DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. Applicant’s response filed 1/29/2026 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.
Duty of Disclosure, Candor, and Good Faith
2. MPEP 2001 Duty of Disclosure, Candor, and Good Faith
37 C.F.R. 1.56 Duty to disclose information material to patentability
A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim.
The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b) -(d) and 1.98. However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.
Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
(1) Each inventor named in the application;
(2) Each attorney or agent who prepares or prosecutes the application; and
(3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.
(d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.
(e) In any continuation-in-part application, the duty under this section includes the duty to disclose to the Office all information known to the person to be material to patentability, as defined in paragraph (b) of this section, which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.
MPEP 2001.06(b) Information Relating to or From Copending United States Patent Applications
The individuals covered by 37 CFR 1.56 have a duty to bring to the attention of the examiner, or other Office official involved with the examination of a particular application, information within their knowledge as to other copending United States applications which are "material to patentability" of the application in question. This may include providing the identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee as the current application that disclose similar subject matter that are not otherwise identified in the current application. As set forth by the court in Armour & Co. v. Swift & Co., 466 F.2d 767, 779, 175 USPQ 70, 79 (7th Cir. 1972):
[W]e think that it is unfair to the busy examiner, no matter how diligent and well informed he may be, to assume that he retains details of every pending file in his mind when he is reviewing a particular application . . . [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.
Accordingly, the individuals covered by 37 CFR 1.56 cannot assume that the examiner of a particular application is necessarily aware of other applications which are "material to patentability" of the application in question, but must instead bring such other applications to the attention of the examiner. See Regeneron Pharm., Inc. v. Merus B.V., 144 F. Supp. 3d 530, 560 (S.D.N.Y. 2015), and Dayco Prod., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1365-69, 66 USPQ2d 1801, 1806-08 (Fed. Cir. 2003). For example, if a particular inventor has different applications pending which disclose similar subject matter but claim patentably indistinct inventions, the existence of other applications must be disclosed to the examiner of each of the involved applications. Similarly, the prior art references from one application must be made of record in another subsequent application if such prior art references are "material to patentability" of the subsequent application. See Dayco Prod., 329 F.3d at 1369, 66 USPQ2d at 1808.
3. Any copending US applications considered “material to patentability” or references cited in other applications considered “material to patentability” should be cited and made of record in
the manner prescribed by §§ 1.97(b) -(d) and 1.98 in all applications, including the instant application.
For example, Arai et al. (US 2023/0261203) (=18/136,125), having an earlier effective filing date than the instant application and sharing the same inventors and assignee as the instant application, teaches and claims the use of an electrolyte solvent that may be tetrafluoroethyl tetrafluoropropyl ether (P97), and has a solvent of the genus claimed in Formula (1) to (4) of the instant application claim set:
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Any other copending applications or any art cited in this application or other applications considered “material to patentability” should be made of record in all applications to all Examiners to meet the duty of disclosure.
See also at least Arai et al. (US 2023/0194621) (P71-80) teaching the same genus solvent as above and a large number of compounds that read on Formulas 1-4. See also Arai et al. (US 2023/0246239) (double patenting rejection below) and Arai et al. (US 2023/0246240) (double patenting rejection below).
Applicant as their own lexicographer
4. 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 Objections
5. The objection to claim 8 is withdrawn in view of the correction filed.
Claim Rejections - 35 USC § 112
6. The rejection of claim 5 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in view of the correction filed.
Claim Rejections - 35 USC § 102
7. The rejection of claims 1-7 under 35 U.S.C. 102(a)(2) as being anticipated by Choi (US 2023/0238567) is maintained.
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 (1) as defined in the claim (P45-52, 54-63; entire disclosure relied upon). Specifically, P60 teaches the chemical compounds represented by the general Formula A, where X is H or F. Selecting X is H (hydrogen) for all X’s, Formula A of Choi reads on Formula 1 with R as claimed being a partially substituted hydrocarbon group and R1 to R4 being hydrogen:
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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).
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).
