DETAILED CORRESPONDENCE
1. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Notice of Pre-AIA or AIA Status
2. 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
3. In response to the amendment received on 2/15/2026:
Claims 1-4 and 6-16 are pending in the current application. Claims 1 and 12-15 have been amended and Claim 5 is cancelled.
The affidavit under 37 CFR 1.132 filed 2/15/2026 is insufficient to overcome the rejection of claim 1 based upon 35 U.S.C. 103 as set forth in the last Office action because: there are not enough data points provided to show that the closest prior art’s ratio of lithium salts (2:33:1) would not give the same result as what is claimed. See Response to Arguments section below.
The previous rejection under 35 USC 112 is overcome in light of the amendment.
The cores of the previous prior art-based rejections have been maintained in light of the amendment and are reworded to reflect new claim limitations. All changes made to the rejection are necessitated by the amendment.
Claim Interpretation
4. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Rejections - 35 USC § 103
5. Claims 1-4 and 6-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kim US PG Publication 2022/0223911.
Regarding Claims 1 and 4, Kim discloses a lithium-based battery comprising a cathode comprising lithium manganese oxide, lithium cobalt oxide lithium nickel manganese oxide, lithium iron phosphate (paras 0096-0099), an electrolyte including a lithium hexafluorophosphate (LiPF6) first salt and at least one second salt such as lithium bis(fluorosulfonyl)imide (LFSI) wherein a molar ratio of LiPF6 to the second lithium salt (LiFSI), is 0.7:0.3 (para 0134), which is 2.33 : 1 (just outside of the claimed range of 2:1 to 2:3), with a concentration of the salts together being 1M in a specific example (para 0134), and that generally, the amount of the lithium salts together are 1.0 M to 3.0 M which is optimized to form a film to prevent corrosion of the electrode surface (para 0040) and which overlaps the claimed range of 1.5 M to 5.0 M, wherein the electrolyte further comprises a lithium salt additive such as lithium difluorophosphate (LiDFP) (meeting Claim 4) in an amount from 1:2 to 1:10 weight ratio with a first additive which is included in the electrolyte in an amount of 0.1% to 5% of the total weight of the electrolyte (paras 0054-0063) and so the amount of LiDFP would be included in a range such as 0.05-2.5 wt% of the electrolyte (falling within the claimed range of 0.1% to 5.0%), and Kim further discloses an anode selected from graphite, silicon, (paras 0109--0110), and a porous polymer separator (para 0116) (see entire disclosure and especially sections cited above).
Given that values of the claimed amounts of electrolyte components are within or overlapping what is taught by Kim, they are all considered obvious since “[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). 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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range."). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Regarding the limitation “wherein the lithium-based battery maintains a stable voltage plateau at a discharge rate of 10C or more”, the skilled artisan would expect the battery of Kim to have the stability of voltage plateau at the claimed discharge rate since when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). As explained below in the “response to arguments” section, the value taught by Kim is close enough to the claimed lower endpoint of molar ratio that the properties of Kim’s battery are expected to be the same as claimed.
Regarding Claims 2 and 3, Kim teaches that the concentration of LiPF6 in the electrolyte is 0.7M, which is between 0.5M and 1.5M and that the concentration of LiTSI is 0.3M, which is between 0.1M and 3.0M (para 0134).
Regarding Claims 6-10, Kim teaches wherein the electrolyte further comprises a solvent such as ethylene carbonate, diethyl carbonate, dimethyl carbonate (para 0045) and exemplifies the use of ethylene carbonate and ethyl methyl carbonate in a volume ratio of 3:7, equivalent to 30 vol% ethylene carbonate and 70 vol% ethyl methyl carbonate, which falls in the claimed ranges (see at least para 0134). Although Kim does not specifically disclose a volume percentage when using diethyl carbonate or dimethyl carbonate, the skilled artisan would have found it obvious to include these linear carbonates in the same amount exemplified for ethyl methyl carbonate since they are the same types of carbonates and would have similar properties and a similar effect. 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.).
