21DETAILED 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
In response to the amendment received on March 27, 2026:
Claims 1-6 and 9-22 are pending. Claims 7-8 have been canceled as per Applicant’s request;
The specification objection set forth in the previous Office Action is withdrawn in light of the amendment;
The claim objection set forth in the previous Office Action is withdrawn in light of the amendment;
The 112 rejections set forth in the previous Office Action are withdrawn in light of the amendment;
The 103 rejections set forth in the previous Office Action stand as modified in light of the amendment.
Claim Objections
Applicant is advised that should claim 21 be found allowable, claim 22 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 21, dependent upon claim 1, includes the same scope of invention as recited in independent claim 22 as follows:
When claim 21 is read including the limitations of base claim 1 claim 21 reads as a secondary battery comprising:
a positive electrode plate; and
a non-aqueous electrolyte;
wherein:
the positive electrode plate comprises a positive electrode collector and a positive active material layer disposed on at least one surface of the positive electrode collector;
the non-aqueous electrolyte comprises a compound shown in Formula 1, in which X and Y each independently represent a fluorine atom, or partially fluorinated or perfluorinated group selected from C1-C10 alkyl group, C2-C10 alkenyl group, C2-C10 alkynyl group, C6-C8 aryl group, C1-C10 alkoxy group, C2-C10 alkenoxy group, C2- C10 alkynloxy group, and C6-C8 aryloxy group, and only one of X and Y represents a fluorine atom;
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based on a total mass of the non-aqueous electrolyte, the compound shown in Formula 1 is present in an amount of A1% by mass, the positive electrode collector has a thickness of H mm, the positive active material layer has an elongation at break of Q%, the positive active material layer has a compaction density of P g/cm3, and the secondary battery satisfies: H of Roy is 12mm which falls in the range from 4 to 14, A1 of Example 2 is 1%, thus A1/H is 1/12 or 0.083 which falls in the range from 0.0015 to 0.20, Q+A1 is from 1 to 4, and P/A1 is 3.6g/cc (3.6g/cm3)/1 which is 3.6 which falls in the range from 2 to 340 (Claim 1).
Claim 21 adds:
wherein X and Y satisfy one of following conditions: one of X and Y represents a fluorine atom and the other represents at least one selected from the group consisting of partially fluorinated or perfluorinated groups of:Cl-C5 alkyl, C2- C5 alkenyl, C2-C5 alkynyl, phenyl, phenoxy, Cl-C5 alkoxy, C2-C5 alkenoxy and C2-C5 alkynyloxy; and
one of X and Y represents a fluorine atom and the other represents at least one selected from the group consisting of partially fluorinated or perfluorinated groups of: methyl, ethyl, n- propyl, isopropyl, n-butyl, tert-butyl, vinyl, propyl, allyl, butadienyl, ethynyl, propynyl, phenyl, methoxy, ethoxy, propoxy, ethylenoxy, propenyloxy, ethynyloxy, propynyloxy, and phenoxy.
Claim 22 reads as a secondary battery comprising:
a positive electrode plate; and
a non-aqueous electrolyte;
wherein:
the positive electrode plate comprises a positive electrode collector and a positive active material layer disposed on at least one surface of the positive electrode collector;
the non-aqueous electrolyte comprises a compound shown in Formula 1, in which X and Y each independently represent a fluorine atom, or partially fluorinated or perfluorinated group selected from C1-C10 alkyl group, C2-C10 alkenyl group, C2-C10 alkynyl group, C6-C8 aryl group, C1-C10 alkoxy group, C2-C10 alkenoxy group, C2- C10 alkynloxy group, and C6-C8 aryloxy group, and at least one (but further limited to only one of based on subsequent language of claim 22) of X and Y represents a fluorine atom;
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Notably, the electrolyte in example 2 is LiDFOB (difluoro(oxalate)borate) which reads on the general formula 1 above and specific disclosed formula H4 of the instant invention.
