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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10-20-2025 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 4-7, 12, 33-35, 38-39 and 41 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed 10-20-2025 have been fully considered but they are not persuasive. The rejection claim(s) 1, 4-7, 12, 33-35 and 37-41 remain rejected under 35 U.S.C. 103 as being unpatentable over Du et al. (WO 2020/131648) because Du et al. teaches the specified composition, teaching an electrolyte composition comprising i) ethylene carbonate and/or propylene carbonate in an amount of 5-70 wt% [8-20 wt% of a second solvent, carbonate claimed in claim 7]; ii) an additional solvent selected from acyclic or cyclic ester such as methyl acetate, ethyl acetate, etc. and acyclic or cyclic ether solvent in an amount of 30-70 wt% [30-56 wt% of a first solvent, an acetate claimed in claim 6] and iii) a higher molecular weight solvent in amount of less than 30 wt%. Du et al. teaches that the solvent component (iii) can include an acyclic ether solvent which may be fluorinated which include 1,1,2,2-tetrafluoroethyl-2,2,3,3-tetrafluoropropyl ether
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, bis(2,2,2-trifluoroethyl)ether
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, etc. [a third solvent including an halogenated ether solvent, having the structure claimed in claim 1]. Du et al. teaches that the LiFSI salt can be present with one or more other lithium salts such as LiPF6 in an amount of 5-70 wt% [teaching a LiPF6 salt in an amount of 10-42 wt%].
Election/Restrictions
Applicant’s election of a composition comprising a first salt comprising lithium hexafluorophosphate (LiPF6) and does not comprise a second salt; a first solvent comprising 2,2,2,-trifluoroethyl butyrate which is now considered the second solvent; a second solvent comprising 4-methylene-1,3-dioxolan-2-one which is also considered a second solvent and comprises a third solvent comprising a fluoroether (FE) solvent, 1-(1,1,1)-triiodo-pentoxy (5,5,5)-triiodo-pentane [I3-(CH2)5-O-(CH2)5-I3] which is not a hydrofluoroether solvent and does not comprise a first or second additive, in the reply filed on 8-6-2025 and 9-5-2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Newly submitted claims 49-55, 56-62 and 63-66, directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Independent claim 49 claims a salt comprising 10-15 wt% and in dependent claim 55, the salt comprises 8-15 wt% compared to claim 1, a salt comprising 10-42 wt% of the salt and in dependent claim 5, the salt comprises 15-30 wt%.
Independent claim 56 claims a third electrolyte solvent comprising 17-40 wt% of the solvent claimed compared to in claim 1, a second electrolyte solvent comprising 8-20 wt% of the solvent. Independent claim 63 claims a third solvent in an amount of 17-37 wt% compared to claim 1, that allows for any amount and 10-35 wt% of the salt compared to claim 1, a salt comprising 10-42 wt% of the salt.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 49-55, 56-62 and 63-66 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention. Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-7, 12, 33-35, 38-39 and 41 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is no support for the composition comprising 10-42 wt% of the salt including hexafluorophosphate (PF6) ions. There is support for 10-42 wt% of an electrolyte solvent.
Claims 1, 4-7, 12, 33-35, 38-39 and 41 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is no support for the composition claimed in claim 1comprising:30-56 wt% of a first solvent comprising the solvents claimed in claim 1, with 8-20 wt% of a second solvent comprising the solvents claimed in claim 1 with a third solvent including a halogenated ether with no wt% amounts claimed in claim 1 [as explained below, this solvent is considered the first solvent and is present in an mount of 5-56 wt%] and 10-42 wt% of a salt including hexaphosphate (PF6) ions. In [0051], the specification teaches a first electrolyte solvent comprising dimethoxyethane (DME) and a second solvent comprising an ether such as bis(2-fluoroethyl)ether BFE and a salt comprising LiFSI or NaFSI. The first solvent, DME can be present in an amount of up to 56 wt% and no more than 5 wt%. In [0053], the specification teaches that the second solvent comprising an ether such as fluoroether or bis(2-fluoroethyl)ether (BFE) or in [0053], that the second solvent can comprise the solvents claimed in claims 6-7. In [0056], the specification teaches that the second solvent can make up at least 8 wt% and no more than 59 wt%.
