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 .
Response to Amendment
The amendment filed on 29 May 2026 has been entered. Claim 1 has been amended and claim 5 has been canceled. Claims 1-4 and 6-20 are pending and examined herein.
All previous rejections relying upon Sawa (US2013/0330609 A1) as a primary reference are withdrawn due to applicant’s amendment.
New rejections follow.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1-4 and 6-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa et al (WO 2011/024837 A1) (hereinafter Hasegawa, citations are to the attached machine translation) in view of Sawa (US 2013/0330609 A1).
Regarding claim 1, Hasegawa teaches an organic electrolyte comprising a lithium salt (p. 3, 5th full paragraph; Table 1; LiBF4 as an example), a non-aqueous solvent comprising a fluorinated cyclic carbonate compound (p. 3, 3rd - 4th full paragraphs; e.g. fluoroethylene carbonate, difluoroethylene carbonate, fluoropropylene carbonate, etc.), a chain carbonate which is suggested to include a fluorine substituent (p. 3, 3rd full paragraph), and a nitrile based compound represented by the claimed Formula 1. (p. 3, 1st full paragraph; e.g. adiponitrile, pimelonitrile, suberonitrile, etc.) Hasegawa further teaches that the concentration of the nitrile compound can be between 10 - 80 vol%, which overlaps the claimed range, and includes numerous examples of the nitrile being present at e.g. 50 vol. % (Table 1). Note 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
Although it is generally suggested as pointed out above, Hasegawa does not specifically teach a fluorinated chain carbonate compound included in the electrolyte.
Sawa is cited as teaching fluorinated chain carbonate compounds that are taught as suitable for electrolyte solutions for lithium ion secondary batteries, such as 2-fluoroethyldifluoromethyl carbonate among numerous others. [0162], [0167]- [0175]
Based on the suggestion of Hasegawa that fluorine-substituted chain carbonates would be suitable as a component of the organic solvent for the electrolyte (p. 3, 3rd full paragraph), and the teaching of numerous such compounds as suitable electrolyte constituents by Sawa, it would have been obvious to one having ordinary skill in the art at the time the invention was made to specifically include a fluorinated linear carbonate compound in the electrolyte of Hasegawa. Such selection and combination would have been entirely within the abilities of one having ordinary skill in the art, and would have predictably resulted in a suitable electrolyte. See MPEP 2143 (I)(A)
Regarding claims 2-4, Hasegawa teaches suberonitrile, which is 1,6-dicyanohexane.
Regarding claims 6-7, Hasegawa teaches LiBF4 as the lithium salt, with exemplary concentration of 1 M. (All examples of Table 1)
Regarding claims 8-10, Hasegawa teaches fluoroethylene carbonate. (p. 3, 4th full paragraph)
Regarding claim 11, modified Hasegawa teaches the limitations of claim 1 as described above. Modified Hasegawa is silent on the specific amount of fluorinated cyclic carbonate to be included in the electrolyte, though other cyclic carbonates are shown as being at 10-50 vol. % in e.g. Table 1.
Sawa teaches that a fluorinated cyclic carbonate solvent can be included in a range of 1-50 vol. %, with an example of 30 vol. %. [0144], [0389]
It would have been obvious to one having ordinary skill in the art at the time the invention was made to specifically include the fluorinated cyclic carbonate compound in the electrolyte of Hasegawa at concentrations such as those taught as suitable by Sawa for lithium battery electrolytes. Such selection and combination would have been entirely within the abilities of one having ordinary skill in the art, and would have predictably resulted in a suitable electrolyte. See MPEP 2143 (I)(A)
This overlaps the range claimed. Note 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
Regarding claims 12-15, within modified Hasegawa, Sawa teaches examples of suitable fluorinated linear carbonates. Bis(2-fluoroethyl) carbonate [0175], for example, corresponds to claim 12 where L1 and L2 are both single bonds, a1 and a2 are both 1, and R1 and R2 are both C2 alkyl groups substituted with F. The two -CH2CFH2 groups of this compound meet the limitations of claims 13-15.
Regarding claim 16, modified Hasegawa teaches the limitations of claim 1 as described above. Modified Hasegawa is silent on the specific amount of fluorinated chain carbonate to be included in the electrolyte, though other chain carbonates are shown as being at 10-45 vol. % in e.g. Table 1.
