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 .
Claim Status
Claims 1 and 2 have been amended with narrowing amendments.
Claim 3 has been canceled.
Claims 1-2 and 4-8 are currently pending and have been examined on the merits in this office action.
Response to Arguments
Applicant's arguments filed 12/19/2025 have been fully considered but they are not persuasive. Applicant argues that the amended claims overcome the rejection of record because the prior air fails to disclose (a) no more than two trialkylsilyl groups in the molecule as both references cited fails to teach this new limitation, (b) the secondary references does not teach or suggest selecting a reaction product as an additive , (c) no motivation exists to combine D1 and D2, (d) limiting the number of -OSIR3 groups produced non-intuitive and unexpected technical effects, (e) further argues the amended claim as Substituent X is limited to a Halogen and the claim excludes trialkylsilyl groups from substituent X.
Regarding argument a, the prior art Yoo discloses wherein the additive for the electrolyte can be the molecule found below in the Figures that contains only two trialkylsilyl groups and is a listed material (Formula 2) in claim 2. Thus this argument is not persuasive as Yoo discloses wherein the additive can be the material taught and claimed by applicant.
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Argument b is not persuasive in view of the prior art and rejection of record. The primary reference discloses materials that can be used as an electrolyte additive. The secondary reference as used in the rejection discloses wherein an alkylsilyl phosphate mat be included in the electrolyte in an amount of 0.5-5 wt% based on the total weight of the electrolyte ([0013,0065]) and thus appears to be used as an additive for an electrolyte. Additionally, the rejection relies upon Han for disclosing the amount of alkylsilyl phosphate additive can be incorporated within the electrolyte and thus is analogous with each other and thus this argument is not persuasive as the Han is used to teach an amount of the alkylsilyl phosphate additive that is similar to that of the primary Yoo.
Argument c is not persuasive in view of the prior art and rejection or record. The primary reference discloses materials that can be used as an electrolyte additive. The secondary reference as used in the rejection discloses wherein an alkylsilyl phosphate mat be included in the electrolyte in an amount of 0.5-5 wt% based on the total weight of the electrolyte ([0013,0065]) and thus appears to be used as an additive for an electrolyte. Additionally, the rejection relies upon Han for disclosing the amount of alkylsilyl phosphate additive can be incorporated within the electrolyte and thus is analogous with each other. Applicant further argues that the electrolyte of D2 is being substituted for the electrolyte system of D1 and that there would be no teaching in D1 to reduce the alkylsilyl phosphate groups below three that result in the benefits listed in the remarks. Examiner notes that the rejection of record does not substitute the additive of D1 for the additive of D2, rather the secondary reference Han is used to teach an amount of an alkylsilyl phosphate that can be provided in the electrolyte of Yoo. Additionally, Yoo discloses wherein the compound can contain only two alkylsilyl groups, see figure below as the compound only discloses two -OSIR3 groups in the main product that reads as formula 2 of the instant invention. Thus these arguments are not persuasive as they do not take into account the how the primary and secondary references are used in the rejection. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Han discloses a range for the amount of the additive for an electrolyte to be between 0.5-5 wt% to ensure electrolytic and battery stability at high temperatures.
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Argument d is noted as applicant argues unexpected results, however, the claim for unexpected results is not found to persuasive as applicant fails to provide evidentiary data to support the claim for unexpected results. Furthermore, the primary references discloses a phosphate compound having less than 2 -OSiR3 groups and thus would read on the claimed invention as Yoo discloses the material as claimed.
Argument e is noted, however, is not found to be persuasive as the primary references discloses wherein X can be a Halogen. Furthermore, the rejection has been updated rendering the arguments moot.
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.
Claims 1-2, 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Yoo (NPL- Distinct Reaction...-as cited in the IDS) in view of Han (US 2012/0202122 A1).
Regarding claims 1-2, Yoo discloses an electrolyte additive for high voltage lithium ion batteries comprising Tris(trimethylsilyl) phosphite, borate, phosphate and other materials. Yoo and analogous with the instant invention as being related to batteries containing alkylsilyl materials. Yoo discloses wherein a lithium salt that is generally used within lithium ion batteries has a very poor chemical stability causing formation of HF that will react with the additives such as TMSPa (Introduction and Figure 1). The TMSPa is an electrolyte additive for enhancing cycling performances for high voltage cathode materials when used as an electrolyte additive (introduction paragraph 6). Yoo further discloses wherein the electrolyte additives can undergo a decomposition reason based on the electrolyte and electrode material in which a halogen replaces the bottom Me3Si material to produce (Me3SiO)2POF as seen in Figure 5 (Results and discussion; Figure 5). Yoo discloses the decomposition is thermodynamically favorable as the Gibbs free energy of the reaction in an acidic electrolyte -17.1 kcalmol-1(Figure 5). Examiner notes that the structure seen in Figure 5 is applicant’s formula 2 as seen in claim 2. Thus the formula of Yoo seen in Figure 5 would read on the claimed formulas of formulas 1 and 2 as claimed. Yoo is silent with respect to the phosphate based compound containing 0.01-30 parts by weight based on 100 parts by weight of the total electrolyte.
