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 . If status of the application as subject to 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 a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-6, 9, & 11-22 are pending in the application. Claims 1-19 were rejected in the office action mailed 10/7/2025. Applicant cancelled claims 7-8 & 10 and added new claims 20-22. Claims 1-6, 9, & 11-22 are presently examined.
Response to Amendment / Arguments
The amendment filed 12/31/2025, in response to the office action mailed 10/7/2025, has been entered. Applicant’s claim amendments overcame all objections, 35 U.S.C. 112(b) and 35 U.S.C. 102 rejections.
In the 10/7/2025 office action, Examiner rejected claim 8 based on US20210104726A1 (Matsumoto) teaching methyl difluoroacetate (paragraph 65). Applicant amended claim 1 with modified claim 8 limitations. Methyl difluoroacetate doesn’t read on amended claim 1; however, Matsumoto also teaches 2,2,2-trifluoroethyl acetate, which does read on amended claim 1 (paragraph 65). Thus, claim 1 is rejected under 35 U.S.C. 103, based on the same prior art as in the prior office action.
Claim Rejections - 35 USC § 102
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.
The claims are in bold font, the prior art is in parentheses.
Claim 22 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US20230100910A1 (Zhang).
Zhang teaches the following claim 22 limitations:
An electrolyte solution (paragraph 21: electrolyte), wherein the components of the electrolyte solution include an electrolyte salt (paragraph 21) and a fluorine-containing sulfonamide solvent (paragraph 21: Formula II)
Claim 22 requires the fluorine-containing sulfonamide solvent to have the following formula (1), in which T1 can be formula (1-1):
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where R1 and R2 are each independently selected from any one of alkyl having 1-3 carbon atoms, phenyl, and a sulfone group;
T2 is fluorine-substituted alkyl having 3 or 4 carbon atoms; and
* represents a site of connection
Zhang’s Formula II is the following:
Zhang Formula II
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Zhang’s R1 & R4 can be methyl and R5 can be CH(CF3)2.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The claims are in bold font, the prior art is in parentheses.
Claims 1-6, 9, & 11-19 are rejected under 35 U.S.C. 103 as being unpatentable over US20230100910A1 (Zhang) in view of US20210104726A1 (Matsumoto), together “modified Zhang”.
Zhang teaches the following claim 1 limitations:
An electrolyte solution (paragraph 21: electrolyte), wherein the components of the electrolyte solution include an electrolyte salt (paragraph 21) and a fluorine-containing sulfonamide solvent (paragraph 21: Formula II)
Claim 1 requires the fluorine-containing sulfonamide solvent to have the following formula (1), in which T1 can be formula (1-1):
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Claim 1 presents options for T1 and T2, including the following:
R1 = R2 = alkyl with 1 carbon atom.
T2 = fluorine-substituted alkyl with 1 carbon atom.
Zhang’s Formula II is the following:
Zhang Formula II
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Zhang’s Formula II matches the above claim 1 requirements with the following defined moieties:
R1 and R4 are methyl (paragraph 23).
R5 is CH2CF3 (paragraph 23).
Zhang, however, fails to teach the following claim limitation, which is taught by Matsumoto:
the fluorine-containing carboxylate ester solvent comprises a compound represented by formula (B) (paragraph 65: 2,2,2-trifluoroethyl acetate):
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wherein R6 is selected from any one of fluorine-substituted alkyl having 1-5 carbon atoms (trifluoroethyl)… R7 is selected from any one of alkyl having 1-5 carbon atoms (acetate)… and at least one of R6 or R7 is selected from fluorine-substituted alkyl having 1-5 carbon atoms (trifluoroethyl)
Matsumoto is directed to a mixed electrolytic solution for a lithium ion secondary battery in order to achieve improved battery performance (abstract).
It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Zhang’s electrolyte to be a mixed solution with 2,2,2-trifluoroethyl acetate, as taught by Matsumoto, for improved battery performance.
