DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9-22-2025 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on 9-22-2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 10,615,455 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant's arguments filed 9-22-2025 have been fully considered but they are not persuasive. Applicant argues that Kim et al. does not teach the claimed invention because Kim et al. teaches that the separator comprises a porous substrate and a coating layer thereon. The Examiner agrees that having a coating layer provided on the porous substrate is preferable in the Kim et al. reference but as explained below, Kim et al. teaches a rechargeable lithium battery in [0052-0054], that according to embodiment where the battery (100) includes an electrode assembly (10) comprising a positive electrode, a negative electrode and a separator interposed between the positive and negative electrode and a battery case (20) and teaches in [0055], that in some embodiments, the electrode assembly (10) includes a positive electrode, a negative electrode facing the positive electrode and a separator interposed between the positive electrode and the negative electrode. The use of the word "some" in over half the paragraphs of Kim et al., not just one or two, seems to imply that features may be combined in different ways and that they're not a requirement and does not seem to imply or explicitly note that without a coating, it wouldn't function. In addition [0138], does note it is not limited to the examples shown. Therefore, the rejection of claims 1-7, 9, 18 and 20 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kim et al. (US 2014/0308564) remains.
Election/Restrictions
Applicant's election with traverse of a battery comprising a positive electrode, a negative electrode comprising a carbon alone and a nonaqueous electrolyte solution comprising an additive comprising: i) a compound represented by formula A, specifically a triallyl isocyanate, ii) a cyclic carbonate compound having a fluorine atom comprising monofluorocarbonate (MFEC) and further comprising iii) a cyclic carbonate having a carbon-carbon unsaturated bond comprising vinylene carbonate (VC) in the reply filed on 10-9-2024 is acknowledged. The traversal is on the ground(s) that there is no technical distinctness of the species. This is not found persuasive because the solvent comprises the first additive
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comprises an isocyanurate where each R represents optionally substituted organic groups having 1-20 carbon atoms but the invention is drawn to where at least one R is a hydrocarbon group having a carbon-carbon unsaturated bond such as chosen by Applicant’s species election.
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The solvent comprises a 2nd additive comprising a cyclic carbonate compound having a fluorine atom. This additive is not limited to the amount of carbon that can be included for the amount of fluorine atoms that can be present. The solvent includes a 3rd additive in which Applicant’s chose a vinyl carbonate or the species, a cyclic carbonate having a carbon-carbon unsaturated bond, but other species could have been present instead such as an acid anhydride, a vinyl sulfonate ester, an aromatic compound having 12 atoms or less or a linear carboxylate ester, etc. The requirement is still deemed proper and is therefore made FINAL.
Claims 10-12 and newly added claims 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10-9-2024.
Claim Objections
Claims 1-7, 9, 17, 22 and 18, 20 are objected to because of the following informalities: Claim 1 is objected because the claim should cite “an electrolyte salt;at least one additive comprising (i-a) a first cyclic carbonate comprising a carbon-carbon unsaturated bond; (i-b) an acid anhydride, …and/or (i-e) a linear carboxylate ester”. If these compounds are additives, they would be present in an amount less than 10% by mass such as 0.001-10% by mass, based on the total nonaqueous electrolyte solution and should be cited in the claim. Claim 18 is objected because the claim should cite “an electrolyte salt;at least one additive comprising (i-a) a cyclic carbonate comprising a carbon-carbon unsaturated bond; (i-b) an acid anhydride, …and/or (i-e) a linear carboxylate ester;”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-7 and 22 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kim et al. (US 2014/0308564). Kim et al. teaches a lithium battery comprising a positive electrode, a negative electrode, an electrolyte solution and a separator comprising a porous substrate. Kim et al. teaches in [0015, 0057, claim 3 and claim 16], wherein the porous substrate comprises a polyolefin resin. Kim et al. teaches a rechargeable lithium battery in [0029 and 0052-0054], that according to embodiment where the battery (100) includes an electrode assembly (10) comprising a positive electrode, a negative electrode and a separator interposed between the positive and negative electrode and a battery case (20). Kim et al. teaches in [0055], that in some embodiments, the electrode assembly (10) includes a positive electrode, a negative electrode facing the positive electrode and a separator interposed between the positive electrode and the negative electrode. [Thus teaching a separator consisting of a porous sheet of claims 1 and 18]. Kim et al. teaches in [0067-0069 and 0073], an electrolyte solution may include a lithium salt, a non-aqueous organic solvent and an additive may be a compound represented by Chemical Formula 1 where R1-R3 each represent a substituted or unsubstituted C2-C20 alkenyl group, etc. or specifically Chemical Formula 2.
