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 .
Status of the claims
This is the final action based on application 17768341. Claims 1, 6, and 7 have been amended and claims 2-4 and 8 cancelled. Claims 1, 5-7, and 9-17 are currently pending and have been considered below.
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:
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.
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.
Claim(s) 1, 2, 4-7, 9-13, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Onuki (US 8551662 B2) in view of Murakami (JP 2016197508 A) (see English translation provided in the office action mailed 11/14/2024).
In reference to claims 1, 2, 4, 5 and 7, Onuki discloses:
An electrolyte for a secondary lithium battery (column 3, lines 37 and column 4, lines 50-55) comprising:
A non-aqueous organic solvent (column 4, lines 45-46)
A lithium salt (column 4, line 47)
An additive (Formula 3 and column 23, lines 23-35).
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Formula 3
In the additive in Formula 3:
Each of R3 to R7 independently represents a hydrogen atom or a hydrocarbon (alkyl) group having 1 to 8 carbons (column 16, lines 63-67 and column 17, lines 10-15) (corresponds to R1 to R3 are each independently a C1 to C8 alkyl group and R4 and R5 are each independently a hydrogen or C1 to C8 alkyl group).
R8 represents an unsubstituted hydrocarbon group (alkyl) having 1 to 8 carbons (column 17, lines 25-30) (corresponds to R6 is an unsubstituted C1 to C8 alkyl group).
N3 represents an integer of 0 to 4 (corresponds to n is an integer from 1-4).
The additive is included in an amount most preferably from 3 wt% or less and broadly between 0.01 wt% to 15 wt%, based on a total weight of the electrolyte for a lithium secondary battery (Column 23, Lines 53-57) (corresponds to the compound represented by Chemical formula 1 is included in an amount of 0.1 wt% to 10 wt% based on a total eight of the electrolyte for a lithium secondary battery).
Onuki includes each of the claimed elements above, with the only difference between the claimed invention and Onuki being a lack of the aforementioned combination being explicitly stated for R groups 3-7 of Onuki. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known substituent from each of the finite lists of possible combinations taught by Onuki to arrive at the compound of the instant claim since the combination of elements would have yielded the predictable results of additives for a lithium-ion battery, absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
With respect to the overlapping ranges taught by Onuki, in the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. (See MPEP 2144.05 (I)).
Onuki does not disclose that one of R1 to R3 is a fluoro group (-F).
Onuki does disclose that the SEI formed on the negative electrode becomes stronger due to the presence of the additive (column 6, lines 10-25).
Murakami discloses an electrolyte additive (Chemical Formula 1) for a non-aqueous electrolyte in a lithium-ion secondary battery, similar to the additive chemical formula 3 of Onuki (where n=0) ([10]). Murakami discloses the R2, R3, and R4 can each be independently selected from a halogen or a substituted or unsubstituted hydrocarbon having 1 to 10 carbon atoms.
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Chemical Formula 1
Murakami discloses that from the viewpoint of providing stability of the SEI, fluorine is particularly preferable [26].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the additive of Onuki by substituting one of the R groups on the silicon atom with the fluoro group of Murakami, thereby teaching the limitation of wherein one of the claimed R1 to R3 groups is a fluoro group (-F). One would have been motivated to do so as Murkami recognizes that either a fluoro group or a hydrocarbon group (as in Onuki) is a suitable substituent for the silicon atom in a sulfonic/silicon containing additive for improving the SEI in a lithium-ion secondary battery. Additionally, Murakami recognizes the preferability of fluorine in providing stability in the SEI.
Regarding claim 6, Modified Onuki teaches Chemical Formula 1 containing one Fluorine, as described above. Onuki discloses the n3 is from 0-4, as described above. Therefore, it would have been obvious to one of ordinary skill in the art to select n3 to be 3, thereby meeting Chemical Formula 1A-1. One would have been motivated to do so as Onuki discloses that n=3 is a suitable length for the carbon chain between the silicon and the sulfonic group.
In reference to claim 9, Onuki discloses that the additive is most preferably included in an amount of 0.01 wt% to 3 wt%, based on a total weight of the electrolyte for a lithium secondary battery, as described above. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Onuki teaches that including the additive in an amount smaller than 0.01% results in the high-temperature storage characteristics and continuous charge characteristics not being improved (Column 23, Lines 29-37), and that including the additive in an amount larger than 3% results in the ion conductivity being lowered and the battery characteristics deteriorated (Column 23, Lines 38-48). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the additive in an amount between 0.1 wt% and 2.0 wt% in order to improve battery performance, as taught by Onuki.
In reference to claim 10, Onuki in view of Murakami discloses a secondary lithium battery, comprising: a positive electrode including a positive active material; a negative electrode including a negative active material; and the electrolyte of claim 1, as described above (Column 28, lines 30-35 and lines 49-55 and column 29, lines 39-45).
In reference to claim 11, modified Onuki discloses the battery of claim 10, above. Onuki discloses that the silyl-sulfonate additive, as described above, is used with a negative active material, wherein the negative active materials include a Si-based active material (silicon oxide) and a carbon-based active material, and combinations thereof (i.e. a composite) (Col 28, Ln 49-55). Therefore, it would have been obvious to one of ordinary skill in the art to have modified the negative active material of Onuki to include the silicon oxide and graphite materials, thereby forming the Si-C composite, as Onuki discloses that those materials and combinations of them are suitable for use as the negative active material.
In reference to claims 12 and 13, Onuki discloses that the carbonaceous material is preferably graphite (crystalline) with a more amorphous coating (column 28, lines 55-60) (corresponds to the negative active material further includes crystalline carbon and the crystalline carbon includes graphite). It is the examiner’s position that the graphite is either natural, artificial or a combination thereof, as though are the only choices for the origin of the graphite.