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LiDFOB (Roy) Formula H4 of the instant invention (LiDFOB)
based on a total mass of the non-aqueous electrolyte, the compound shown in Formula 1 is present in an amount of A1% by mass, the positive electrode collector has a thickness of H mm, the positive active material layer has an elongation at break of Q%, the positive active material layer has a compaction density of P g/cm3, and the secondary battery satisfies: H of Roy is 12mm which falls in the range from 4 to 14, A1 of Example 2 is 1%, thus A1/H is 1/12 or 0.083 which falls in the range from 0.0015 to 0.20, Q+A1 is from 1 to 4, and P/A1 is 3.6g/cc (3.6g/cm3)/1 which is 3.6 which falls in the range from 2 to 340 and
wherein X and Y satisfy one of following conditions:
one of X and Y represents a fluorine atom and the other represents at least one selected from the group consisting of partially fluorinated or perfluorinated groups of:Cl-C5 alkyl, C2- C5 alkenyl, C2-C5 alkynyl, phenyl, phenoxy, Cl-C5 alkoxy, C2-C5 alkenoxy and C2-C5 alkynyloxy; and
one of X and Y represents a fluorine atom and the other represents at least one selected from the group consisting of partially fluorinated or perfluorinated groups of: methyl, ethyl, n- propyl, isopropyl, n-butyl, tert-butyl, vinyl, propyl, allyl, butadienyl, ethynyl, propynyl, phenyl, methoxy, ethoxy, propoxy, ethylenoxy, propenyloxy, ethynyloxy, propynyloxy, and phenoxy.
It appears then that the scope of new claims 21 and 22 are identical to each other and therefore held to be duplicate claims.
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 1-6 and 9-22 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 is indefinite as the claims each first recite that X and Y each independently represent a genus of materials including fluorine (claim 1, ll. 7-8) but then recite that only one of X and Y represent fluorine (claim 1, ll. 11-12) which is a narrower limitation in the presence of a previously recited broader limitation to the same feature.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation X and Y can be fluorine, and the claim also recites only one of X or Y can be fluorine which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2-6 and 9-21 are dependent upon claim 1 and rejected for the same reasons.
Claim 22 is indefinite as the claims each first recite that X and Y each independently represent a genus of materials including fluorine (claim 22, line 8) and at least one of X and Y represents a fluorine atom (claim 22, ll. 11-12) but then claim 22 recites that X and Y satisfies one of two conditions (claim 22, lines 22+) and for each of those conditions one of X and Y is fluorine and the other is not. Therefore, claim 22 appears to recite a broad limitation and narrower limitation in the same claim with respect to what X and Y can encompass and is indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 22 recites the broad recitation X and Y can be fluorine, and the claim also recites only one of X or Y can be fluorine which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 1-4, 9-10, 12-17 and 21-22 are rejected under 35 U.S.C. 103 as obvious over Roy et al. (U.S. Patent Application Publication No. 2018/0212281) in view Yamaguchi et al. (U.S. Patent Application Publication No. 2009/0092892) and Zeng et al. (U.S. Patent Application Publication No. 2020/0161630).
As to claims 1 and 2, Roy discloses a secondary battery comprising:
a positive electrode plate; and
a non-aqueous electrolyte;
wherein:
the positive electrode plate comprises a positive electrode collector (aluminum foil in Example 2) and a positive active material layer (lithium transition metal oxide in Example 2) disposed on at least one surface of the positive electrode collector;
the non-aqueous electrolyte comprises a compound shown in Formula 1, in which X and Y each independently represent a fluorine atom, or partially fluorinated or perfluorinated group selected from C1-C10 alkyl group, C2-C10 alkenyl group, C2-C10 alkynyl group, C6-C8 aryl group, C1-C10 alkoxy group, C2-C10 alkenoxy group, C2- C10 alkynloxy group, and C6-C8 aryloxy group, and only one of X and Y represents a fluorine atom;
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Notably, the electrolyte in example 2 is LiDFOB (difluoro(oxalate)borate) which reads on the general formula 1 above and specific disclosed formula H4 of the instant invention.
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LiDFOB (Roy) Formula H4 of the instant invention (LiDFOB)
based on a total mass of the non-aqueous electrolyte, the compound shown in Formula 1 is present in an amount of A1% by mass, the positive electrode collector has a thickness of H mm, the positive active material layer has an elongation at break of Q%, the positive active material layer has a compaction density of P g/cm3, and the secondary battery satisfies: H of Roy is 12mm which falls in the range from 4 to 14, A1 of Example 2 is 1%, thus A1/H is 1/12 or 0.083 which falls in the range from 0.0015 to 0.20, Q+A1 is from 1 to 4, and P/A1 is 3.6g/cc (3.6g/cm3)/1 which is 3.6 which falls in the range from 2 to 340.