Regarding Claims 11-14, Kim teaches wherein the electrolyte further comprises an additive (third additive) such as 1,3-propane sultone, fluoroethylene carbonate, and vinylene carbonate (paras 0077-0079) and included in a preferable amount of 0.05 wt% to 5 wt% (para 0088) which almost exactly matches (and therefore anticipates) the claimed ranges.
Regarding Claim 15, Kim teaches that one of the electrolyte solvents can be propylene carbonate and teaches that “at least one organic solvent” is used as the cyclic carbonate-based organic solvent in the solvent mixture to provide the right viscosity (para 0044). Therefore, the skilled artisan would find that a small amount of propylene carbonate included in the solvent mixture is within the scope of teaching, and would find it obvious to include e.g. 0.1 to 10 wt% or less of propylene carbonate in the electrolyte of Kim because “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Calling the propylene carbonate included in the electrolyte solvent mixture “an additive” is merely an intended use. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
6. Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kim US PG Publication 2022/0223911, as applied to Claim 1, and further in view of Takami US PG Publication 2010/0297490.
Regarding Claim 16, Kim discloses the claimed lithium-based battery as described in the rejection of Claim 1, above, which is incorporated herein in its entirety. Kim describes the porous polymer separator but does not discuss the porosity thereof and therefore does not disclose wherein the separator as a porosity of about 30% to 90%. However, in the same field of endeavor of lithium-based battery design, Takami discloses a porous polymer separator having high porosity with the advantage that the separator can retain a sufficient amount of nonaqueous electrolyte such that the battery can have high output performance and can include inorganic oxide filler which helps improve strength in reduce internal resistance (see e.g. para 0077). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the porous polymer separator of Kim to have a porosity of e.g. 60% to 80% (which falls within the claimed range of 30% to 90%) because Takami teaches that this separator can retain a sufficient amount of nonaqueous electrolyte such that the battery can have high output performance and can include inorganic oxide filler which helps improve strength in reduce internal resistance.
Response to Arguments
7. Applicant's arguments with respect to the claims are based on the claims as amended. The amended claims have been addressed in the new rejection above. Further, Applicant's arguments filed February 15, 2026 have been fully considered but they are not persuasive.
Arguments directed at claim 1
8. Applicant argues that the molar ratio taught by Kim of LiPF6 to the at least one second lithium salt of 2.33:1 is entirely outside of the claimed range and there is no motivation in Kim for a person having ordinary skill in the art to shift the ratio into the specific range of the claimed invention to solve high-rate discharge issues, and that the criticality of the range is demonstrated by the unexpected and non-linear results shown in Fig 2 and Table 2 of the instant disclosure.
The Office has carefully considered this argument and respectfully disagrees. It is submitted that, as stated in the previous rejection and repeated above, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). The data provided in the instant disclosure and in the declaration under 37 C.F.R. §1.132 gives a molar ratio of 5:1 LiPF6 to LiTFSI and then jumps to 2:1 LiPF6 to LiTFSI, which does not provide any information about the criticality of the claimed lower limit of the range of molar ratios of 2:1. The fact that the molar ratio (5:1) resulting in only “marginal improvement” as seen in the E1 example (as stated in the submitted affidavit) is part of the originally claimed range of “preferable” molar ratios 15:1 to 1:6 raises the question of the criticality of the lower endpoint of 2:1.
To put it another way, there are no values of capacity retention provided for experimental conditions between 5:1 and 2:1 to show at what point the desired effect actually takes place, which leads to the conclusion that the close but not overlapping molar ratio of Kim, 2.33:1 would be expected to provide substantially the same result as Applicant’s invention in the absence of evidence to the alternative.
Accordingly, such an argument is not found to be persuasive, and the rejection of record is maintained.
Conclusion
9. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA S PARK whose telephone number is (571)270-3597. The examiner can normally be reached M-Th 5:30a to 3p Eastern Time.
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, Ula Tavares-Crockett can be reached on 5712721481. 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.
/LISA S PARK/Primary Examiner, Art Unit 1729