In reference to claim 16, Onuki discloses that the positive active material is suitably lithium nickel oxide (column 29, line 41) (corresponds to wherein the positive active material is a composite oxide of a nickel-containing metal and lithium).
In reference to claim 17, Onuki discloses that the positive active material is represented by Chemical Formula 5, wherein M1, M2, and M3 are each independently Ni, Co, Al. Onuki discloses that an electrolyte containing a silyl-sulfonate additive is used with an NCA positive active material with a formula of LiNi0.82Co0.15Al0.03O2, which reads on the claimed formula (Col 30, Ln 45). Therefore, it would have been obvious to use the disclosed active material, as Onuki discloses that it is suitable to be used with the disclosed additive.
Claims 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Onuki view of Murakami, and further in view of Kim et al. (US 9,905,842 B2).
In reference to claims 11-15, modified Onuki discloses the battery of claim 10, above. Onuki discloses that the silyl-sulfonate additive, as described above, is used with a negative active material, wherein the negative active materials include a Si-based active material (silicon oxide) and a carbon-based active material (graphite), and combinations thereof (i.e. a composite), as described above (Col 28, Ln 49-55).
Onuki does not disclose that the Si-C composite further includes a shell surrounding the surface of the Si-C composite, and the shell includes amorphous carbon.
Kim discloses the use of a negative active material for a rechargeable lithium battery that includes a Si-C composite including a Si-based active material and a carbon-based active material (Column 2, Lines 47-50). Kim discloses an amorphous carbon shell formed on the surface of the Si-C core, which is formed of crystalline carbon and silicon oxide (Column 1, Lines 54-61). Kim discloses that the crystalline carbon can be natural or artificial graphite (column 2, lines 20-25) and that the amorphous carbon may include at least one of: soft carbon, hard carbon, mesophase pitch carbonized product, or fired cokes (Column 2, Lines 42-44).
Kim teaches that the addition of an amorphous carbon shell would allow for the coating layer to have the function of buffering for the volume expansion of the Si-C composite during charge and discharge, and thus improve cycle-life characteristics (Column 4, Lines 67-Column 5, Line 4).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the composite negative active material with the amorphous carbon shell of Kim in the device of modified Onuki in order to improve the cycle-life characteristics of a silicon oxide/graphite active material (as in Onuki) during charge and discharge, as taught by Kim.
Response to Arguments
Applicant's arguments filed 08/26/2025 have been fully considered but they are not persuasive.
Applicant argues that the amended claim 1 requires that only one of R1 to R3 is a halogen and the other two are a substituted or unsubstituted C1 to C10 alkyl group, which would not have been easily derived from the combination of Onuki and Murakami. Applicant argues specifically that Murakami never specifically discloses a compound in which at least one halogen atom is substituted to the silicon atom in the examples.
It is noted that Murakami specifically discloses that the silicon atom is only substituted with either a halogen or a hydrocarbon having 1-10 carbon atoms [10], and that for SEI film formation, fluorine is particularly preferable [26]. Onuki desires the presence of the SEI from their additive, as described above. Therefore, one looking to the prior art would have modified Onuki to have a flurorine at at least one position on the silicon atom (e.g. one fluorine) in order to obtain a more stable SEI. It is also noted that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.
Applicant similarly argues that the Onuki reference never discloses a compound in which the alkylene group is present (i.e. n3 is not 0, in the examples) and that an ordinary artisan would not easily derive the claimed compounds with the carbon bridge present and one fluorine atom.
The examiner respectfully disagrees. Onuki discloses that n3 is from 0-4 carbons in length, as described above. This is an overlapping range with the claimed compound and a choice between a length of 5 options. Applicant has not provided any evidence that an ordinary artisan would not have easily derived the claimed compound from disclosures of the prior art combination. Further one would have been motivated to provide the fluorine atom on the silicon, as described directly above. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.
Applicant argues that in Murakami, when a halogen is used as a silicon substituent, such usage is disclosed only for directly bound structures, with no disclosure or suggestion for carbon bridged structures. Applicant further argues that there are differences between Onuki and Murakami in the sulfur-bound substituents.
The examiner notes that the rejection was based on a combination of references. The rejection provided motivation to include a fluorine atom on the structure of Onuki, as described above. Murakami does not discredit the combination through the absence of examples with the exact claimed structure. Murakami was not relied upon to teach the sulfur-bound substituents. 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).
Applicant argues that the rejection utilizes a hindsight analysis.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues surprising and unexpected results based on the differences between Chemical formulas a and b.
The examiner notes that this is found unpersuasive for at least the following reasons. 1) The arguments are not commensurate in scope with the claimed invention. For example, chemical formula a has methyl groups and a fluorine as substituents of the silicon atom, the carbon bridge contains only 3 carbon atoms and the sulfur atom is substituted with R6 as a methyl group. Applicant has not provided any other exemplary compounds to demonstrate that the full scope of the claimed invention would yield criticality or unexpected results. 2) Applicant has not provided an explanation of what is unexpected about the results provided, merely that they are different.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: WO 2020/027003 A1.
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‘003 discloses a fluoro-silyl-sulfur electrolyte additive, similar to claimed Chemical Formula 1, but where the sulfur is attached to the next carbon directly, as opposed to through an ester group. This electrolyte additive is used in a lithium-ion secondary battery having lithium nickel oxide positive active material and a Si-C composite negative active material (see whole document).
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 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 MARLA D MCCONNELL whose telephone number is (571)270-7692. The examiner can normally be reached M-F 9 AM - 5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sri Kumar can be reached at (571) 272-7769. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
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