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 .
Information Disclosure Statements
The information disclosure statement (IDS) submitted on 05 June 2024, 02 July 2024, and 30 December 2025 are in compliance with 37 CFR 1.97, 1.98, and have been considered.
Examiner Note
It is noted that all references hereinafter to Applicant’s specification are to the published application US 20250038265 A1 unless otherwise stated. Additionally, any italicized, bolded, or underlined text utilized hereinafter is to be interpreted as emphasis placed thereupon.
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 5-7, 9, 11, and 15 recite the term “about.” In determining the range encompassed by the term "about," one must consider the context of the term as it is used in the specification and claims of the application. Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1326, 81 USPQ2d 1427, 1432 (Fed. Cir. 2007). See MPEP 2173.05(b) III A.
The specification as originally filed defines the limitations of the term “about” in paragraph [0027] which reads, “’About’ or ‘approximately,’ as used herein, is inclusive of the stated value and means within an acceptable range of deviation for the particular value as determined by one of ordinary skill in the art, considering the measurement in question and the error associated with measurement of the particular quantity (i.e., the limitations of the measurement system). For example, ‘about’ may mean within one or more standard deviations, or within ± 30%, 20%, 10%, 5% of the stated value.”
The level of acceptable deviation from the claimed range, as defined by the term “about” as set forth in paragraph [0027], is so broad that a person of ordinary skill in the art would not be apprised to understand the exact limitations of the claimed invention. Furthermore, the specification does not provide specific instructions for each use of the term “about”. For example, a ± 30% deviation with respect to the concentration of the lithium salt is beyond the ordinary level of tolerances that a person of ordinary skill in the art would anticipate for such a value. As such, the use of the term “about” is taken to be indefinite.
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 1-6 and 8-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, 8, 9, and 11-17 of copending Application No. 18/666,680 (reference application). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although the claims at issue are not identical, they are not patentably distinct from each other because: Regarding Claims 1 and 12, claim 1 of the copending application ‘680 discloses a rechargeable lithium battery, comprising a positive electrode comprising a positive electrode active material, a negative electrode comprising a negative electrode active material, and an electrolyte.
The electrolyte of the copending application ‘680 comprises a lithium salt, a non-aqueous organic solvent, a perfluorinated ketone additive, wherein R5 and R6 are each independently a fluorine atom or a C1 to C10 fluoroalkyl group, and a lithium difluorooxalate borate additive, wherein R3 and R4 are each independently a halogen atom or a C1 to C10 fluoroalkyl group.
The copending application ‘680 and the instant application are analogous in that the electrolyte as claimed differs only with respect to the perfluorinated ether additive. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify the electrolyte of the copending application ‘680 so as to understand how each combination of additives performed within the battery. Furthermore, it would also have been obvious to a person of ordinary skill in the art to screen further perfluorinated organic compounds for use in the electrolytic solution as use of such compounds is known in the art. As such, the difference between the application claim 1 and the copending application claim 1 lies in the fact that the copending application claim includes many more elements and is thus much more specific. Thus, the invention of claim 1 of the copending application is in effect a “species” of the “generic” invention of the application claim 1. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claim 1 is anticipated by claim 1 of the copending application, it is not patentably distinct from claim 1 of the copending application.
Regarding Claims 2 and 3, claims 5 and 6 of the copending application ‘680 uses the same language to claim the perfluorinated ketone of presently examined claim 3, differing only with respect to the chemical formula and R-group numbering convention established within each application. These conventions are unsubstantial and do not impart any meaningful difference between the applications. Regarding Claim 4, claim 4 of the copending application ‘680 uses the same language to claim each element of presently examined claim 4, differing only with respect to the chemical formula numbering convention established within each application. This convention is unsubstantial and does not impart any meaningful difference between the applications. Regarding Claims 5 and 6, claims 8 and 9 use the same language to claim each element of presently examined claims 5 and 6, differing with respect to the additive numbering convention established within each application. This convention is unsubstantial and does not impart any meaningful difference between the applications. Furthermore, while the claims are not identical with regards to the claimed range, the range of the present application lies within the range as set out by copending application ‘680. See MPEP 2144.05.
Regarding Claims 8 and 9, claims 11 and 12 of the copending application ‘680 uses the same language to claim each element of the non-aqueous organic solvent described in the presently examined claims. Regarding Claims 10 and 11, claims 13 and 14 of the copending application ‘680 uses the same language to claim the lithium salt and its concentration as described in the presently examined claims 10 and 11.