Sawa teaches an overlapping range of the fluorinated chain carbonate compound [0174], wherein the amount of incorporation is 15 vol% or more and 85 vol% or less with respect to 100 vol% of the organic electrolyte [0177]
It would have been obvious to one having ordinary skill in the art at the time the invention was made to specifically include the fluorinated cyclic carbonate compound in the electrolyte of Hasegawa at concentrations such as those taught as suitable by Sawa for lithium battery electrolytes. Such selection and combination would have been entirely within the abilities of one having ordinary skill in the art, and would have predictably resulted in a suitable electrolyte. See MPEP 2143 (I)(A)
Furthermore, with respect to the amount of incorporation of the fluorinated chain carbonate compound [0174], Sawa recognizes that the upper limit of the range is a result effective variable [0177]. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of the fluorinated chain carbonate compound to be within the claimed upper limit of “less than 55 vol %” for the purpose of optimizing the permittivity characteristics of the electrolyte solution. The result of avoiding drops in electrical conductivity derived from decreased permittivity of the non-aqueous electrolyte solution would also have been reasonably predictable [0177]. Further, the Federal Circuit emphasized in In re Wertheim that a prima facie case of obviousness exists when the claimed ranges “overlap or lie inside ranges disclosed by the prior art” (see MPEP 2144.05 (I)).
Regarding claim 17, modified Hasegawa teaches the limitations of claim 1 as described above. Modified Hasegawa is silent on the specific amount of fluorinated chain cyclic carbonate and fluorinated chain carbonate to be included in the electrolyte, though Table 1 shows a range of combined 20-90 vol % of cyclic and chain carbonates.
Sawa teaches an overlapping range [0219] of the combined amount of the fluorinated cyclic carbonate compound [0144] and the fluorinated chain carbonate compound [0170-0173, 0177], wherein the amount of incorporation is 15 vol% or more and 60 vol% or less with respect to a total volume of the organic electrolyte [0219].
With respect to the combined amount of incorporation of the fluorinated cyclic carbonate compound and the fluorinated chain carbonate compound, Sawa recognizes that the amount of each compound is a result effective variable [0144, 0177]. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to adjust the combined amount of the fluorinated cyclic carbonate and the fluorinated chain carbonate compound to be within the claimed range of “greater than 30 vol% and less than 70 vol%” for the purpose of optimizing both the cycle characteristic of the secondary battery [0145] and the permittivity characteristic of the electrolyte solution [0177]. The results of avoiding drops in high-temperature storage characteristic [0145] and electrical conductivity [0177] would also have been reasonably predictable. Further, the Federal Circuit emphasized in In re Wertheim that a prima facie case of obviousness exists when the claimed ranges “overlap or lie inside ranges disclosed by the prior art” (see MPEP 2144.05 (I)).
Regarding claim 18, Hasegawa teaches inclusion of an additional ester-based solvent. (e.g. γ-butyrolactone; p. 3, 3rd full paragraph)
Regarding claim 19, Hasegawa teaches a battery comprising positive and negative electrodes provided with the electrolyte. (p. 5, 3rd paragraph)
Regarding claim 20, modified Hasegawa teaches the limitations of claim 19 as described above. However, modified Hasegawa does not specifically disclose that the secondary battery maintains an overvoltage of 0.3V or less after being charged to 6V. Hasegawa does note overvoltage being an issue to be improved by the electrolyte formulation. (p. 9, 2nd paragraph)
Sawa discloses that the amounts of nitrile-based compound ([0074]), fluorinated cyclic carbonate compound ([0144][0177]), fluorinated chain carbonate compound can be adjusted and that the relative amounts of each of the compounds in the electrolyte effects the electrical characteristics and safety requirements of the battery ([0145][0075]).
It would have been obvious to one of ordinary skill in the art at the time of filing to further modify Hasegawa by adjusting the amounts of nitrile-based compound, fluorinated cyclic carbonate compound, and fluorinated chain carbonate compound in the non-aqueous based solvent to achieve the claimed overvoltage because doing so would allow for optimization of electrical characteristics and safety requirements of the battery.
Response to Arguments
Applicant’s arguments with respect to the previous rejections have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding Applicant’s discussion of the significance of the claimed 30-70 vol. % range for the concentration of the nitrile compound, it is noted that the cited examples are insufficient to demonstrate unexpected results commensurate in scope with the claims. The cited examples use just one nitrile compound, in contrast to the breadth of claimed formula 1. They also use only two specific fluorinated carbonate components, also in contrast to the breadth of claim 1. They include only the two endpoints of the claimed range of nitrile concentration and no other points inside the range. There is also insufficient description of the precise formulations of the cited comparative examples, i.e. how much of each component is present.
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.
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/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 26 June 2026
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