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 .
Response to Amendment
In response to the amendment received August 21, 2026:
Claim 16 has been added as per Applicant’s request. Claims 1-16 are pending.
The previous claim objections have been withdrawn in light of the amendment.
The previous 112 rejections have been withdrawn in light of the amendment.
The core of the previous prior art rejection is maintained with slight changes made in light of the amendment.
All changes to the rejection are necessitated by the amendment. Thus, the action is final.
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 1-15 is/are rejected under 35 U.S.C. 103 as being obvious over “Means of Using Cyclic Voltammetry to Rapidly Design a Stable DMC-Based Electrolyte for Na-Ion Batteries” (Cometto et al.) in view of US 2022/0190389 (Yushin et al.).
As to claim 1, Cometto et al. teach an electrolyte composition comprising at least one sodium salt (NaPF6; abs) dissolved in a solvent (EC-DMC; abs) and a combination of additives (vinylene carbonate (VC), sodium (oxalate) difluoro borate (NaODFB), and tris (trimethylsilyl) phosphite (TMSPi); abs), wherein:
- said solvent comprises at least one compound selected from the group consisting of ethylene carbonate, dimethyl carbonate, ethyl methyl carbonate, diethyl carbonate, propylene carbonate, a carboxylate ester, 4-fluorotoluene, 1,1,2,2- tetrafluoroethyl 2,2,3,3-tetrafluoropropyl ether, di-fluoro ethylene carbonate, ethyl difluoroacetate and diglyme (EC (ethylene carbonate) and DMC (dimethyl carbonate); abs) (note: Yushin et al. is relied upon as an evidentiary reference at this point to show that EC is the acronym for ethylene carbonate and DMC is the acronym for dimethyl carbonate (para 0100)), and
- the combination of additives comprises at least tris(trimethylsilyl)phosphite (TMSPi) (abs). Cometto et al. recognizes the use of succinonitrile as an additive (p A3724, paragraph bridging the left and right column).
Cometto et al. does not teach that the combination of additives includes succinonitrile.
However, Yushin et al., which recognizes Na-ion batteries, teach adding succinonitrle in about 0.05-10 wt% (para 0033, 0043, 0103). The motivation for adding succinonitrle in about 0.05-10 wt% is to do at least one of improve stability, increase maximum cell voltage, and increase performance at elevated/room/low temperature (para 0103). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to add succinonitrle in about 0.05-10 wt% is to do at least one of improve stability, increase maximum cell voltage, and increase performance at elevated/room/low temperature.
As to claim 2, Cometto et al. teach the amount of TMSPi ranges from 0.05 to 10 wt%, based on a total weight of the sodium salt and the solvent (1% (w/w) (within claimed range); caption of fig. 1; para bridging p A3726-3727).
As to claim 3, the combination renders obvious the amount of SN ranges from 0.1 to 5 wt%, based on a total weight of the sodium salt and the solvent, as the Yushin et al., relied upon to render obvious the inclusion of succinonitrile (SN) teaches an amount of 0.05-10 wt%. See the rejection to claim 1 for full details of the combination, incorporated herein but not reiterated herein for brevity’s sake. “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)” See MPEP §2144.05(I).
As to claim 4, Cometto et al. teach the combination of additives further comprises at least one additional additive chosen in the group comprising: vinylene carbonate, vinylethylene carbonate and sodium-difluoro(oxalato)borate (NaODFB) (vinylene carbonate (VC) and NaODFB) (abs).
As to claim 5, Cometto et al. teach the additional additive is NaODFB, and an amount of NaODFB ranges from 0.05 to 10 wt%, based on the total weight of the sodium salt and the solvent (0.5 % w/w (within claimed range); caption of fig. 1; para bridging p A3726-3727).
As to claim 6, Cometto et al. teach the additional additive comprises vinylene carbonate, vinylethylene carbonate, or a combination thereof, and wherein an amount of each of the vinylene carbonate and vinylethylene carbonate present in the electrolyte composition ranges from 0.1 to 10 wt%, based on a total weight of the sodium salt and the solvent (vinylene carbonate (VC) 3% w/w (within claimed range); caption of fig. 1; para bridging p A3726-3727).
As to claim 7, Cometto et al. teach the combination of additives comprises TMSPi, NaODFB, and vinylene carbonate (abs). Yushin et al., relied upon to render obvious the inclusion of succinonitrile (SN). See the rejection to claim 1 for full details of the combination, incorporated herein but not reiterated herein for brevity’s sake.
As to claim 8, Cometto et al. teach said solvent is a mixture of at least a first compound and a second compounds said first compound being ethylene carbonate and said second compound being selected from the group consisting of dimethyl carbonate, ethyl methyl carbonate, diethyl carbonate, propylene carbonate, a carboxylate ester, diglyme and 1,1,2,2-tetrafluoroethyl 2,2,3,3-tetrafluoropropyl ether (EC and DMC (abs); note: Yushin et al. is relied upon as an evidentiary reference at this point to show that EC is the acronym for ethylene carbonate and DMC is the acronym for dimethyl carbonate (para 0100)).
