DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Remarks
2. Applicant’s amendments submitted on 4/8/26 have been received. Claims 1 and 10 have been amended. Claims 12 and 16-18 have been cancelled.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 1, 2-11, and 13-15 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. Claim 1 recites the limitation “wherein the third additive is added at an amount of 0.01% to 4% based on a total mass of 100% of the non-aqueous electrolyte” in lines 16-17. It is not clear whether it is a same or different total mass as recited in line 12. For the purpose of this Office Action, the limitation has been interpreted as “wherein the third additive is added at an amount of 0.01% to 4% based on the total mass of 100% of the non-aqueous electrolyte”.
5. Claim 2-11 and 13-15 are rejected as depending from claim 1.
6. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
7. Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 recites an amount of the first additive which is the same amount recited in claim 1 from which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
8. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
9. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
10. Claim(s) 1-7, 9, and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sugawara et al. (WO2020/022452 A1) with citations from equivalent (US 2021/0296703) further evidenced by Zang et al. (CN109119598A) as cited in IDS dated 6/20/23 with citations from machine translation provided from previous Office Action.
Regarding claim 1, Sugawara discloses a non-aqueous electrolyte([0034]), comprising a solvent([0165]-[0184]), an electrolytic salt([0185]-[0193]), a first additive (additive C, [0066]-[0082]), and a third additive(Additive B, [0062]-0065]), wherein the first additive is one or more selected from a compound of formula (I): A-D-B-E-C (I)([0076]-[0083]), wherein: A, B and C each are independently selected from a group containing a cyclic sulfate group ([0077]); and
D and E each are independently selected from a single bond, or a group containing a sulfur-oxygen double bond([0077]-[0082]), wherein the first additive is added at an amount of 0.01% by mass to 3.0% by mass ([0161]) which is within the claim range of 0.01% to 5.0% based on a total mass of 100% of the non-aqueous electrolyte, thus reading on the limitation.
Continuing with claim 1, Sugawara discloses wherein the third additive is one or more selected from LiPO₂F₂ ([0063]), wherein the third additive is added at an amount of 0.01% by mass to 3.0% by mass ([0065]) which is within the claim range of 0.01% to 4% based on the total mass of 100% of the non-aqueous electrolyte, thus reading on the limitation.
According to the MPEP, “"[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) See MPEP 2131.03.
Continuing with claim 1, while Sugawara does not explicitly disclose the non-aqueous electrolyte is of a methanol content of 200 ppm or less, Sugawara discloses solvents such as dimethyl carbonate and methyl ethyl carbonate ([0174]) which contain methanol with the content generally below 200 ppm as evidenced by Zang ([0004]).
Regarding claim 2, Sugawara discloses A, B and C each independently contain 1 to 5 of the cyclic sulfate group(s) ([0077]-[0078]), and a total number of the cyclic sulfate group(s), contained in A, B and C is less than or equal to 10([0077]-[0078]).
Regarding claim 3, Sugawara discloses A and C each are independently selected from a group of formula (II):
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wherein n is an integer selected from 0 ([0077]-[0078]);
R1 is selected from hydrogen ([0077]-[0078]), R2, R3, and R4 each are independently selected from an oxygen atom,
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([0077]-[0078]); at least one among R2, R3 and R4 is selected from
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([0077]-[0078]), and at least one among R2, R3 and R4 is the oxygen atom([0077]-[0078]).
Regarding claim 4, Sugawara discloses B is selected from a group of formula (III):
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wherein m is an integer selected from 1 to 4 ([0077]-[0078]); R5, R9 and R10 each are independently selected from an oxygen atom,
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([0077]-[0078]; and at least one among R8, R9 and R10 is selected from
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([0077]-[0078]) and at least one among R8, R9 and R10 is the oxygen atom([0077]-[0078]).
Regarding claim 5, Sugawara discloses D and E each are independently selected from a group of formula (IV):
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wherein z is an integer selected from 0 to 4; R11 and R13 each are independently selected from a single bond([0077]-[0082]); and R12 is selected from a single bond,
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([0077]-[0082]).
Regarding claim 6, Sugawara discloses D and E each are independently selected from a single bond ([0077]-[0082]) and A, B and C each are independently selected from a substituted or unsubstituted cyclic sulfate group([0077]).
Regarding claim 7, Sugawara discloses A and C are same to each other; A and B are same or different to each other; and D and E are same to each other([0077]-[0082]).
Regarding claim 9, Sugawara discloses the first additive is added at an amount of 0.01% by mass to 3.0% by mass ([0161]) which is within the claim range of 0.01% to 5.0% based on a total mass of 100% of the non-aqueous electrolyte, thus reading on the limitation.
Regarding claim 13, Sugawara discloses a battery([0208]-[0209]), comprising a positive electrode([0209]), a negative electrode ([0209]) and a non-aqueous electrolyte according to claim 1([0209]).
Claim Rejections - 35 USC § 103
11. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
12. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
13. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
14. Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugawara et al. (WO2020/022452 A1) with citations from equivalent US 2021/0296703) further evidenced by Zang et al. (CN109119598A) as cited in IDS dated 6/20/23 with citations from machine translation provided from previous Office Action as applied to claim 1 above, and further in view of Wan et al. (CN111755753A) as cited in IDS dated 6/20/23 with citations from machine translation provided from previous Office Action.
Regarding claim 8, Sugawara does not explicitly disclose the first additive is one or more selected from the following compounds; Compound 1-1 to 1-40.