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Han discloses an electrolyte being made of an alkylsilyl phosphate additive that is represented by formula 2. Han’s electrolyte is similar to that taught by the instant invention and similar to the structure presented in Yoo before undergoing the decomposition reaction. Han further discloses wherein the alkylsilyl phosphate may be included in the electrolyte in an amount of 0.5-5 wt% based on the total weight of the electrolyte and wherein the alkylsilyl phosphate is included within this range to ensure electrolytic and battery stability at high temperatures ([0013,0065]).
Therefore, it would have been obvious in view of a skilled artisan to incorporate the teaching of Han to adjust that phosphate of Yoo to be included in the electrolyte between an amount of 0.5-5 wt% based on the total weight of the electrolyte in order to ensure electrolytic and battery stability at high temperatures. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Applicant's claim amendments of the phosphate based compound being a "raw material" is noted, however, this appears to be an intended use of the claimed phosphate based compound. It appears that applicant intends to distinguish from the prior art by claiming that the compound is a "raw material" other than a material that is formed through the decomposition reaction of the NPL reference Yoo, however, Yoo's decomposition reaction forms the structure as claimed (claims 1 and 2) and is used as an electrolyte. Examiner notes that the claim is a product claim and not a method claim thus the method of forming the phosphate material is not given patentable weight unless structural differences result from the method. In this case, Yoo discloses the material as claimed and while not used as a "raw material", the structure disclosed by the prior art would read on the claimed invention. Examiner further notes that a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). In claim 1, the intended use of ---- for ---- is not given patentable weight.
Regarding claim 4, modified Yoo discloses all the claim limitations of claim 1. Han further discloses wherein the phosphate based compound is contained in an amount of 0.5-5 wt % of the electrolyte based on the total weight of the electrolyte ([0013]).
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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 5, modified Yoo discloses all the claim limitations of claim 1. Yoo further discloses wherein the electrolyte can contains solvents and salts (introduction). Additionally, Han also discloses wherein the electrolyte further contains at least one selected from the group consisting of a lithium salt and an organic solvent ([0020] electrolyte may further include a non-aqueous organic solvent and a lithium salt). Thus the use of a lithium salt and organic solvent is taught through the combination of the references as it would have been obvious for a skilled artisan to use the lithium salt and solvent taught by Han in the battery electrolyte of Yoo.
Regarding claim 6, modified Yoo discloses the electrolyte according to claim 1. Yoo further discloses wherein the electrolyte is provided between a cathode and anode for lithium batteries (Abstract). Additionally, Han also discloses a lithium secondary battery comprising a positive electrode, a negative electrode and the electrolyte according to claim 1 (Abstract; rechargeable lithium battery including a negative electrode, positive electrode and electrolyte).
Regarding claim 7, modified Yoo discloses all the claim limitations of claim 6. Han discloses active material used for the electrode, however, is silent with respect to the specific active material.
Han further discloses wherein the positive electrode comprises at least one positive electrode active material selected from the group consisting of complex oxides or complex phosphates of lithium and a metal selected from among cobalt, nickel, aluminum, iron, and combinations thereof ([0030-0032] LiaMn2LbO4 wherein L may be Al, Cr, Fe, Mg, La, Ce, Sr, V and/or combinations thereof; Lithium metal manganese oxide for the positive electrode active material).
Therefore, it would have been obvious for a skilled artisan to select L to be Al, Ni, Fe or combinations thereof in order to obtain a lithium metal oxide for the positive electrode active material as taught by Han for the active material disclosed by Yoo as a selection of known active materials. These metals are known in the art to be used in the positive electrode active material, and specifically used within active material oxide layers, therefore, a skilled artisan would have found it obvious to select a metal to be used within the positive electrode active material as taught by Han. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yoo (NPL- Distinct Reaction...-as cited in the IDS) in view of Han (US 2012/0202122 A1) as applied to claim 6 above, and further in view of Miyagi et al. (US 2015/0243936 A1).
Regarding claim 8, modified Yoo discloses all the claim limitations of claim 6. Yoo fails to disclose the active material of claim 8 while Han discloses a lithium manganese oxide according to chemical formulas 1a and 1b, however, is silent with respect to the specific material listed for the positive electrode according to claim 8.
Miyagi discloses a lithium secondary battery and is analogous with a lithium secondary battery of the instant invention. Miyagi discloses wherein the positive electrode active material can be a lithium transition metal composite oxide that includes lithium manganese oxide, lithium nickel composite oxides as well as other oxides/ combinations thereof ([0122]).
Therefore, it would have been obvious in view of a skilled artisan to substitute the lithium manganese oxide of modified Han for the lithium nickel oxide of Miyagi as a known equivalent positive electrode active material. Miyagi discloses wherein Lithium manganese oxide can be used as well as lithium nickel oxide, therefore, a skilled artisan would have found it obvious that lithium manganese oxide and lithium nickel oxide can be interchangeable for a positive electrode active material. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Inoue (JP 2015092477 A-as cited in the IDS)-discloses a lithium ion secondary battery having an electrolyte including a relative element concentration ratio ( Li/P) of 0.3-4.0.
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 Adam J Francis whose telephone number is (571)272-1021. The examiner can normally be reached M-Th: 7 am-4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Martin can be reached at (571)270-7871. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM J FRANCIS/Primary Examiner, Art Unit 1728