Claims 1, 4-7, 12, 33-35, 38-39 and 41 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 is rejected because unclear what alkane solvents can be used as the 1st solvent in the composition because no alkane solvents recited in claim 6, which defined the 1st electrolyte solvents that can be used. Claim 6 is rejected because “ethyl methyl carbonate and diethyl carbonate” cannot be present as the 1st electrolyte solvent because the 1st electrolyte solvent does not allow for carbonate solvents. Claim 6 is rejected because it is unclear what is meant by “tetramethylene sulfone or ethyl methyl sulfone, ethyl acetate, methyl acetate, propyl acetate, 2,2,2-trifluoroethyl acetate”. Claim 41 is rejected because there is no antecedent basis for “wherein the FE”.
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.
Claim(s) 1, 4-7, 33-35, 38-39 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Du et al. (WO 2020/131648). Du et al. teaches in [0010 and 0021-0023], an electrolyte composition includes LiFSI in a solvent comprising i) ethylene carbonate and/or propylene carbonate in an amount of 5-70 wt% [8-20 wt% of a second solvent, carbonate claimed in claim 7]; ii) an additional solvent selected from acyclic or cyclic ester such as methyl acetate, ethyl acetate, etc. and acyclic or cyclic ether solvent in an amount of 30-70 wt% [30-56 wt% of a first solvent, an acetate claimed in claim 6] and iii) a higher molecular weight solvent in amount of less than 30 wt%. Du et al. teaches in [0027], the solvent component (iii) can include an acyclic ether solvent which may be fluorinated which include 1,1,2,2-tetrafluoroethyl-2,2,3,3-tetrafluoropropyl ether
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, etc. [a third solvent including an halogenated ether solvent, having the structure claimed in claim 1]. Du et al. teaches in [0017], that the LiFSI salt can be present with one or more other lithium salts such as LiPF6 in an amount of 5-70 wt% [teaching a LiPF6 salt in an amount of 10-42 wt%]. Du et al. teaches in [0037-0040], a battery comprising a cathode, an anode, a separator and an electrolyte solution. Du et al. discloses the claimed invention except for specifically teaching that the first solvent is present in an amount of 30-56 wt%; the second solvent is present in an amount of 8-20 wt% and the LiPF6 salt is present in an amount of 10-42 wt%. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the first solvent in an amount of 30-56 wt%; use the second solvent in an amount of 8-20 wt% and use LiPF6 salt in an amount of 10-42 wt%., because Du et al. teaches a composition comprising 30-56 wt% of a first solvent; 8-20 wt% of a second solvent and a LiPF6 salt in an amount of 10-42 wt%; and since it has been held that where 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.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the first solvent in an amount of 30-56 wt%; use the second solvent in an amount of 8-20 wt% and use LiPF6 salt in an amount of 10-42 wt%., because Du et al. teaches a composition comprising 30-56 wt% of a first solvent; 8-20 wt% of a second solvent and a LiPF6 salt in an amount of 10-42 wt%; and 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).
