DETAILED ACTION
The applicant’s amendment filed on July 27, 2026 was received. Claims 3 and 7 were cancelled. Claims 1, 2, 4-6 and 8-20 were amended. New claims 21-24 were added.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 .
Claim Rejections - 35 USC § 102
Claims 1 and 8-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawakami et al. (hereinafter “Kawakami”) (U.S. Pub. No. 2014/0038062 A1, already of record).
Regarding claims 1, 8-14, 18 and 22-24, Kawakami teaches a nonaqueous electrolytic solution secondary battery comprising a negative electrode, a positive electrode, and a nonaqueous electrolytic solution (see paragraph 522).
The positive electrode active material may comprise a lithium transition metal composite oxide having a median particle size d50 of, for example, 1 µm (see paragraphs 706, 707, 722 and 723).
The nonaqueous electrolytic solution which contains at least two lithium salts and a nonaqueous solvent capable of dissolving these salts (paragraph 220). The first lithium salt is lithium fluorosulfonate salt (see paragraph 221). The second lithium salt (a lithium salt) may be an inorganic lithium salt such as LiPF6 (see paragraph 228).
Here, it is noted the closed claim language of claims 1 and 8 for the lithium salt is not particularly meaningful since the recitation of the whole of the nonaqueous electrolyte utilizes open claim language. Thus, the LiPF6 of Kawakami may be considered the claimed lithium salt, while the lithium fluorosulfonate salt may be considered an additional electrolyte component which is permitted by, but not recited in, the present claims.
As a nonaqueous solvent capable of dissolving the lithium salts, one alone or two or more different types of nonaqueous solvents may be used either singly or as combined to be a mixture thereof (see paragraph 245). Solvents which may be combined to be a mixture include saturated cyclic carbonates such as ethylene carbonate, and linear carbonates such as ethylmethyl carbonates (see paragraphs 246 and 252).
The nonaqueous solvent may further include a cyclic carbonate having a carbon-carbon unsaturated double bond for forming a coating film on the surface of the negative electrode in the battery with the nonaqueous electrolytic solution and for prolonging the life of the battery (see paragraph 288). As an unsaturated cyclic carbonate, vinylene carbonate may be used (see paragraphs 290 and 291).
The nonaqueous solvent may further include a linear carboxylate ester such as methyl acetate (see paragraphs 268 and 269).
Additionally, a cyclic sulfonate ester compound may be added to the nonaqueous electrolyte as an auxiliary agent (see paragraphs 287 and 303). As a cyclic sulfonate ester compound, ethylene sulfate (first operative additive; 1,3,2-dioxathiolane-2,2-dioxide) may be used (see paragraph 421).
Kawakami teaches that the cyclic sulfonate ester compound may be contained in the nonaqueous electrolytic solution in an amount of at least 0.3% by mass, and at most 3% by mass (see paragraph 486). The overlap between this range and the claimed ranges of 0.25-6% (claims 1 and 24), about 1 to about 6% by weight (claim 9), and at most about 2% by weight (claim 10) is such that the range of Kawakami is considered to anticipate the claimed ranges.
Kawakami teaches that the amount of the unsaturated cyclic carbonate may be at least 0.2% by mass, and at most 5% by mass (see paragraph 295). The overlap between this range and the claimed ranges of 0.25-6% (claims 1 and 24) and 0.5 to 6% by weight (claim 11), is such that the range of Kawakami is considered to anticipate the claimed ranges.
Regarding claim 15, Kawakami teaches that the lithium transition metal composite oxide of the positive electrode active material may include lithium cobalt composite oxides, lithium manganese composite oxides, and lithium nickel composite oxides, wherein a part of the transition metal composite oxide is substituted with another metal including Mn, Co and Ni (see paragraphs 706 and 707).
Although Kawakami provides exemplary NMC oxides (see paragraph 708), Kawakami does not explicitly teach either NMC532 or NMC622. Nevertheless, NMC532 and NMC622 are well known and commonly used in the art, and one of ordinary skill would recognize that these composite oxides may be readily used as the positive electrode active material in the nonaqueous electrolytic solution secondary battery of Kawakami.
