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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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) 1-4 and 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Manthiram (US-20220181618-A1).
Claim 1: Manthiram ‘618 teaches the invention may be used in a rechargeable lithium-based battery [¶ 0050], an electrolyte solution [¶ 0008, 0085], said electrolyte solution comprising a non-aqueous organic solvent [¶ 0074], said electrolyte solution comprising a lithium salt [¶ 0074], said electrolyte solution comprising an additive [¶ 0074], a positive electrode comprising a positive electrode active material [¶ 0006], a negative electrode comprising a negative electrode active material [¶ 0008], said additive comprises tetrafluoro borate (LiBF4) [¶ 0074], and said positive electrode active material comprises a cobalt-free lithium nickel manganese-based oxide [¶ 0012, 0050].
Manthiram ‘618 does not explicitly teach a combination of non-aqueous solvent other than ethylene carbonate, LiBF4, and another lithium salt. However, it does teach that “Example electrolytes may be or include an organic solvent, such as ethylene carbonate, dimethyl carbonate, or diethyl carbonate…” [¶ 0074]. It would have been obvious at the time of filing the application to have chosen dimethyl carbonate as the electrolyte, LiBF4, and other lithium salts because they are each taught as suitable electrolytes. A person of ordinary skill in the Art could have combined these electrolytes, as the Manthiram suggests, prior to the filing of the application to obtain the present disclosure.
Claim 2: Manthiram ‘618 teaches the limitations of claim 1, as discussed above. It teaches “Example electrolytes may be or include an organic solvent, such as ethylene carbonate, dimethyl carbonate, or diethyl carbonate…” [¶ 0074].
Manthiram ‘618 does explicitly teach the non-aqueous organic solvent is composed of chain carbonate alone.
It would be obvious to a person of ordinary skill in the Art that a permutation of the electrolyte solution disclosed in Manthiram ‘618 may be one that only contains dimethyl carbonate or only contains diethyl carbonate. This permutation would have a non-aqueous organic solvent that was composed of chain carbonate alone.
Claim 3: Manthiram ‘618 teaches the limitations of claim 2, as discussed above. It further teaches dimethyl carbonate [¶ 0074], which is a chain carbonate that is represented by Chemical Formula 1 in the present application.
Claim 4: Manthiram ‘618 teaches the limitations of claim 1, as discussed above. It further teaches a solvent mixture of ethylene carbonate and ethylmethyl carbonate [¶ 0118], and that “Example electrolytes may be or include an organic solvent, such as ethylene carbonate, dimethyl carbonate, or diethyl carbonate…” [¶ 0074].
Manthiram ‘618 does not explicitly teach the non-aqueous organic solvent being a mixture of two or more solvents selected from the group dimethyl carbonate (DMC), diethyl carbonate (DEC), dipropyl carbonate (DPC), methylpropyl carbonate (MPC), ethylpropyl carbonate (EPC), and ethylmethyl carbonate (EMC).
It would be obvious to a person of ordinary skill in the Art to replace ethylene carbonate with dimethyl carbonate or diethyl carbonate to obtain the present disclosure. See MPEP § 2144.06 (I) for combining known equivalents for the same purpose.
Claim 8: Manthiram ‘618 teaches the limitations of claim 1, as discussed above. It further teaches vinylene carbonate (VC) [¶ 0085].
Claim 9: Manthiram ‘618 teaches the limitations of claim 1, as discussed above. It further teaches the cobalt-free lithium nickel manganese-based oxide comprises a lithium composite oxide represented by Chemical Formula 3 [¶ 0009, 0015].
Claim 10: Manthiram ‘618 teaches the limitations of claim 9, as discussed above. It further teaches the cobalt-free lithium nickel manganese-based oxide comprises a lithium composite oxide represented by Chemical Formula 3-1 [¶ 0009, 0015].
Claim 11: Manthiram ‘618 teaches the limitations of claim 10, as discussed above. It further teaches wherein Chemical Formula 3-1 is constrained by x1 is 0.6 ≤ x1 ≤0.79, y1 is 0.2 ≤ y1 ≤0.39, and z1 is 0.01 ≤ z1 < 0.1 [¶ 0012, 0088].
Claim 12: Manthiram ‘618 teaches the limitations of claim 1, as discussed above. It further teaches the negative electrode active material comprises graphite [¶ 0008].
Claim 13: Manthiram ‘618 teaches the limitations of claim 1, as discussed above. It further teaches the rechargeable lithium battery having an upper charging limit voltage of 4.4-5V [¶ 0010].
