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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 15, 2026 has been entered.
Response to Amendment
In response to the amendment received on June 15, 2026, entered as per the RCE filed July 15, 2026:
Claims 1-9 and 11-19 are pending. Claim 10 has been canceled as per Applicant’s request;
The prior art rejections to Li set forth in the previous Office Action stand in light of the amendment.
Information Disclosure Statement
The information disclosure statement filed May 8, 2026 has been placed in the application file and the information referred to therein has been considered as to the merits.
Claim Interpretation
Regarding the phrase “consisting essentially of a first solvent and a second solvent”, the term is not defined with sufficient specificity as to what “consisting essentially” means in the context of the claimed invention and has been interpreted as comprising in accordance with MPEP § 2111.03.
The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976).
For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 ("PPG could have defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention."). See also AK Steel Corp. v. Sollac, 344 F.3d 1234, 1240-41, 68 USPQ2d 1280, 1283-84 (Fed. Cir. 2003).
The specification does not meet the standard noted above as the specification does not provide a clear indication of what the basic and novel characteristics actually are nor what does or does not materially affect the basic and novel characteristics of the claimed invention.
If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of "consisting essentially of," applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of the claimed invention. In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964). See also Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat. App. & Inter. 1989) ("Although ‘consisting essentially of’ is typically used and defined in the context of compositions of matter, we find nothing intrinsically wrong with the use of such language as a modifier of method steps... [rendering] the claim open only for the inclusion of steps which do not materially affect the basic and novel characteristics of the claimed method. To determine the steps included versus excluded the claim must be read in light of the specification.... [I]t is an applicant’s burden to establish that a step practiced in a prior art method is excluded from his claims by ‘consisting essentially of’ language.").
At most, it appears that Applicant generically stated on page 7 of the amendment filed June 15, 2026 that the inclusion of EMC materially affects the basic and novel characteristics of the electrolyte but fails to provide any clear and convincing evidence. Even further, it is noted that the original disclosure fails to teach or suggest such as alleged by Applicant as the disclosure is silent as to comparison between the solvents therein and other solvents including solvents that have an amount of EMC therein. Furthermore this argument is misplaced as it appears to allege that the addition of EMC materially affects the basic and novel characteristics of the electrolyte of Li when the standard is to show whether or not the inclusion of EMC materially affects the basic and novel characteristic of the claimed invention (see above and also see MPEP § 2111.03).
To date, Applicant has not met this burden for purposes of understanding the bounds of “consisting essentially” as now recited in the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 and 11-19 are rejected 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.
Claims 1-9 and 11-19 are held indefinite with respect to the phrase “consisting essentially of”. As noted above, the original disclosure has not meet the standard noted above as the specification does not provide a clear indication of what the basic and novel characteristics actually are nor what does or does not materially affect the basic and novel characteristics of the claimed invention. The disclosure does not appear to clearly define the basis and novel characteristics and even more, does not explain how additional solvents (or which additional solvents) would change the basic and novel characteristics of the invention. In light of this the phrase “consisting essentially of” is held to be indefinite since there is no sufficient guidance from the disclosure as to what “consisting essentially of” means.
As discussed above: while Applicant generically stated on page 7 of the amendment filed June 15, 2026 that the inclusion of EMC materially affects the basic and novel characteristics of the electrolyte this statement is not a sufficient showing for the following reasons. First, it fails to provide any clear and convincing evidence. Second, it is noted that the original disclosure fails to teach or suggest such as alleged by Applicant as the disclosure is silent as to comparison between the solvents therein and other solvents including solvents that have an amount of EMC therein. Finally, this argument is misplaced as it appears to allege that the addition of EMC materially affects the basic and novel characteristics of the electrolyte of Li when the standard, as set forth in MPEP § 2111.03, is to show whether or not the inclusion of EMC materially affects the basic and novel characteristic of the claimed invention.
