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
In response to the amendment received on 05/26/2026:
Claims 1-9, 12-14, 20, 23-27, 31, 59, and 67-72 are pending in the current application. Claims 1, 14, 23, 67-68 have been amended. Claims 71-72 have been newly added.
Response to Arguments
Applicant’s arguments, see Remarks Pages 9-10, filed 05/26/2026, with respect to the objections to the claims have been fully considered. The objections have been withdrawn in light of the amendments to the claims.
Applicant’s arguments, see Remarks Pages 10-13, filed 05/26/2026, with respect to the rejections under 35 U.S.C. 102/103 have been fully considered and are persuasive. The rejections have been withdrawn.
Upon further search and consideration, new rejections have been set forth below.
Claim Interpretation
Claim 3 recites “optionally”.
The Examiner notes MPEP 2173.05(h) II:
“Another alternative format which requires some analysis before concluding whether or not the language is indefinite involves the use of the term "optionally." In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the language "containing A, B, and optionally C" was considered acceptable alternative language because there was no ambiguity as to which alternatives are covered by the claim. A similar holding was reached with regard to the term "optionally" in Ex parte Wu, 10 USPQ2d 2031 (Bd. Pat. App. & Inter. 1989).”
The Examiner notes the recitation of optionally is clear in claim 3.
Calculation Explanation
In some of the rejections below, calculations for the weight percent of the electrolyte additives are done.
For the rejection utilizing Sevigny (US 20150185183 A1):
The weight percent of the electrolyte additive can be calculated by:
W
e
i
g
h
t
P
e
r
c
e
n
t
%
=
M
a
s
s
o
f
e
l
e
c
t
r
o
l
y
t
e
a
d
d
i
t
i
v
e
T
o
t
a
l
m
a
s
s
o
f
e
l
e
c
t
r
o
l
y
t
e
*
100
The mass of the electrolyte additive and the total mass of the electrolyte can be calculated by finding the standard molar masses of the components and assuming there is 1 liter (or 1000 g) of the electrolyte solution plus the dissolved pieces.
The molar masses of the components are:
Water ≈ 18.02 g/mol
TRIS ≈ 121.14 g/mol
MOPS ≈ 209.26 g/mol
TES ≈ 229.25 g/mol
HEPES ≈ 238.3 g/mol
HEPPS ≈ 252.33 g/mol
TAPS ≈ 243.27 g/mol
TAPSO ≈ 259.28 g/mol
CHES ≈ 207.29 g/mol
As an example of the calculation, utilizing Sevigny’s electrolyte including water, TRIS, and a zwitterion of MOPS, wherein the concentration of TRIS is from 10 to 500 mM (0.01 to 0.5 M) and the concentration of MOPS is from 1 to 500 mM (0.001 to 0.5 M) (P28-29, 62-63, 73):
When 500 mM (0.5 M) of TRIS and 1 mM (0.001 M) of MOPS are used:
W
e
i
g
h
t
P
e
r
c
e
n
t
%
o
f
M
O
P
S
=
0.001
*
209.26
1000
+
0.5
*
121.14
+
(
0.001
*
209.26
)
*
100
≈ 0.02 wt %
When 10 mM (0.01 M) of TRIS and 500 mM (0.5 M) of MOPS are used
W
e
i
g
h
t
P
e
r
c
e
n
t
%
o
f
M
O
P
S
=
0.5
*
209.26
1000
+
0.01
*
121.14
+
(
0.5
*
209.26
)
*
100
≈ 9.46 wt %
Therefore, the weight percent of MOPS in Sevigny’s electrolyte is within a range of 0.02 wt% to 9.46 wt %.
Claim Objections
Claim 1 is objected to because of the following informalities:
In R10 of claim 1, it states C1-4 alkyl instead of C1-C4 alkyl.
Appropriate correction is required.
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.
Claims 1-4, 7, 12, 14, 20, 23, 25-26, 31, and 67-68 are rejected under 35 U.S.C. 103 as being unpatentable over Sevigny (US 20150185183 A1).
