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 .
Summary
The Applicant’s arguments and claim amendments received on June 11, 2025 have been entered into the file. Currently, claims 1-5 and 7-8 are amended; claims 6 and 9-10 are cancelled; and claims 11-15 are new; resulting in claims 1-5, 7-8, and 11-15 pending for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/24/2025 has been considered by the examiner.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-5 and 7-8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Matsuoka, et al. (US 2021/0344046 A1), cited on IDS.
Regarding claims 1-5, Matsuoka teaches a nonaqueous secondary battery comprising a positive electrode having a positive electrode active material layer on one or both sides of a current collector, a negative electrode having a negative electrode active material layer on one or both sides of a current collector, a separator, and a nonaqueous electrolyte solution (¶ [0054], Ln. 1-7). The nonaqueous electrolyte solution includes a nonaqueous solvent, a lithium salt (salt dissolved in the nonaqueous solvent), and at least one compound selected from the group consisting of compounds represented by the general formula 1 below (an additive) (¶ [0081], Ln. 1-5).
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Matsuoka further teaches that the negative electrode material layer contains a negative electrode active material (¶ [0230], Ln. 1-2). Matsuoka teaches that a Si material may be contained in the negative electrode active material, preferably in an amount of 3% by weight or more and 60% by weight or less (composite material containing a silicon element) (¶ [0238], Ln. 1-6). Matsuoka specifically teaches that the Si material may be a Si oxide (¶ [0232], Ln. 12-14), especially SiOx, wherein 0.5≤x≤1.5 (silicon particles dispersed in a lithium ion conductive phase) (¶ [0235], Ln. 1-5).
In the example solutions, Matsuoka teaches nonaqueous electrolyte solution S6, which includes a nonaqueous solvent, lithium salt, and bis[3-(triethoxysilyl)propyl]tetrasulfide (Table 1, Nonaqueous electrolyte solution S6), a bis-alkoxysilyl compound meeting the limitations of claims 2-5.
Regarding claims 7-8, Matsuoka teaches all of the limitations of claim 1 above, and further teaches that the concentration of the additive in the electrolyte is most preferably 0.1% by weight or more and 0.5% by weight or less (¶ [0090], Ln. 9-12). Specifically, nonaqueous electrolyte solution S6 contains 0.25% by weight of bis[3-(triethoxysilyl)propyl]tetrasulfide as an additive compound (Table 1, Nonaqueous electrolyte solution S6).
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.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuoka, et al. (US 2021/0344046 A1), as applied to claims 1 and 4 above.
Regarding claims 11, Matsuoka teaches all of the limitations of claim 4 above. Matsuoka further teaches that the compound included in the electrolyte solution may be represented by the general formula 1 below (an additive) (¶ [0081], Ln. 1-5).
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Matsuoka teaches that compounds represented by general formula 1 have the effect of inhibiting the active site of the positive electrode active material, which causes oxidative deterioration of the nonaqueous electrolyte solution. Matsuoka further teaches that using such a compound provides a nonaqueous electrolyte solution capable of exhibiting excellent load characteristics and inhibiting various deterioration phenomena when high-temperature storage or charging/discharging cycle is repeated (¶ [0088], Ln. 1-10). Matsuoka specifically teaches that the compound may be bis[3-(triethoxysilyl)propyl]tetrasulfide (¶ [0089], Ln. 1-3), however, Matsuoka does not expressly teach that the compound may be bis(triethoxysilylpropyl)disulfide.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the bis[3-(triethoxysilyl)propyl]tetrasulfide included in the nonaqueous electrolyte of Matsuoka with bis(triethoxysilylpropyl)disulfide, meeting the limitations of claim 11. One of ordinary skill in the art would recognize that bis(triethoxysilylpropyl)disulfide is also represented by general formula 1 of Matsuoka, and that the disulfide would have the same effect of inhibiting the active site of the positive electrode active material. It would be obvious to one of ordinary skill in the art that the disulfide and tetrasulfide, which have very close structures, would have similar properties and perform the same way in an electrolyte solution. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities (MPEP 2144.09 (I)).
