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 § 103
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.
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.
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, 8-9, 13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Son (KR 20190092879; machine translation relied upon).
Regarding claim 1, Son teaches an electrolyte solution consisting of an organic solvent including vinylene carbonate, a lithium salt, a first additive, and a second additive, wherein the first additive is lithium bis (fluorosulfonyl) imide (the specific embodiment of the first additive claimed in claim 1 formula 3 where h = 1) present preferably in an amount of 1 to 10% by weight based on the total weight of the electrolyte solution, the second additive is pentaerythritol disulfate (the specific embodiment of the second additive claimed in claim 1 formula 10) present in an amount preferably of 0.05 to 5% by weight (machine translation at pages 3-5; see original at paragraphs [0025]-[0026]), resulting in a range of ratio of from 0.2 to 200, overlapping the claimed range of first to second additive ratio. Accordingly, it would have been obvious to one of ordinary skill in the art to use a ratio of claimed first additive to second additive as claimed because Son teaches an overlapping range of this ratio (see machine translation at pages 4-5).
Regarding claim 8, Son teaches numerous lithium salts from the claimed list, including at least LiPF₆, LiClO4, LiBF₄, and LiSbF₆ (machine translation at page 4).
Regarding claim 9, Son teaches that the organic solvent can be at least one from the group consisting of numerous of the claimed solvents, including at least ethylene carbonate, propylene carbonate, butylene carbonate, and vinylene carbonate (machine translation at page 4).
Regarding claim 13, Son teaches that lithium secondary battery comprising a cathode, an anode, a separator, and an electrolyte where the electrolyte is the electrolyte set forth above (machine translation at pages 5 and 10). Further, Son teaches that the electrolyte for a secondary battery comprising the vinylene carbonate and the cyclic sulfate compound to suppress an increase of resistance during high temperature storage and enhances capacity retention rate and room temperature and high temperature lifetime characteristics (abstract), 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 the limitations from prior claims 14-17, and the composition is the same, therefore the limitations of these claims are taken to be obvious. “’When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.’” MPEP § 2112.01 citing In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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 Son set forth above is fully capable of being used as a battery for energy storage systems or for automobiles.
Response to Arguments
Applicant’s amendments and arguments with respect to the rejections under 35 U.S.C. 112 have been fully considered and are persuasive. The rejections of the claims under 35 U.S.C. 112 have been withdrawn.
Applicant's arguments with respect to the prior art rejections of the claims have been fully considered but they are not persuasive.
Applicant argues that vinylene carbonate is essential to Son, and that the absence of vinylene carbonate in Son results in poor resistance during high-temperature life and capacity retention. However, this argument is not persuasive because vinylene carbonate can be read as part of the claimed organic solvent. It is noted that the instant invention specifically contemplates the presence of vinylene carbonate, as is it is specified as an organic solvent usable in the invention in claim 9.
Applicant argues unexpected results of the invention. However, unexpected results commensurate in scope with the claims has not been demonstrated at least for the reason that formulas 3-6 defining the first additive in claim 1 encompasses a very large number of chemical compounds due to h being an integer from 1 to 10, whereas only one specific embodiment using one specific chemical compound has been tested as the second additive commensurate in scope with the claims in the examples and comparative examples (see in particular table 5 compared to the other tables – only formula 1 h as shown in table 5 fits the claimed formulas 3-6 in claim 1, formulas 1a-1g are completely different types of chemicals).
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.
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/P.N.S/ Examiner, Art Unit 1749 September 2, 2026
/KATELYN W SMITH/ Supervisory Patent Examiner, Art Unit 1749
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