As to claim 9, Cometto et al. teach said mixture of at least a first compound and a second compound is a mixture of ethylene carbonate (EC) and dimethyl carbonate (DMC) in a 1:1 volume ratio (abs).
Cometto et al. do not teach that the mixture includes ethylene carbonate and propylene carbonate, preferably in a volume ratio of 1:1.
However, Yushin et al., teach that the use of various carbonates in suitable fractions can be used, specifically including ethylene carbonate (EC) and propylene carbonate (PC) for SEI stability (para 0100). Accordingly, the motivation for adding propylene carbonate to the electrolyte (in a 1:1 ratio with respect to ethylene carbonate) is to have an electrolyte that is suitable and improves the stability of the SEI (para 0100). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to add propylene carbonate in a 1:1 ratio with respect to ethylene carbonate in order to have an electrolyte that is suitable and improves the stability of the SEI. Regarding the ratio (of ethylene carbonate to propylene carbonate), the relative amounts of the solvents is/are result effective variable(s), as they effect stability of the anode SEI (para 0100). It would have been obvious to one having ordinary skill in the art at the time the invention was made to have propylene carbonate in a 1:1 ratio with respect to ethylene carbonate, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
As to claim 10, Cometto et al. teach the solvent further comprises a third compound said third compounds being selected from the group consisting of dimethyl carbonate, ethyl methyl carbonate, diethyl carbonate, propylene carbonate, a carboxylate ester, diglyme and 1,1,2,2-tetrafluoroethyl 2,2,3,3-tetrafluoropropyl ether (DMC (dimethyl carbonate)) (abs). (Note: The combination thus far is drawn towards adding propylene carbonate to the solvents in a 1:1 propylene carbonate:ethylene carbonate ratio. Accordingly, DMC is still present.)
As to claim 11, Cometto et al. teach the solvent further comprises a third compound said third compounds being selected from the group consisting of dimethyl carbonate, ethyl methyl carbonate, diethyl carbonate, propylene carbonate, a carboxylate ester such as methyl acetate and ethyl propionate, diglyme and 1,1,2,2-tetrafluoroethyl 2,2,3,3-tetrafluoropropyl ether (DMC (dimethyl carbonate)) (abs). (Note: The combination thus far is drawn towards adding propylene carbonate to the solvents in a 1:1 propylene carbonate:ethylene carbonate ratio. Accordingly, DMC is still present.)
As to claim 12, Cometto et al. teach said solvent is a mixture of at least a first and a second compositions, said first composition being ethylene carbonate and/or propylene carbonate, and said second composition being selected from the group consisting of dimethyl carbonate, ethyl methyl carbonate, diethyl carbonate, a carboxylate ester, diglyme, 1,1,2,2-tetrafluoroethyl 2,2,3,3-tetrafluoropropyl ether and mixtures thereof (EC and DMC (abs); note: Yushin et al. is relied upon as an evidentiary reference at this point to show that EC is the acronym for ethylene carbonate and DMC is the acronym for dimethyl carbonate (para 0100)).
As to claim 13, Comotto et al. teach the at least one sodium salt is NaPF6 (NaPF6; abs).
As to claim 14, Cometto et al. teach use of the electrolyte composition according to claim 1 (electrolyte of claim 1 set forth in the rejection to claim 1; see the rejection to claim 1 for full details, incorporated herein but not reiterated herein for brevity’s sake), as a non-aqueous liquid electrolyte in a Na-ion battery (abs; p A3724, right column, first para under “Result and Discussion” section).
As to claim 15, Cometto et al. teach a Na-ion battery comprising:
- at least one positive electrode comprising at least one positive electrode active material and a current collector (Na3V2(PO4O2F3 (NVPF) active material on an Al foil current collector) (p A3724, left column under “Electrochemical measurements of NVPF/C cells”);
- at least one negative electrode comprising a negative electrode active material (hard carbon) (p A3724, left column under “Electrochemical measurements of NVPF/C cells”); and
- at least one separator impregnated with a non-aqueous liquid electrolyte, said at least one separator being placed between said positive electrode and said negative electrode (fiberglass with electrolyte) (p A3724, left column under “Electrochemical measurements of NVPF/C cells”);
wherein said non-aqueous liquid electrolyte is an electrolyte composition as defined in any one of claim 1 (electrolyte of claim 1 set forth in the rejection to claim 1; see the rejection to claim 1 for full details, incorporated herein but not reiterated herein for brevity’s sake).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cometto et al. in view of Yushin et al., as applied to claim 1 above, further in view of US 2014/0065492 (Komaba et al.).
As to claim 16, Cometto et al. teach said solvent comprises at least ethylene carbonate (EC (ethylene carbonate) and DMC (dimethyl carbonate); abs; note: Yushin et al. is relied upon as an evidentiary reference at this point to show that EC is the acronym for ethylene carbonate and DMC is the acronym for dimethyl carbonate (para 0100)).