Regarding claim 1, Sevigny discloses an aqueous electrolyte composition comprising an electrolyte additive of Formula A, or a salt, zwitterion, cation, or anion thereof:
PNG
media_image1.png
112
122
media_image1.png
Greyscale
wherein:
R is L-R1, L-Y+, C3-C8 cycloalkyl, heteroarylalkyl wherein the heteroaryl is a 5- to 10-membered heteroaryl group, or a 3- to 8-membered heterocycloalkyl;
L is a linear C1-C6 alkylene, branched C1-C6 alkylene, C3-C8 cycloalkylene, or heterocycloalkylene wherein the heterocycloalkyl is a 3- to 8-membered heterocycloalkyl;
wherein L is optionally substituted with one to four -OH;
R1 is selected from -OH, C1-C4 alkoxy, -C(O)OR2, -NR2C(O)R3, -NR4aR4b, hydroxyC1-C4alkyl, -S(O)R5, C3-C8cycloalkyl, and heteroarylalkyl wherein the heteroaryl is a 5- to 10-membered heteroaryl group;
R2 and R3 are independently selected from hydrogen, C1-C6 alkyl, C2-C6 alkenyl, aryl, heteroaryl, and arylC1-C4alkyl;
wherein R2 and R3 with the exception of hydrogen are independently optionally substituted with one to four R6;
R4a and R4b are independently, in each instance, selected from hydrogen, C1-C6 alkyl, hydroxyCl-C4alkyl, -CR7R8R9, -CH2C(O)R10, cycloalkyl, aryl, heteroaryl, and arylC1-C4alkyl; or
R4a and R4b are taken together with the nitrogen to which they are attached form a 6-membered heterocycloalkyl or heteroaryl optionally substituted with one to four R6;
R5 is -OH, C1-C4 alkyl, aryl, or heteroaryl;
R6, when present, is independently, in each instance, selected from C1-C6alkyl,-NH2, halogen, -OH, hydroxyCl-C4alkyl, and -C(O)OR11;
R7, R8, and R9 are independently, in each instance, selected from hydrogen, C1-C6 alkyl, aryl, arylC1-C4alkyl, cycloalkyl, -CH2C(O)R10, and hydroxyC1-C4alkyl;
R10 is selected from -NH2, -OH, and C1-C4alkyl;
R11 is selected from hydrogen and C1-C4alkyl;
Y+ is selected from -N+R12R13R14, heteroaryl containing at least one quaternary nitrogen wherein the heteroaryl is a 5- to 10- membered heteroaryl group, and a 3- to 8- membered heterocycloalkyl containing at least one quaternary nitrogen; and
R12, R13, and R14 are independently selected from hydrogen, C1-C6 alkyl, aryl, arylC1-C4alkyl, cycloalkyl, hydroxyC1-C4alkyl, and -CR7R8R9;or
R12 and R13 are taken together with the nitrogen to which they are attached to form a 6-membered heterocycloalkyl or 6-membered heteroaryl optionally substituted with one to four R6 (electrolyte solution containing Tris(hydroxymethyl)aminomethane (TRIS), at least one zwitterion, and water; the zwitterion can be MOPS, TES, HEPES, HEPPS, TAPS, TAPSO, CHES; one of ordinary skill in the art could select one of the list of zwitterions to use because the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07); Abstract, P2, 13, 59);
and wherein the electrolyte additive is dissolved in water at a concentration equal to, or greater than, 0.01 weight percent (wt %) to less than, or equal to, 40 wt % (Sevigny discloses the concentration of TRIS is from 10 to 500 mM and the concentration of the zwitterion is from 1 to 500 mM; P28-29, 62-63, 73; if utilizing MOPS, the weight % of MOPS is from 0.02 to 9.46%, which lies within the claimed range; if utilizing TES, the weight % of TES is from 0.02 to 10.27%, which lies within the claimed range; if utilizing HEPES, the weight % of HEPES is from 0.02 to 10.63%, which lies within the claimed range; if utilizing HEPPS, the weight % of HEPPS is from 0.02 to 11.19%, which lies within the claimed range; if utilizing TAPS, the weight % of TAPS is from 0.02 to 10.83%, which lies within the claimed range; if utilizing TAPSO, the weight % of TAPSO is from 0.02 to 11.46%, which lies within the claimed range; if utilizing CHES, the weight % of CHES is from 0.02 to 9.38%, which lies within the claimed range).
