DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. Applicant’s response filed 6/9/2026 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 Rejections - 35 USC § 112
2. The rejections of claims 7, 9, 12, 18, and 20 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention are withdrawn in view of the arguments presented on 6/9/2026 or the correction filed (with respect to claim 12, now incorporated into claim 1).
Claim Rejections - 35 USC § 102
3. The rejection of claims 1-6, 8, 10-11, 13-17, and 19 under 35 U.S.C. 102(a)(1) as being anticipated by Ihara et al. (US 2014/0004413) is withdrawn in view of the amendments filed or cancellation of the claims (e.g., claims 11, 13-17, and 19). Claim 1 has been re-written to include the requirements of claims 1-11-12 which was addressed under § 103 previously is updated below to reflect the amendments provided, wherein said rejections are thus maintained rejections. It is noted that claims 21-22 are newly added and also address below.
Claim Rejections - 35 USC § 103
4. Claims 1-10 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Ihara et al. (US 2014/0004413) in view of Dong et al. (US 2020/0411901).
Regarding claim 1, Ihara teaches a lithium secondary battery (P50) comprising:
a cathode (“positive electrode”) comprising a cathode/positive active material (P50, 55-63);
an anode (“negative electrode”) comprising an anode/negative active material (P50, 64-84); and
an electrolyte between the positive electrode and the negative electrode (P85-89, 117-118, Formula 5, P121, 139-141, Formula 5-9), wherein the electrolyte comprises:
a lithium salt (P165-182); an organic solvent (P144-164); and a disulfonic compound represented by Formula 5 explained below, with the species 5-9 also explicitly taught:
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P141 lists specific examples of the taught genus of Formula 5, with compound 5-9 below being a species thereof:
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Accordingly, Ihara teaches both the genus represented by the instant claim Formula 1, as well as a species that reads thereon in Formula 5-9.
For example, the compound of Formula 5-9 corresponds to Formula 1 as defined with: L1 and L2 are each a C2H4 group (reading on “L1 and L2 are each independently an unsubstituted C1-C20 alkylene group,” specifically a C2 alklyene group”); A is oxygen (O), and R1 and R2 are each independently an unsubstituted C1-C20 alkyl group, specifically a C4 alkyl group).
As other examples, for Formula 5, Ihara teaches that R21 may explicitly be two alkylene groups bonded to each other through one ether group, with the specific example of -C2H4-O-C2H4- taught for R21 in Formula 5-9. Additionally suitable examples of two or more alkylene groups linked through an ether bond are described at P132 and shown in Formulas 3-35 through 3-45 including Formula 3-40 and Formula 3-3-45 which correspond to the L1-A-L2 center of the molecule for each of Formulas 4-6 claimed (e.g., C2H4- O-C2H4- for Formula 4 as claimed, and C3H6-O-C3H6- for Formulas 5 and 6 as claimed):
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Ihara further teaches that that each of R20 and R22 in Formula 5 may be a monovalent hydrocarbon group which is defined at P98:
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P101 gives specific examples of alkyl groups including methyl, ethyl, and propyl groups. These definitions are given for the unsaturated cyclic carbamate compound; however, Ihara teaches that the definitions and terms are the same for the non-carbamate compound (P123-125). The examples of R20 and R22 also included methyl groups (at least Formula 5-1, 5-2) and an ethyl group (formula 5-4). Accordingly, claim 1 is anticipated by these specific options for R20, R21, and R22 as outlined above. The entire disclosure of Ihara is relied upon.
Ihara teaches wherein the positive electrode comprises a compound represented by Formula 20:
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Given the parameters of z with nickel defined in an atomic ratio at 1-z, (i.e., nickel = 0.5001-0.995), one of ordinary skill in the art would recognize the genus taught as generally defining nickel-rich lithium composite oxides that have one or more of M, such as Co (colbalt) and Mn (manganese), doped in the nickel lattice site. Looking to known species options of this compound, Dong teaches that nickel-rich lithium nickel manganese cobalt oxides cells allow for unprecedent cycling properties for a large capacity cells (abstract), with “Ni-rich lithium manganese cobalt oxide” being represented by LiNixMnyCozO2 with x > 0.3 and specific commercially available formulations of these compounds including LiNi0.5Mn0.3Co0.2O2, LiNi0.6Mn0.2Co0.2O2, and LiNi0.8Mn0.1Co0.1O2 (P54). Dong teaches that such compounds achieve desirable cyclic results (P54), and are of interest due to lower costs, lower flammability risks, and the ability to cycle at higher voltages (P53).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to look to known species options for the taught genus of Ihara and select either of LiNi0.6Mn0.2Co0.2O2 or LiNi0.8Mn0.1Co0.1O2 as taught by Dong (P54) in order to achieve a desired cycling result, balance cost and flammability risk, and to allow for cycling at higher voltages (P54; abstract; entire disclosure relied upon).
