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.
Claims 1-3 and 5 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 (emphasis added):
“wherein the nonaqueous electrolyte further contains at least one ester selected from the group consisting of a chain ester and an unsubstituted saturated cyclic ester, and
a total content of chain ester and unsubstituted saturated cyclic ester with respect to the nonaqueous solvent in the nonaqueous electrolyte is 3 vol% or more and 10 vol% or less”.
Here, it is unclear whether the later recitation of “a total content of chain ester and unsubstituted saturated cyclic ester” is intended to refer to the previously recited “at least one ester” (i.e. the “total content” refers to the total content of at least one of the chain ester and the unsubstituted saturated cyclic ester), or whether this limitation is intended to refer to the combination of a chain ester and an unsubstituted saturated cyclic ester, thereby further limiting the claim to require both a chain ester and an unsubstituted saturated cyclic ester. As such, Claim 1 and dependent Claims 2-3 and 5 are rejected as being indefinite. For the sake of compact prosecution, the first interpretation will be applied to the claim, since Applicant has not amended “at least one ester” to require both types of the recited esters. Additionally, such an interpretation appears consistent with the instant specification, wherein Examples 1-9 only include one “Ester X” added at a content between 3-10 vol% (Table 1; [0100, 0102, 0104-0105]).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shima et al. (US-20090253048-A1).
Regarding Claims 1-3 and 5, Shima discloses a nonaqueous electrolyte energy storage device (coin cell; [0457-0468]). Although Shima does not disclose a specific embodiment wherein the positive electrode comprises sulfur, Shima discloses that the positive electrode material can be a transition metal sulfide such as TiS and FeS [0379-0380].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the positive electrode to be a “sulfur-containing positive electrode” such as TiS and FeS with a reasonable expectation that such a selection would result in a successful energy storage device.
Shima further discloses (see annotation of Example III-2 in Table 6, below; Pg. 31):
a nonaqueous electrolyte containing a nonaqueous solvent [0462-0463] containing an unsaturated cyclic carbonate (i.e. “predetermined carbonate”; Example III-2),
wherein the nonaqueous electrolyte further contains at least one ester (i.e. “particular compound (3)”; Example III-2) selected from the group consisting of a chain ester and an unsubstituted saturated cyclic ester.
As seen in the annotation of Table 6 (below), Shima discloses that the ester is a chain ester as required by Claim 2, and that the chain ester is a fluorinated chain ester as required by Claim 3.
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Annotation of Table 6.
Although Shima does not disclose a specific embodiment wherein the total content of chain ester and unsubstituted saturated cyclic ester (i.e. chain ester; see 112(b) interpretation, above) is between 3-10 vol% as required by Claim 1 or between 4-9 vol% as required by Claim 5, Shima discloses that the ester is preferably included at an amount of 0.1% by weight or more and 10% by volume or less [0278]. Below the lower limit, the energy storage device will not exhibit sufficiently enhanced cycle characteristics, while above the upper limit an increased reactivity in the nonaqueous electrolytic solution will impair the cell characteristics of the energy storage device [0278].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have optimized the content of the ester in the nonaqueous electrolyte solution, including selecting a total content of the ester to be 4 vol% or more and 9 vol% or less, with a reasonable expectation that such a content of ester would result in a successful balance between enhancing cycle characteristics while preventing reactivity of the nonaqueous electrolytic solution (MPEP 2144.05, II). Such a content of ester falls within the range recited in Claim 1 and corresponds to the range recited in Claim 5.
Claim(s) 6-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shima et al. (US-20090253048-A1) in view of Ishikawa et al. (US-20200036043-A1; cited in IDS filed 10/25/2023).
Regarding Claims 6-8, Shima discloses a nonaqueous electrolyte energy storage device (coin cell; [0457-0468]). Shima discloses that any positive electrode active material capable of occluding and discharging lithium can be used [0377-0379]. Shima does not specifically teach that the positive electrode comprises a composite of sulfur and porous carbon.
Ishikawa teaches a similar nonaqueous electrolyte secondary battery [0010, 0014-0017, 0088]. Ishikawa teaches that a composite of porous carbon and sulfur can be successfully used as the positive electrode active material [0011-0012, 0020, 0096]. Advantageously, the use of a combination of sulfur with a carbon material is a known method to reduce resistance in batteries [0004].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the positive electrode material of Shima contain a composite of sulfur and porous carbon as taught by Ishikawa with a reasonable expectation that such a selection would result in a successful positive electrode material and a resulting battery with reduced resistance.
Shima further discloses (see annotation of Example III-2 in Table 6, below; Pg. 31):
a nonaqueous electrolyte containing a nonaqueous solvent [0462-0463] containing an unsaturated cyclic carbonate (i.e. “predetermined carbonate”; Example III-2),
wherein the nonaqueous electrolyte further contains at least one ester (i.e. “particular compound (3)”; Example III-2) selected from the group consisting of a chain ester and an unsubstituted saturated cyclic ester.
As seen in the annotation of Table 6 (below), Shima discloses that the ester includes the chain ester as required by Claim 7, and that the chain ester is a fluorinated chain ester as required by Claim 8.
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Annotation of Table 6.
Regarding Claims 9-10, modified Shima renders obvious all of the limitations as set forth above. Although Shima does not disclose a specific embodiment wherein the total content of the ester is between 3-10 vol% as required by Claim 9 or between 4-9 vol% as required by Claim 10, Shima discloses that the ester is preferably included at an amount of 0.1% by weight or more and 10% by volume or less [0278]. Below the lower limit, the energy storage device will not exhibit sufficiently enhanced cycle characteristics, while above the upper limit an increased reactivity in the nonaqueous electrolytic solution will impair the cell characteristics of the energy storage device [0278].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have optimized the content of the ester in the nonaqueous electrolyte solution, including selecting a total content of the ester to be 4 vol% or more and 9 vol% or less, with a reasonable expectation that such a content of ester would result in a successful balance between enhancing cycle characteristics while preventing reactivity of the nonaqueous electrolytic solution (MPEP 2144.05, II). Such a content of ester falls within the range recited in Claim 9 and corresponds to the range recited in Claim 10.