Claim(s) 1, 4-7, 12, 33-35 and 37-41 are rejected under 35 U.S.C. 103 as being unpatentable over Du et al. (WO 2020/131648). Du et al. teaches in [0010 and 0021-0023], an electrolyte composition includes LiFSI in a solvent comprising i) ethylene carbonate and/or propylene carbonate in an amount of 5-70 wt% [8-20 wt% of a second solvent, carbonate claimed in claim 7]; ii) an additional solvent selected from acyclic or cyclic ester such as methyl acetate, ethyl acetate, etc. and acyclic or cyclic ether solvent in an amount of 30-70 wt% [30-56 wt% of a first solvent, an acetate claimed in claim 6] and iii) a higher molecular weight solvent in amount of less than 30 wt%. Du et al. teaches in [0027], the solvent component (iii) can include an acyclic ether solvent which may be fluorinated which include 1,1,2,2-tetrafluoroethyl-2,2,3,3-tetrafluoropropyl ether
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, etc. [a third solvent including an halogenated ether solvent, having the structure claimed in claim 1]. Du et al. teaches in [0017], that the LiFSI salt can be present with one or more other lithium salts such as LiPF6 in an amount of 5-70 wt% [teaching a LiPF6 salt in an amount of 10-42 wt%]. Du et al. teaches in [0037-0040], a battery comprising a cathode, an anode, a separator and an electrolyte solution. Du et al. discloses the claimed invention except for specifically teaching that the first solvent is present in an amount of 30-56 wt%; the second solvent is present in an amount of 8-20 wt% and the LiPF6 salt is present in an amount of 10-42 wt%. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the first solvent in an amount of 30-56 wt%; use the second solvent in an amount of 8-20 wt% and use LiPF6 salt in an amount of 10-42 wt%., because Du et al. teaches a composition comprising 30-56 wt% of a first solvent; 8-20 wt% of a second solvent and a LiPF6 salt in an amount of 10-42 wt%; and since it has been held that where 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.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the first solvent in an amount of 30-56 wt%; use the second solvent in an amount of 8-20 wt% and use LiPF6 salt in an amount of 10-42 wt%., because Du et al. teaches a composition comprising 30-56 wt% of a first solvent; 8-20 wt% of a second solvent and a LiPF6 salt in an amount of 10-42 wt%; and 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). When Du et al. teaches the same composition comprising a LiFP6 salt, a first solvent, a second solvent and a fluoroether solvent, then inherently the composition having a conductivity of 10-15 mS/cm must also be obtained.
In addition, the presently claimed property of the composition having a conductivity of at least about 10-15 mS/cm would have obviously been present once the Du et al. product is provided. In re Best, 195 USPQ 433 (CCPA 1977).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Saimen et al. (US 2023/0317934) discloses a composition (TABLE 1, [0057]), comprising 33.5-49.2 wt% of 1,3-dimethoxyethane (DME); 19.7-24.6 wt% of hydrofluoroether (HFE); 20.8-50.9 wt% of a salt comprising lithium bis(fluorosulfonyl)imide [LiFSI] and a salt comprising a second salt comprising 0.8-1.2 wt% of lithium nitrate [LNO]. Saimen et al. teaches in claims 1-2, a battery comprising a cathode, an anode, a separator and the electrolyte solution. Jiang et al. (CN 112838272, machine translation) teaches an electrolyte solution comprising 12-14 wt% of lithium hexafluorophosphate (LiPF6) [second salt]; 1-2 wt% of lithium bis (fluorosulfonyl)imide (LiFSI); hexafluorophosphate (LiPF6); a solvent comprising 30 wt% EMC, 25 wt% EC and 20 wt% ethyl propionate and comprising 5 wt% VC and 5 wt% fluoroethylene carbonate (FEC). Jiang et al. teaches in claim 8, a lithium battery comprising the electrolyte solution. Kawasaki (US 2012/0183842 A1) discloses a composition, comprising an electrolyte solvent (see organic solvents, [0055]), a fluoroether (FE) (see fluorinated chain ether compound, [0050]), a salt including bis(fluorosulfonyl)imide ions (see supporting salt, [0056]), wherein the FE includes a compound having the following structure:
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where n1 and n2 can each have values between 1 and 5, X = F, Br, Cl, or I, and n = 1 (see fluorinated chain ether compound, [0050]).
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 Laura Weiner whose telephone number is (571)272-1294. The examiner can normally be reached 9 am-5 pm EST M-F.
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/LAURA S. WEINER/
Primary Examiner
Art Unit 1723
/Laura Weiner/Primary Examiner, Art Unit 1723