DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. Applicant’s response filed 5/15/2026 was received. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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 Mark-Up
2. The claims do not include proper mark-up for the added language to claim 1. Claim 1 is reproduced below, and everything added has underlining added by the Examiner for clarity of the record:
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Future claims lacking proper mark-up may be returned with a Notice of Non-Compliance.
Applicant as their own lexicographer
3. This section was previously provided and is repeated here for convenience. An applicant is entitled to be his or her own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s). See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994). Where an explicit definition is provided by the applicant for a term, that definition will control interpretation of the term as it is used in the claim. Toro Co. v. White Consolidated Industries Inc., 199 F.3d 1295, 1301, 53 USPQ2d 1065, 1069 (Fed. Cir. 1999); MPEP 2111.01, Section IV.
The Applicant has provided their own definitions to the following phrases:
“does not have a negative electrode active material” as used herein means that the content of a negative electrode active material in the negative electrode is 10 mass% or less based on the total amount of the negative electrode (P35 of the PGPUB).
P37 notes that the term “lithium secondary battery equipped with a negative electrode not having a negative electrode active material” can be replaced by “lithium secondary second battery equipped with a negative electrode which does not have a negative electrode active material other than lithium metal and does not have lithium metal before initial charge and/or at the end of discharge”
Accordingly, these explicit definitions will control the interpretations of these phrases, respectively, as the phrase is used in the claim.
Claim Rejections - 35 USC § 102
4. The rejection of claims 1-7 under 35 U.S.C. 102(a)(2) as being anticipated by Choi (US 2023/0238567) is withdrawn and moved to a rejection under 103.
Claim Rejections - 35 USC § 103
5. Rejection A: Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Choi (US 2023/0238567).
Regarding claim 1, Choi teaches a lithium secondary battery (abstract; P40-51; entire disclosure relied upon), comprising:
a cathode (“positive electrode”) (P41, 73-85),
a separator (P44, 92-96);
an anode current collector that does not include an anode electrode-active material on the anode current collector (“a negative electrode not having a negative electrode active material”) (P40, 42, 72), and
an electrolyte solution (P45-51, 86-91),
wherein the electrolyte solution contains, as a solvent, at least a fluorinated ether compound represented by Formula (A) below (P45-52, 54-63; entire disclosure relied upon):
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Choi teaches the chemical compounds represented by the general Formula A, where X is H or F (P60-61). Selecting X is H (hydrogen) for all X’s, Formula A of Choi reads on Formula 1 claimed with R1 to R4 being hydrogen, and with “R” (circled above for clarity) as claimed being a fluorine-substituted hydrocarbon group or partially substituted hydrocarbon group (--CF2-CF2H) versus an unsubstituted hydrocarbon group as presently claimed (P60-1; Formula A above). These options, namely, “…R represents a fluorine-substituted, partially substituted, or unsubstituted hydrocarbon group”) were previously presented as functionally equivalent options for the R group in all Formulas 1-4. Applicant amends the claims by removing the fluorine-substituted and partially substituted options only from the prior-claimed Formula 1 R options, and leaves all of these options for R within Formulas 2-4.
The use and selection of "fluorine-substituted, partially substituted, or unsubstituted hydrocarbon group" R groups for such a compound are considered functionally equivalent chemical moeities that render one obvious over another when one is found in the prior art on the basis of: the original claim as presented presenting them as functionally equivalent options for the R groups in all Formulas 1-4; the amended claim allowing for R within Formula 2-4 to be any one of these options; the disclosure as a whole (see at least P13-15, 49-53 of the PGPUB); and how one of ordinary skill in the art would understand these constituents in the context of the compounds presented in view of the disclosure (P48-50).
Based on the case law cited below (MPEP § 2144.09; MPEP § 2144.08, Section 4c), the Formula A compound of Choi in P60-61 versus one lacking fluorine substitution in the R group (i.e., the difference at issue in which the “R” group of Choi (circled above for clarity) of Formula 1 is either a –CF2CF2H group or -CF2CF3 group versus a -CH2CH3 group) are all considered chemical compounds with very close structural similarity that would be expected to have similar properties given the remainder of the compound is the same such that a prima facie case of obviousness exists, wherein it is the remainder of the compound that is taught in the instant application as the key structural component (P48-50; detailed analysis below).
