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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/02/2026 has been entered.
Response to Arguments
Applicant's arguments filed 01/02/2026 have been fully considered but they are not persuasive.
Applicant submits that there is no motivation for one of ordinary skill in the art to select the LiBOB and LiPF6 from the list of seven additives disclosed by Doelle. However, Doelle provides the motivation of improving the SEI durability (see e.g., Doelle; [0010]), and improving service life and cycle stability (see e.g., Doelle; [0014]). So, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the LiBOB and LiPF6 additives from the list of seven additives disclosed by Doelle provided with the multiple motivations of improving SEI durability, service life, and cycle stability. Furthermore, while Doelle does not disclose selecting the specific additives based on their LUMO values relative to LiNO3 as submitted by the applicant, one of ordinary skill in the art may still select the additives for the reasons described above; the motivation for selecting specific additives does not need to be the same motivation as in the instant specification. Applicant further submits that Doelle does not present a specific problem such that selecting the additives may resolve a predictable solution. However, as described above, Doelle discloses that the combined composition including the additives may improve SEI durability, extend battery service life, and improve cycle stability – which correspond to the predictable solution to the problem of poor battery performance.
Applicant submits that one of ordinary skill in the art would have to select the specific two additives from the list, have the motivation of LUMO value, and predict the formation of a three-layer SEI structure. Selecting the specific two additives from the list and the motivation of LUMO value is addressed above. Regarding the formation of the three-layer SEI structure, Hashizume is newly applied to modify Doelle regarding claim 1. Hashizume discloses a charging and discharging procedure similar to as described the instant specification, which would form the multilayer SEI structure as claimed.
Applicant submits that the instant application shows superior and unexpected results in tables 1 and 2. Tables 1 and 2 shows high efficiency of plating/stripping of lithium and lifespan characteristics. Similarly, Doelle discloses improvements of service life and cycle stability (see e.g., Doelle; [0014]), which are directly related to the efficiency of plating/stripping of lithium and lifespan as in the instant specification. Therefore, Doelle teaches similar results as in the instant specification.
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.
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) 1-7, 9-10, 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Doelle (US-20160087311-A1), and further in view of Hashizume (WO-2020175488-A1) (see translation).
Regarding claim 1, Doelle discloses an electrolyte composition for a lithium secondary battery (see e.g., [0003] regarding a lithium-ion battery containing an electrolyte composition), comprising: a lithium salt comprising a nitrogen element (see e.g., [0003], [0011] regarding lithium nitrate as one lithium salt used, [0029]-[0040], [0069], [0078], regarding examples of LiNO3 provided in electrolyte compositions); a first additive (see e.g., [0027], regarding lithium bis(oxalato)borate LiBOB provided in addition to lithium nitrate); and a second additive (see e.g., [0027], regarding lithium hexafluorophosphate LiPF6 provided in addition to lithium nitrate, [0027], regarding the electrolyte composition can have at least one additional lithium salt corresponding to a first and second additive).
Provided with the term “at least”, an arbitrary combination of the disclosed additional lithium salts may be provided such that there may be a first and second lithium salt additive.
KSR Rationale E states that it is obvious to choose "from a finite number of identified, predictable solutions, with a reasonable expectation of success". Therefore, it would have been obvious for one of ordinary skill in the art to select a combination wherein the first additive is LiBOB and the second additive is LiPF6.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrolyte composition such that in addition to lithium nitrate, a first and second additive are selected to be LiBOB and LiPF6 as suggested by Doelle. One of ordinary skill in the art would have been motivated to make this modification in order to improve the SEI durability (see e.g., Doelle; [0010]), service life, and cycle stability (see e.g., Doelle; [0014]).
Because Doelle discloses the first additive, LiBOB, the second additive, LiPF6, and the lithium salt, LiNO3, as the same as those provided in the instant specifications, it is the examiners position that the first additive has a LUMO (lowest occupied molecular orbital) value lower than a LUMO value of the lithium salt and the second additive has a LUMO value higher than the LUMO value of the lithium salt.
MPEP 2112 I. states “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Doelle further discloses wherein a solid electrolyte interphase (SEI) layer is formed on an anode through sequential reduction and decomposition of the first additive, the lithium salt and the second additive (see e.g., Doelle; [0010], [0014], regarding the SEI layer comprising the lithium salts which form the layer from partial decomposition; because Doelle teaches the additive, lithium salt, and second additive as described above, the SEI formation would perform sequential reduction and decomposition as claimed).