Regarding claim 2, Sevigny discloses wherein the electrolyte additive of formula A is a compound of formula I:
PNG
media_image2.png
110
136
media_image2.png
Greyscale
(the zwitterion can be MOPS, TES, HEPES, HEPPS; Abstract, P2, 13, 59).
Regarding claim 3, Sevigny discloses wherein the electrolyte additive of formula A is a compound of formula IV:
PNG
media_image3.png
104
120
media_image3.png
Greyscale
and wherein the electrolyte composition optionally further comprises one or more anions selected from C1", Br, I', ClO₄; C₂HO₄; HSO4; HCO2, CICH₂CO₂; Cl₃CCO₂; HOCH₂CO₂; CF₃CO₂", H₂PO₄; CH₃SO₃", PhSO₃", p-CH₃-Ph-SO₃,
PNG
media_image4.png
78
76
media_image4.png
Greyscale
,
PNG
media_image5.png
86
138
media_image5.png
Greyscale
, and combinations thereof (the zwitterion can be CHES, TAPS, TAPSO; Abstract, P2, 13, 59).
Regarding claim 4, Sevigny discloses wherein the electrolyte additive of formula A is a compound of formula II:
PNG
media_image6.png
104
140
media_image6.png
Greyscale
(the zwitterion can be MOPS, TES, HEPES, HEPPS; Abstract, P2, 13, 59).
Regarding claim 7, Sevigny discloses wherein the electrolyte additive has the following structure
PNG
media_image7.png
96
294
media_image7.png
Greyscale
(the zwitterion can be MOPS, TES, HEPES, HEPPS; Abstract, P2, 13, 59).
Regarding claim 12, Sevigny discloses wherein compound of formula IV is a compound of formula III
PNG
media_image8.png
104
140
media_image8.png
Greyscale
(the zwitterion can be CHES, TAPS, TAPSO; Abstract, P2, 13, 59).
Regarding claim 14, Sevigny discloses wherein Y+ is
PNG
media_image9.png
70
104
media_image9.png
Greyscale
; and where
PNG
media_image10.png
36
30
media_image10.png
Greyscale
indicates the bond between Y+ and L (the zwitterion can be TES, HEPES, TAPS, TAPSO; Abstract, P2, 13, 59).
Regarding claim 20, Sevigny discloses wherein the compound of formula A is a compound of formula V:
PNG
media_image11.png
114
142
media_image11.png
Greyscale
(the zwitterion can be MOPS, TES, HEPES, HEPPS, TAPS, TAPSO; Abstract, P2, 13, 59).
Regarding claim 23, Sevigny discloses wherein R is
PNG
media_image12.png
62
370
media_image12.png
Greyscale
where
PNG
media_image10.png
36
30
media_image10.png
Greyscale
represents the point of attachment to the rest of the compound (the zwitterion can be MOPS or MES; Abstract, P2, 13, 59).
Regarding claim 25, Sevigny discloses wherein the electrolyte additive is selected from
PNG
media_image13.png
186
464
media_image13.png
Greyscale
(the zwitterion can be CHES; Abstract, P2, 13, 59).
Regarding claim 26, Sevigny discloses wherein the electrolyte additive is selected from
PNG
media_image14.png
147
514
media_image14.png
Greyscale
(the zwitterion can be TAPS, TAPSO; Abstract, P2, 13, 59).
Regarding claim 31, Sevigny discloses wherein the electrolyte additive is selected from
PNG
media_image15.png
314
610
media_image15.png
Greyscale
(the zwitterion can be MES; Abstract, P2, 13, 59).
Regarding claim 67, Sevigny discloses wherein the electrolyte additive is dissolved in water at a concentration equal to, or greater than, 0.01 weight percent (wt %) to less than, or equal to, 30 wt % (Sevigny discloses the concentration of TRIS is from 10 to 500 mM and the concentration of the zwitterion is from 1 to 500 mM; P28-29, 62-63, 73; if utilizing MOPS, the weight % of MOPS is from 0.02 to 9.46%, which lies within the claimed range; if utilizing TES, the weight % of TES is from 0.02 to 10.27%, which lies within the claimed range; if utilizing HEPES, the weight % of HEPES is from 0.02 to 10.63%, which lies within the claimed range; if utilizing HEPPS, the weight % of HEPPS is from 0.02 to 11.19%, which lies within the claimed range; if utilizing TAPS, the weight % of TAPS is from 0.02 to 10.83%, which lies within the claimed range; if utilizing TAPSO, the weight % of TAPSO is from 0.02 to 11.46%, which lies within the claimed range; if utilizing CHES, the weight % of CHES is from 0.02 to 9.38%, which lies within the claimed range).