As to claim 22, Roy discloses a secondary battery comprising:
a positive electrode plate; and
a non-aqueous electrolyte;
wherein:
the positive electrode plate comprises a positive electrode collector (aluminum foil in Example 2) and a positive active material layer (lithium transition metal oxide in Example 2) disposed on at least one surface of the positive electrode collector;
the non-aqueous electrolyte comprises a compound shown in Formula 1, in which X and Y each independently represent a fluorine atom, or partially fluorinated or perfluorinated group selected from C1-C10 alkyl group, C2-C10 alkenyl group, C2-C10 alkynyl group, C6-C8 aryl group, C1-C10 alkoxy group, C2-C10 alkenoxy group, C2- C10 alkynloxy group, and C6-C8 aryloxy group, and at least one (but further limited to only one of based on subsequent language of claim 22) of X and Y represents a fluorine atom;
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Notably, the electrolyte in example 2 is LiDFOB (difluoro(oxalate)borate) which reads on the general formula 1 above and specific disclosed formula H4 of the instant invention.
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LiDFOB (Roy) Formula H4 of the instant invention (LiDFOB)
based on a total mass of the non-aqueous electrolyte, the compound shown in Formula 1 is present in an amount of A1% by mass, the positive electrode collector has a thickness of H mm, the positive active material layer has an elongation at break of Q%, the positive active material layer has a compaction density of P g/cm3, and the secondary battery satisfies: H of Roy is 12mm which falls in the range from 4 to 14, A1 of Example 2 is 1%, thus A1/H is 1/12 or 0.083 which falls in the range from 0.0015 to 0.20, Q+A1 is from 1 to 4, and P/A1 is 3.6g/cc (3.6g/cm3)/1 which is 3.6 which falls in the range from 2 to 340.
wherein X and Y satisfy one of following conditions: one of X and Y represents a fluorine atom and the other represents at least one selected from the group consisting of partially fluorinated or perfluorinated groups of:Cl-C5 alkyl, C2- C5 alkenyl, C2-C5 alkynyl, phenyl, phenoxy, Cl-C5 alkoxy, C2-C5 alkenoxy and C2-C5 alkynyloxy; and one of X and Y represents a fluorine atom and the other represents at least one selected from the group consisting of partially fluorinated or perfluorinated groups of: methyl, ethyl, n- propyl, isopropyl, n-butyl, tert-butyl, vinyl, propyl, allyl, butadienyl, ethynyl, propynyl, phenyl, methoxy, ethoxy, propoxy, ethylenoxy, propenyloxy, ethynyloxy, propynyloxy, and phenoxy.
Roy does not explicitly teach of the elongation at break of the current collector (Q) and relationship of Q+A1 in (see claims 1 and 22) or Q+A1 ranging from 1.5 to 3.5 (see claim 2).
As to the elongation of break of the positive electrode current collector (Q) and the relationship of Q+A1 is from 1 to 4, Roy teaches of the same aluminum foil current collector having the same relative thickness as in the instant invention, 12mm.
Zeng further teaches of a positive electrode wherein the positive electrode current collector foil of the same thickness (para. [0089] with specific examples of 12mm and was noted to have an elongation at break ranging from 0.8-4% (para. [0091]) with specific example at para. [0112] of a 12mm thick aluminum foil having an elongation at break of 3%.