To this end, the Formula (A) compound of Choi renders not only Formula 1 as claimed as being unpatentable, but also Formulas 2-4 as well based on the subsequent analysis. The key structural unit of the compounds of Formulas 1-4 of the claims is identified in the instant application as the portion (A) or (B) below (P48-50) of said Formulas 1-4. The goal of the instant application is to form an SEI layer (P48), and the instant application teaches that when the battery contains one of Formulas 1-4 compounds having one of portions (A) or (B) within said Formulas as a solvent, the SEI layer is easily formed and growth of dendritic lithium metal on the negative electrode is further suppressed (P48-49 of the instant application PGPUB).
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The claimed Formulas 1-4 have the above key structural unit (A) or (B) therein as boxed below:
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The Formula (A) compound has this critical structural unit as boxed below:
Choi’s chemical compound has the critical structural element taught as boxed below:
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Accordingly, based on the instant application as filed, the key structural unit that achieves the advantageous result of SEI layer formation is within the chemical compound of Choi, such that all Formulas 1-4 are rendered obvious, regardless of the remaining portion of the molecule, and specifically the R groups. It is further noted that no restriction was made against Formulae (1) to (4); the R1-R4 groups; and/or the R groups because each was assumed to present obvious variants over one another based on the record and specifically P48-50. The case law relied upon for these conclusions is below:
MPEP § 2144.09: A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, subsection II.A.4.(c).
MPEP § 2144.08, Section 4c- Concepts used to analyze the structural similarity of chemical compounds in other types of chemical cases are equally useful in analyzing genus-species cases. For example, a claimed tetra-orthoester fuel composition was held to be obvious in light of a prior art tri-orthoester fuel composition based on their structural and chemical similarity and similar use as fuel additives. Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1900-02. Likewise, claims to amitriptyline used as an antidepressant were held obvious in light of the structural similarity to imipramine, a known antidepressant prior art compound, where both compounds were tricyclic dibenzo compounds and differed structurally only in the replacement of the unsaturated carbon atom in the center ring of amitriptyline with a nitrogen atom in imipramine. In re Merck & Co., 800 F.2d 1091, 1096-97, 231 USPQ 375, 378-79 (Fed. Cir. 1986). Other structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re May, 574 F.2d 1082, 1093-95, 197 USPQ 601, 610-11 (CCPA 1978) (stereoisomers); In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers); In re Hoch, 428 F.2d 1341, 1344, 166 USPQ 406, 409 (CCPA 1970) (acid and ethyl ester); In re Druey, 319 F.2d 237, 240, 138 USPQ 39, 41 (CCPA 1963) (omission of methyl group from pyrazole ring).
Regarding claim 2, Choi teaches the liquid electrolyte composition comprises at least 70% by volume of a solvent mixture with respect to the total volume of the electrolyte composition that comprises at least one fluorinated either compound, the solvent mixture comprising from 60-90 vol% of at least one fluorinated ether compound (P47), or in another embodiment from 80-90 vol% of the at least one fluorinated ether compound (P50).
At P37, Choi teaches that when numerical data is presented in a range, it is considered to include all the individual numerical values encompassed within the range as if each numerical value was recited, and gives the example that a range of 120-150 °C is considered to teach individual amounts, including fractional amounts, within the specified range such as 122.2 °C, 140.6 °C, and 141.3 °C, for example (P37).
Accordingly, applying this teaching to the ranges above for Choi, and selecting the liquid electrolyte comprises 100% by volume of a solvent mixture comprising the at least one fluorinated either compound, and selecting any of 60, 70, 80, or 90 vol% fluorinated ether compound (all values within the taught ranges), then these examples are considered to anticipate the claimed range of 30 vol% or more based on a total amount of solvent components in the electrolyte solution (P37, 47-50) given
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is 'anticipated' if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) (emphasis in original) See MPEP § 2131.03.
"If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
Alternatively, in the case where the claimed range "overlaps or lies inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP § 2144.05). Thus, for good measure in the instance that Applicant can demonstrate that anticipation is not met, the ranges taught also render the claimed range as prima facie case of obviousness.
