Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
NONAQUEOUS ELECTROLYTIC SOLUTION AND NONAQUEOUS ELECTROLYTIC SOLUTION SECONDARY BATTERY USING SAME
Examiner: Adam Arciero S.N. 18/137,741 Art Unit 1727 November 4, 2025
DETAILED ACTION
Applicant's response filed on July 08, 2025 has been received. Claims 1-21 are currently pending. Claim 1 has been amended. A new Non-Final rejection is made below in view of a different interpretation of the claims as discussed below.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Interpretation
Claims 1 and 21 recite an electrolytic solution that comprises: A; and B; and/or C, which reads on combinations of A+B; A+C; or A+B+C, which is consistent with the original disclosure, for example Table 1 which shows specific examples of A+B and A+C (pg. 37 of the PGPub).
Claims 1 and 21 recite an intended use for a non-aqueous electrolytic solution in the preamble. The courts have held that “if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"). See MPEP 2111.02.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1, 3, 5-8, 12 and 20-21 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Kim et al. (US 2010/0159336 A1; as found in IDS dated April 21, 2023).
As to Claims 1, 3, 5-6, 8, 12 and 20-21, Kim et al. discloses a battery comprising a graphite-containing negative electrode; a positive electrode capable of storing and releasing metal ions and a nonaqueous electrolyte solution (Abstract, paragraphs [0050]-[0053]). Kim et al. further discloses wherein the electrolyte comprises hexamethyldisilane (compound A having an Si-Si bond wherein the R1-R6 (A1-A6) can comprise methyl and ethyl groups or hydrogen and does not have an aliphatic substituent having an unsaturated bond (Chemical Formula 2; the same as formula 4 of the claimed invention)) (Table 1, paragraphs [0036]-[0037, 0061]). Kim et al. further discloses wherein the electrolyte can comprise lithium bis(oxalate)borate (compound C) and LiN(CF3SO2)2 (paragraph [0049]).
As to Claim 7, Kim discloses wherein compound A is present in an amount of 5 wt % (Table 1, [0061]).
Claim Rejections - 35 USC § 103
Claims 2 and 10-11 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kim et al. (US 2010/0159336 A1; as found in IDS dated April 21, 2023) in view of Miyagi et al. (US 2010/0015514 A1).
As to Claims 2 and 10, Kim does not specifically disclose the claimed second compound having a halogen atom.
However, Miyagi teaches of a nonaqueous electrolyte comprising methyl fluorosulfonate (halogen atom and methoxy(alkoxy) group) (paragraphs [1144]). At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the electrolyte of Kim to comprise methyl fluorosulfonate because Miyagi teaches that a battery with a high capacity, long life and high output is provided (Abstract).
As to Claim 11, Miyagi teaches of methyl fluorosulfonate or sulfonic acid esters (paragraph [1141]). Miyagi does not specifically disclose the claimed R4 and L bind to form a ring. However, the courts have held that a prima facie case of obviousness exists when chemical compounds have very close structural similarities and similar utilities, see MPEP 2144.09, I. At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the electrolyte of Kim to comprise methyl fluorosulfonate because Miyagi teaches that a battery with a high capacity, long life and high output is provided (Abstract).
Claims 4 and 9 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kim et al. (US 2010/0159336 A1; as found in IDS dated April 21, 2023) in view of Abe et al. (WO 2011/096450 A1; using US 2012/0301797 A1 as an English equivalent).
As to Claims 4 and 9, modified Kim does not specifically disclose one of the claimed compounds.
However, Abe teaches of a non-aqueous electrolyte solution comprising 2-propynyl vinyl sulfonate (paragraph [0209]). At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the electrolyte of Kim to comprise propynyl vinyl sulfonate because Abe teaches that improved low-temperature and high-temperature cycle properties and load characteristics after high-temperature charging storage can be achieved (Abstract).
Claim 13 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kim et al. (US 2010/0159336 A1; as found in IDS dated April 21, 2023) in view of Ichihashi (US 2009/0130555 A1).
As to Claim 13, Kim does not specifically disclose the claimed compound.
However, Ichihashi teaches of a nonaqueous electrolyte solution comprising LiBOB or LiFOB (lithium difluoro(oxalate)borate) (paragraph [0043]). At the time of the invention, it would have been obvious to one of ordinary skill in the art to substitute LiFOB for the LiBOB in the electrolyte of Kim because Ichihashi teaches that a battery with improved cycle characteristic is provided (paragraph [0011]).
Claims 14-16 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kim et al. (US 2010/0159336 A1; as found in IDS dated April 21, 2023).
As to Claims 14-16, Kim teaches a compound that is very similar in structure to the claimed compound (C) (a lithium oxalate compound). The courts have held that a prima facie case of obviousness exists when chemical compounds have very close structural similarities and similar utilities, see MPEP 2144.09, I. At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the electrolyte solution of Kim et al. with the claimed compound (C) because Kim et al. teaches that a battery suppressed volume expansion characteristics and excellent reliability and cycle-life characteristics is provided (Abstract).
Allowable Subject Matter
Claims 17-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior arts of record, Kim, Ihara, Abe, and Ichihashi, do not specifically disclose, teach, or fairly suggest wherein the second compound (B) is present and comprises ethynylethylene sulfate (claims 17-19).
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 any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/ADAM A ARCIERO/ Primary Examiner, Art Unit 1727