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 .
ELECTROLYTIC SOLUTION FOR SECONDARY BATTERY, AND SECONDARY BATTERY
Examiner: Adam Arciero S.N. 18/203,365 Art Unit: 1727 May 26, 2026
DETAILED ACTION
Applicant’s response filed on March 17, 2026 has been received. Claims 1-8 are currently pending. Claims 1-2 and 6 have been amended. Claims 7-8 are newly added.
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 Rejections - 35 USC § 103
The claim rejections under 35 USC 103(a) as being unpatentable over Ihara on claims 1-6 are maintained.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ihara et al. (US 2010/0178569 A1; as found in IDS dated 05/30/2023).
As to Claims 1-2 and 5-6, Ihara discloses a lithium ion secondary battery, comprising: a positive electrode; a negative electrode; and an electrolytic solution comprising propane sultone and at least one diester compounds represented by formula 1-3, wherein R12,R15,R18 can be a linear or branched alkylene group (which each reads on the at least two formulas 1 and 3 of the present invention); (paragraphs [0004-0005, 0010, 0025 and 0070]). The diester compounds taught by Ihara are very similar in chemical structure to the claimed compounds as they are diester compounds with various combinations of R groups. The courts have held that 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 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 Ihara to comprise two of claimed diester compounds of Formulas 1-2 because Ihara teaches that chemical stability of the electrolyte improved and therefore the cycle and storage characteristics improves (paragraph [0011]).
As to Claim 3, Ihara discloses wherein the amount of the diester compounds is preferably 0.01-1 wt%, which falls within the claimed range (paragraph [0054]).
As to Claim 4, Ihara teaches wherein the amount of propane sultone is from 0.5-5 wt%, which overlaps with the claimed range (paragraph [0070]). At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the amount of propane sultone of Ihara to read on the claims because Ihara teaches that chemical stability of the electrolyte can be further improved (paragraph [0070]). In addition, the courts have held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05, I.
As to Claims 7-8, Ihara discloses a lithium ion secondary battery, comprising: a positive electrode; a negative electrode; and an electrolytic solution comprising propane sultone and at least one diester compounds represented by formula 1-3, wherein R12,R15,R18 can be a linear or branched alkylene group (which each reads on the at least two formulas 1 and 3 of the present invention); (paragraphs [0004-0005, 0010, 0025 and 0070]). In addition, the diester compounds taught by Ihara are very similar in chemical structure to the claimed formula 2 as they are diester compounds with various combinations of R groups. The courts have held that 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 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 Ihara to comprise two of claimed diester compounds of Formulas 1-2 because Ihara teaches that chemical stability of the electrolyte improved and therefore the cycle and storage characteristics improves (paragraph [0011]).
Response to Arguments
Applicant's arguments filed March 17, 2026, with respect to the rejections have been fully considered but they are not persuasive.
Applicant’s principle arguments are:
a) Ihara does not teach a diester compound with claimed formula 1 and a diester compound with claimed formula 2 (claims 1 and 6).
b) The combination of diester compounds from formula 1 and formula 2 provide for unexpected results (claims 1 and 6).
In response to Applicant’s arguments, please consider the following comments:
a) The diester compounds taught by Ihara are very similar in chemical structure to the claimed formula 2 as they are diester compounds with various combinations of R groups. The courts have held that 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 MPEP 2144.09, I. In addition, Table 1 of Ihara shows very similar capacity retention rates as Table 3 of the present invention so the use of the diester compounds in Ihara also has similar utilities as the present invention.
b) The results are not persuasive. They claims are not fully commensurate in scope with the results, which use a specific diester compound represented by formula 1 and formula 2. In addition, the comparative data is not the closest prior art, as they comparative data only shows one diester compound and Ihara teaches wherein more than one can be used. In addition, the capacity retention rate of Ihara in Table 1 are very similar to that of the present invention.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM ARCIERO whose telephone number is (571)270-5116. The examiner can normally be reached Monday-Friday 8:00-5 ET.
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/ADAM A ARCIERO/ Primary Examiner, Art Unit 1727
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