Regarding claim 68, Sevigny discloses wherein the electrolyte additive is dissolved in water at a concentration equal to, or greater than, 0.01 weight percent (wt %) to less than, or equal to, 35 wt % (Sevigny discloses the concentration of TRIS is from 10 to 500 mM and the concentration of the zwitterion is from 1 to 500 mM; P28-29, 62-63, 73; if utilizing MOPS, the weight % of MOPS is from 0.02 to 9.46%, which lies within the claimed range; if utilizing TES, the weight % of TES is from 0.02 to 10.27%, which lies within the claimed range; if utilizing HEPES, the weight % of HEPES is from 0.02 to 10.63%, which lies within the claimed range; if utilizing HEPPS, the weight % of HEPPS is from 0.02 to 11.19%, which lies within the claimed range; if utilizing TAPS, the weight % of TAPS is from 0.02 to 10.83%, which lies within the claimed range; if utilizing TAPSO, the weight % of TAPSO is from 0.02 to 11.46%, which lies within the claimed range; if utilizing CHES, the weight % of CHES is from 0.02 to 9.38%, which lies within the claimed range).
Claims 1-2, 4-6, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al (US 20190368063 A1).
Regarding claim 1, Yamaguchi discloses an aqueous electrolyte composition comprising an electrolyte additive of Formula A, or a salt, zwitterion, cation, or anion thereof:
PNG
media_image1.png
112
122
media_image1.png
Greyscale
wherein:
R is L-R1, L-Y+, C3-C8 cycloalkyl, heteroarylalkyl wherein the heteroaryl is a 5- to 10-membered heteroaryl group, or a 3- to 8-membered heterocycloalkyl;
L is a linear C1-C6 alkylene, branched C1-C6 alkylene, C3-C8 cycloalkylene, or heterocycloalkylene wherein the heterocycloalkyl is a 3- to 8-membered heterocycloalkyl;
wherein L is optionally substituted with one to four -OH;
R1 is selected from -OH, C1-C4 alkoxy, -C(O)OR2, -NR2C(O)R3, -NR4aR4b, hydroxyC1-C4alkyl, -S(O)R5, C3-C8cycloalkyl, and heteroarylalkyl wherein the heteroaryl is a 5- to 10-membered heteroaryl group;
R2 and R3 are independently selected from hydrogen, C1-C6 alkyl, C2-C6 alkenyl, aryl, heteroaryl, and arylC1-C4alkyl;
wherein R2 and R3 with the exception of hydrogen are independently optionally substituted with one to four R6;
R4a and R4b are independently, in each instance, selected from hydrogen, C1-C6 alkyl, hydroxyCl-C4alkyl, -CR7R8R9, -CH2C(O)R10, cycloalkyl, aryl, heteroaryl, and arylC1-C4alkyl; or
R4a and R4b are taken together with the nitrogen to which they are attached form a 6-membered heterocycloalkyl or heteroaryl optionally substituted with one to four R6;
R5 is -OH, C1-C4 alkyl, aryl, or heteroaryl;
R6, when present, is independently, in each instance, selected from C1-C6alkyl,-NH2, halogen, -OH, hydroxyCl-C4alkyl, and -C(O)OR11;
R7, R8, and R9 are independently, in each instance, selected from hydrogen, C1-C6 alkyl, aryl, arylC1-C4alkyl, cycloalkyl, -CH2C(O)R10, and hydroxyC1-C4alkyl;
R10 is selected from -NH2, -OH, and C1-C4alkyl;
R11 is selected from hydrogen and C1-C4alkyl;
Y+ is selected from -N+R12R13R14, heteroaryl containing at least one quaternary nitrogen wherein the heteroaryl is a 5- to 10- membered heteroaryl group, and a 3- to 8- membered heterocycloalkyl containing at least one quaternary nitrogen; and
R12, R13, and R14 are independently selected from hydrogen, C1-C6 alkyl, aryl, arylC1-C4alkyl, cycloalkyl, hydroxyC1-C4alkyl, and -CR7R8R9;or