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[teaches (iii) formula (A) claimed in claims 1 and 18]. Kim et al. teaches in [0041], that the term “alkenyl” refers to an acyclic hydrocarbon group of from 2 to 20 carbon atoms containing at least one carbon-carbon double bond such as 1-propenyl [CH2=CH-CH3] [teaching in Formula (A), at least one of R1 to R3 is a hydrocarbon group comprising a carbon-carbon unsaturated bond claims 1-2 and an allyl group as claimed in claims 3 and 18], 1-butenyl, etc. and in some cases the alkenyl may be substituted or unsubstituted. Kim et al. teaches on page 4, [0075], that the additive may further include fluoroethylene carbonate [teaching (ii), a second cyclic carbonate compound comprising a fluorine atom, claims 1 and 5], vinylethylene carbonate [teaching (i-a), a cyclic carbonate comprising a carbon-carbon unsaturated bond, claims 1 and 7], propane sultone, succinonitrile, adiponitrile or combination thereof. Kim et al. teaches in Example 1, a positive active material, a negative electrode comprising graphite [teaching claims 9 and 20] and an electrolyte comprising EC/PC/EMC and DEC [teaching solvents]; 1.15 M LiPF6 [teaching an electrolyte salt]; 10 wt% FEC [teaching (ii) a second carbonate compound comprising an EC comprising one F, claims 1, 5-6, 18] and 2 wt% Chemical Formula 2 [teaching claims 1, 4 and 18]. [Thus Example 1 teaches claims 1, 4-6, 9 and 18, 20]. Since Kim et al. teaches an electrolyte solution comprising (ii) the second cyclic carbonate compound comprising a fluorine atom which directly contacts the first and second face of the separator then inherently the compound forms an interface protective coating comprising the second cyclic carbonate (ii) on the polyolefin, polyamide, polyethersulfone or glass must also be obtained.
In addition, the presently claimed property of the compound forming an interface protective coating comprising the second cyclic carbonate (ii) on the polyolefin, polyamide, polyethersulfone or glass would have obviously been present once the Kim et al. product is provided. See MPEP 2122.01, I.
Kim et al. discloses in Example 1, the claimed invention teaching an electrolyte comprising an electrolyte salt, a nonaqueous solvent comprising 10 wt% of FEC [teaching 0.01-50 wt% claimed in claim 1 or comprising 0.1-30 wt% of the cyclic carbonate compound comprising a fluorine atom, claim 6 ] and 2 wt% of a compound represented by formula (A) and that the additive may further include fluoroethylene carbonate as well as, vinylethylene carbonate [teaching (i-a), a cyclic carbonate comprising a carbon-carbon unsaturated bond, claims 1, 7 and 18] but does specifically teach in the Examples where another cyclic carbonate comprising a cyclic carbonate comprising a carbon-carbon unsaturated bond such as vinylethylene carbonate is included. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use fluoroethylene carbonate and vinylethylene carbonate compounds in the electrolyte solution taught by Kim al. because it is prima facie obvious to combine two compositions each of which is taught by prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose. See MPEP 2144.06 Art Recognized Equivalence for the Same Purpose.
Claims 2-3, 18, 20 and 22 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kim et al. (US 2014/0308564). Kim et al. teaches in [0067-0069 and 0073], an electrolyte solution may include a lithium salt, a non-aqueous organic solvent and an additive may be a compound represented by Chemical Formula 1 where R1-R3 each represent a substituted or unsubstituted C2-C20 alkenyl group, etc. or specifically Chemical Formula 2.
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[teaches (iii) formula (A) claimed in claims 1 and 18]. Kim et al. teaches in [0041], that the term “alkenyl” refers to an acyclic hydrocarbon group of from 2 to 20 carbon atoms containing at least one carbon-carbon double bond such as 1-propenyl [CH2=CH-CH3] [teaching in Formula (A), at least one of R1 to R3 is a hydrocarbon group comprising a carbon-carbon unsaturated bond claims 1-2 and an allyl group as claimed in claims 3 and 18], 1-butenyl, etc. and in some cases the alkenyl may be substituted or unsubstituted. Kim et al. teaches on page 4, [0075], that the additive may further include fluoroethylene carbonate [teaching (ii), a cyclic carbonate compound comprising a fluorine atom, claims 1 and 5], vinylethylene carbonate [teaching (i), a cyclic carbonate comprising a carbon-carbon unsaturated bond, claims 1 and 7], propane sultone, succinonitrile, adiponitrile or combination thereof. Kim et al. teaches in Example 1, a positive active material, a negative electrode comprising graphite [teaching claims 9 and 20] and an electrolyte comprising EC/PC/EMC and DEC [teaching solvents]; 1.15 M LiPF6 [teaching an electrolyte salt]; 10 wt% FEC [teaching (ii) a second carbonate compound comprising an EC comprising one F, claims 5-6] and 2 wt% Chemical Formula 2 [teaching claim 4]. [Thus Example 1 teaches claims 1 and 4-9 and 18-20].Since Kim et al. teaches an electrolyte solution comprising (ii) the second cyclic carbonate compound comprising a fluorine atom which directly contacts the first and second face of the separator then inherently the compound forms an interface protective coating comprising the second cyclic carbonate (ii) on the polyolefin, polyamide, polyethersulfone or glass must also be obtained.