Zeng teaches that elongation of break has a great influence on battery safety. If this parameter is too large, safety is decreased. If this parameter is too small, the collector is prone to breaking and also reduces the quality or safety of the battery. In order to improve safety of the battery, the elongation at break of the aluminum foil positive current collector should be in a range from 0.8-4%.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the aluminum foil current collector of Roy to further have a an elongation at break ranging from 0.8-4%, including specific values in this range as taught by Zeng since it would have provided the predictable benefit of improved battery safety. In doing such, the last parameter of claim 1, Q% and Q+A1 ranging from 1 to 4 would have been obviated noting that Roy teaches of A1 being 2% or less, such as 1% in Example 2 as discussed above and Zeng teaches of Q being 0.8-4, with 3% specifically. Thus the range of Q+A1 would be (0.8-4)+2 at a maximum or 2.8-6 when LiDFOB is 2% and 1.8-5 when LiDFOB is 1% as in Example 2. As can be seen the amount of LiDFOB of 1% in Example 2 in combination with suitable elongation at break taught by Zeng (0.8-4%) defines a range from 1.8-5 which significantly overlaps with the ranges of claims 1 and 2 as it pertains to Q+A1. 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 USPQ 2d 1934 (Fed. Cir. 1990). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
As to claims 1 and 21-22, Roy does not teach where one of X and Y represents F and the other of X and Y is not F but a genus of partially fluorinated or perfluorinated groups, such groups including at least one species of claims 21 and 22:
As noted above Roy recognized the use of LiDFOB where X and Y are both F, which read on an inventive species. Further modifying the structure of Roy where only one attachment is F and the other attachment is a fluorinated group that is not simply F is not a novel contribution over the prior art as shown by Yamaguchi.
Yamaguchi recognized that an array of electrolyte compounds including LiDFOB and compounds having the similar structure to LiDFOB can be equivalently employed in a battery system. For example, Yamaguchi recognized both the use of LiDFOB (para. [0076], formula 1):
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and a similar homolog (para. [0076], formula 9):
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As noted by this reference the substitution of F (formula 1) with a fluorinated alkyl group (CF3) was shown to be suitable equivalent additive compositions, thereby obviating the claimed limitation of claims 1 and 21-22 which recite only on of X and Y is F and the other can be CF3. CF3 reads on at least one species of claims 1, 21 and 22 when the other of X and Y is F as shown in Formula 9 of Yamaguchi above.
The closer the physical and/or chemical similarities between the claimed species or subgenus and any exemplary species or subgenus disclosed in the prior art, the greater the expectation that the claimed subject matter will function in an equivalent manner to the genus. See, e.g., Dillon, 919 F.2d at 696, 16 USPQ2d at 1904 (and cases cited therein). See, e.g., Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also Deuel, 51 F.3d at 1558, 34 USPQ2d at 1214 (“Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties.”). See MPEP § 2144.08 and 2144.09, incorporated herein.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute LiDFOB
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of Roy with other similar homologs including
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as taught by Yamaguchi since it would have provided an additive having similar performance characteristics provided by similar structures whereby both additive were disclosed by Yamaguchi as having provided similar improvements to a non-aqueous electrolyte. Both the additive of Roy and that of Yamaguchi would be recognized as suitable alternative electrolyte additives and one of ordinary skill in the art would have appreciated such substitutions given the close physical and/or chemical similarities between the claimed species or subgenus and any exemplary species or subgenus disclosed in the prior art, absent unexpected results.
As to claim 3, P is 3.6 para. [0114] of Example 2.
As to claim 4, the electrolyte comprises LiPF6 (Example 2, para. [0116]).
As to claim 9, the electrolyte comprises a cyclic carbonate such as EC (ethylene carbonate, Example 2, para. [0116]).
As to claim 10, the electrolyte comprises FEC (fluoroethylene carbonate, Example 2, para. [0116]).
As to claims 12 and 13, as discussed above, the electrolyte additive of LiDFOB in Example 2, para. [0116] reads on 12(1) of claim 12 and H4 of claim 13.
As to claim 14, as discussed above the positive electrode current collector is aluminum foil (para. [0114]).
As to claim 15, the batteries of Roy are further employed in a battery module (para. [0102]).
As to claim 16, the batteries of Roy are further employed in a battery pack (para. [0103]).
As to claim 17, the battery of Roy is included in a device (para. [0104]).
As to claim 18, the amount of LiDFOB in example 2 is 1wt%. The electrolyte is 1.15 M LiPF6 in EC/FEC/EMC/DMC (7/7/46/40). For an electrolyte solution, the approximate mass per liter of LiPF6 is ~170g in a 1.15M LiPF6 electrolyte mixture in Example 2. Thus for the electrolyte solution where LiDFOB at 1%wt in the electrolyte solution to a significantly higher amount of LiPF6 (~170g in a 1.15M electrolyte solution or about 14-15%) would expectedly fall in the range from 5 to 650.
