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 .
Claim Objections
2. Claim 10 is objected to because of the following informalities: the limitation “ the second additive is one or more selected from a compound of formula (V) and a compound of formula (VI)” in lines 2-3 is improper alternative claiming. Alternative claiming may be set forth as "a material (or at least one material) selected from the group consisting of A, B, and C" or "wherein the material is (or is at least one of) A, B, or C" see MPEP 2173.05(h). For the purpose of this Office Action, the limitation has been interpreted as “ the second additive is one or more selected from a compound of formula (V) or a compound of formula (VI)”. Appropriate correction is required.
3. Claim 12 is objected to because of the following informalities: the limitation “ the third additive is one or more selected from LiPO2F2, LiODFB, LiDFOP, LiBOB, LiBF4, LiFSI and LiTFSI” in lines 2-3 is improper alternative claiming. Alternative claiming may be set forth as "a material (or at least one material) selected from the group consisting of A, B, and C" or "wherein the material is (or is at least one of) A, B, or C" see MPEP 2173.05(h). For the purpose of this Office Action, the limitation has been interpreted as“ the third additive is one or more selected from LiPO2F2, LiODFB, LiDFOP, LiBOB, LiBF4, LiFSI or LiTFSI”. Appropriate correction is required.
4. Claim 17 is objected to because of the following informalities: the limitation “ the third additive is one or more selected from LiPO2F2, LiODFB, LiDFOP, LiBOB, LiBF4, LiFSI and LiTFSI” in lines 2-3 is improper alternative claiming. Alternative claiming may be set forth as "a material (or at least one material) selected from the group consisting of A, B, and C" or "wherein the material is (or is at least one of) A, B, or C" see MPEP 2173.05(h). For the purpose of this Office Action, the limitation has been interpreted as“ the third additive is one or more selected from LiPO2F2, LiODFB, LiDFOP, LiBOB, LiBF4, LiFSI or LiTFSI”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
5. 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.
6. 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.
7. 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.
8. Claim(s) 1-9, 12, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (CN110931863A) as cited in IDS dated 11/20/24 with citations from equivalent US 2024/0136576 in view of Wan et al. (CN111755753A) as cited in IDS dated 6/20/23 with citations from machine translation provided with this Office Action.
Regarding claim 1, Lin discloses a non-aqueous electrolyte([0009]), comprising a solvent([0009], an electrolytic salt([0009]), and a first additive (formula (2) [0009]), but does not explicitly disclose wherein 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, a cyclic sulfate group, a cyclic sulfite group, a cyclic sulfonate group, a cyclic sulfone group, a cyclic sulfoxide group, a cyclic carboxylate group or a cyclic anhydride group; and D and E each are independently selected from a single bond, or a group containing hydrocarbylene group, an ether bond, a sulfur-oxygen double bond, or a carbon-oxygen double bond, wherein the non-aqueous electrolyte is of a methanol content of 200 ppm or less.
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 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 Lin with 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, wherein the non-aqueous electrolyte is of a methanol content of 200 ppm or less as taught by Wan in order to provide higher energy density lithium ion batteries.
Regarding claim 2, modified Lin discloses A, B and C each independently contain 1 to 5 of the cyclic carbonate group(s), the cyclic sulfate group(s); and a total number of the cyclic carbonate group(s), the cyclic sulfate group(s) contained in A, B and C is less than or equal to 10 (Wan, total number of groups is 3 in structure 1 of claim 1).
Regarding claim 3, modified Lin 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; R1 is selected from hydrogen, R2, R3, and R4 each are independently selected from an oxygen atom,
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at least one among R2, R3 and R4 is selected from
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and at least one among R2, R3 and R4 is the oxygen atom(Wan, claim 1, structure 1).
Regarding claim 4, modified Lin discloses B is selected from a group of formula (III):
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wherein m is an integer selected from 1; R8, R9 and R10 each are independently selected from an oxygen atom, or
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; and at least one among R8, R9 and R10 is selected from
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, and at least one among R8, R9 and R10 is the oxygen atom (Wan, claim 1, structure 1).
Regarding claim 5, modified Lin 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 1; R11 and R13 each are independently selected from a single bond; and R12 is selected from a single bond(Wan, claim 1, structure 1).
Regarding claim 6, modified Lin discloses D and E each are independently selected from a single bond; and A, B and C each are independently selected from an unsubstituted cyclic carbonate group, an unsubstituted cyclic sulfate group (Wan, claim 1, structure 1).
Regarding claim 7, modified Lin 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(Wan, claim 1, structure 1).
Regarding claim 8, modified Lin discloses the first additive is one or more selected from the following compounds:
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(Wan, claim 1, structure 1).
Regarding claim 9, modified Lin discloses the first additive is added at an amount of 0.01% to 5.0% based on a total mass of 100% of the non-aqueous electrolyte(Lin, 0.05 wt % to 2 wt% [0010]).