Regarding claim 3, Choi teaches wherein the electrolyte solution contains at least one fluorinated ether compound with the examples of a fluorine solvent other than the compounds represented by Formulae (1) to (4). One specific example of a fluorine solvent that may constitute the at least one fluorinated ether compound other than the compounds represented by Formulae (1) to (4) of the instant claim taught by Choi is ethane, pentafluoro [1,1,2,2-tetrafluoro-2-(trifluoromethoxy ethoxy] ethane (P59).
Choi also teaches that the at least one fluorinated ether compound is selected from the group consisting of (i) (P59) (examples of the other fluorine solvent)); (ii) a chemical compound represented by formula (A) (i.e., Formula 1 as claimed)); and (iii) mixtures thereof (P62). Thus, another example reading on this claim is one of the options from P59 plus compound A as a mixture (P59-62).
Regarding claim 4, Choi teaches wherein the electrolyte solution further contains at least one non-fluorinated ether compound (P48, 51, 64-70) (“non-fluorine solvent”) with the specific examples of dimethoxyethane (DME) (P69, 71; Example 1), among many others (P64-70).
Regarding claim 5, Choi teaches all of the structure recited in the independent claim 1, teaches cycling of the cell (“charge/discharge of the lithium secondary battery”) (P176-184), and further teaches the use of a lithiated cathode material (P73-83) and lithium salt electrolyte solution (P86-91) such that the lithium secondary battery is configured such that charge/discharge is intrinsically performed by electrolysis and elution of a lithium metal precipitated on a surface of the negative electrode current collector that initially lacks active material (P72).
Regarding claim 6, Choi teaches wherein the negative electrode is an electrode composed of at least one selected from the group consisting of Cu (P76, 169).
Regarding claim 7, Choi teaches wherein the negative electrode does not have a lithium foil on a surface of the negative electrode before initial charge (P40-45, 72, 76, 169, Examples; entire disclosure relied upon).
6. The rejection of claim 8 under 35 U.S.C. 103 as being unpatentable over Choi (US 2023/0238567) as applied to at least claim 1, and further in view of Hu et al. (US 2019/0260066) is maintained.
Regarding claim 8, Choi fails to explicitly teach wherein the lithium secondary battery has an energy density of 350 Wh/kg or more. The entire goal of any battery construct is to optimize the energy density thereof such that it suitable to provide sufficient energy or power output for a given amount of material or space as would be immediately understood by one having ordinary skill in the art. As specifically taught by Hu, a known goal in the state of the prior art is to create a high power rechargeable battery having a density of greater than 350 Wh/kg (abstract; P10, 11-12).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to configure the lithium secondary battery of Choi to achieve a high energy density of greater than 350 Wh/kg such that it is capable of meeting energy and power demands placed on the lithium secondary battery for a given amount of space/material, especially for applications where space is limited (e.g., space applications, car applications, electronic equipment like phones, etc.).
7. Rejection B: Claims 1-7 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Choi (US 2023/0238567) in view of Kinoshita et al. (US 2021/0028492).
Regarding clam 1, the rejection above set forth in Rejection A is entirely incorporated into the instant rejection and not repeated here.
With respect to the R group of Formula 1 is an unsubstituted hydrocarbon group (versus the taught R group of Choi which is -CF2HCF-2H reading on each of “a fluorine-substituted” or “partially substituted” hydrocarbon group), the above Rejection A analyzes the prima facie case of obviousness of R is a fluorine-substituted, partially substituted, or unsubstituted hydrocarbon group” in view of the case law analysis above and instant application disclosure regarding the key structural unit, concluding that said chemical compounds are considered chemical compounds with very close structural similarity that would be expected to have similar properties given the remainder of the compound is the same such that a prima facie case is established.