Regarding claim 16, Kawakami teaches that the positive electrode active material may include a surface-adhering substance such as aluminum oxide (see paragraph 712).
Regarding claim 17, although Kawakami does not explicitly teach a 95% retention of initial capacity after 200 cycles between 3.0 V and 4.3 V at a charging rate of C/3 CCCV at 40 °C, one of ordinary skill in the art would expect the battery of Kawakami to exhibit the claimed capacity retention because the battery of Kawakami is substantially identical to the claimed battery in terms of structure and composition. It has been held by the courts that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (see MPEP § 2112.01).
Regarding claim 19, Kawakami teaches that the nonaqueous electrolytic solution secondary battery may be utilized in automobiles (see paragraph 848). Although Kawakami does not explicitly teach a drive motor, a gear box, and electronics, these are basic, universal components of electric and hybrid vehicles. These elements are so well known in the art that the ordinary artisan would immediately envisage their presence within an automobile as disclosed by Kawakami.
Regarding claims 20, although Kawakami does not explicitly teach a stable capacity retention at 4.3 V, one of ordinary skill in the art would expect the battery of Kawakami to exhibit the claimed stable capacity retention at 4.3 V because the battery of Kawakami is substantially identical to the claimed battery in terms of structure and composition. It has been held by the courts that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (see MPEP § 2112.01).
Regarding claim 21, the closed claim language of the additive mixture is not particularly meaningful since the recitation of the whole of the nonaqueous electrolyte utilizes open claim language. Thus, any additional additives of Kawakami beyond the first and second operative additives may be considered additional electrolyte components which are permitted by, but not recited in, the present claims.
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.
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.
Claims 4-6 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami.
Regarding claims 4-6, Kawakami teaches that an amount of the cyclic carbonate in the nonaqueous solvent may be 3% or more and 90% or less by volume (see paragraph 249). An amount of the linear carbonate in the nonaqueous solvent may be 15% or more and 90% or less by volume (see paragraph 259). An amount of linear carboxylate esters in the nonaqueous solvent may be 5% or more and 80% or less by volume (see paragraph 271). Thus, given ethylene carbonate as a cyclic carbonate having a density of 1.32 g/mL, ethylmethyl carbonate as a linear carbonate having a density of 1.006 g/mL, and methyl acetate as a linear carboxylate ester having a density of 0.932 g/mL, a mass fraction of the methyl acetate may be between approximately 4.7% and 74.6%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (see MPEP § 2144.05).
Regarding claim 12, Kawakami teaches that the amount of the unsaturated cyclic carbonate may be at least 0.2% by mass, and at most 5% by mass (see paragraph 295). In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (see MPEP § 2144.05).
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed July 27, 2026 have been fully considered but they are not persuasive.
Kawakami does not disclose a single embodiment which includes (1) methyl acetate, (2) a first operative additive of a sulfur-containing additive, (3) a second operative additive of vinylene carbonate as claimed. Separate and independent disclosures within Kawakami cannot form the basis for an anticipation rejection.
FIGS. 25-28, 32-34, and their corresponding descriptions evidence unexpected results based on the presence of MA and DTD on their own, and in combination with VC.
In response to Applicant’s arguments, please consider the following comments:
It is not agreed that the separate disclosures of Kawakami cannot form the basis for an anticipation rejection. When a species is clearly named, the species claim is anticipated no matter how many other species are additionally named. The comprehensiveness of a listing does not negate the fact that a compound claimed was specifically taught. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (see MPEP § 2131.02).
It is noted that unexpected results may only be used to rebut a finding of obviousness, and have no bearing on a rejection made under 35 U.S.C. 102(a)(1). Within the context of an obviousness rejection, it is noted that objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In this case, the present claims recite a number of first additive compounds which are beyond the scope of the evidence cited by Applicant.
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.
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/STEPHAN J ESSEX/Primary Examiner, Art Unit 1727
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