With regard to claims 2-6, Zhang teaches the limitations of claim 1 as noted above. Zhang also teaches the following limitations of claims 2-6:
Claim 2
the structure of T2 is as represented by (A):
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R3 is… F… R4 and R5 are each… F
Claim 3
R3 is… F
Claim 4
T1 is selected from formula (1-1), and R1 and R2 are each independently selected from alkyl having 1-3 carbon atoms…
Claim 5
R1 and R2 are both alkyl having 1-3 carbon atoms
Claim 6
the fluorine-containing sulfonamide solvent is one of compounds represented by…
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Zhang formula II, discussed under claim 1, matches the requirements for claims 2-6.
With regard to claim 9, Zhang teaches the limitations of claim 1 as described above. Zhang, however, fails to teach the following limitations of claim 9, which are taught by Matsumoto (paragraph 65: 2,2,2-trifluoroethyl acetate).
R6 and R7 are each independently selected from alkyl having 1-5 carbon atoms (Matsumoto’s R6 & R7 each have 2C), and at least one of R6 and R7 is fluorine-substituted alkyl having 1-5 carbon atoms (Matsumoto’s R6 2,2,2-trifluoroethyl is fluorine-substituted)
With regard to claims 11-13, modified Zhang teaches the limitations of claims 1 & 7 as described above. Claims 11-13 are listed below. The ratios presented in the claims are converted into percent ester in square brackets for comparison with the prior art:
Claim 11
a volume ratio of the fluorine-containing sulfonamide solvent to the fluorine-containing carboxylate ester solvent is (0.2-5):1 [17% to 83% carboxylate ester]
Claim 12
a volume ratio of the fluorine-containing sulfonamide solvent to the fluorine-containing carboxylate ester solvent is (0.5-3):1 [25% to 67% carboxylate ester]
Claim 13
a volume ratio of the fluorine-containing sulfonamide solvent to the fluorine-containing carboxylate ester solvent is (1.5-2.25):1 [31% to 40% carboxylate ester]
Zhang doesn’t teach the ester carboxylate, and thus also doesn’t teach these ratios. Matsumoto teaches the ester carboxylate, but doesn’t teach the sulfonamide. Thus, the cited prior art fail to teach the ratios of ester carboxylate to sulfonamide. Nevertheless, it would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, to have adjusted and optimized these ratios and to achieve the claimed ratios.
Furthermore, Matsumoto provides guidance for the amount of the ester carboxylate. Matsumoto teaches ≤ 60 vol % second solvent (2,2,2-trifluoroethyl acetate). Matsumoto teaches this range for sufficient ion conductivity (paragraphs 57 & 65). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, to include ≤ 60 vol % 2,2,2-trifluoroethyl acetate in Zhang’s electrolyte, for sufficient ion conductivity.
Matsumoto’s range overlaps with the claimed ranges. MPEP 2144.05 (II)(A) provides the law for this issue:
“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)”.
Given that Matsumoto’s range is similar to and substantially overlaps the claimed ranges, and further given the fact that no criticality is disclosed for the claimed ranges, the ranges in claims 11-13 are obvious variants of Matsumoto’s range.
With regard to claim 14, Zhang teaches the limitations of claim 1 as described above. Claim 14 recites:
a mass ratio of the electrolyte salt to the fluorine-containing sulfonamide solvent is (0.068-0.68):1
Zhang teaches salt concentration in the electrolyte is 0.01 M to 5 M (paragraph 26). Zhang also teaches that the salt can be lithium hexafluorophosphate (LiPF6) (paragraph 24), which has a molecular weight of 152 g/mol (7+31+6*19). Zhang’s electrolyte, 2,2,2-trifluoro-N,N-dimethylethanesulfonamide, as illustrated in present claim 6 (1a), has an approximate density of 1.4 g/ml1. Note that this density is for dimethyltrifluoromethanesulfonamide. Examiner couldn’t find density for 2,2,2-trifluoro-N,N-dimethylethanesulfonamide. The chemistry of both chemicals is similar, so the density is be similar.