Claim(s) 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shima et al. (US-20090253048-A1) in view of Kim et al. (US-20040096750-A1; cited in IDS filed 10/25/2023).
Regarding Claims 11-13, Shima discloses a nonaqueous electrolyte energy storage device (coin cell; [0457-0468]). Shima discloses that any positive electrode active material capable of occluding and discharging lithium can be used [0377-0379]. As an example of a possible positive electrode active material, Shima discloses that composite oxides of lithium can be used [0379]. Shima does not specifically teach that the positive electrode contains an organic sulfur compound.
Kim teaches a similar nonaqueous electrolyte secondary battery [0013-0015, 0019, 0046]. Kim teaches that the cathode active material can be selected from a list of materials which include a lithium composite oxide and organo-sulfur [0019, 0054]. The Examiner notes that this establishes organo-sulfur as a substitutable alternative to a lithium composite oxide in positive electrode active materials.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the positive electrode active material of Shima to include an organo-sulfur material (reads on organic sulfur compound) instead of / in addition to the disclosed lithium composite oxide material, with a reasonable expectation that such a selection would result in a successful positive electrode active material (MPEP 2144.06; MPEP 2144.07).
Shima further discloses (see annotation of Example III-2 in Table 6, below; Pg. 31):
a nonaqueous electrolyte containing a nonaqueous solvent [0462-0463] containing an unsaturated cyclic carbonate (i.e. “predetermined carbonate”; Example III-2),
wherein the nonaqueous electrolyte further contains at least one ester (i.e. “particular compound (3)”; Example III-2) selected from the group consisting of a chain ester and an unsubstituted saturated cyclic ester.
As seen in the annotation of Table 6 (below), the ester includes a chain ester as required by Claim 12, and that the chain ester is a fluorinated chain ester as required by Claim 13.
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Annotation of Table 6.
Regarding Claims 14-15, modified Shima renders obvious all of the limitations as set forth above. Although Shima does not disclose a specific embodiment wherein the total content of the ester is between 3-10 vol% as required by Claim 14 or between 4-9 vol% as required by Claim 15, Shima discloses that the ester is preferably included at an amount of 0.1% by weight or more and 10% by volume or less [0278]. Below the lower limit, the energy storage device will not exhibit sufficiently enhanced cycle characteristics, while above the upper limit an increased reactivity in the nonaqueous electrolytic solution will impair the cell characteristics of the energy storage device [0278].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have optimized the content of the ester in the nonaqueous electrolyte solution, including selecting a total content of the ester to be 4 vol% or more and 9 vol% or less, with a reasonable expectation that such a content of ester would result in a successful balance between enhancing cycle characteristics while preventing reactivity of the nonaqueous electrolytic solution (MPEP 2144.05, II). Such a content of ester falls within the range recited in Claim 14 and corresponds to the range recited in Claim 15.
Response to Arguments
Applicant's arguments filed 09/03/2026 have been fully considered but they are not persuasive. Applicant has argued that Shima fails to teach or suggest that “a total content of chain ester and unsubstituted saturated cyclic ester with respect to the nonaqueous solvent in the nonaqueous electrolyte is 3 vol% or more and 10 vol% or less” (Remarks, Pgs. 5-6). Applicant submits that the mixture of ethylene carbonate (EC, unsubstituted saturated cyclic ester) and ethyl methyl carbonate (EMC, chain ester) must necessarily be 96 wt% since Table 6 shows that the amount of particular compound (3) is 2 wt% and the amount of vinylene carbonate (VC) is 2 wt% (Remarks, Pg. 6). Accordingly, Applicant submits that a total content of chain ester and unsubstituted saturated cyclic ester with respect to the nonaqueous solvent is 98 wt% (Remarks, Pg. 6).
The Examiner has carefully considered this argument, but respectfully does not find it persuasive. The Examiner notes that Claim 1 requires the nonaqueous electrolyte to contain a nonaqueous solvent containing an unsaturated cyclic carbonate and to further contain “at least one ester selected from the group consisting of a chain ester and an unsubstituted saturated cyclic ester”. As laid out in the previous rejection of record (see also rejection of Claim 1, above), the unsaturated cyclic carbonate is mapped to the “predetermined carbonate” (i.e. VC), and the chain ester is mapped to the “particular compound (3)”. The combination of EC and EMC is considered a part of the nonaqueous electrolyte solvent. Accordingly, Applicant’s argument wherein the EC is correlated to the unsubstituted saturated cyclic ester and EMC is correlated to the chain ester is not consistent with the rejections of record. Indeed, the Examiner notes that Claim 3 requires the chain ester to be a fluorinated chain ester, which is not consistent with Applicant’s mapping of EMC as the chain ester. Additionally, the Examiner notes that the claim language indicates that the electrolyte “contains” a carbonate and at least one ester. Such language is open-ended (see MPEP 2111.03, I) and is therefore open to the nonaqueous electrolyte comprising additional components in addition to “an unsaturated cyclic carbonate” and “at least one ester selected from a group consisting of a chain ester and an unsubstituted saturated cyclic ester”. Accordingly, as laid out in the rejections of record (see above), mapping the content of chain ester (i.e. particular compound (3)) to the “at least one ester selected from the group consisting of a chain ester and an unsubstituted saturated cyclic ester” in within the scope of the claim.
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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/D.C.N./Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 10/6/2026