Claim 9 is unclear. As claim 1 now recites “consisting essentially of” a first and second solvent, the first solvent present at 30-40% mass fraction, the range of claim 9 does not appear to agree in scope with claim 1 as the range of 30-70% of the second solvent includes combinations in excess of 100%. It also includes combinations well below 100% which would render the remainder of the electrolyte unclear as to what makes up the balance in light of an electrolyte “consisting essentially of”. Clarification is respectfully requested.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-9, 14 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (CN 103107364).
As discussed above, in the absence of a clear definition of “consisting essentially” and accordance with the guidance set forth in MPEP § 2111.03, the phrase is still interpreted in an open matter whereby Li still applies as prior art under 35 USC § 102.
While Li teaches of the additional presence of EMC, the instant application has not meet the standard noted above as the specification does not provide a clear indication of what the basic and novel characteristics actually are nor what does or does not materially affect the basic and novel characteristics of the claimed invention. If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of "consisting essentially of," Applicant has not met the burden of showing that the introduction of additional steps or components, such as EMC in Li, would materially affect the basic and novel characteristics of the claimed invention. Even if EMC were present to impact the electrolyte system, that alone does not mean that it affects the basic and novel characteristics of the claimed invention without clear and convincing evidence.
As to claims 1 and 2, Li discloses an electrolyte solution, containing a solvent, an additive and a lithium salt, wherein the solvent (Embodiment 2) comprises
a first solvent and a second solvent,
the first solvent being a cyclic ester solvent (EC, ethylene carbonate),
the second solvent being a linear carboxylic ester solvent (MA, methyl acetate),
the additive comprises a film forming additive (VC, vinylene carbonate), and
based on the total mass of the electrolyte solution, the lithium salt has a mass fraction of W1, the film forming additive has a mass fraction of W2, and the second solvent has a mass fraction of W3, which satisfy the following relationship: 0.2 ≤ (W1 + W2)/W3 ≤ 0.4.
Notably, the electrolyte of Li is 1M LiPF₆, 40/9.5/50/0.5 EC/EMC/MA/VC (the mixed solvent composed of the solvents above by mass %). The amounts are calculated based on 1.0 mole of LiPF₆ dissolved in 1000 mL of solvent mixture (40/9.5/50/0.5 EC/EMC/MA/VC; mass% of the mixed solvent).
A 1M solution of LiPF₆ has 1 mole of LiPF₆ (151.9g/mol). Therefore W1 is 151.9g.
In a 1L solution of 40/9.5/50/0.5 EC/EMC/MA/VC (mass% of solvent blend only). Given the amounts of EC/EMC/MA/VC at 49/9.5/50/0.5 and their densities (EC 1.321g/mL; EMC 1.006g/mL; MA 0.956g/ml; and VC 1.360g/mL) the mixture density would be ~1.09g/mL for the solvent blend.
The solvent blend totals 1000g to (yielding 917mL solvent blend) and adds 151.9g of LiPF6 to form the 1M solution of Li.
Breakdown by component:
Mass of EC: mEC=400g
Mass of EMC: mEMC=95g
Mass of MA: mMA=500g
Mass of VC: mVC=5g
Solvent mass total 1000g.
In a 1L of 1M LiPF₆ in EC/EMC/MA/VC (40/9.5/50/0.5 mass% ratio or solvents), the mass of each above is:
W1 - LiPF6 (151.9g)
W2 – VC additive (5g)
W3 – MA solvent (500g)
(W1+W2)/W3 is (151.9g+5g)/500g=156.9/500g = 0.314.
Therefore, the mass fraction of lithium salt and film forming additive to the second solvent (linear carboxylic ester solvent) is 0.314 for embodiment 2 which falls within the range 0.2-0.4 of claim 1 and further to the narrower range of 0.25-0.36 of claim 2.
As to claim 3, the cyclic ester solvent is ethylene carbonate in embodiment 2.
As to claim 4, the linear carboxylic ester solvent is methyl acrylate in embodiment 2.
As to claim 5, the film forming additive is vinylene carbonate in embodiment 2.
As to claim 6, the lithium salt is LiPF6 in embodiment 2.