Regarding claims 12-13, Matsuoka teaches all of the limitations of claim 1 above and further teaches that examples of the negative electrode active material include amorphous carbon, graphite, carbon fibers, and Si materials, wherein the Si materials include silicon, Si alloy, Si oxide, and the like. The negative electrode active materials may be used alone or in combination of two or more thereof (¶ [0232], Ln. 1-14). Matsuoka further teaches that when Si is applied to the negative electrode active material, it is possible to inhibit various deterioration phenomena (¶ [0234], Ln. 1-4). Matsuoka does not expressly recite that silicate may be used as the negative electrode active material, or that the negative electrode active material may be carbon with silicon particles dispersed in the carbon phase.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the negative electrode active material of Matsuoka to be a silicate. One of ordinary skill in the art would recognize that silicate is a commonly used negative electrode active material. Additionally, as silicate is a compound containing silicon and oxygen, and Matsuoka teaches that silicon oxide may be used as the negative electrode active material, one of ordinary skill in the art would find it obvious to use silicate based on the teachings of Matsuoka.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuoka, et al. (US 2021/0344046 A1).
Regarding claims 14-15, Matsuoka teaches a nonaqueous electrolyte solution including a nonaqueous solvent, a lithium salt (salt dissolved in the nonaqueous solvent), and at least one compound selected from the group consisting of compounds represented by the general formula 1 below (an additive) (¶ [0081], Ln. 1-5).
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Matsuoka teaches that compounds represented by general formula 1 have the effect of inhibiting the active site of the positive electrode active material, which causes oxidative deterioration of the nonaqueous electrolyte solution. Matsuoka further teaches that using such a compound provides a nonaqueous electrolyte solution capable of exhibiting excellent load characteristics and inhibiting various deterioration phenomena when high-temperature storage or charging/discharging cycle is repeated (¶ [0088], Ln. 1-10). Matsuoka specifically teaches that the compound may be bis[3-(triethoxysilyl)propyl]tetrasulfide (¶ [0089], Ln. 1-3), however, Matsuoka does not expressly teach that the compound may be bis(triethoxysilylpropyl)disulfide.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the bis[3-(triethoxysilyl)propyl]tetrasulfide included in the nonaqueous electrolyte of Matsuoka with bis(triethoxysilylpropyl)disulfide, meeting the limitations of claims 14-15. One of ordinary skill in the art would recognize that bis(triethoxysilylpropyl)disulfide is also represented by general formula 1 of Matsuoka, and that the disulfide would have the same effect of inhibiting the active site of the positive electrode active material. It would be obvious to one of ordinary skill in the art that the disulfide and tetrasulfide, which have very close structures, would have similar properties and perform the same way in an electrolyte solution. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities (MPEP 2144.09 (I)).
Response to Arguments
Response – Claim Rejections-35 U.S.C. 102
Applicant's arguments filed June 11, 2025 have been fully considered but they are not persuasive. The Applicant argues on pages 7-8 of the remarks filed June 11, 2025 that Matsuoka is silent to teach a negative electrode active material in which the lithium ion conductive phase is at least one selected from the group consisting of a silicon oxide phase, a silicate phase, and a carbon phase.
This argument is not persuasive. Matsuoka teaches that examples of the negative electrode active material include amorphous carbon, graphite, carbon fibers, and Si materials, and that the negative electrode active materials may be used alone or in combination of two or more thereof (¶ [0232], Ln. 1-12). Further, Matsuoka specifically teaches that the Si material may be a Si oxide (¶ [0232], Ln. 12-14).
Conclusion
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 SARAH J JACOBSON whose telephone number is (703)756-1647. The examiner can normally be reached Monday - Friday 8:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH J JACOBSON/Examiner, Art Unit 1785
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785
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