R12 and R13 are taken together with the nitrogen to which they are attached to form a 6-membered heterocycloalkyl or 6-membered heteroaryl optionally substituted with one to four R6 (tin or tin alloy plating bath, wherein the bath is inherently known in the industry to be an aqueous bath solution; the bath can include a salt of a metal selected from zinc, nickel, bismuth, cobalt, indium, antimony, gold, silver, copper and lead; soluble salt of zinc can be zinc 2-hydroxyethanesulfonate or zinc 2-hydroxypropanesulfonate ; see entire disclosure and especially P22, 46, 66, 102; one of ordinary skill in the art could select the metal salt to be zinc 2-hydroxyethanesulfonate or zinc 2-hydroxypropanesulfonate because the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07));
and wherein the electrolyte additive is dissolved in water at a concentration equal to, or greater than, 0.01 weight percent (wt %) to less than, or equal to, 40 wt % (Yamaguchi discloses metal salt is in the bath at a concentration of 1 g/L to 200 g/L, P107; it is the Examiner’s position, barring any objective evidence from the Applicant to the contrary, that, when the of zinc 2-hydroxyethanesulfonate or zinc 2-hydroxypropanesulfonate is used within the aqueous electrolyte at a concentration between 1 g/L and 200 g/L, the zinc 2-hydroxyethanesulfonate or zinc 2-hydroxypropanesulfonate is used in a concentration that overlaps the weight percent range claimed or is similar enough to the weight percent range claimed that the skilled artisan would have expected the same properties to be exhibited; 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) (See MPEP § 2144.05); Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)).
Regarding claim 2, Yamaguchi discloses wherein the electrolyte additive of formula A is a compound of formula I:
PNG
media_image2.png
110
136
media_image2.png
Greyscale
(the soluble salt of zinc can be zinc 2-hydroxyethanesulfonate or zinc 2-hydroxypropanesulfonate; see entire disclosure and especially P22, 46, 66, 102).
Regarding claim 4, Yamaguchi discloses wherein the electrolyte additive of formula A is a compound of formula II:
PNG
media_image6.png
104
140
media_image6.png
Greyscale
(the soluble salt of zinc can be zinc 2-hydroxyethanesulfonate or zinc 2-hydroxypropanesulfonate; see entire disclosure and especially P22, 46, 66, 102).
Regarding claim 5, Yamaguchi discloses wherein the electrolyte additive of formula I is a compound of formula IIb or IIc:
PNG
media_image16.png
136
342
media_image16.png
Greyscale
(the soluble salt of zinc can be zinc 2-hydroxyethanesulfonate or zinc 2-hydroxypropanesulfonate; see entire disclosure and especially P22, 46, 66, 102).
Regarding claim 6, Yamaguchi discloses wherein the electrolyte additive of formula II further comprises a Zn2+ cation (the soluble salt of zinc can be zinc 2-hydroxyethanesulfonate or zinc 2-hydroxypropanesulfonate; see entire disclosure and especially P22, 46, 66, 102).
Regarding claim 8, Yamaguchi discloses wherein R1 is selected from -OH and -C(O)OR2 and R2 is selected from hydrogen, methyl, ethyl, n- propyl, isopropyl, n-butyl, isobutyl, and tert-butyl (the soluble salt of zinc can be zinc 2-hydroxyethanesulfonate or zinc 2-hydroxypropanesulfonate; see entire disclosure and especially P22, 46, 66, 102).
Regarding claim 9, Yamaguchi discloses wherein R1 is -OH (the soluble salt of zinc can be zinc 2-hydroxyethanesulfonate or zinc 2-hydroxypropanesulfonate; see entire disclosure and especially P22, 46, 66, 102).
Claims 1, 3, 12-13, 24-25, 70, and 72 are rejected under 35 U.S.C. 103 as being unpatentable over Mukherjee (US 20220077449 A1).