As to claim 7, the mass of LiPF₆ in 1M of this solution is 151.9g. The total mass of the solution is 1000g of solvent and 151.9g LiPF6 in a 1M solution is 1151.9g. The mass% of LiPF₆ (151.9g) based on the total mass of 1151.9g is 13.2%.
As to claim 8, the mass of VC is 5.64. The total mass of the solution is 1128.09g and the mass% of VC based on the total mass of the electrolyte solution 5.64/1128.09g is 0.5% with Li teaching that the amount of VC can effectively and operatively range from 0.5 to 5% (para. [0008]). As LiPF6 remains fixed at 151.9g (1 mol in a 1M solution) each 1% VC increase increases the ratio slightly. For example, adjusting incrementally from 0.5% VC towards 5% VC would still effectively provide for a significant overlap of (W1+W2)/W3 is (151.9g+10g)/500g=161.9/500g = 0.324; (151.9g+10g)/495g=161.9/495g = 0.327; (151.9g+20)/500g=171.9/500g = 0.344; (151.9g+20g)/485g=171.9/485g = 0.354; (151.9g+30)/500g=181.9/500g = 0.364; (151.9g+30g)/475g=181.9/475g = 0.383; etc..
As to claim 9, the mass of LiPF₆ in 1M of this solution is 151.9g. The total mass of the solution is 1000g of solvent and 151.9g LiPF6 in a 1M solution is 1151.9g. The mass% of methyl acetate 50% of the mass of the solvent blend in Embodiment 4 is 500g or 50%.
As to claims 14 and 19, the electrolyte above is employed in a lithium ion secondary battery and further conventionally applied in combination with a power consuming electronic device (paras. [0004], [0012] for example).
Claim Rejections - 35 USC § 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.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN 103107364) as applied to claim 1 above and further in view of Zhang et al (CN 107749466A).
Li does not teach of the electrolyte further including a water removal additive as in claim 11, more particularly at least one of the specific materials recited in claim 12, in an amount of 0.5% or less as in claim 13.
Zhang is drawn to lithium ion battery chemistries including selection of cathode active materials and methods of making for lithium ion batteries. Zhang teaches of adding a minor amount of hexamethyldisilazane (abstract, examples, applied to claims 11 and 12) in an improved manufacturing method for dispersing active material which achieving good cycle performance for the benefit reducing water formation in a non-aqueous secondary battery. The amount of additive is minor amount ranging from 0.2 to 0.4% (claim 13).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrolyte of Li to further include the formulation technique of Zhang including 0.2-0.4% hexamethyldisilazane as taught by Zhang since it would have predictably provided good active material dispersion, good cycle performance and the inclusion of the additive for preventing/reducing water formation in the battery.
Claims 15 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN 103107364) as applied to claim 1 above and further in view of Chou et al. (U.S. Patent Application Publication No. 2012/0328947), Shirakata et al. (U.S. Patent Application Publication No. 2006/0216605) and Du et al (U.S. Patent Application Publication No. 2018/0315992).
As to claim 15, Li teaches of the positive electrode comprising lithium manganese oxide (paras. [0011]; [0030]).
Li does not teach of the positive electrode film layer comprising a lithium containing phosphate of an olivine structure on a substrate (claim 15) where the thickness of the film on one side is 80-140 microns (claim 17), where the porosity of the film is 20-50% (claim 18).
