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 .
Response to Arguments
Applicant's arguments filed 4/23/2026 have been fully considered but they are not persuasive. Applicant amended the claims with added limitations and are rejected under new grounds of rejection with a newly found prior art.
Claim Rejections - 35 USC § 103
3. 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.
4. 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.
5. 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.
6. Claim(s) 1, 7-11 and 13-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wen et al (CN 110176630 A as cited on IDS dated 3/27/24; see IDS provided translation for citations) in view of Ren et al (US 20230007900 A1).
Regarding claim 1, Wen discloses an electrolyte suitable for use in a lithium ion battery comprising an electrolyte. Wen teaches that electrolyte comprises a non-aqueous organic solvent, a lithium salt, and an additive comprising a fluorinated ketone
[paragraph 0009, 0028, 0046-0047, 0050, 0068, 0091, 0096, 0112, 0115, 0181]. Wen remains silent about an Ag salt in the electrolyte. However, it is known in the art to utilize Ag salt such as AgF in order to inhibit the reaction of positive electrode active substances and electrolytes, suppress the phenomenon of sudden reduction in battery capacity [paragraph 0121]. Therefore, the claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art (KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007)) and an ordinarily skilled artisan would have recognized such a substitution without undue experimentation and with a reasonable expectation of success.
Regarding claims 7-9, Wen teaches that the fluorinated ketone is represented by Chemical Formula
PNG
media_image1.png
180
411
media_image1.png
Greyscale
wherein R10 and R11 are each independently selected from C1 to C20 fluoroalkyl [paragraph 0088-0092].
Regarding claim 10, Wen teaches that the fluorinated ketone is represented by Chemical Formula
PNG
media_image2.png
228
466
media_image2.png
Greyscale
[paragraph 0177].
Regarding claim 11, Wen teaches that the fluorinated ketone is about 1.0 wt% to about 10.0 wt% in amount based on a total weight of the electrolyte [paragraph 0093].
Regarding claim 13, Ren teaches that the Ag salt is about 0-30%, preferably 0.8-15% of the total weight of the additive [paragraph 0121].
Regarding claim 14, Wen teaches that the fluorinated ketone is about 1.0 wt% to about 10.0 wt% in amount based on a total weight of the electrolyte [paragraph 0093]. And Ren teaches that the Ag salt is about 0-30%, preferably 0.8-15% of the total weight of the additive [paragraph 0121].
Regarding claims 15-18, Wen teaches that the additive further comprises a compound represented by Chemical Formula
PNG
media_image3.png
166
379
media_image3.png
Greyscale
[paragraph 0184] and the amount to be used is obvious to skilled artisan in the art.
Regarding claim 19, Wen teaches that the fluorinated ketone is about 1.0 wt% to about 10.0 wt% in amount based on a total weight of the electrolyte [paragraph 0093]. And Xu teaches that the Ag salt is about 0.1 wt% to about 10.0 wt% in amount based on a total weight of the electrolyte [paragraph 0033; Table 1].
Therefore, the additive is about 1.0 wt% to about 30.0 wt% in amount based on a total weight of the electrolyte.
Regarding claim 20, Wen teaches that the electrolyte further comprises one or more other additives, and the one or more other additives comprise at least one selected from the group consisting of vinylene carbonate (VC), fluoroethylene carbonate (FEC), lithium tetrafluoroborate (LiBF4) [paragraph 0043].
Regarding claims 21-22, Wen teaches a rechargeable lithium battery comprising a positive electrode comprising a positive electrode active material; a negative electrode comprising a negative electrode active material; a separator between the positive electrode and the negative electrode; and the electrolyte of claim 1 [paragraph 0113 -0158]. Since the battery of Wen is similar to the claimed battery, it is expected that
the negative electrode would have a density of greater than or equal to about 1.6 g/cc.
7. Claim(s) 2-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wen et al (CN 110176630 A) in view of Ren et al (US 20230007900 A1) as applied in claim 1 and further in view of Segawa et al (US 20060068283 A1).
Regarding claims 2-6, Wen remains silent about the fluorinated ketone represented by a formula as claimed. However, Segawa teaches a non-aqueous electrolytic solution comprising a fluorinated ketone represented by a formula
PNG
media_image4.png
178
444
media_image4.png
Greyscale
wherein Rf1 and Rf2 each independently represents a fluorinated aliphatic group, or Rf1 and Rf2 together form a cyclic group, Q represents a fluorinated or non-fluorinated alkylene group or a bond, and n represents 0 or 1.
Segawa teaches that the fluorinated ketone exhibits effective properties of flame resistance, non-combustibility, and self-extinguishing fire characteristics. In addition, it provides an effective electrolytic solutions for electrochemical energy devices [Abstract; paragraph 0003-0011, 0019-0023; claim 1-3].
It is within the technical grasp of a skilled artisan to provide R values with different fluoroalkylene groups and atoms and would have been obvious.
Therefore, the claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art (KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007)) and an ordinarily skilled artisan would have recognized such a substitution without undue experimentation and with a reasonable expectation of success.
Double Patenting
8. 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.
9. Claims 1-11 and 13-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of copending Application No. 18487986 (reference application). Although the conflicting claims are not identical, they are not patentably distinct from each other because the claimed subject matter in the instant patent application encompasses the claimed subject matter as recited in the ‘986 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
10. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUHAMMAD S SIDDIQUEE whose telephone number is (571)270-3719. The examiner can normally be reached Monday - Friday, 8:00 am - 5:00 pm.
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, Tong Guo can be reached at (571) 272-3066. 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.
/MUHAMMAD S SIDDIQUEE/Primary Examiner, Art Unit 1723
Prosecution Insights