Cometto et al. do not teach the solvent comprises ethyl methyl carbonate.
However, Komaba et al. teach of a sodium battery, wherein electrolyte solvents include mixtures including ethylene carbonate, dimethyl carbonate, and ethyl methyl carbonate (abs; para 0109). The substitution for one electrolyte solvent (including ethylene carbonate and ethyl methyl carbonate) for another electrolyte solvent (including ethylene carbonate but not ethyl methyl carbonate) would yield the predictable result of acting as an electrolyte solvent, as the substituted components and their functions were known in the art (electrolyte solvent mixtures). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was effectively filed (as applicable to AIA applications) to substitute one electrolyte having ethylene carbonate and ethyl methyl carbonate for including ethylene carbonate but not ethyl methyl carbonate, as the substitution would yield the predictable result of acting as an electrolyte solvent, wherein the substituted components and their functions were known in the art (electrolyte solvent mixtures). “When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id . at ___, 82 USPQ2d at 1396.” See MPEP §2141(I).
Response to Arguments
Applicant's arguments filed August 21, 2026 have been fully considered but they are not persuasive.
Applicant argues that neither Yushin nor Cometto provide motivation, teaching, or suggestion for using a combination of SN and TMSPi, as Yushin separately teaches phosphorous or boron containing co-solvents (i.e. TMSPi) may be beneficial for improved stability and thus does not teach its combination with SN and suggests that Cometto’s electrolyte would already have the benefit of using SN.
Examiner respectfully disagrees. Yushin et al. recognizes using multiple co-solvents including SN and NMSPi separately (taught as separate substances in para 0103 and 0104). Additionally, Yushin et al. recognizes using multiple co-solvents (para 0103, 0104). Accordingly Yushin et al. renders obvious the claimed invention (SN with TMSPi) and does not detract from combining such co-solvents or suggest that using one co-solvent precludes the addition of another co-solvent. Additionally, Yushin et al. recognizes that the use of N-containing co-solvents introduces desirable geometry to the electrolyte design (para 0103). Thus, the argument is not persuasive, and the rejection of record is maintained.
Applicant argues Yushin is primary concerned with Li-ion batteries, while Cometto is concerned with Na-ion batteries, wherein the SEI chemistry is different from the different cell types, and no expectation of success is present in the combination.
Examiner respectfully disagrees, Yushin et al., which recognizes Na-ion batteries and sets similar electrolytes within both systems (para 0033, 0043). Thus Yushin et al. sets forth a reasonable expectation of success for the combination. Thus, the argument is not persuasive, and the rejection of record is maintained.
Applicant argues that Cometto teaches SN was removed for a different optimal electrolyte mixture.
Examiner respectfully disagrees. The recognition of a different optimal electrolyte mixture does not teach away from teaching of specific additives. Cometto’s optimal electrolyte mixture also does not include VC or PS. However, there is no teaching that SN by itself would be unsuitable, or would be unsuitable with the electrolyte mixture embodied within Cometto’s examples. Thus, the argument is not persuasive, and the rejection of record is maintained.
Applicant argues that example 3 (having comparative examples EC1 and EC2, and examples EC3 and EC4) shows unexpected results (SN – reducing gaseous by-products, TMSPi reducing formation of gaseous by-products), and is not drawn towards improved stability, maximum cell voltage and/or performance at elevated, room, or low temperatures.
Examiner respectfully disagrees. Regarding EC2 and EC3 (difference regarding including TMSPi); this does not meet MPEP 716.02(e) (requiring comparison with the closest prior art), as Competto includes TMSPi. Regarding EC3 and EC4 (difference regarding SN), it is unsure why evolution of gas is not encompassed by stability, as evolution of gas in an indication of reaction/instability. Thus, MPEP 716.02(b) (setting forth that Applicant has the burden to explain the proffered data) and MPEP 716/02(c) (setting forth that expected beneficial results are evidence of obviousness) are not met. Thus, the argument is not persuasive, and the rejection of record is maintained. Examiner suggests Applicant review MPEP 716.02 in full to see the burden required by Applicant to show unexpected results.
Applicant argues that the dependent claims are distinct from the prior art of record for the same reason as the independent claim.
Examiner respectfully disagrees. The rejection with respect to the independent claim has been maintained, and thus the rejections to the dependent claims are maintained as well.
Applicant argues that claim 7 is within example 3 and shows unexpected results therein.
Examiner respectfully disagrees. Allegations of unexpected results regarding example 3 have been addressed above. Those responses are incorporated herein but are not reiterated herein for brevity’s sake.
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 EUGENIA WANG whose telephone number is (571)272-4942. The examiner can normally be reached a flex schedule, generally Monday-Thursday 5:00 -7:30 (AM) and 9:45-3:15 ET.
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/EUGENIA WANG/Primary Examiner, Art Unit 1759
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