Regarding claim 1, Mukherjee discloses an aqueous electrolyte composition comprising an electrolyte additive of Formula A, or a salt, zwitterion, cation, or anion thereof:
PNG
media_image1.png
112
122
media_image1.png
Greyscale
wherein:
R is L-R1, L-Y+, C3-C8 cycloalkyl, heteroarylalkyl wherein the heteroaryl is a 5- to 10-membered heteroaryl group, or a 3- to 8-membered heterocycloalkyl;
L is a linear C1-C6 alkylene, branched C1-C6 alkylene, C3-C8 cycloalkylene, or heterocycloalkylene wherein the heterocycloalkyl is a 3- to 8-membered heterocycloalkyl;
wherein L is optionally substituted with one to four -OH;
R1 is selected from -OH, C1-C4 alkoxy, -C(O)OR2, -NR2C(O)R3, -NR4aR4b, hydroxyC1-C4alkyl, -S(O)R5, C3-C8cycloalkyl, and heteroarylalkyl wherein the heteroaryl is a 5- to 10-membered heteroaryl group;
R2 and R3 are independently selected from hydrogen, C1-C6 alkyl, C2-C6 alkenyl, aryl, heteroaryl, and arylC1-C4alkyl;
wherein R2 and R3 with the exception of hydrogen are independently optionally substituted with one to four R6;
R4a and R4b are independently, in each instance, selected from hydrogen, C1-C6 alkyl, hydroxyCl-C4alkyl, -CR7R8R9, -CH2C(O)R10, cycloalkyl, aryl, heteroaryl, and arylC1-C4alkyl; or
R4a and R4b are taken together with the nitrogen to which they are attached form a 6-membered heterocycloalkyl or heteroaryl optionally substituted with one to four R6;
R5 is -OH, C1-C4 alkyl, aryl, or heteroaryl;
R6, when present, is independently, in each instance, selected from C1-C6alkyl,-NH2, halogen, -OH, hydroxyCl-C4alkyl, and -C(O)OR11;
R7, R8, and R9 are independently, in each instance, selected from hydrogen, C1-C6 alkyl, aryl, arylC1-C4alkyl, cycloalkyl, -CH2C(O)R10, and hydroxyC1-C4alkyl;
R10 is selected from -NH2, -OH, and C1-C4alkyl;
R11 is selected from hydrogen and C1-C4alkyl;
Y+ is selected from -N+R12R13R14, heteroaryl containing at least one quaternary nitrogen wherein the heteroaryl is a 5- to 10- membered heteroaryl group, and a 3- to 8- membered heterocycloalkyl containing at least one quaternary nitrogen; and
R12, R13, and R14 are independently selected from hydrogen, C1-C6 alkyl, aryl, arylC1-C4alkyl, cycloalkyl, hydroxyC1-C4alkyl, and -CR7R8R9;or
R12 and R13 are taken together with the nitrogen to which they are attached to form a 6-membered heterocycloalkyl or 6-membered heteroaryl optionally substituted with one to four R6 (aqueous electrolyte comprising a zwitterionic surface active agent of 3-(1-pyridinio)-1-propanesulfonate or 3-(benzyl-dimethylammonio)propanesulfonate; see entire disclosure and especially P142, 333; one of ordinary skill in the art could select one of the list of zwitterionic surface active agents to use because the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07));
and wherein the electrolyte additive is dissolved in water at a concentration equal to, or greater than, 0.01 weight percent (wt %) to less than, or equal to, 40 wt % (Mukherjee discloses the zwitterionic surface active agent can be used in a concentration of between 0.1 µM to 5 M, P333; it is the Examiner’s position, barring any objective evidence from the Applicant to the contrary, that, when the of 3-(1-pyridinio)-1-propanesulfonate or 3-(benzyl-dimethylammonio)propanesulfonate is used within the aqueous electrolyte at a concentration between 0.1 µM to 5 M, the 3-(1-pyridinio)-1-propanesulfonate or 3-(benzyl-dimethylammonio)propanesulfonate is used in a concentration that overlaps the weight percent range claimed or is similar enough to the weight percent range claimed that the skilled artisan would have expected the same properties to be exhibited; 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) (See MPEP § 2144.05); Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)).