Li teaches by example that the positive electrode is lithium manganate (LiMn2O4). Replacing LiMn2O4 with LiFePO4 would have been readily known to a person of ordinary skill in the art as LiFePO4 was known to improve safety, cycle life and cost. Chou, drawn to the same field of endeavor, selection of cathode active materials for lithium ion batteries, recognized that LiFePO4 provides for certain benefits over both LiCoO2 and LiMn2O4 cathode materials in terms of low cost and improved safety (paras. [0006]-[0007]). Shirakata drawn to the same field of endeavor, selection of cathode active materials for lithium ion batteries, teaches that secondary batteries employing an olivine-type lithium metal phosphate active material as a low-cost material compared to other conventional materials (para. [0003]). Du drawn to the same field of endeavor, selection of cathode active materials for lithium ion batteries, teaches of manufacturing thicker electrodes including LiFePO4 (lithium containing phosphate of an olivine structure, claim 15). The electrode has a porosity of 20-40% and an overlapping thickness as low as 100 microns or more (para. [0019], claims 17-18). Du recognized that electrode thickness and porosity are important to battery performance and selected based on battery application (para. [0005]).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the material, thickness and porosity of the positive electrode active material of Li to be an olivine-type lithium metal phosphate active material as taught by Chou, Shirakata and Du having a thickness of at least 100 microns and a porosity of 20-40% since it would have provided a conventionally recognized active material, LiFePO4, having excellent electrochemical performance at low-cost and provided electrode parameters, thickness and porosity of sufficient amounts to provide a robust mechanical and electrochemical positive electrode active material layer. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). MPEP § 2144.07. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Allowable Subject Matter
Claim 16 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.
The following is a statement of reasons for the indication of allowable subject matter: none of the cited prior art of record, alone or in combination are held to reasonably teach, suggest or render obvious the secondary battery of claim 16, including all of the limitations of the base claim and any intervening claims, wherein the battery further satisfies the relationship of claim 16.
While Li satisfies the relationship of claim 1, Li itself does not teach or suggest satisfying this relationship in combination with the positive electrode film layer active material comprising a lithium-containing phosphate of an olivine structure which further satisfies the relationship of claim 16 which includes the second relationship and it would not appear to be obvious to one of ordinary skill in the art to satisfy this second relationship with sufficient specificity to appreciate the need to satisfy the two relationships in combination. While the secondary references above obviate certain features of an olivine-type lithium metal phosphate active material, there is no reasonably teaching or suggestion from the combination above to effectively satisfy the relationships together (relationship of claim 1 in combination with the relationship of claim 16).
Response to Arguments
Applicant’s arguments with respect to claims 1-9, 11-15 and 17-19 have been considered but are not persuasive.
Applicant argues that the electrolyte of claim 1 “consisting essentially of” a first and second solvent overcomes the teachings of Li which teaches of the presence of an additional solvent (EMC 5-30%) and is not held to define the electrolyte of claim 1 “consisting essentially of” a first and second solvent.
The Examiner respectfully disagrees.
As discussed above, the phrase “consisting essentially of” does not provide sufficient showing to overcome the presence of other solvents much less show that the presence of other solvents materially affects the basic and novel characteristics of the claimed invention.
The disclosure does not compare or mention anything with respect to three solvent mixtures nor compare to EMC as a solvent that materially affects the basic and novel characteristics of the claimed invention.
Again as discussed above Applicant’s statement on page 7 of the amendment filed June 15, 2026 that the inclusion of EMC materially affects the basic and novel characteristics of the electrolyte of Li in relation to the phrase “consisting essentially of” a first solvent and second solvent, this statement is not persuasive as it: 1) fails to provide any clear and convincing evidence; 2) the original disclosure fails to teach or suggest such as alleged by Applicant as the disclosure is silent as to comparison between the solvents therein and other solvents including solvents that have an amount of EMC therein; and 3) the argument is misplaced as it appears to allege that the addition of EMC materially affects the basic and novel characteristics of the electrolyte of Li when the standard, as set forth in MPEP § 2111.03, is to show whether or not the inclusion of EMC materially affects the basic and novel characteristic of the claimed invention.
As such, since the original disclosure does not clearly teach to what “consisting essentially” means, the phrase “consisting essentially of” has been interpreted in accordance with MPEP § 2111.03 to be “comprising”.
With that in mind, while Li may teach of the presence of EMC as a third solvent, Li still teaches of the limitations of the claims as noted above regardless of the presence of EMC in the solvent mixture. Therefore, Li still anticipates the claims for at least those reasons discussed above.
Conclusion
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/GREGG CANTELMO/Primary Examiner, Art Unit 1725
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