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Manthiram (US-20220181618-A1) as applied to claim 1 above, and further in view of Matsui (JP2009163971A).
Claim 5: Manthiram ‘618 teaches the limitations of claim 1, discussed above.
Manthiram ‘618 does not teach the non-aqueous organic solvent comprising ethylmethyl carbonate (EMC) and dimethyl carbonate (DMC) in a volume ratio of about 0:100 to about 50:50.
Matsui ‘971 teaches the non-aqueous organic solvent comprising ethylmethyl carbonate (EMC) and dimethyl carbonate (DMC) in a volume ratio of about 0:100 to about 50:50 [¶ 0008; Table 1], that a combination of DMC to EMC is preferable [¶ 0016], and that using the present invention with the disclosed electrolyte solution improves cycle efficiency of the negative electrode [¶ 0064].
It would be obvious to a person of ordinary skill in the Art to modify Manthiram ‘618 to have the non-aqueous organic solvent of Matsui ‘971 containing the specified volume ratio to obtain the present disclosure in order to improve cycle efficiency of the negative electrode, as suggested by Matsui.
Claim(s) 6 & 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Manthiram (US-20220181618-A1) as applied to claim 1 above, and further in view of Nicolás Aguado (US-20240266601-A1).
Claims 6-7: Manthiram ‘618 teaches the limitations of claim 1, discussed above.
Manthiram ‘618 does not teach the additive of Claim 1 being included in about 0.05 to about 5.0 parts by weight based on 100 parts by weight of the electrolyte solution.
Nicolás Aguado ‘601 teaches a lithium-metal secondary battery [¶ 0016] and that “in the state of the art there are several examples in which LiDFOB (or similar low soluble Li salts) is used as additive (<5 wt %)” [¶ 0085].
It would have been obvious for a person of ordinary skill in the Art to modify Manthiram ‘618 to change LiBF4 for LiDFOB at about 5.0 (or less) parts by weight based on 100 parts by weight of the electrolyte solution for a rechargeable lithium battery because it is well known in the art to use LiDFOB or a similar low soluble lithium salt as an additive in less than 5 wt%, as stated by Nicolás Aguado, to obtain the current disclosure. LiDFOB and LiBF4 are known equivalents in the Art serving the same purpose. For more on substitution of equivalents known for the same purpose, see MPEP § 2144.06 (II).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/457,153 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the same matter expressed in differing permutations and/or are explicit recitings of the copending application’s claim(s).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 09/08/2026 have been fully considered but they are not persuasive.
Applicant’s argument of unexpected results is not persuasive because the data filed that yielded alleged unexpected results are not commensurate with the claims. Applicant has stated that the provided Examples 1-8 do not include ethylene carbonate while Manthiram and various Comparative Examples had [Remarks pg. 7, para 3]. However, the language of Claim 1 covers any battery wherein the electrolyte solution comprises a non-aqueous organic solvent further comprising less than about 5 wt% of ethylene carbonate based on the total weight of the non-aqueous organic solvent. Therefore, the unexpected results do not account for the breadth of the claims as written.
Additionally, as indicated in Manthiram [¶ 0074], the electrolyte may include an organic solvent such as ethylene carbonate, dimethyl carbonate, or diethyl carbonate. An embodiment may include an electrolyte that uses an organic solvent other than ethylene carbonate such that said electrolyte contains 0 wt% ethylene carbonate.
Given that Manthiram may use a non-aqueous solvent comprising less than about 5 wt% of ethylene carbonate (within the bounds of the Claim language as currently written), Manthiram may use an organic solvent with 0 wt% ethylene carbonate (similar to Examples identified by Applicant), and because the unexpected results Applicant identified do not use an organic solvent containing ethylene carbonate in any amount greater than 0 wt% (as indicated in Claim 1), Examiner maintains the 103 rejections of Claims 1-13.
Applicant’s arguments that Claims 2-13 are patentable by virtue of dependence, either direct or indirect, on Claim 1 is found not persuasive because the rejection of Claim 1 is maintained by Examiner for the reasons provided above.
Applicant’s request for the Double Patenting rejection of claims 1-13 to be dropped in view of the above arguments is denied. The above arguments were found to not be persuasive. The rejection of claims 1-13 for obviousness Double Patenting are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 Chris Gagnon whose telephone number is (571)270-0417. The examiner can normally be reached Tuesday through Friday 8:00am-5:00pm (ET) and Saturday 8:00am-12:00pm (ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER L GAGNON/Examiner, Art Unit 1712
/MICHAEL B CLEVELAND/Supervisory Patent Examiner, Art Unit 1712
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