DETAILED ACTION
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Regarding the limitation(s) “optionally” and “further optionally” in the claims, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants’ specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner has interpreted these claims as that none of the limitations following the word ‘optionally’ or ‘further optionally’ are required to read on the claimed language.
Regarding the limitation(s) “the film-forming additive being configured to form an interface film on the surface of the positive electrode active material and/or negative electrode active material” in claim 1, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants’ specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner notes that no interface film is required to be present for the material of the ‘film-forming additive’ to read on by the prior art. None of the present claims positively recite or require a ‘film’ formed on the positive or negative electrode active material (layer).
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
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 1 – 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claims 1 - 16, the phrase “optionally” and/or “further optionally” render the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. The Examiner has interpreted these ‘optional’ limitations as recited above and along the same vein as language such as ‘for example’, which is a narrower limitation of a broader limitation in the same claim, just like the presently claimed ‘optional’ language (e.g. see MPEP § 2173.05(d)). The Examiner notes that this occurs as follows:
Claim
Indefinite language
Claim
Indefinite language
1
Optionally (x1)
9
Optionally (x2); Further Optionally (x1)
2
Optionally (x3)
10
Optionally (x1); Further Optionally (x1)
3
--
11
Optionally (x1) [all text after this is optional]
4
Optionally (x1)
12
--
5
Optionally (x3)
13
--
6
Optionally (x1)
14
--
7
--
15
--
8
Optionally (x3)
16
--
Claim 4 recites the limitation "a" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of evaluating the prior art, the Examiner has interpreted this claim as if it depended from claim 3, not claim 1 (since that is where ‘a’ is first introduced).
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 – 16 are rejected under 35 U.S.C. 103(a) as being unpatentable over Nakayama (U.S. Patent App. No. 2019/0081349 A1) in view of one or more of Qian et al. (U.S. Patent App. No. 2025/0286134 A1), Tsuchikawa et al. (U.S. Patent App. No. 2024/0055662 A1), and/or Kamine et al. (U.S. Patent App. No. 2021/0351437 A1).
Regarding claims 1, 2 and 6, Nakayama discloses a secondary battery (Title; Abstract), comprising a positive electrode plate, comprising a positive electrode active material; a negative electrode plate, comprising a negative electrode active material; a separator, being disposed between the positive electrode plate the negative electrode plate (ibid and Paragraph 0006); and an electrolytic solution (ibid) comprising a first organic solvent (e.g. Paragraph 0048 and examples, Paragraph 0072) and a film-forming additive (one or more of Paragraphs 0006 and 0046 – 0050: lithium fluorosulfonate and/or DFEC) and the film-forming additive being configured to form an interface film on the surface of the positive electrode active material and/or negative electrode active material1, wherein a porosity of the separator is denoted as ε%; a mass percentage of the film-forming additive relative to a total mass of the electrolytic solution is denoted as b%; and a viscosity of the electrolytic solution at 25°C is denoted as c in mPa-s.
Nakayama fails to disclose ensuring that “the secondary battery satisfies: 4 ≤ (b * ε)/c ≤ 240”.
Furthermore, Nakayama teaches viscosity values that meet the requirements of claim 2 (e.g. Paragraphs 0006 and 0052), as well as mass percentages of the various additives that meet the requirements of claim 2 (see citations above). While Nakayama discloses the criticality of the porosity of each individual layer of the separator (e.g. Paragraphs 0006 and 0055 – 0059), Nakayama fails to teach the overall porosity of the separator as used in the equation, nor an explicit embodiment using both the lithium fluorosulfonate ‘negative electrode’ additive and an additive meeting the ‘positive electrode’ additive limitations simultaneously.
However, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the separator porosity through routine experimentation (see evidence of known use of porosity values meeting the requirements of claim 2 in, for example, Qian et al., Table 2). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In addition, the Examiner notes that the use of carbonate additives, such as VC and DFEC, as well as using a mixture of lithium salts, such as other boron-, phosphorus-, or sulfur-containing lithium salts, is well established in the battery arts. Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, electrolyte compositions are known to include various additives, including carbonates such as VC and/or DFEC (see Tsuchikawa et al., at least Paragraph 0093; Qian et al., at least Paragraphs 0100 – 0102 and 0111, as well as Table 2; and the Nakayama citations above), and additional boron-, phosphorous-, and/or sulfur-containing salts (at least Kamine et al., various locations, but see Tables 26, 28, 34, 36, etc. and lithium fluorosulfonate teaching above in Nakayama).
These various electrolyte solutions are deemed all functional equivalents in the field of known electrolyte solutions with additives to tailor the ion migration and stability properties of the secondary battery. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Nakayama to utilize an electrolyte mixture using a variety of additives, including additives meeting the claimed limitations, as taught by Nakayama and as further supported by Qian et al., Kamine et al., and/or Tsuchikawa et al. above, as these are all known additives and its merely a matter of routine selection from known equivalent additive materials and routine optimization of the electrolyte performance characteristics.
Regarding claim 2, these values are rendered obvious as routine optimization values per the citations and teachings above.
Regarding claims 3 and 4, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the mass percentage of the first organic solvent through routine experimentation, especially given the teaching in the references above regarding the (relatively) small mass percentages of the additives and salts used in the electrolyte. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, Nakayama discloses first organic solvents meeting the claimed limitations (see citations above). Qian et al. further provides evidence that a skilled artisan would recognize these organic solvents as all functionally equivalent to each other (see at least Paragraph 0087 – 0094).
Regarding claim 6, as discussed above, adding both additives would have been within the knowledge of a person of ordinary skill in the art.
Regarding claim 7, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the mass percentages b1 and b2 through routine experimentation, especially given the teachings above regarding the desire to use (relatively) small mass percentages of both these additives (see citations above; especially Nakayama Paragraph 0050; Qian et al., Paragraphs 0095 – 0102 and 0111; and Tsuchikawa et al., Paragraph 0093). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 8, these additional lithium salts are met for the reasons set forth above.
Regarding claim 9, these additional additives for the positive electrode additive are met for the reasons set forth above.
Regarding claim 10, Nakayama disclose additional salts meeting the claimed limitations (Title; Abstract; at least Paragraph 0006). The Examiner further notes that using mixtures of salts is well established in the secondary battery arts and using additional lithium salts is within the knowledge of a person of ordinary skill.
Regarding claim 11, Nakayama discloses separators meeting the claimed limitations (at least Paragraphs 0006 and 0041).
Regarding claims 12 – 16, these are nominal apparatus/device limitations that are met by the disclosure set forth above.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: while no claim has been indicated as allowable, the Examiner notes that the prior art only broadly discloses the equations and the materials of the additive (to achieve the equation) as known additives in a range of content. Should Applicants be able to demonstrate unexpected results when using specific additives and meeting the claimed equation(s?), the Examiner notes that this would likely overcome the art of record.
However, three requirements must be met. First, the claims must be reasonably commensurate to any showing of unexpected results (specific additives or specific class of additives may be required).
Second, Applicant(s) are reminded that a detailed description of the reasons and evidence supporting a position of unexpected results must be provided by applicant(s). A mere pointing to data requiring the examiner to ferret out evidence of unexpected results is not sufficient to prove that the results would be truly unexpected to one of ordinary skill in the art. In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (1971) and In re Merck & Co, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986).
Finally, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the Examiner’s position that the arguments provided by applicant(s) regarding the alleged unexpected results should be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
September 27, 2026
1 Deemed as an intrinsic property of the disclosed materials, as these are explicitly claimed as suitable materials for the additive and the present language is merely intended use/functional language with no positive recitation that said ‘film’ is formed, per se.
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