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 Amendment
Acknowledgment is made to applicant’s amendment of claims 1-2, 14-15, and 17-19 filed on 05/13/2026. Claims 4-6, and 16 have been canceled. Claim 21-24 are newly submitted claims. Accordingly, claims 1-3, 7-15, and 17-24 remain pending and are claims addressed and examined below.
Applicant’s amendments to claim 1 have overcome the 35 U.S.C. § 102 rejections previously set forth in the office action mailed on 02/24/2026.
Applicant’s amendments to claim 14 have overcome the restriction requirement previously set forth in the restriction mailed 12/08/2025.
Response to Arguments
Applicant's arguments filed 05/13/2026 have been fully considered but they are not persuasive. Applicant argues that “just because FEC is 5% to 90% in Kuwajima's solvent does not mean a ratio of FEC to DEC in a range from 1:1 to 1:9, particularly when an amount of DEC is not provided and the solvent includes other components. Additionally, Kuwajima provides a specific example of an electrolytic solution in paragraph 588. In this specific electrolytic solution, Kuwajima teaches mixing "fluoroethylene carbonate (FEC), dimethyl carbonate (DMC), and the fluorine-containing ether (I) . . . in a ratio of 20/40/40 (% by volume)." Paragraph 588. While this specific electrolytic solution has a ratio of FEC to DMC in a range from 1:1 to 1:9 and Kuwajima generically lists examples of non-fluorinated chain carbonate as including DMC and DEC (in paragraph 110), there is no suggestion or teaching in Kuwajima of substituting DMC in this specific electrolytic solution with DEC and then also maintaining the same % by volume and therefore the same ratio. As such, one skilled in the art would have not found it obvious, based on the teachings of Kuwajima, to substitute DMC in the specific electrolytic solution with DEC and also maintain the same % by volume as provided for the DMC”. However, claim 1 states that the electrolyte comprises the claimed solvents which does not preclude the solvent including other components. Additionally, since Kuwajima teaches DEC and DMC as suitable chain carbonates in ¶ 0110, it would be obvious to one of ordinary skill in the art to utilize DEC or DMC in the example taught by Kuwajima as there are no unpredictable results. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). As discussed in the rejection, Kuwajima teaches that the fluorinated cyclic carbonate may be included in an amount of 5% to 90% by volume (¶ 0108). Kuwajima also teaches that the non-fluorinated chain carbonate may be included in an amount of 10 to 90% by volume (¶ 0112). As mentioned earlier, in ¶ 0105, Kuwajima teaches FEC as an example of the fluorinated cyclic carbonate, and in ¶ 0110, Kuwajima teaches DEC as an example of the non-fluorinated chain carbonate. Kuwajima goes on to teach an example in which FEC, DMC and a fluorine containing ether are combined in a 20:40:40 ratio (¶ 0588). In ¶ 0110, Kuwajima teaches DMC, along with DEC, as a suitable chain carbonates that may be utilized in the electrolyte.
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.
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.
Claim(s) 1-3, 7-8, 10-15, 17-18, and 20-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuwajima et al. (US-20220328879-A1).
With regards to claim 1, Kuwajima teaches a battery cell (¶ 0021) comprising: C cathode electrodes comprising a cathode current collector and a cathode active material layer (¶ 0476). Kuwajima teaches a positive electrode which reads C being an integer greater than zero. Kuwajima also teaches A anode electrodes comprising an anode current collector and an anode active material layer (¶ 0531). Kuwajima teaches a negative electrode which reads on A being an integer greater than zero. Kuwajima teaches S separators (¶ 0558). Kuwajima teaches a separator which reads on S being an integer greater than zero. Kuwajima goes on to teach an electrolyte comprising phosphorus containing aids (¶ 0395 and ¶ 0404). Kuwajima teaches that these phosphorus containing compounds include tris(2,2,2- trifluoroethyl) phosphate (TFEP) and a TFEP derivative such as bis(2,2,2-trifluoroethyl)methyl phosphate (¶ 0404). Kuwajima goes on to teach that the electrolyte comprises a solvent that may include a fluorinated cyclic carbonate such as FEC (¶ 0041 - ¶ 0044 and ¶ 0105). Kuwajima teaches that the solvent may include a non-fluorinated chain carbonate such as DEC (¶ 0041 - ¶ 0043 and ¶ 0110). Kuwajima does not specifically teach that the electrode includes a ratio of FEC to DEC in a range from 1:1 to 1:9.
However, Kuwajima teaches that the fluorinated cyclic carbonate may be included in an amount of 5% to 90% by volume (¶ 0108). Kuwajima also teaches that the non-fluorinated chain carbonate may be included in an amount of 10 to 90% by volume (¶ 0112). As mentioned earlier, in ¶ 0105, Kuwajima teaches FEC as an example of the fluorinated cyclic carbonate, and in ¶ 0110, Kuwajima teaches DEC as an example of the non-fluorinated chain carbonate. Kuwajima goes on to teach an example in which FEC, DMC and a fluorine containing ether are combined in a 20:40:40 ratio (¶ 0588). In ¶ 0110, Kuwajima teaches DMC, along with DEC, as a suitable chain carbonates that may be utilized in the electrolyte.