Claims 5 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Roy et al. (U.S. Patent Application Publication No. 2018/0212281) in view of Yamaguchi et al. (U.S. Patent Application Publication No. 2009/0092892) and Zeng et al. (U.S. Patent Application Publication No. 2020/0161630) as applied to claim 1 above in view of Lim et al. (U.S. Patent Application Publication No. 2019/0356021).
Roy teaches in Example 2 of the main lithium salt being LiPF6 (para. [0116]).
Roy does not teach of the electrolyte comprising a combination of lithium hexafluorophosphate (LiPF6) and lithium bis(fluorosulfonyl)imide (LiFSI, claim 5) or when LiPF6 and LiFSI are present in addition to LiDFOB, the ratio of the amount of LiPF6 to LiDFOB is from 5 to 650 (claim 19).
Roy teaches that the lithium salt can be LiPF6 as well as other electrolytes including (FSO2)2NLi which is also understood as lithium bis(fluorosulfonyl)imide (LiFSI).
As to an electrolyte wherein LiPF6 also includes LiFSI together, Roy teaches that the lithium salt can include both (FSO2)2NLi (LiFSI) and LiPF6 together (para. 0036]).
In addition Lim teaches that LiFSI along with LiPF6 and LiDFOB can effectively be mixed together to provide an electrolyte having improved charge and discharge characteristics, high-temperature storage and life characteristics and increased reversible capacity.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by providing an electrolyte wherein the salts include a mixture of LiFSI along with LiPF6 and LiDFOB as taught by Lim since it would have provided for an electrolyte having improved charge and discharge characteristics, high-temperature storage and life characteristics and increased reversible capacity. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). MPEP § 2144.07.
As to claim 19, modified Roy in view of Lim teaches of an electrolyte wherein LiPF6 also includes LiFSI together, Roy teaches that the lithium salt can include both (FSO2)2NLi (LiFSI) and LiPF6 together (para. 0036]). In addition Lim teaches that LiFSI along with LiPF6 and LiDFOB can effectively be mixed together to provide an electrolyte having improved charge and discharge characteristics, high-temperature storage and life characteristics and increased reversible capacity. Thus the electrolyte of modified Roy includes LiPF6 (A2), LiDFOB (A1) and LiFSI (A3).
The amount of LiDFOB in example 2 is 1wt%. The electrolyte is 1.15 M LiPF6 in EC/FEC/EMC/DMC (7/7/46/40). For an electrolyte solution, the approximate mass per liter of LiPF6 is ~170g in a 1.15M LiPF6 electrolyte mixture in Example 2. Thus for the electrolyte solution where LiDFOB at 1%wt in the electrolyte solution to a significantly higher amount of LiPF6 (~170g in a 1.15M electrolyte solution or about 14-15%) would expectedly fall in the range from 5 to 650. Thus satisfying A2/A1 from 5 to 650 as recited in one of the relationships of claim 19.
Claims 6 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Roy et al. (U.S. Patent Application Publication No. 2018/0212281) in view of Yamaguchi et al. (U.S. Patent Application Publication No. 2009/0092892) and Zeng et al. (U.S. Patent Application Publication No. 2020/0161630) as applied to claim 5 above in view of Tamura et al. (U.S. Patent Application Publication No. 2019/0312306).
Roy teaches in Example 2 of the main lithium salt being LiPF6 (para. [0116]).
Roy does not teach of a second electrolyte salt including lithium difluorophosphate (claim 6) or where this salt is present in a total amount of A4% by mass and A4 is 5 or less (claim 20).
