v. Teleflex Inc., 550 US- 82 USPQ2d 1385, 1396 (2007). KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
With particular respect to the specific solvent/co-solvent volume ratio and the specific additive weight percent, Du et al and Kim et al they both recognize the electrolyte content and the amount (i.e., concentration/weight/volume percent) of respective organic solvents and additives as variables which achieve a recognized result, thus, the claimed ranges of the specific solvent/co-solvent volume ratio and the specific additive weight percent result from the characterization as routine experimentation of an optimum or workable range. Accordingly, the specific solvent/co-solvent volume ratio and the specific additive weight percent are being construed as a result-effective variable. In re Aller 105 USPQ 233, 235; In re Hoeschele 160 USPQ 809, In re Antonie 195 USPQ 6 (MPEP 2144.05 IL Optimization of Ranges). Further, generally speaking, differences in concentration, amount of material, weight/volume percent will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration/amount of material is critical. "[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). Thus, it is prima-facie obvious to choose or select the specific concentration/amount of material of the claimed solvent, co-solvent and additives. See MPEP 2144.05 Obviousness of Ranges.
Response to Arguments
Applicant's arguments filed 03/23/26 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies [i.e., (i) “Applicant respectfully submits that the present claimed invention calls for a heterogeneous solvent system that controls the bulk characteristics of the entire electrolyte by mixing an organic solvent and a fluorine-based compound”; (ii) “…Applicant respectfully submits that Du does not mention any technical reason to use these three types simultaneously or the subsequent formation of a multi-layer SEI…”; (iii) “Applicant respectfully submits that the present invention forms a unique multi-layered SEI in which LiF, Li₃N, and a polymer layer are sequentially stacked through the synergy of the three additives”] are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Simply put, applicant’s argument are not commensurate in scope with the presently claimed subject matter. Succinctly stated, applicant’s argument are not reflective of applicant’s invention. If applicant wishes to have all those limitations considered for patentability, independent claim 1 must be amended to include or recite the same. Note that independently claim scarcely recites the following:
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In response to applicant's argument that “Du merely lists FEC as one of the simple additives, and provides no motivation or teaching for a heterogenous solvent system through mixing with an organic solvent”, 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 and/or anticipated. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Applicant is reminded that the test for anticipation is not whether the features of a primary reference are directly taught and/or may be bodily incorporated into the main structure; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
It is worth noting that Du et al specifically name or identify lithium salts and various additives. Thus, Du et al at once envisage the formation of an electrolyte containing those disclosed lithium salts and various additives regardless of the number of components and/or compounds. As set forth in MPEP 2131.02 Genus-Species Situations: II. A REFERENCE THAT CLEARLY NAMES THE CLAIMED SPECIES ANTICIPATES THE CLAIM NO MATTER HOW MANY OTHER SPECIES ARE NAMED, and/or III. A GENERIC DISCLOSURE WILL ANTICIPATE A CLAIMED SPECIES COVERED BY THAT DISCLOSURE WHEN THE SPECIES CAN BE "AT ONCE ENVISAGED" FROM THE DISCLOSURE When a claimed compound is not specifically named in a reference, but instead it is necessary to select portions of teachings within the reference and combine them, e.g., select various substituents from a list of alternatives given for placement at specific sites on a generic chemical formula to arrive at a specific composition, anticipation can only be found if the classes of substituents are sufficiently limited or well delineated. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). If one of ordinary skill in the art is able to "at once envisage" the specific compound within the generic chemical formula, the compound is anticipated. In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962). In addition, a genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed compound was named in a reference which also disclosed 45 other compounds. The Board held that the comprehensiveness of the listing did not negate the fact that the compound claimed was specifically taught. The Board compared the facts to the situation in which the compound was found in the Merck Index, saying that "the tenth edition of the Merck Index lists ten thousand compounds. In our view, each and every one of those compounds is ‘described’ as that term is used in [pre-AIA ] 35 U.S.C. 102(a), in that publication."). Id. at 1718. See also In re Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982) (The claims were directed to polycarbonate containing cadmium laurate as an additive. The court upheld the Board’s finding that a reference specifically naming cadmium laurate as an additive amongst a list of many suitable salts in polycarbonate resin anticipated the claims. The applicant had argued that cadmium laurate was only disclosed as representative of the salts and was expected to have the same properties as the other salts listed while, as shown in the application, cadmium laurate had unexpected properties. The court held that it did not matter that the salt was not disclosed as being preferred, the reference still anticipated the claims and because the claim was anticipated, the unexpected properties were immaterial.). Further, In re Schauman, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), claims to a specific compound were anticipated because the prior art taught a generic formula embracing a limited number of compounds closely related to each other in structure and the properties possessed by the compound class of the prior art was that disclosed for the claimed compound. Moreover, a reference disclosure can anticipate a claim even if the reference does not describe "the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)). In Kennametal, the challenged claim was to a cutting tool requiring a ruthenium binding agent with a physical vapor deposition (PVD) coating. Claim 5 of the reference disclosed all the elements of the claimed coated cutting tool, however, ruthenium was one of five specified binding agents and the claim did not specify a particular coating technique. The specification of the reference disclosed PVD as one of three suitable coating techniques. The Federal Circuit stated that the reference’s "express ‘contemplat[ion]’ of PVD coatings provided sufficient evidence that a reasonable mind could find that a person of skill in the art… would immediately envisage applying a PVD coating. Thus, substantial evidence supports the Board's conclusion that [the reference] effectively teaches 15 combinations, of which one anticipates pending claim 1. Though it is true that there is no evidence in [the reference] of ‘actual performance’ of combining the ruthenium binder and PVD coatings, this is not required." Kennametal, 780 F.3d at 1383, 114 USPQ2d at 1255.
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 RAYMOND ALEJANDRO whose telephone number is (571)272-1282. The examiner can normally be reached Monday-Thursday (8:00 am-6:30 pm).
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/RAYMOND ALEJANDRO/
Primary Examiner
Art Unit 1752
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