Kinoshita is additionally cited in the instant rejection, Kinoshita teaching analogous art of electrolyte solutions for lithium secondary batteries, and teaching a compound included in the electrolyte solution is represented by Formula (1):
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with the -NSO3Li being the key structural unit, and the R101 and R102 groups being analogous to the instant R group as claimed, wherein Kinoshita teaches that suitable, specific examples of R101 and R102 include a methyl or ethyl group (i.e., “an unsubstituted hydrocarbon group”) as well as a halogenated alkyl group such as a trifluoromethyl group, a 2,2,2,-trifluoroethyl group, a 1, 1, 2, 2-tetrafluorethyl group (=CF2CF2H), a pentafluoroethyl group (=CF2CF3), etc. (i.e., “a fluorine-substituted” or “partially substituted” hydrocarbon group) (P68) that are the groups taught by Choi. Accordingly, Kinoshita demonstrates that a 1, 1, 2, 2-tetrafluorethyl group (=CF2CF2H) and a pentafluoroethyl group (=CF2CF3) (i.e., those defined by Choi’s Formula (A)) are functionally equivalent substituents as an “R” group within a compound with an ethyl or methyl group (e.g., “an unsubstituted hydrocarbon group”) (P68).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to substitute a methyl or ethyl group (“an unsubstituted hydrocarbon group”) for the taught end groups of 1 , 1, 2, 2-tetrafluorethyl (=CF2CF2H) and pentafluoroethyl (=CF2CF3) that constitute the claimed R within Formula 1 given Kinoshita teaches analogous art of electrolyte solutions for lithium secondary batteries and that these are known, functionally equivalent “R” groups for a compound where the “R” group is not the key structural unit (entire disclosure relied upon), wherein the predictable results of a class of compounds with very close structural similarity with similar properties would be provided in view of the key structural unit (see P48-50 of the instant application) remaining intact.
Regarding clams 2-7, the rejections above set forth in Rejection A against these claims are entirely incorporated into the instant rejection and not repeated here.
8. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Choi (US 2023/0238567) in view of Kinoshita et al. (US 2021/0028492) as applied to at least claim 1 (“Rejection B”), and further in view of Hu et al. (US 2019/0260066).
Regarding claim 8, Choi fails to explicitly teach wherein the lithium secondary battery has an energy density of 350 Wh/kg or more. The entire goal of any battery construct is to optimize the energy density thereof such that it suitable to provide sufficient energy or power output for a given amount of material or space as would be immediately understood by one having ordinary skill in the art. As specifically taught by Hu, a known goal in the state of the prior art is to create a high power rechargeable battery having a density of greater than 350 Wh/kg (abstract; P10, 11-12).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to configure the lithium secondary battery of Choi to achieve a high energy density of greater than 350 Wh/kg such that it is capable of meeting energy and power demands placed on the lithium secondary battery for a given amount of space/material, especially for applications where space is limited (e.g., space applications, car applications, electronic equipment like phones, etc.).
Terminal Disclaimer
9. The Terminal Disclaimer filed on 4/21/2026 was approved.
Double Patenting
10. The provisional rejection of claims 1-8 on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/119,000 (=US 2023/0246239) in view of Choi (US 2023/0238567) is withdrawn in view of the Terminal Disclaimer filed 4/21/2026.
The provisional rejection of claims 1-8 on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/119,082 (=US 2023/0246240) in view of Choi (US 2023/0238567) is withdrawn in view of the Terminal Disclaimer filed 4/21/2026.
Response to Arguments
11. Applicant's arguments filed 5/15/2026 have been fully considered.
Applicant argues:
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In response: The anticipation rejection has been withdrawn. The amendment provided to the claim is the same discussed during the Interview (see mailed summary dated 4/30/2026), wherein an in-depth analysis as to the obviousness of such an amendment was discussed and provided. Applicant makes no comments or arguments whatsoever as to those detailed findings, wherein the rejection of the claims is moved to one of obviousness under 35 U.S.C. 103 as being unpatentable over Choi (“Rejection A”) as outlined in the Interview Summary. An alternative, additional rejection (“Rejection B”) is also set forth in the instant action to address the amendments provided.
Applicant argues:
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In response: A full review of Kuwajima would have to be conducted; however, based on the quoted portion alone, this appears persuasive with respect to the argument being made. That being said, the key structural unit (formula (A) or (B) – see P49 of the instant application, reproduced below, is within the compounds of Kuwajima:
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(one of example of Kuwajima having Formula (B) below)
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Conclusion
12. The prior art previously made of record and not relied upon considered pertinent to applicant's disclosure is repeated below:
Kuwajima et al. (JP 2019-114418) (machine translation and copy of original document previously provided-) teaches a lithium secondary battery electrolytic solution that includes the following solvents:
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Borrero et al. (US 2022/0384848) teaches fluorinated ether solvents for a lithium battery with the following formula with L1 and R1 including fluorinated alkyl groups (i.e., Formulas 2 & 4):
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13. 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.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BARROW whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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.
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/AMANDA J BARROW/Primary Examiner, Art Unit 1729
Prosecution Insights