Regarding claim 3, Mukherjee discloses wherein the electrolyte additive of formula A is a compound of formula IV:
PNG
media_image3.png
104
120
media_image3.png
Greyscale
and wherein the electrolyte composition optionally further comprises one or more anions selected from C1", Br, I', ClO₄; C₂HO₄; HSO4; HCO2, CICH₂CO₂; Cl₃CCO₂; HOCH₂CO₂; CF₃CO₂", H₂PO₄; CH₃SO₃", PhSO₃", p-CH₃-Ph-SO₃,
PNG
media_image4.png
78
76
media_image4.png
Greyscale
,
PNG
media_image5.png
86
138
media_image5.png
Greyscale
, and combinations thereof (the zwitterionic surface active agent 3-(1-pyridinio)-1-propanesulfonate or 3-(benzyl-dimethylammonio)propanesulfonate; see entire disclosure and especially P333).
Regarding claim 12, Mukherjee discloses wherein compound of formula IV is a compound of formula III
PNG
media_image8.png
104
140
media_image8.png
Greyscale
(the zwitterionic surface active agent 3-(1-pyridinio)-1-propanesulfonate or 3-(benzyl-dimethylammonio)propanesulfonate; see entire disclosure and especially P333).
Regarding claim 13, Mukherjee discloses wherein the electrolyte additive has the following structure
PNG
media_image17.png
92
274
media_image17.png
Greyscale
(the zwitterionic surface active agent 3-(1-pyridinio)-1-propanesulfonate or 3-(benzyl-dimethylammonio)propanesulfonate; see entire disclosure and especially P333).
Regarding claim 24, Mukherjee discloses wherein the electrolyte additive is selected from
PNG
media_image18.png
84
496
media_image18.png
Greyscale
(the zwitterionic surface active agent 3-(1-pyridinio)-1-propanesulfonate; see entire disclosure and especially P333).
Regarding claim 25, Mukherjee discloses wherein the electrolyte additive is selected from
PNG
media_image13.png
186
464
media_image13.png
Greyscale
(the zwitterionic surface active agent 3-(benzyl-dimethylammonio)propanesulfonate; see entire disclosure and especially P333).
Regarding claim 70, Mukherjee discloses wherein the composition further comprises an ion selected from the group consisting of Na+, K+, Zn2+, Ca 2+, a quaternary ammonium cation, and combinations thereof (Mukherjee discloses the electrolyte can comprise a sodium, potassium, calcium, or zinc salt, P21; therefore, when these salts are used in the aqueous electrolyte, they break apart leading to sodium, potassium, calcium, or zinc cations in the electrolyte).
Regarding claim 72, Mukherjee discloses wherein the composition further comprises ZnO (Mukherjee discloses the electrolyte can comprise zinc oxide, P22).
Claims 1, 3, 12-13, 24-25, 59, and 71 are rejected under 35 U.S.C. 103 as being unpatentable over Adamson et al (US 20190131662 A1) in view of Mukherjee (US 20220077449 A1).
Regarding claim 1, Adamson teaches an aqueous electrolyte (see entire disclosure and especially the Abstract and P44). Adamson teaches the aqueous electrolyte used in a storage battery (see entire disclosure and especially P8, 44).
However, Adamson does not teach an electrolyte additive of Formula A, or a salt, zwitterion, cation or anion thereof.
In a similar field of endeavor, Mukherjee teaches an aqueous electrolyte for an electrochemical cell (P142). Mukherjee teaches the aqueous electrolyte can include zwitterionic surface active agents such as 3-(1-pyridinio)-1-propanesulfonate or 3-(benzyl-dimethylammonio)propanesulfonate (see entire disclosure and especially P333). Mukherjee teaches the zwitterionic surface active agents can be present in the electrolyte in a concentration of from 0.1 μM to 5 M (P333).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the teaching of Mukherjee and provided to the aqueous electrolyte of Adamson a zwitterionic surface active agent of 3-(1-pyridinio)-1-propanesulfonate or 3-(benzyl-dimethylammonio)propanesulfonate, given Mukherjee teaches an aqueous electrolyte for a battery can include these materials, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07), and the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See 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). (see MPEP § 2143, A.).