In addition, the presently claimed property of the compound forming an interface protective coating comprising the second cyclic carbonate (ii) on the polyolefin, polyamide, polyethersulfone or glass would have obviously been present once the Kim et al. product is provided. See MPEP 2122.01, I.
Kim et al. discloses in Example 1, the claimed invention teaching an electrolyte comprising an electrolyte salt, a nonaqueous solvent comprising 10 wt% of FEC [teaching 0.01-50 wt% claimed in claim 1 or comprising 0.1-30 wt% of the cyclic carbonate compound comprising a fluorine atom, claim 6 ] and a compound represented by formula (A) and that the additive may further include fluoroethylene carbonate [teaching (ii), a cyclic carbonate compound comprising a fluorine atom, claims 1 and 5], vinylethylene carbonate [teaching (i), a cyclic carbonate comprising a carbon-carbon unsaturated bond, claims 1 and 7] but does specifically teach in the Examples where another cyclic carbonate comprising a cyclic carbonate comprising a carbon-carbon unsaturated bond such as vinylethylene carbonate is included. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use fluoroethylene carbonate and vinylethylene carbonate compounds in the electrolyte solution taught by Kim al. because it is prima facie obvious to combine two compositions each of which is taught by prior art to be useful for the same purpose in order to form a third composition that is to be used for the very same purpose. See MPEP 2144.06 Art Recognized Equivalence for the Same Purpose. Kim et al. discloses the claimed invention teaching an electrolyte solution comprising the specified compound (iii), having the formula (A) where R1 to R3 each represent an organic group comprising 1 to 20 carbon atoms wherein at least one of R1 to R3 is a hydrocarbon group comprising a carbon-carbon unsaturated bond, a C2-C20 alkenyl group such as 1-propenyl group [CH3-CH=CH2] or methallyl group [CH3-C(CH3)=CH2] but does not specifically teach in the Examples wherein in formula (A), at least one of R1 to R3 is an allyl group [-CH2-HC=CH2] or methallyl group [CH3-C(CH3)=CH2] as claimed in claims 2-3, 17 and 18. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use an allyl group instead of a 1-propenyl group for R1-R3 because an allyl group (CH2=CHCH2-) differs only in the presence of the double bond location vs. a propenyl group (CH3CH=CH2) is isometric to the allyl group in differs only in the location of the double bond because one would expect therefore that these hydrocarbon groups would function in a similar way and give similar results. Kim et al. discloses the claimed invention teaching an electrolyte solution comprising 0.01-50 wt% of FEC, specifically teaching 10 wt% of FEC and 0.01 to 10 wt % of the compound of formula (A) but does not specifically teach the electrolyte solution comprising of FEC, compound A and a cyclic carbonate comprising specifically 0.001-10 wt% of a carbon-carbon unsaturated bond. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use FEC and vinylethylene carbonate in a total amount of 10 wt%, since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use FEC and vinylethylene carbonate in a total amount of 10 wt%, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Claims 1-7, 9, 17, 22 and 18, 20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kim et al. (US 2014/0308564) in view of Zhang et al. (US 2012/0088160). Kim et al. teaches a lithium battery comprising a positive electrode, a negative electrode, an electrolyte solution and a separator comprising a porous substrate. Kim et al. teaches in [0015, 0057, claim 3 and claim 16], wherein the porous substrate comprises a polyolefin resin. Kim et al. teaches a rechargeable lithium battery in [0029 and 0052-0054], that according to embodiment where the battery (100) includes an electrode assembly (10) comprising a positive electrode, a negative electrode and a separator interposed between the positive and negative electrode and a battery case (20). Kim et al. teaches in [0055], that in some embodiments, the electrode assembly (10) includes a positive electrode, a negative electrode facing the positive electrode and a separator interposed between the positive electrode and the negative electrode. [Thus teaching a separator consisting of a porous sheet of claims 1 and 18]. Since Kim et al. teaches an electrolyte solution comprising (ii) the second cyclic carbonate compound comprising a fluorine atom which directly contacts the first and second face of the separator then inherently the compound forms an interface protective coating comprising the second cyclic carbonate (ii) on the polyolefin, polyamide, polyethersulfone or glass must also be obtained.
In addition, the presently claimed property of the compound forming an interface protective coating comprising the second cyclic carbonate (ii) on the polyolefin, polyamide, polyethersulfone or glass would have obviously been present once the Kim et al. product is provided. See MPEP 2122.01, I.