Regarding Claims 13 and 14, claims 15 and 16 of the copending application ‘680 uses the same language to claim each element of the positive and negative electrode active materials as described in the presently examined claims 13 and 14. Regarding Claim 15, claim 17 of the copending application ‘680 uses the same language to claim the identical upper charge limit voltage as described in presently examined claim 15.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 8, 10, 12, and 14 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Liu et al. (CN 112820941 B, machine translation used hereafter, IDS – 02 July 2024, “Liu”) . Regarding Claims 1-4, 8, 10, 12, and 14, Liu discloses an electrolyte ([0013]) comprising lithium hexafluorophosphate (i.e. a lithium salt, see [0029] for the complete list of lithium salts) and a non-aqueous organic solvent (for the complete list see [0030]) which can be selected from one or more of carbonate, ether, ester, and nitrile solvents (i.e. the non-aqueous organic solvent comprises a carbonate-based solvent and a propionate-based solvent, see [0030] of Liu).
The electrolyte further comprises a perfluorinated ketone acting as an additive (i.e. the first additive represented by chemical formula 1, wherein R1 and R2 are each independently a fluorine atom or a C1 to C10 fluoroalkyl group, see [0016]). The perfluorinated ketone additive can be perfluoro-2-methyl-3-pentanone (which is depicted in Chemical Formula 1-1 wherein R11 to R15 are each independently a hydrogen atom or a fluorine atom, provided that at least one of R11 to R15 is a fluorine atom; and R21 to R27 are each independently a hydrogen atom or a fluorine atom, provided that at least one of R21 to R27 is a fluorine atom, and more explicitly in Chemical Formula 1-1-1; see [0016] of Liu). The electrolyte further comprises lithium difluorooxalate borate (i.e. the second additive as represented by Chemical Formula 2, wherein R3 and R4 are each independently a halogen atom (such as fluorine) or a C1 to C10 fluoroalkyl group, see [0025] and [0029]).
The electrolyte (as discussed above) is used in a rechargeable lithium battery ([0011]) which features a positive electrode consisting of a positive electrode material (i.e. a positive electrode active material, [0058]), a negative electrode comprising a negative electrode material (i.e. a negative electrode active material, [0058]). The negative electrode material is graphite (i.e. the negative electrode active material comprises a carbon-based negative electrode active material, see [0058] of Liu).
Regarding Claim 5, Liu discloses the perfluorinated ketone in an amount of the electrolyte ranging from 0.5% to 20%, or more preferably, 1% to 5% (i.e. the additive is in an amount of about 0.5 wt% to about 10 wt% based on a total amount of the electrolyte, see [0017], [0024], and [0031] of Liu). Prior art which teaches a range within, overlapping, or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity (i.e. the preferred range of 1% to 5%). See MPEP 2131.03 and Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993).
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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Liu.
Regarding Claim 7, Liu discloses an electrolyte as discussed above. Liu further discloses the fluorinated ketone (i.e. the first additive) and other additives (i.e. the second additive) are preferably in a ratio of 1:0.1 to 3 (i.e. a weight ratio of the first additive and the second additive is about 1:5 to about 10:1, see [0026]). 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). See MPEP 2144.05.
Claims 6, 9, 11, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Liu as applied to claims 1-5, 7, 8, 10, 12, and 14 above, and further in view of Han et al. (US 20240283024 A1, “Han”).
Regarding Claim 6, Liu discloses an electrolyte for a rechargeable lithium battery as discussed comprising a first additive (e.g. the perfluorinated ketone) and a second additive (e.g. lithium difluorooxalate borate).
Liu however is silent regarding the wt% of lithium difluorooxalate borate (i.e. the second additive) within the electrolyte solution. Han discloses an electrolyte for a secondary battery ([0020] and [0023]) wherein lithium difluorooxalate borate (i.e. the second additive as represented by Chemical Formula 2) is used within the electrolyte in a range of 0.01 to 10 wt% based of the total weight of the electrolyte solution (i.e. an amount of about 0.1 to about 5 wt% based on a total amount of 100 wt% of the electrolyte; see [0064]-[0068]). Liu and Han each constitute prior art which is directly analogous to the claimed invention: rechargeable lithium batteries. Therefore, in view of the combined teachings of the prior art, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to use the same amount of lithium difluorooxalate borate from Han so as to achieve a film on the surface of the negative electrode, which is desirable because the cycle characteristics may be improved, a side reaction of the battery due to excessive addition may be prevented, and residue or precipitation of unreacted material may be prevented ([0068] of Han). 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). See MPEP 2144.05.
Furthermore, it would have been obvious to one having ordinary skill in the art at the time of the invention to adjust the wt% of the lithium difluorooxalate borate additive for the intended application for the reasons discussed above, 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).
Regarding Claim 9, Liu discloses an electrolyte as discussed above comprising a non-aqueous organic solvent consisting of a carbonate- and propionate-based solvent.