Regarding claim 2, Ihara teaches a compound represented by Formula 2, wherein the difference between Formula 1 of claim 1 and Formula 2 of claim 2 is that A is required to be oxygen (O) in Formula 2 which is met by Ihara (see citations above).
Regarding claim 3, Ihara teaches a compound represented by Formula 3, wherein the difference between Formula 1 of claim 1 and Formula 3 of claim 3 is A is required to be oxygen (O) in Formula, and L1 and L2 are now required to be (CH2)m and (CH2)n, respectively, with m and n each being an integer from 1 to 10, and R1 and R2 are limited to each being a substituted or unsubstituted C1-C20 alkyl group, all of which are met by Formula 5-9 taught by Ihara, along with the general disclosure of Formula 5 and the options for each of R20, R21, and R22 (citations above).
Regarding claim 4, Ihara teaches wherein in Formula 3, R1 and R2 are each a C1-C20 alkyl group in at least Formula 5-9, along with the general disclosure of Formula 5 and the options for each of R20 and R22 (citations above).
Regarding claim 5, Ihara teaches wherein, in Formula 3, m and n are each independently 2 or 3 (see Formula 5-9 in which each of m and n are 2).
Regarding claim 6, Ihara teaches the disulfonic compound represented by Formula 5 explained below, with the species 5-9 also explicitly taught:
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Accordingly, for Formula 5, Ihara teaches that R21 may explicitly be two alkylene groups bonded to each other through one ether group, with the specific example of -C2H4-O-C2H4- taught for R21 in Formula 5-9. Additionally suitable examples of two or more alkylene groups linked through an ether bond are described at P132 and shown in Formulas 3-35 through 3-45 including Formula 3-40 and Formula 3-3-45 which correspond to the L1-A-L2 center of the molecule for each of Formulas 4-6 claimed (e.g., C2H4- O-C2H4- for Formula 4 as claimed, and C3H6-O-C3H6- for Formulas 5 and 6 as claimed):
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Ihara further teaches that that each of R20 and R22 in Formula 5 may be a monovalent hydrocarbon group which is defined at P98:
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P101 gives specific examples of alkyl groups including methyl, ethyl, and propyl groups. These definitions are given for the unsaturated cyclic carbamate compound; however, Ihara teaches that the definitions and terms are the same for the non-carbamate compound (P123-125). The examples of R20 and R22 also included methyl groups (at least Formula 5-1, 5-2) and an ethyl group (formula 5-4).
Accordingly, the disclosure of Ihara teaches with sufficient specificity each of Formulas 4-6 given the disclosure, definitions, and examples of what R20, R1, and R22 may each be within Formula 5 such that a person of ordinary skill in the art could at once envision these compounds from the description, definition, and examples given.
Alternatively, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to select from the taught options for each of R20, R21, and R22 enumerated above within Ihara that R20 and R22 (corresponding to R1 and R2 of Formula 1 of the claim) are each a methyl or ethyl group, and R21 (corresponding to L1-A-L2 of Formula 1 of the claim) are either of C2H4- O-C2H4- or C3H6-O-C3H6- given each of the named groups is an explicit option taught by Ihara for the corresponding R20, R21, and R22 (citations above).
Regarding claim 7, Ihara teaches wherein an amount of the compound in the electrolyte solution is preferably in the range from 0.001 wt% to 2 wt% both inclusive (P143), thereby rendering the claimed range of “about 0.05 wt% to about 20 wt%, based on a total weight of the electrolyte,” as prima facie obvious given in the case where the claimed range overlaps or lies inside a range disclosed by the prior art, a prima facie case of obviousness exists (see MPEP § 2144.05).
Regarding claim 8, Ihara teaches wherein the lithium salt is at least one selected from the group claimed (see P165-182). For example, Ihara teaches at least the examples of LiPF6 and LiBF4 (P167), with Formula 9 as claimed matching Formula 13-1 as claimed (P174).
Regarding claim 9, Ihara teaches wherein a concentration of the lithium salt is in a range of from 0.3 mol/kg to 3.0 mol/kg both inclusive with respect to the solvent in order to achieve high ion conductivity (P182). Although not recited in molarity (mol/L = M) as claimed, the same thing (i.e., amount of salt relative to the solvent) is being optimized just in different terms (i.e., expressed relative to weight in Ihara versus volume in the claim), wherein one of ordinary skill in the art would be immediately apprised of such. The court has held, “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to determine the optimum or workable ranges of the amount of lithium salt to be utilized relative to the solvent, whether in metrics related to weight (kg) or volume (liters), given Ihara teaches a suitable range and that the content of the salt added is related to ionic conductivity (P182), as would also be immediately known to one having ordinary skill in the art, thereby providing the predictable result of providing an electrolyte solution suitable for its intended purpose.