Kim et al. discloses the claimed invention except for specifically teaching in the examples that no coating was applied on the porous polyolefin separator. Zhang et al. teaches in claims 16-17, and electrochemical device comprising a cathode; an anode comprising carbon; a porous separator and an electrolyte solution according to claim 1. Zhang et al. teaches in claim 1, an electrolyte solution comprising an alkali metal salt; a polar aprotic solvent and one or more stabilizing additives consisting of a bicyclic compound comprising succinic anhydride [teaching (i-b) an acid anhydride]. Zhang et al. teaches in the Examples, a battery comprising an anode comprising MCMB [carbon] and an electrolyte solution comprises LiPF6 in EC:EMC (3:7 wt%) and 1 wt% of an additive and that the results strongly indicate that the additive participated in the SEI formation process and informed a more stable passivation film on the electrodes surface. Zhang et al. teaches in claim 3, wherein at least one of the stabilizing additives is selected from the group consisting of a compound of formula I, where R1-R5 are independently a substituted or unsubstituted alkyl, alkenyl or alkynyl group, a substituted or unsubstituted ethylene carbonate group, a substituted or unsubstituted vinyl carbonate group, a substituted or unsubstituted vinyl ethylene carbonate group, etc. and teaches in dependent claim 11, specific additives that read on the compound of formula (A) cited in claim 1 [teaching (iii) a compound of formula (A)]. Zhang et al. teaches in claim 12, wherein the concentration of the additive is from 0.0005-50 wt%. Zhang et al. teaches in [0039] and claim 15, wherein the polar aprotic solvent can comprise ethylene carbonate (EC), ethyl methyl carbonate (EMC), bis(trifluoroethyl) carbonate, bis(pentafluoropropyl) carbonate, trifluoroethyl methyl carbonate, pentafluoroethyl methyl carbonate, heptafluoropropyl methyl carbonate, perfluorobutyl ethyl carbonate [teaching (ii) a second cyclic carbonate compound], etc. [teaching (ii) a 2nd cyclic carbonate compound comprising a fluorine atom], dimethylvinylene carbonate [teaching (i-a) a cyclic carbonate comprising a carbon-carbon unsaturated bond], etc. and mixtures of any two or more thereof. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to not have a separator coating because of the word choice of "some" stated by Kim et al. implies it is not required and that it would not fail or become non-functioning without it and alternatively Zhang et al. teaches examples of batteries that do not require a coating and it is more common to not have a separator coating than having a coating so the use of "some having a coating" leads to it being obvious or implied that the alternative to having the coating is not having any coating or anything else. Kim et al. discloses the claimed invention teaching an electrolyte solution comprising the specified compound (iii), having the formula (A) where R1 to R3 each represent an organic group comprising 1 to 20 carbon atoms wherein at least one of R1 to R3 is a hydrocarbon group comprising a carbon-carbon unsaturated bond, a C2-C20 alkenyl group such as 1-propenyl group [CH3-CH=CH2] or methallyl group [CH3-C(CH3)=CH2] but does not specifically teach in the Examples wherein in formula (A), at least one of R1 to R3 is an allyl group [-CH2-HC=CH2] or methallyl group [CH3-C(CH3)=CH2] as claimed in claims 2-3, 17 and 18. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use an allyl group instead of a 1-propenyl group for R1-R3 because an allyl group (CH2=CHCH2-) differs only in the presence of the double bond location vs. a propenyl group (CH3CH=CH2) is isometric to the allyl group in differs only in the location of the double bond because one would expect therefore that these hydrocarbon groups would function in a similar way and give similar results. Zhang et al. teaches in claim 3, wherein at least one of the stabilizing additives is selected from the group consisting of a compound of formula I,
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where R1-R3 are independently a substituted or unsubstituted alkyl, alkenyl or alkynyl group, a substituted or unsubstituted vinyl ethylene carbonate group, etc. and teaches in dependent claim 11, specific additives that read on the compound of formula (A) cited in claim 1 [teaching (iii) a compound of formula (A)] such as
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, etc. Zhang et al. teaches in claim 12, wherein the concentration of the additive is from 0.0005-50 wt%. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use 10 wt% of
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as the compound of formula (A) because Zhang et al. teaches that both these compound of formula (A) can be used in the electrolyte solution as explained above and one would expect therefore that these additive materials would function in a similar way and give similar results. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use 0.001-10 wt% of
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, since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use
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,since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Laura Weiner whose telephone number is (571)272-1294. The examiner can normally be reached 9 am-5 pm EST M-F.
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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.
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/LAURA S. WEINER/
Primary Examiner
Art Unit 1723
/Laura Weiner/Primary Examiner, Art Unit 1723