Thus, it would have been obvious to one of ordinary skill in the art, at the time the invention was effectively filed to substitute the DMC in the example taught by Kuwajima with DEC in the 20:40:40 ratio taught by Kuwajima as they are both taught as suitable chain carbonates that may be included in the electrolyte and will yield no unpredictable results. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Through this modification, the electrolyte taught by modified Kuwajima will include FEC and DEC in a 20:40 ratio. This ratio falls with the claimed range of 1:1 to 1:9. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regards to claim 2, Kuwajima teaches the battery cell of claim 7, wherein the electrolyte further comprises lithium hexafluorophosphate (LiPF6) (¶ 0224 - ¶ 0225).
With regards to claim 3, Kuwajima teaches the battery cell of claim 2, wherein the LiPF6 comprises 0.5 molar LiPF6 (¶ 0236).
With regards to claim 7, Kuwajima teaches the battery cell of claim 1, wherein the electrolyte comprises 0.01wt% to 5wt% of the at least one of TFEP and the TFEP derivative which overlaps with the claimed range of 0.5wt% to 2.5wt% (¶ 0408). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regards to claim 8, Kuwajima teaches the battery cell of claim 1, wherein the TFEP derivative includes phosphate with one or more linear fluorinated side groups (¶ 0404; bis(2,2,2-trifluoroethyl)methyl phosphate).
With regards to claim 10, Kuwajima teaches the battery cell of claim 1, wherein the anode active material layer comprises graphite and one or more materials selected from a group consisting of silicon , silicon/carbon composite, silicon oxide, and lithium silicon oxide (¶ 0533 and ¶ 0536 - ¶ 0538).
With regards to claim 11, Kuwajima teaches the battery cell of claim 10, wherein the C cathode electrodes have an operating voltage greater than 4.2V (¶ 0494; 4.4V or higher).
With regards to claim 12, Kuwajima teaches the battery cell of claim 1, wherein the cathode active material layer includes one or more materials selected from a group consisting of lithium and manganese-rich (LMR) particles and lithium nickel manganese oxide (LNMO) particles (¶ 0477 - ¶ 0492).
With regards to claim 13, Kuwajima teaches the battery cell of claim 1, wherein the electrolyte further comprises LiPO2F2, (¶ 0462 and ¶ 0464). Kuwajima teaches that the LiPO2F2 is 0.001wt% to 20wt% of the electrolyte, which overlaps with the claimed range of 0.5wt% to 1.5wt% (¶ 0467).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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regards to claim 14, Kuwajima teaches a battery cell (¶ 0021) comprising: C cathode electrodes comprising a cathode current collector and a cathode active material layer (¶ 0476). Kuwajima teaches a positive electrode which reads C being an integer greater than zero. Kuwajima also teaches A anode electrodes comprising an anode current collector and an anode active material layer (¶ 0531). Kuwajima teaches a negative electrode which reads on A being an integer greater than zero. Kuwajima teaches S separators (¶ 0558). Kuwajima teaches a separator which reads on S being an integer greater than zero. Kuwajima goes on to teach an electrolyte comprising lithium hexafluorophosphate (LiPF6) (¶ 0224 - ¶ 0225). Kuwajima teaches that the electrolyte comprises a solvent that may include a fluorinated cyclic carbonate such as FEC (¶ 0041 - ¶ 0044 and ¶ 0105). Kuwajima also teaches that the solvent may include a non-fluorinated chain carbonate such as DEC (¶ 0041 - ¶ 0043 and ¶ 0110). Kuwajima goes on to teach that the electrolyte comprises phosphorus containing aids (¶ 0395 and ¶ 0404). Kuwajima teaches that these phosphorus containing compounds include tris(2,2,2- trifluoroethyl) phosphate (TFEP) and a TFEP derivative such as bis(2,2,2-trifluoroethyl)methyl phosphate (¶ 0404). Kuwajima does not specifically teach that the electrode includes a ratio of FEC to DEC in a range from 1:1 to 1:9.
However, Kuwajima teaches that the fluorinated cyclic carbonate may be included in an amount of 5% to 90% by volume (¶ 0108). Kuwajima also teaches that the non-fluorinated chain carbonate may be included in an amount of 10 to 90% by volume (¶ 0112). As mentioned earlier, in ¶ 0105, Kuwajima teaches FEC as an example of the fluorinated cyclic carbonate, and in ¶ 0110, Kuwajima teaches DEC as an example of the non-fluorinated chain carbonate. Kuwajima goes on to teach an example in which FEC, DMC and a fluorine containing ether are combined in a 20:40:40 ratio (¶ 0588). In ¶ 0110, Kuwajima teaches DMC, along with DEC, as a suitable chain carbonates that may be utilized in the electrolyte.
Thus, it would have been obvious to one of ordinary skill in the art, at the time the invention was effectively filed to substitute the DMC in the example taught by Kuwajima with DEC in the 20:40:40 ratio taught by Kuwajima as they are both taught as suitable chain carbonates that may be included in the electrolyte and will yield no unpredictable results. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Through this modification, the electrolyte taught by modified Kuwajima will include FEC and DEC in a 20:40 ratio. This ratio falls with the claimed range of 1:1 to 1:9. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regards to claim 15, Kuwajima teaches the battery cell of claim 14, wherein the LiPF6 comprises 0.5 molar LiPF6 (¶ 0236).