Zhang’s mass of salt and electrolyte, for 0.01 M to 5 M, are the following:
0.01 mol LiPF6 * 152 g/mol = 1.52 g LiPF6
5 mol LiPF6 * 152 g/mol = 760 g LiPF6
1 L electrolyte * 1.4 g/ml * 1000 ml/L = 1400 g electrolyte
Zhang’s mass of salt divided by mass of electrolyte are the following:
1.52 g LiPF6 / 1400 g electrolyte = 0.001
760 g LiPF6 / 1400 g electrolyte = 0.54
Zhang’s mass ratio of salt to electrolyte is thus (0.001-0.54):1, whereas the claimed range is (0.068-0.68):1. MPEP 2144.05 (II)(A) provides the law for this issue:
“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)”.
Given that Zhang’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the range in claim 14 is an obvious variant of Zhang’s range.
With regard to claims 15-16, Zhang teaches the limitations of claim 1 as noted above. Zhang also teaches the following limitations of claims 15-16 (paragraph 24: lithium hexafluorophosphate / LiPF6):
Claim 15
the electrolyte solution satisfies at least one of the following conditions… the electrolyte salt includes a lithium-ion electrolyte salt
Claim 16
the lithium-ion electrolyte salt includes at least one of… lithium hexafluorophosphate…
With regard to claims 17-19, Zhang teaches the limitations of claim 1 as noted above. Zhang also teaches the following limitations of claims 17-19:
Claim 17
A secondary battery, comprising the electrolyte solution according to claim 1. (paragraph 21: lithium-ion battery)
Claim 18
The secondary battery according to claim 17, wherein the secondary battery includes a lithium metal secondary battery. (paragraph 21: lithium-ion battery)
Claim 19
An electrical apparatus, comprising the electrolyte solution according to claim 1. (paragraph 42: computer)
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over US20230100910A1 (Zhang) in view of US20210104726A1 (Matsumoto), as applied to claim 1, and further in view of CN117682972A machine translation (Zhou). Modified Zhang teaches the limitations of claim 1 as described above. Zhang fails to teach the following claim 20 limitation, which is taught by Zhou:
the formula (1) is one of compounds represented by formulas (1d) to (1i) and (1k) to (1r)…
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…
Zhou is directed to a sulfonamide compound as electrolyte additive for a lithium battery. The sulfonamide compound promotes SEI interface film formation (abstract: page 1, lines 14-29). Zhou’s compound can be the following compound III (claim 2: page 2):
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It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Zhang’s Formula II to be Zhou’s compound III, as taught by Zhou, for SEI interface film formation.
Allowable Subject Matter
Claim 21 is allowed. The following is a statement of reasons for allowance:
US20230100910A1 (Zhang) is the closest prior art of record. Zhang teaches the following claim 21 limitations:
An electrolyte solution (paragraph 21: electrolyte), wherein the components of the electrolyte solution include an electrolyte salt (paragraph 21) and a fluorine-containing sulfonamide solvent (paragraph 21: Formula II)
Claim 1 requires the fluorine-containing sulfonamide solvent to have the following formula (1), in which T1 can be formula 1-1, 1-2, or 1-3:
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T2 can be a fluorine-substituted alkyl with 1-4 carbon atoms. R1 & R2 are each a sulfone group.
Zhang’s Formula II is the following:
Zhang Formula II
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Zhang’s Formula II matches the above claim 1 requirements with R5 = CH2CF3 (paragraph 23), except that Zhang does not teach that R1 and R4 can both be sulfone groups. Zhang doesn’t teach formulas 1-2 or 1-3.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
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/R.G.W./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
1 https://www.msesupplies.com/products/mse-pro-n-n-dimethyltrifluoromethanesulfonamide-c-sub-3-sub-h-sub-6-sub-f-sub-3-sub-no-sub-2-sub-s-98#:~:text=Weight,by%20a%20sulfonamide%2Dbased%20electrolyte.