Regarding claim 10, Ihara teaches wherein the organic solvent comprises at least one selected from the group claimed (P144-164). For example, Ihara teaches at least ethylmethyl carbonate (EMC), methylpropyl carbonate, propylene carbonate (PC), and ethylene carbonate (EC) (P146), among others.
Regarding claim 21, Ihara as modified by Dong teaches the compound represented by Formula 12 is at least one selected from compounds represented by Formula 12-1 (e.g., Dong teaches the example of LiNi0.8Mn0.1Co0.1O2 (P54)) which is a species of the genus presented in Formula 12-1 and thus anticipatory thereof 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
It is noted that in addition the selection of a known species options for the taught genus of Ihara from those taught by Dong that provide the predictable, advantageous results of lower cost, lower flammability risk, and the ability to cycle at higher voltages (P53), the court has held the following (MPEP § 2144.07):
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) ("…selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.).
See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
Regarding claim 22, Ihara teaches the negative active material comprises at least one selected from the group listed including (at least) a carbonaceous material (P68), a silicon-based compound (P70-73).
5. Claim 9 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Ihara et al. (US 2014/0004413) in view of Dong et al. (US 2020/0411901) as applied to at least claim 1 above, and further in view of Wang et al. (US 2017/0040639).
Regarding claim 9 , Ihara teaches wherein a concentration of the lithium salt is in a range of from 0.3 mol/kg to 3.0 mol/kg both inclusive with respect to the solvent in order to achieve high ion conductivity (P182). Although not recited in molarity (mol/L = M) as claimed, the same thing (i.e., amount of salt relative to the solvent) is being optimized just in different terms (i.e., expressed relative to weight in Ikhara versus volume in the claim), wherein one of ordinary skill in the art would be immediately apprised of such. The court has held, “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to determine the optimum or workable ranges of the amount of lithium salt to be utilized relative to the solvent, whether in metrics related to weight (kg) or volume (liters), given Ihara teaches a suitable range and that the content of the salt added is related to ionic conductivity (P182), as would also be immediately known to one having ordinary skill in the art, thereby providing the predictable result of providing an electrolyte solution suitable for its intended purpose.
Furthermore, looking to known configurations of analogous electrolyte solutions intended for use with a lithium secondary battery, Wang teaches that a suitable concentration of the lithium salt such as LiPF6 should be 0.7 to 1.3 mol/L (P37-40). Wang teaches that if the molarity of the lithium salt is too low, the conductivity of the electrolyte is low which will affect both C-rate and cycle performance of the lithium ion battery as a whole, and if the molarity of the lithium salt is too high, the viscosity of the electrolyte is too high which similarly affects both C-rate and cycle performance of the lithium ion battery as a whole (P40). The taught range of 0.7 to 1.3 mol/L renders the claimed range of 0.01 M to 5.0 M as prima facie obvious given in the case where the claimed range overlaps or lies inside a range disclosed by the prior art, a prima facie case of obviousness exists (see MPEP § 2144.05).
Thus, the claimed range of lithium salt in terms of molarity is rendered further obvious by the suitable range taught by Wang, wherein one of ordinary skill in the art would be motivated to look to known concentrations of lithium salt in terms of volume (=mol/liter = Molarity) to provide an electrolyte solution suitable for its intended purpose.
Response to Arguments
6. Applicant's arguments filed 6/9/2026 have been fully considered but they are not persuasive.
Applicant argues that Ihara does not disclose the Formula 12 genus and cannot anticipate the claim (pages 12-15 of the response filed).
In response: the Examiner agrees with this assertion and an anticipation rejection was not set forth against claim 12 such that the arguments are rendered moot.
Applicant argues:
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[see Table 2 of Ihara]
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In response: The Examiner is respectfully at a loss as to how to properly interpret Applicant’s arguments above in view of the claims. The claims say nothing about a carbamate compound being prevented from use (nor would this appear to be a supported option from the instant application disclosure given exclusionary provisions must be explicitly supported -see MPEP 2173.05(i)). The claims do not recite “consisting of” language such that additional components are excluded from those recited in the claim. In other words, Applicant’s arguments are not commensurate in scope with the claims, and it is entirely unclear what limitation from the claim is being challenged. The arguments against the use of a “sole additive” or exclusion of other components are thus rendered moot given no such claim limitation exists.
Arguendo for a hypothetical future claim using “consisting of” language, Applicant is also directed to MPEP 2123, Section II in this regard:
II. NONPREFERRED AND ALTERNATIVE EMBODIMENTS CONSTITUTE PRIOR ART
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." Id. at 554, 31 USPQ2d at 1132.). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Conclusion
7. 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.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BILLIET whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula C Tavares-Crockett 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 BILLIET/Primary Examiner, Art Unit 1729
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