Regarding claim 12, modified Lin discloses further comprising a third additive, wherein the third additive is one or more selected from LiODFB, LiBOB, LiBF4, LiFSI or LiTFSI (Lin [0046]).
Regarding claim 13, modified Lin discloses a battery, comprising a positive electrode, a negative electrode and a non-aqueous electrolyte according to claim 1(Lin [0057], Wan claim 1, structure 1).
9. Claim(s) 10, 11, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (CN110931863A) as cited in IDS dated 11/20/24 with citations from equivalent US 2024/0136576 in view of Wan et al. (CN111755753A) as cited in IDS dated 6/20/23 with citations from machine translation provided with this 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 with this Office Action.
Regarding claim 10, modified Lin discloses further comprising a second additive(Wan, claim 1, structures II-V), 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 modified Lin 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 Lin discloses the compound of formula (V) is one or more selected from the following compounds:
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(Zang [0030] CN109119598).
Regarding claim 17, modified Lin discloses further comprising a third additive, wherein the third additive is one or more selected from LiODFB, LiBOB, LiBF4, LiFSI or LiTFSI (Lin [0046]).
10. Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (CN110931863A) as cited in IDS dated 11/20/24 with citations from equivalent US 2024/0136576 in view of Wan et al. (CN111755753A) as cited in IDS dated 6/20/23 with citations from machine translation provided with this Office Action as applied to claims 1 and 12 above, and further in view of Shi et al. (CN108808066A) as cited in IDS dated 11/20/24 with citations from equivalent US 2020/0020972.
Regarding claim 16, modified Lin does not explicitly disclose 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.
Shi teaches a non-aqueous electrolyte for lithium ion battery(abstract). Shi teaches as is known to those skilled in the art, the main components in the non-aqueous electrolyte for lithium ion battery are non-aqueous organic solvents, lithium salts and additives([0045]). Shi teaches the lithium salt is selected from one or more of LiPF6, LiBF4, LiBOB, LiDFOB, LiN(SO2CF3)2, LiN(SO2C2F5)2, LiC(SO2CF3)3 and LiN(SO2F)2([0046]). Shi teaches the lithium salt content in the non-aqueous electrolyte for lithium ion battery is 0.1-15% ([0046]). Shi teaches the content of non-aqueous organic solvent and lithium salt is conventional, and it can be adjusted accordingly after the content of the additive ([0045]).
It would have been obvious to one of ordinary skill in the art to modify the non-aqueous electrolyte of modified Lin with 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 as Shi teaches it can be adjusted accordingly after the content of the additive.
11. Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (CN110931863A) as cited in IDS dated 11/20/24 with citations from equivalent US 2024/0136576 in view of Wan et al. (CN111755753A) as cited in IDS dated 6/20/23 with citations from machine translation provided with this Office Action and further in view of Zang et al. (CN109119598A) as cited in IDS dated 6/20/23 with citations from machine translation provided with this Office Action as applied to claims 1, 10, and 17 above, and further in view of Shi et al. (CN108808066A) as cited in IDS dated 11/20/24 with citations from equivalent US 2020/0020972.
Regarding claim 18, modified Lin does not explicitly disclose 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.
Shi teaches a non-aqueous electrolyte for lithium ion battery(abstract). Shi teaches as is known to those skilled in the art, the main components in the non-aqueous electrolyte for lithium ion battery are non-aqueous organic solvents, lithium salts and additives([0045]). Shi teaches the lithium salt is selected from one or more of LiPF6, LiBF4, LiBOB, LiDFOB, LiN(SO2CF3)2, LiN(SO2C2F5)2, LiC(SO2CF3)3 and LiN(SO2F)2([0046]). Shi teaches the lithium salt content in the non-aqueous electrolyte for lithium ion battery is 0.1-15% ([0046]). Shi teaches the content of non-aqueous organic solvent and lithium salt is conventional, and it can be adjusted accordingly after the content of the additive ([0045]).
It would have been obvious to one of ordinary skill in the art to modify the non-aqueous electrolyte of modified Lin with 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 as Shi teaches it can be adjusted accordingly after the content of the additive.
Double Patenting
12. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
13. Claims 1, 9, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/259,300 (reference application) (the ‘300 application) in view of Wan et al. (CN111755753A) as cited in IDS dated 6/20/23 with citations from machine translation provided with this Office Action. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the ‘300 application teaches a battery having the limitations of instant claims 1, 9 and 13 but does not teach a methanol content.
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 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 include 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, wherein the non-aqueous electrolyte is of a methanol content of 200 ppm or less as taught by Wan in the non-aqueous electrolyte of claim 1 of the ‘300 application in order to provide higher energy density lithium ion batteries.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
14. 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.
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.
Wan 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
15. 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.
Conclusion
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.
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/VICTORIA H LYNCH/Primary Examiner, Art Unit 1724