Liu is silent regarding the propionate-based solvent as being in an amount of greater than or equal to about 70 volume% based on a total amount of the non-aqueous organic solvent.
Han discloses an electrolyte for a secondary battery ([0020] and [0023]) wherein the non- aqueous organic solvent is composed of ethylene carbonate: propylene carbonate: ethyl propionate: propyl propionate were mixed in a volume ratio of 20:10:25:45. Combining the carbonate and propionate values yields a volume ratio of 30:70 (i.e. the propionate-based solvent is in an amount of greater than or equal to about 70 volume% based on a total amount of the non- aqueous organic solvent, see [0101] of Han). Liu and Han each constitute prior art which is directly analogous to the claimed invention: rechargeable lithium batteries. Therefore, in view of the combined teachings of the prior art, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to use the solvent ratio as taught by Han so as to achieve high ionic conductivity of the non-aqueous electrolyte solution (see [0037] of Han). See MPEP 2143 I (A).
Furthermore, it would have been obvious to one having ordinary skill in the art at the time of the invention to adjust the solvent ratios between the carbonate- and propionate-based solvents for the intended application for the reasons discussed above, 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).
Regarding Claim 11, Liu discloses an electrolyte as discussed above wherein the electrolyte comprises a lithium salt.
Liu is silent regarding the concentration of the lithium salt in the electrolyte solution.
Han discloses LiPF6 may be included in a concentration of 0.8 M to 3.0 M, specifically, 1.0 M to 3.0 M in the electrolyte solution (i.e. a concentration of the lithium salt is about 0.1 M to about 2.0 M, see [0101] of Han). Liu and Han each constitute prior art which is directly analogous to the claimed invention: rechargeable lithium batteries. Therefore, in view of the combined teachings of the prior art, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to use the molarity of the lithium salt as taught by Han so as to obtain an optimum effect of forming a film for preventing corrosion of the surface of the electrode (see [0030] of Han). 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). See MPEP 2144.05.
Furthermore, it would have been obvious to one having ordinary skill in the art at the time of the invention to adjust the concentration of the lithium salt (LiPF6) for the intended application for the reasons discussed above, 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).
Regarding Claim 13, Liu is silent regarding the positive electrode active material comprising lithium nickel-based oxide, lithium cobalt-based oxide, lithium manganese-based oxide, a lithium iron phosphate-based compound, cobalt-free lithium nickel- manganese-based oxide, or a combination thereof.
Han discloses the positive electrode active layer including lithium-cobalt oxide or lithium-manganese-based oxide (see [0075] and [0076] of Han). Liu and Han each constitute prior art which is directly analogous to the claimed invention: rechargeable lithium batteries. Therefore, in view of the combined teachings of the prior art, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to use including lithium-cobalt oxide or lithium-manganese-based oxide in the positive electrode active layer in order to improve the capacity and stability of the battery (see [0075] of Han).
Regarding Claim 15, Liu is silent regarding the rechargeable lithium battery as having an upper charge limit voltage of greater than or equal to about 4.5 V.
Han discloses a lithium secondary battery with an operating voltage of 4.45 V or more (see [0104] of Han). Liu and Han each constitute prior art which is directly analogous to the claimed invention: rechargeable lithium batteries. Therefore, in view of the combined teachings of the prior art, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to operate the battery of Liu at the voltage disclosed by Han as it’s conventional in the art to operate at such a voltage and therefore in order to create a battery consistent with other applications one would seek to do so.
The operating voltage of Han is considered to be overlapping with the claimed upper charge limit as the term “about” encompasses the 0.05 V difference, which is within the range of error and acceptable deviation in measurement (as set forth above; see the 112b rejection) within the specification and, as such, Han discloses the claimed range with sufficient specificity. Prior art which teaches a range within, overlapping, or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity. See MPEP 2131.03 and Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993).
Furthermore, it would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. In re Aller, USPQ 233 (CCPA 1955).
Pertinent Prior Art
The following constitutes a list of prior art which are not relied upon herein, but are considered pertinent to the claimed invention and/or written description thereof. The prior art are purposely made of record hereinafter to facilitate compact/expedient prosecution, and consideration thereof is respectfully suggested.
Song et al. (CN113839087A, machine translation used hereafter) discloses an electrolyte for lithium-ion batteries, wherein the additive includes perfluoro-2-methyl-3-pentanone and the lithium salt can include lithium difluorooxalateborate. The upper limit cutoff voltage of the battery described therein is 4.2-5V.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P MALONEY whose telephone number is (571)270-1730. The examiner can normally be reached M-Th: 7:30a-5p, F: 7:30a-4p.
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/MICHAEL PATRICK MALONEY/Examiner, Art Unit 1782
/AARON AUSTIN/Supervisory Patent Examiner, Art Unit 1782
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