With regards to claim 17, Kuwajima teaches the battery cell of claim 14, wherein the electrolyte comprises 0.01wt% to 5wt% of the at least one of TFEP and the TFEP derivative which overlaps with the claimed range of 0.5wt% to 2.5wt% (¶0408). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 18, Kuwajima teaches the battery cell of claim 14, wherein the TFEP derivative includes phosphate with one or more linear fluorinated side groups (¶ 0404; bis(2,2,2-trifluoroethyl)methyl phosphate).
With regards to claim 20, Kuwajima teaches the battery cell of claim 14, wherein the electrolyte further comprises LiPO2F2, (¶ 0462 and ¶ 0464). Kuwajima teaches that the LiPO2F2 is 0.001wt% to 20wt% of the electrolyte, which overlaps with the claimed range of 0.5wt% to 1.5wt% (¶ 0467).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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regards to claim 21, Kuwajima teaches the battery cell of claim 14, wherein the anode active material layer comprises graphite and one or more materials selected from a group consisting of silicon , silicon/carbon composite, silicon oxide, and lithium silicon oxide (¶ 0533 and ¶ 0536 - ¶ 0538).
With regards to claim 22, Kuwajima teaches the battery cell of claim 21, wherein the cathode active material layer includes one or more materials selected from a group consisting of lithium and manganese-rich (LMR) particles and lithium nickel manganese oxide (LNMO) particles (¶ 0477 - ¶ 0492).
With regards to claim 23, Kuwajima teaches the battery cell of claim 14, wherein the C cathode electrodes have an operating voltage greater than 4.2V (¶ 0494; 4.4V or higher).
With regards to claim 24, Kuwajima teaches the battery cell of claim 14, wherein the cathode active material layer includes one or more materials selected from a group consisting of lithium and manganese-rich (LMR) particles and lithium nickel manganese oxide (LNMO) particles (¶ 0477 - ¶ 0492).
Claim(s) 9 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuwajima et al. (US-20220328879-A1) as applied to claim 8 and 18 above and in further view of Schmitz et al. (US-20190067734-A1).
With regards to claim 9, Kuwajima teaches the battery cell of claim 8. Kuwajima does not specifically teach that the one or more linear fluorinated side groups include one or more materials selected from a group consisting of tris(2,2,3,3,3-pentafluoropropyl)phosphate, bis(2,2,2-trifluoroethyl) methyl phosphonate, and methyl P,P-bis(2,2,2 trifluoroethyl)phosphonoacetate.
In a similar field of endeavor, Schmitz teaches a similar battery cell comprising organic phosphorous additives (¶0063). Similar to Kuwajima, Schmitz teaches tris(2,2,2-trifluoroethyl)phosphate as an additive (¶ 0064). Schmitz goes on to teach more organic phosphorus additives such as bis(2,2,2-trifluoroethyl) methyl phosphonate which overlaps with one of the claimed linear fluorinated side groups (¶ 0064). The bis(2,2,2-trifluoroethyl) methyl phosphonate additive taught by Schmitz inherently reads on the TFEP derivative including the bis(2,2,2-trifluoroethyl) methyl phosphonate side group as the additive comprises this side group. NOTE: Where … the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on “prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to substitute the additive taught by Kuwajima with the bis(2,2,2-trifluoroethyl) methyl phosphonate taught by Schmitz as there are no unpredictable results. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
With regards to claim 19, Kuwajima teaches the battery cell of claim 18. Kuwajima does not specifically teach that the one or more linear fluorinated side groups include one or more materials selected from a group consisting of tris(2,2,3,3,3-pentafluoropropyl)phosphate, bis(2,2,2-trifluoroethyl) methyl phosphonate, and methyl P,P-bis(2,2,2 trifluoroethyl)phosphonoacetate.
In a similar field of endeavor, Schmitz teaches a similar battery cell comprising organic phosphorous additives (¶0063). Similar to Kuwajima, Schmitz teaches tris(2,2,2-trifluoroethyl)phosphate as an additive (¶ 0064). Schmitz goes on to teach more organic phosphorus additives such as bis(2,2,2-trifluoroethyl) methyl phosphonate which overlaps with one of the claimed linear fluorinated side groups (¶ 0064). The bis(2,2,2-trifluoroethyl) methyl phosphonate additive taught by Schmitz inherently reads on the TFEP derivative including the bis(2,2,2-trifluoroethyl) methyl phosphonate side group as the additive comprises this side group. NOTE: Where … the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on “prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to substitute the additive taught by Kuwajima with the bis(2,2,2-trifluoroethyl) methyl phosphonate taught by Schmitz as there are no unpredictable results. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
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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/HUNSUYADOR MUGEESATU YUSIF/Examiner, Art Unit 1743
/GALEN H HAUTH/Supervisory Patent Examiner, Art Unit 1743
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