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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06-10-2026 has been entered.
Response to Amendment
Upon consideration, the previous rejection of record was withdrawn in light of new amendments. However new rejection is applied to the amended claims. All changes made in the rejection are necessitated by the amendment.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 4-9, and 13-14 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.
Claim Rejections - 35 USC § 102/103
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(s) 1, 5-9, and 13-14 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over U.S. Pre-Grant Publication No. 2007/0224514 hereinafter Kotato.
Regarding Claim 1, Kotato teaches an electrolyte for a lithium secondary cell (paragraph 63), the electrolyte comprising: ethylene carbonate (i.e., cyclic carbonate solvent) (paragraph 74); vinylene carbonate as the electrolyte additive (paragraph 95); bis(2-methoxyethyl carbonate) (BMEC) as the linear organic compound (paragraphs 112-113); and a lithium salt (paragraphs 69-71). Kotato further teaches that the linear organic compound (BMEC) is included in the electrolyte in an amount of 5 weight % or less (paragraph 128) and the electrolyte comprises a solvent other than cyclic carbonate (i.e., the volume ratio of ethylene carbonate to γ-butyrolactone is between 5:95 and 45:55) (paragraphs 73, 80, 89).
Alternatively, The Supreme Court decided that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that "[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp." An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S._,_, 82 USPQ2d 1385, 1395 -97 (2007) (see MPEP § 2143, E.).
Therefore, it would have been obvious to one of ordinary skill in the art to form an electrolyte that comprises lithium salt, ethylene carbonate, vinylene carbonate, and bis(2-methoxyethyl carbonate) (BMEC) in the claimed volume ratio before the effective filing date of the claimed invention because such configuration can form an electrolyte for a battery with improved cycle characteristics and current discharging characteristics (paragraph 85).
MPEP § 2112.01 teaches that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Because the electrolyte of the cited prior art is substantially identical to that of the claims, the claimed properties or functions (i.e., flash point and ionic conductivity at room temperature) are presumed to be inherent.
Regarding Claims 5-9, Kotato teaches that the electrolyte comprises lithium salt, ethylene carbonate, vinylene carbonate, and bis(2-methoxyethyl carbonate) (BMEC) in the claimed amounts (see claim 1 above). With regards to fluoroethylene carbonate, 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).
Regarding Claims 13-14, Kotato teaches a lithium secondary battery that comprises a positive electrode (cathode), a negative electrode (anode), a separator disposed between the electrodes, and the electrolyte as described above (paragraphs 63, 277). Kotato further teaches that the battery is used in an electronic device (paragraphs 4, 511).
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over U.S. Patent No. 8,785,057 hereinafter Smith.
Regarding Claim 1, Smith teaches an electrolyte comprising: ethylene carbonate (i.e., cyclic carbonate solvent); carboxylic ester as the electrolyte additive; bis(2-methoxyethyl carbonate) (BMEC) as the linear organic compound; and a lithium salt (see description of the preferred embodiments, see claim 6). Smith further teaches that the electrolyte comprises a solvent other than cyclic carbonate (i.e., the cyclic carbonate is included in an amount of 0-50% by weight).
Alternatively, The Supreme Court decided that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that "[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp." An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S._,_, 82 USPQ2d 1385, 1395 -97 (2007) (see MPEP § 2143, E.).
Therefore, it would have been obvious to one of ordinary skill in the art to form an electrolyte that comprises lithium salt, ethylene carbonate, carboxylic ester, and bis(2-methoxyethyl carbonate) (BMEC) in the claimed volume ratio before the effective filing date of the claimed invention because such configuration can form an electrolyte for a battery with improved stability (see background and summary of invention).
MPEP § 2112.01 teaches that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Because the electrolyte of the cited prior art is substantially identical to that of the claims, the claimed properties or functions (i.e., flash point and ionic conductivity at room temperature) are presumed to be inherent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OSEI K AMPONSAH whose telephone number is (571)270-3446. The examiner can normally be reached Monday - Friday, 8:00 am - 5:00 pm EST.
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/OSEI K AMPONSAH/ Primary Examiner, Art Unit 1752
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