It is the Examiner’s position, barring any objective evidence from the Applicant to the contrary, that, when the of 3-(1-pyridinio)-1-propanesulfonate or 3-(benzyl-dimethylammonio)propanesulfonate is used within the aqueous electrolyte at a concentration between 0.1 µM to 5 M, the 3-(1-pyridinio)-1-propanesulfonate or 3-(benzyl-dimethylammonio)propanesulfonate is used in a concentration that overlaps the weight percent range claimed or is similar enough to the weight percent range claimed that the skilled artisan would have expected the same properties to be exhibited; 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) (See MPEP § 2144.05); Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 3, modified Adamson meets the limitation wherein the electrolyte additive of formula A is a compound of formula IV:
PNG
media_image3.png
104
120
media_image3.png
Greyscale
and wherein the electrolyte composition optionally further comprises one or more anions selected from C1", Br, I', ClO₄; C₂HO₄; HSO4; HCO2, CICH₂CO₂; Cl₃CCO₂; HOCH₂CO₂; CF₃CO₂", H₂PO₄; CH₃SO₃", PhSO₃", p-CH₃-Ph-SO₃,
PNG
media_image4.png
78
76
media_image4.png
Greyscale
,
PNG
media_image5.png
86
138
media_image5.png
Greyscale
, and combinations thereof (the zwitterionic surface active agent 3-(1-pyridinio)-1-propanesulfonate or 3-(benzyl-dimethylammonio)propanesulfonate; see entire disclosure and especially P333 of Mukherjee and the rejection of claim 1).
Regarding claim 12, modified Adamson meets the limitation wherein compound of formula IV is a compound of formula III
PNG
media_image8.png
104
140
media_image8.png
Greyscale
(the zwitterionic surface active agent 3-(1-pyridinio)-1-propanesulfonate or 3-(benzyl-dimethylammonio)propanesulfonate; see entire disclosure and especially P333 of Mukherjee and the rejection of claim 1).
Regarding claim 13, modified Adamson meets the limitation wherein the electrolyte additive has the following structure
PNG
media_image17.png
92
274
media_image17.png
Greyscale
(the zwitterionic surface active agent 3-(1-pyridinio)-1-propanesulfonate or 3-(benzyl-dimethylammonio)propanesulfonate; see entire disclosure and especially P333 of Mukherjee and the rejection of claim 1).
Regarding claim 24, modified Adamson meets the limitation wherein the electrolyte additive is selected from
PNG
media_image18.png
84
496
media_image18.png
Greyscale
(the zwitterionic surface active agent 3-(1-pyridinio)-1-propanesulfonate; see entire disclosure and especially P333 of Mukherjee and the rejection of claim 1).
Regarding claim 25, modified Adamson meets the limitation wherein the electrolyte additive is selected from
PNG
media_image13.png
186
464
media_image13.png
Greyscale
(the zwitterionic surface active agent 3-(benzyl-dimethylammonio)propanesulfonate; see entire disclosure and especially P333 of Mukherjee and the rejection of claim 1).
Regarding claim 59, modified Adamson meets the limitation of a process for making a zinc battery, comprising contacting an aqueous electrolyte composition of claim 1with a zinc-battery electrode (secondary zinc bromine electrochemical cell including the aqueous electrolyte; see entire redisclosure and especially the Abstract and P8, 193, 253, 433 of Adamson).
Regarding claim 71, Adamson discloses wherein the composition further comprises ZnBr2 (Adamson discloses the aqueous electrolyte can include ZnBr2; see entire disclosure and especially the Abstract and P44).
Allowable Subject Matter
Claim 27 is 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.
Regarding claim 27, the claim recites the limitation “…wherein the electrolyte additive is selected from
PNG
media_image19.png
262
520
media_image19.png
Greyscale
There has been no prior art found to teach or suggest wherein the electrolyte additive in the aqueous electrolyte composition is one of the electrolyte additives set forth in claim 27.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary Harris whose telephone number is (571)272-0690. The examiner can normally be reached M-F 8 am-5 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached at (571)272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARY GRACE HARRIS/Examiner, Art Unit 1729
Prosecution Insights