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 .
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.
Claim 5 is 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. Formula 5 further defining the second additive in claim 1 does not require a sulfur double bonded to two oxygen atoms and single bonded to two other atoms since A can be phosphorus, sulfur or nitrogen; however, claim 1 requires this structure in the second additive, so claim 5 is inconsistent with the requirements of claim 1.
Claim Rejections - 35 USC § 102
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.
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 1-3, 5-6, 8-10, 13 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hu (US Pub. No. 2020/0313237).
Regarding claims 1-3 and 5-6, Hu teaches an electrolyte solution comprising an organic solvent, a lithium salt, a first additive, and a second additive, wherein the first additive is fluoroethylene carbonate (the specific embodiment of the first additive claimed in claim 3), with a specific embodiment having 1% by mass, the second additive is pentaerythritol disulfate (the specific embodiment of the second additive claimed in claim 6) present in an amount of 0.1 to 5% by mass based on the total mass of the electrolyte solution, with a specific embodiment having 1% by mass (paragraphs [0040]-[0050]; table 1, embodiment 11), the specific embodiment having a weight ratio of 1:1, falling within the claimed range of claim 1. It is noted that pentaerythritol disulfate is the compound in chemical formula 4 of claim 1, wherein R4 is OR6 and R6 is a C2 alkyl group, RS is R7A and R7 is a C3 alkyl group, and A =
PNG
media_image1.png
64
80
media_image1.png
Greyscale
, R4 is OR6, and R6 is a Cl alkyl group. Regarding claim 5, the compound in chemical formula 5 of claim 5, wherein A is S, X2, X2', X3, and X3' are O, and R2, R2', R3, and R3' are C1 alkylene.
Regarding claim 8, Hu does not limit the lithium salt, and teaches specific lithium salts from the claimed list, including LiPF₆, LiBF₄, LiBOB and LiN(SO2CF3)2 (paragraph [0050]).
Regarding claim 9, Hu teaches that the organic solvent can comprise at least one of ethylene carbonate, propylene carbonate, butylene carbonate, dimethyl carbonate, methyl ethyl carbonate and methyl propyl carbonate (paragraph [0049]).
Regarding claim 10, Hu teaches the use of cyclic sultones and/or cyclic sulfates (paragraphs [0018]-[0022]), with specific embodiments using 1,3-propane sultone and ethylene sulfate in an amount of 1% (table 1, embodiments 12 and 13).
Regarding claim 13, Hu teaches that lithium secondary battery comprising a cathode, an anode, a separator, and an electrolyte where the electrolyte is the electrolyte set forth above (paragraph [0051]).
Regarding claim 18, with regard to the recitation “the lithium secondary battery is a battery for energy storage systems (ESSs) or as a battery for automobiles,” this claim limitation is merely intended use of the battery. The manner in which an apparatus operates is not germane to the issue of patentability of the apparatus itself. If the prior art structure is capable of performing the intended use, then it meets the claim. The battery of Hu set forth above is fully capable of being used as a battery for energy storage systems or for automobiles.
Claim Rejections - 35 USC § 102/103
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.
Claims 14-17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hu (US Pub. No. 2020/0313237).
Regarding claims 14-17, Hu teaches that the electrolyte for a secondary battery comprising the fluoroethylene carbonate and the cyclic sulfate compound to have sufficient high-temperature storage performance and high-temperature cycle performance (paragraph [0005]), and uses an electrolyte reading on all of the claimed limitations of the instant application. Accordingly, Applicant is claiming a function of the electrolyte with respect to claims 14-17, and the composition is the same, therefore the limitations of these claims are taken to be anticipated or obvious. “Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection.” MPEP § 2112.
Response to Arguments
Applicant’s amendments and arguments with respect to the rejections under 35 U.S.C. 112 in paragraphs 5 and 7 of the prior Office action have been fully considered and are persuasive. The rejections of claims 1-10 and 13-18 under 35 U.S.C. 112 and 14-18 under 35 U.S.C. 112 have been withdrawn.
Applicant's amendments and arguments with respect to the 112 rejection in paragraph 6 of the prior Office action, and with respect to the prior art rejections of the claims have been fully considered but they are not persuasive.
With regards to the rejection of claim 5 under 35 U.S.C. 112 in paragraph 6 of the prior Office action, Applicant argues that claim 1 has been amended in such a way that claim 5 is now consistent with the requirements of claim 1. However, Formula 4, which has been added to claim 4 and which requires a sulfur double bonded to two oxygen atoms, single bonded to an oxygen atom, and single bonded to a group R4. In other words, claim 5 is still inconsistent with the requirements of claim 1 because claim 5 does not require a sulfur double bonded to two oxygen atoms and single bonded to two other atoms.
With regards to the prior art rejection of claim 1, Applicant argues that Hu does not teach compounds having the specific structure and specific electronegativity of the instant invention and does not teach the weight ratio of first additive to the second additive. First, with respect to the compounds having the specific structure and specific electronegativity, Hu teaches specific compounds that are the same specific first and second additives used in embodiments of the instant invention, therefore they necessarily have the same specific structure and specific electronegativity. Second, Hu teaches a specific embodiment with a 1:1 ratio of first to second additive, very near the middle of Applicant’s range, and an embodiment within a range anticipates a range.
Applicant argues unexpected results of the invention. First, unexpected results cannot overcome an anticipation rejection, and all of the claims have been rejected under 35 U.S.C. 102. Second, unexpected results commensurate in scope with the claims has not been demonstrated at least for the reason that formula 1 and formula 4 defining the first and second additives in claim 1 encompass a very large number of chemical compounds due to the R groups having a variety of configurations, whereas only a very limited number of specific chemical compounds have been tested as the first and second additives in the examples and comparative examples (see tables 6 and 7).
Conclusion
THIS ACTION IS MADE FINAL. 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 PHILIP N SCHWARTZ whose telephone number is (571)270-1612. The examiner can normally be reached Mon-Fri 9:00-5:30.
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, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/P.N.S/ Examiner, Art Unit 1749 August 14, 2026
/KATELYN W SMITH/ Supervisory Patent Examiner, Art Unit 1749
Prosecution Insights