Claim Rejections - 35 USC § 103
8. Claim 2 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Choi (US 2023/0238567).
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, the Examiner reasoned the taught value anticipates the range claimed. 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.
9. 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.).
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 maintained. This is a provisional nonstatutory double patenting rejection.
Regarding claims 1-8, claim 1 of the '000 application is reproduced below, wherein the genus of formula (A) or (B) of the '000 claim covers each of the species named in the instant application. The only thing not in the instant application claim relative to the '000 claim is that the electrolyte solution includes a lithium salt and a chain-like ether compound free of a fluorine atom that has a branched chain. This is met by Choi, teaching it is a known technique to provide an electrolyte solvent as part of an electrolyte solution and utilize at least one fluorinated ether compound (see formula A, P58-62; reading on Formula 1 of instant application and genus A of '000) in conjunction with a non-fluorinated ether compound exemplified by a multitude of compounds lacking a fluorine atom and having a branched chain (see P64-71, DME being one example), along with a lithium salt (P86-91) with a specific example using all three (Example 1).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date to provide the '000 claim with a lithium salt and a chain-like ether compound free of a fluorine atom that has a branched chain given this specific combination of components in conjunction with a material reading on Formula A is taught by Choi as detailed above.
The dependent claim limitations of the 000’ claim set are met by the dependent claims of the instant application.
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11. 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 maintained. This is a provisional nonstatutory double patenting rejection.
Regarding claims 1-8, claims 1-2 of '082 are reproduced below:
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The claims thus recite the same subject in terms of Formulas A and B above relative to formulas 1 and 3 of the instant application claim 1 with X above being broadly claimed as monovalent group in claim 1, specified as an alkyl group of 1-7 carbo atoms in claim 2, whereas the instant application has the more specific “X” group (i.e., the portion in parenthesis connected to the R). The above compounds as a genus in the '082 and the species specified in the instant claim are taught by Choi (P58-68) as obvious variants of one another. Accordingly, the instant application is considered an obvious variant of the genus presented in the '082 application and vise versa on the basis of the teaching of Choi (P57-63), with the specific selection of a known compound meeting known requirements considered prima facie obvious (MPEP 2144.07). The dependent claim limitations of the instant claim set are met by the dependent claims of the '082 application.
Response to Arguments
12. Applicant's arguments filed 1/29/2026 have been fully considered. Applicant focuses on one example cited by the Examiner in the rejection of record and does not view the entire rejection of record made including the following highlighted sections and other cited paragraphs. From the Non-Final Office Action as emphasized below:
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Thus, while Applicant is correct in that the example cited (TTE) does not read on the compound and should not have been cited as one non-limiting example of a compound anticipating Formula I; the remaining citations and explanation by the Examiner to the Choi reference do teach at least an example of Formula (I) as defined in the claim. For example, the Examiner cites P54-63 to teach the solvent defined, which teaches Formula 1. Specifically, P60-61 teaches the chemical compounds represented by the general Formula A, where X is H or F. Selecting X is H (hydrogen) for all X’s, formula A of Choi reads on Formula 1 with R being a partially substituted hydrocarbon group and R1 to R4 being hydrogen:
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Thus, while the one non-limiting example cited by the Examiner was incorrect, a person reading the citations and the Choi reference would immediately recognize that Formula (I) as claimed is anticipated by Choi. Thus, the rejection is maintained and corrected to remove the one non-limiting example relied upon that was incorrect.
The Examiner requested a STIC search at the time of sending out the Non-Final Office Action mailed 12/15/2025 which was received in the interim of Applicant’s response. A copy is included herewith, and at least the following cited prior art is noted:
Kuwajima et al. (JP 2019-114418) (machine translation and copy of original document provided- both relied upon together collectively) teaches a lithium secondary battery electrolytic solution that includes the following solvents:
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Many of the above options read on Formulas 2 and 4 with R1 and R2 being a substituted hydrocarbon group (i.e., (C=O group), n is 1, and R is any of a fluorine-substituted, partially-substituted, or unsubstituted hydrocarbon group.
The prior art reference is cited for compact prosecution purposes.
Conclusion
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
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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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