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 .
Status of the Claims
The amendment/remarks submitted 07/02/2026 have been entered and fully considered. Claims 1, 3-8, and 10-16 are pending. Claims 2 and 9 are cancelled. Claims 15-16 are new. Claims 1, 3, and 10 are amended. Claims 1, 3-8, and 10-16 are examined herein.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-8, and 10-16 are rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0178806 A1 (“Choi”).
Regarding claims 1, 8, and 15-16, Choi discloses a non-aqueous lithium secondary battery comprising a negative electrode, a positive electrode, and an electrolyte (inherently between the negative electrode and the positive electrode) ([0026], [0038]).
The positive electrode comprises a positive electrode active material ([0039]) and the negative electrode comprises a negative electrode active material ([0044]).
The electrolyte comprises a lithium salt ([0031]-[0032]), an organic solvent ([0027]-[0030]), and an electrolyte additive containing a substituent represented by Chemical Formula 1:
PNG
media_image1.png
132
159
media_image1.png
Greyscale
See [0018]-[0021] for a detailed description of the compound. Of note is that Q is oxygen or an unshared electron pair; R1 to R4 correspond to the claimed A, and the substituent is bonded various groups at the * position such as cyclosulfonylalkyl ([0019], [0021]).
Among the examples disclosed by Choi is Chemical Formula 25:
PNG
media_image2.png
128
118
media_image2.png
Greyscale
The compound represented by Chemical Formula 25 differs from the claimed Compound E only in the position of attachment on the cyclic sulfone. However, the claimed compounds would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because the chemical compounds have very close structural similarities (i.e. the chemical compounds are position isomers) and similar utilities (i.e. the chemical compounds are used for forming films on positive electrodes; Choi at [0024] and the instant specification as filed at [0044]). See In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979), In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977), and MPEP 2144.09.
Regarding claims 3 and 10, modified Choi discloses the electrolyte of claim 1 and the lithium secondary battery of claim 8. Given Choi’s disclosure of Chemical Formula 1, where Q is unshared electron pair ([0018]-[0021]) and the cyclosulfonylalkyl substituent bonded at the * position (Chemical Formula 25 and [0019], [0021]), Choi discloses a compound that differs from the claimed Compound A only in the position of attachment on the cyclic sulfone. However, the claimed compounds would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because the chemical compounds have very close structural similarities (i.e. the chemical compounds are position isomers) and similar utilities (i.e. the chemical compounds are used for forming films on positive electrodes; Choi at [0024] and the instant specification as filed at [0044]). See In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979), In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977), and MPEP 2144.09. Combining the two electrolyte additives would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention as the two are equivalents known for the same purpose. See MPEP 2144.06.
Regarding claims 4 and 11, modified Choi discloses the electrolyte of claim 1 and the lithium secondary battery of claim 8. Choi further discloses the electrolyte additive is included in an amount of 0.1 to 10% by weight based on 100% by weight in total of the battery electrolyte ([0025]).
Regarding claims 5 and 12, modified Choi discloses the electrolyte of claim 1 and the lithium secondary battery of claim 8. Choi further discloses the lithium salt is provided in a concentration of about 0.6 mol % to 2 mol % in the electrolyte ([0032]). The concentration of the lithium salt would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because the concentration disclosed by Choi overlaps the concentration as claimed. 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). Furthermore, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); and MPEP 2144.05.
Regarding claims 6 and 13, modified Choi discloses the electrolyte of claim 1 and the lithium secondary battery of claim 8. Choi further discloses examples of the lithium salt include LiPF6, LiBF4, LiCl, LiI, LiClO4, LiCF3SO3, LiAsF6, LiSbF6, LiAlCl4, CF3SO3Li, and (CF3SO2)2NLi ([0031]).
Regarding claims 7 and 14, modified Choi discloses the electrolyte of claim 1 and the lithium secondary battery of claim 8. Choi further discloses examples of the organic solvent include ethylene carbonate (EC), diethyl carbonate (DEC), ethylmethyl carbonate (EMC), dimethyl carbonate (DMC), propylene carbonate (PC), dipropyl carbonate (DPC), butylene carbonate, methylpropyl carbonate, and ethylpropyl carbonate ([0027]).
Response to Arguments
The rejection of claim 13 under 35 USC 112(b) as presented in the previous Office action is withdrawn. It is noted the issue identified by applicant regarding claims 13 and 14 was corrected after the issuance of the previous Office action. This rejection is properly made final.
Applicant's arguments filed 07/02/2026 have been fully considered but they are not persuasive.
It is noted that applicant characterizes Choi as disclosing an additive including a compound represented by Chemical Formula 1 where * is a binding position to various groups including the cyclic sulfonate.
PNG
media_image3.png
86
94
media_image3.png
Greyscale
Choi, cyclic sulfonate
However, it is noted that the rejection does not rely on Choi for a disclosure of cyclic sulfonate. Rather, Choi is relied upon for its teaching of the substituent at the * position of cyclosulfonylalkyl ([0019], [0021]) as shown, for example, in Chemical Formula 25.
Applicant argues that Choi, when studied as a whole, should actually go in a different direction from the use of a bicyclic additive of the type claimed. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Moreover, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2123.
Applicant argues “the O-alpha C bond in Choi's bicyclic sulfone is much more easily broken (e.g., more labile) compared to the O-beta C bond in Compound E of amended claim 1 such that Choi's bicyclic sulfone is more reactive, and has less chemical stability. Accordingly, the ordinary skilled artisan would not expect Choi's bicyclic sulfone to provide useful CEI film-forming effects and/or high-temperature stability, particularly when compared to Compound E of the present invention that has the more highly stable O-beta C bond.” Applicant’s argument is not persuasive as it is unsupported by evidence. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP 716.01(c) and 2145(I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JP 2017-208322 A discloses an electrolyte additive represented by the following general formula (I).
PNG
media_image4.png
135
240
media_image4.png
Greyscale
In the formula, R1 to R6 each independently represent a hydrogen atom, a fluorine atom, a C1-C4 alkyl group, a C1-C4 fluorinated alkyl group, a P(=O)(OR7)2 group, an OP(=O)(OR8)2 group, an OC(=O)R9 group, or an OS(=O)2R10 group; R7 to R10 represent a C1-C4 alkyl group, a C1-C4 fluorinated alkyl group, a C6-C12 aryl group, or a C6-C12 aryl halide group; and L represents an aliphatic divalent linking group or oxygen atom having C1-C8, in which at least one hydrogen atom may be substituted with a fluorine atom. However, at least one of R1 to R6 is a P(=O)(OR7)2 group or an OP(=O)(OR8)2 group (Abstract; [0010]-[0011]).
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Scott Carrico whose telephone number is (571)270-5504. The examiner can normally be reached Monday-Friday 9:15AM-6PM ET.
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, Barbara Gilliam can be reached at 571-272-1330. 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.
Robert Scott Carrico
Primary Examiner
Art Unit 1727
/Robert S Carrico/Primary Examiner, Art Unit 1727
Prosecution Insights