As to claim 6, Tamura teaches of an electrolyte mixture comprising LiPF6, Li[(FSO2)2N] and LiPO2F2 (lithium difluorophosphate; abstract, examples). Tamura teaches that the addition of LiPO2F2 was shown to improve battery performance including improved energy density, charging rate characteristics. As to claim 20, the amount of LiPO2F2 is in a preferable amount from 0.0005-7 mass%, preferably 0.5 to 5 mass% (para. [0038]) with specific examples in Table 1 of 1 mass%.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrolyte to include an additional salt of LiPO2F2 in a preferably range from 0.5 to 5 mass% as taught by Tamura since it would have improved battery performance including, but not limited to, improved energy density, charging rate characteristics.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Roy et al. (U.S. Patent Application Publication No. 2018/0212281) in view of Yamaguchi et al. (U.S. Patent Application Publication No. 2009/0092892) and Zeng et al. (U.S. Patent Application Publication No. 2020/0161630) as applied to claim 1 above in view of CN ‘563 (CN102324563A) or Saruwatari et al. (U.S. Patent Application Publication No. 2020/0112011).
Roy does not teach of the electrolyte further including a moisture scavenger comprising at least one of hexamethyldisilazane and tris(trimethyl)phosphate.
Adding a moisture scavenger such as hexamethyldisilazane to an electrolyte having LiPF6, was known in the art as a moisture scavenger (CN ‘563, abstract and examples). Similarly, other moisture scavengers, such as tris(trimethyl)phosphate (Saruwatari, para, [0019]) can be used for the same purpose.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrolyte of Roy by further including a moisture scavenger comprising at least one of hexamethyldisilazane and tris(trimethyl)phosphate as taught by either CN ‘563 or Saruwatari since it would have predictably provided good moisture scavenging to the LiPF6 based electrolyte of Roy.
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). MPEP § 2144.07.
Response to Arguments
Applicant's arguments filed March 27, 2026 have been fully considered but they are not persuasive.
Applicant has amended the claims to preclude the species where X and Y are both F and argues concurrently that neither Roy or Zeng disclose the non-aqueous electrolyte additive of at least claims 1 and 22 where only one of X or Y is F and the other is a partially fluorinated or perfluorinated group.
This argument is not persuasive in light of the additional teachings of Yamaguchi above which obviate the compound as discussed above.
As noted above Roy recognized the use of LiDFOB where X and Y are both F, which read on an inventive species. Further modifying the structure of Roy where only one attachment is F and the other attachment is a fluorinated group that is not simply F is not a novel contribution over the prior art as shown by Yamaguchi.
Yamaguchi recognized that an array of electrolyte compounds having the similar structure to LiDFOB can be equivalently employed in a battery system. For example, Yamaguchi recognized both the use of LiDFOB (para. [0076], formula 1):
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and a similar homolog (para. [0076], formula 9):
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As noted by this reference the substitution of F (formula 1) with a fluorinated alkyl group (CF3) was shown to be suitable equivalent additive compositions, thereby obviating the claimed limitation of claims 1 and 21-22 which recite only on of X and Y is F and the other can be CF3. CF3 reads on at least one species of claims 1, 21 and 22 when the other of X and Y is F as shown in Formula 9 of Yamaguchi above.
As discussed above, the closer the physical and/or chemical similarities between the claimed species or subgenus and any exemplary species or subgenus disclosed in the prior art, the greater the expectation that the claimed subject matter will function in an equivalent manner to the genus. See, e.g., Dillon, 919 F.2d at 696, 16 USPQ2d at 1904 (and cases cited therein). See, e.g., Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also Deuel, 51 F.3d at 1558, 34 USPQ2d at 1214 (“Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties.”). See MPEP § 2144.08 and 2144.09, incorporated herein.
Therefore, the Examiner maintains that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute LiDFOB
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of Roy with other similar homologs including
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as taught by Yamaguchi since it would have provided an additive having similar performance characteristics provided by similar structures whereby both additive were disclosed by Yamaguchi as having provided similar improvements to a non-aqueous electrolyte. Both the additive of Roy and that of Yamaguchi would be recognized as suitable alternative electrolyte additives and one of ordinary skill in the art would have appreciated such substitutions as predictable equivalent homologs/alternatives given the close physical and/or chemical similarities between the claimed species or subgenus and any exemplary species or subgenus disclosed in the prior art, absent unexpected results.
Accordingly, the claims remain rejected for at least those reasons above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGG CANTELMO whose telephone number is (571)272-1283. The examiner can normally be reached Mon-Thurs 7am to 5pm.
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/GREGG CANTELMO/Primary Examiner, Art Unit 1725
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