Wan teaches lithium ion battery electrolyte additive cyclic ethylene carbonate sulfate and preparation method thereof(title). Wan teaches the first additive is one or more selected from a compound of formula (I): A-D-B-E-C (I), wherein: A, B and C each are independently selected from a group containing a cyclic carbonate group, and a cyclic sulfate group; and D and E each are independently selected from a single bond (claim 1, structure 1), wherein the non-aqueous electrolyte is of a methanol content of 200 ppm or less( 0 ppm as diethyl ether was added for recrystallization in example 1). Wan discloses the first additive is one or more selected from the following compounds:
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( claim 1). Wan teaches adding different additives to the electrolyte is effective in providing higher energy density lithium ion batteries([0004]).
It would have been obvious to one of ordinary skill in the art to substitute the additive in the non-aqueous electrolyte of Sugawara with the first additive is one or more selected from the following compounds: Compounds 1-2, 1-3, 1-4, 1-5, and 1-11 as taught by Wan in order to provide higher energy density lithium ion batteries.
15. Claim(s) 10, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugawara et al. (WO2020/022452 A1) with citations from equivalent US 2021/0296703) further evidenced by Zang et al. (CN109119598A) as cited in IDS dated 6/20/23 with citations from machine translation provided from previous Office Action as applied to claim 1 above, and further in view of Zang et al. (CN109119598A) as cited in IDS dated 6/20/23 with citations from machine translation provided from previous Office Action.
Regarding claim 10, Sugawara discloses further comprising a second additive(additive A, [0044]-[0046]), but does not explicitly disclose wherein the second additive is one or more selected from a compound of formula (V) and a compound of formula (VI); and the second additive is added at an amount of 0.01% to 4% based on a total mass of 100% of the non-aqueous electrolyte,
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wherein R17 is selected from a C2-C5 fluoro-hydrocarbylene group or a C2-C5 unsaturated hydrocarbylene group; and R18, R19, R20, R21, R22 and R23 each are independently selected from a hydrogen atom, a halogen atom, a C1-C5 saturated or unsaturated hydrocarbyl group or a C1-C5 halogenated hydrocarbyl group.
Zang teaches non-aqueous electrolytic solution and secondary battery(title). Zang teaches the second additive is one or more selected from a compound of formula (V) ([0030] CN109119598A); and the second additive is added at an amount of 0.01% to 4% based on a total mass of 100% of the non-aqueous electrolyte (total mass of the cyclic carbonate and the chain carbonate is 0 to 20% of the total mass of the non-aqueous electrolyte [0034]),
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wherein R17 is selected from C2-C5 fluoro-hydrocarbylene group([0030] CN109119598A).
It would have been obvious to one of ordinary skill in the art to modify the non-aqueous electrolyte of Sugawara with the second additive is one or more selected from a compound of formula (V); and the second additive is added at an amount of 0.01% to 4% based on a total mass of 100% of the non-aqueous electrolyte,
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wherein R17 is selected from C2-C5 fluoro-hydrocarbylene group as taught by Zang as obvious to try choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. See MPEP 2143.
Regarding claim 11, modified Sugawara discloses the compound of formula (V) is one or more selected from the following compounds:
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(Zang [0030] CN109119598).
Allowable Subject Matter
16. Claim 14 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. And the rejection under 35 U.S.C. 112 set forth in this office action on claims 1-11, and 13-15 is overcome.
In particular, the allowable limitation is when A, B or C is substituted, the substitution is selected from halogen, a hydrocarbyl group, or a halogenated hydrocarbyl group.
Sugawara does not disclose, teach or render obvious when A, B or C is substituted, the substitution is selected from halogen, a hydrocarbyl group, or a halogenated hydrocarbyl group
17. Claim 15 is objected to as being dependent upon allowable claim, but would be allowable if rewritten in independent form including all of the limitations of the allowable claim and any intervening claims. And the rejection under 35 U.S.C. 112 set forth in this office action on claims 1-11, and 13-15 is overcome.
Response to Arguments
18. Applicant’s arguments with respect to claim(s) 1-18 have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
19. Applicant's arguments filed 4/8/26 have been fully considered but they are not persuasive.
Applicant’s argument: The inventors have discovered the extent to which the first additive improves battery performance is correlated with the methanol content in the electrolyte. When the methanol content in the electrolyte incorporating the first additive is set to be less than or equal to 200 ppm as defined in the present application, the first additive can significantly enhance the high-temperature storage and high-temperature cycle performance of lithium-ion batteries. Instant Specification at page 13, lines 13-31 to page 14, lines 1-4 and Tables 1-3. Meanwhile, when the first additive is used in combination with a specific content of the third additive, both can participate in film formation simultaneously, improving the proportion of inorganic components in the passivation film and effectively suppressing the impedance increase of lithium-ion batteries under high-temperature conditions. Id. at bridging page 27 to 28; Table 5; and the paragraph below it.
Examiner’s answer: The showing of Tables 1-3 and 5 do not appear to be commensurate in scope with the claim. Examples 1-59 require ethylene carbonate (EC), diethyl carbonate (DEC) and methyl ethyl carbonate (EMC) were mixed at a mass ratio of EC:DEC:EMC=1:1:1, and lithium hexafluorophosphate (LiPF6) was then added to a molar concentration of 1 mol/L whereas the claim does not require such specificity.
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 VICTORIA HOM LYNCH whose telephone number is (571)272-0489. The examiner can normally be reached 7:30 AM - 4:30 PM EST M-F.
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, Miriam Stagg can be reached at 571-270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VICTORIA H LYNCH/Primary Examiner, Art Unit 1724
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