Doelle does not explicitly disclose wherein the SEI layer has a multilayer structure.
Hashizume discloses a SEI formation procedure that is similar to the instant specification: the formation process is performed by repeating charging and discharging 1 to 5 times under conditions of a current density 0.4 to 1 mA/cm2 and a capacity per unit area of 2.4 to 10 mAh/cm2 (see e.g., [0080], regarding cycles 1-4 at a current density of 0.4 mA/cm2, cycle 5 at a current density of 1 mA/cm2, and capacity changing from 10 to 8.8 to 2.4 to 6.4 and to 4 mAh/cm2). The instant specification discloses that provided with the materials for the SEI layer as described above by Doelle and applying the repeated charging and discharging cycles as similarly described by Hashizume, a multilayer structured SEI layer is formed.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the SEI layer disclosed by Doelle by providing the formation charging and discharging process disclosed by Hashizume to form the multilayer SEI structure. One of ordinary skill in the art would have been motivated to make this modification in order to form an SEI and battery capable of operating for many cycles that has reduced dendrite growth (see e.g., [0080], [0083]).
Hashizume combined with Doelle discloses a charging procedure applied to an electrolyte and anode composition that is similar to the instant specification. Therefore, it is the examiners position that the resulting structure would have a multilayer SEI structure.
MPEP 2112 I. states “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 2, modified Doelle teaches the electrolyte composition of claim 1, wherein the lithium salt comprises: a first lithium salt comprising at least one of lithium bis(fluorosulfonyl)imide (LiFSI), LiPF6, LiBF4, lithium hexafluoroarsenate (LiAsF6), lithium perchlorate (LiClO4) (see e.g., [0027], regarding the listed first salts); and a second lithium salt comprising LiNO3 (see e.g., [0027], regarding the listed salts in addition to lithium nitrate LiNO3).
Doelle discloses that in addition to lithium nitrate, the electrolyte composition can have at least one of the additional salts listed. The Courts have held that “"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”. See MPEP § 2144.05.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrolyte composition such that in addition to lithium nitrate and the first and second additives of claim 1, a second lithium salt comprising at least one of the listed salts is provided. One of ordinary skill in the art would have been motivated to make this modification in order to improve the SEI durability (see e.g., [0010]).
Regarding claim 3, modified Doelle teaches the electrolyte composition of claim 2, wherein a concentration of the first lithium salt ranges from 0.5 mol/L to 3 mol/L (see e.g., [0027], regarding the concentration of an additional lithium salt which may correspond to a first lithium salt ranging from 0.8 to 1.2 mol/L which overlaps with the claimed range of 0.5 to 3 mol/L).
Regarding claim 4, modified Doelle teaches the electrolyte composition of claim 2, wherein a concentration of the second lithium salt ranges from 0.1 mol/L to 2 mol/L (see e.g., [0029]-[0036], regarding embodiments wherein the second lithium salt, LiPF6, has a concentration of 0.8 M to 1.2 M which overlaps with the claimed 0.1 mol/L to 2 mol/L).
Regarding claim 5, modified Doelle teaches the electrolyte composition of claim 1. Doelle also discloses the lithium salt comprising of lithium nitrate and another lithium salt described above regarding claim 2 and reproduced below:
lithium salt comprising: a first lithium salt comprising at least one of lithium bis(fluorosulfonyl)imide (LiFSI), LiPF6, LiBF4, lithium hexafluoroarsenate (LiAsF6), lithium perchlorate (LiClO4) (see e.g., [0027], regarding the listed first salts), lithium bis(trifluoromethanesulfonyl)imide (LiTFSI) (see e.g., [0008], regarding Aurbach et al. disclosing LiTFSI in addition to LiNO3); and a second lithium salt comprising LiNO3 (see e.g., [0027], regarding the listed salts in addition to lithium nitrate LiNO3).
Doelle discloses that in addition to lithium nitrate, the electrolyte composition can have at least one of the additional salts listed. The Courts have held that “"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”. See MPEP § 2144.05.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrolyte composition such that in addition to lithium nitrate and the first and second additives of claim 1, a second lithium salt comprising at least one of the listed salts is provided. One of ordinary skill in the art would have been motivated to make this modification in order to improve the SEI durability (see e.g., [0010]).
Doelle also discloses the concentration of the first and second lithium salt as described regarding claims 3 and 4, and reproduced below:
A concentration of the first lithium salt ranges from 0.5 mol/L to 3 mol/L (see e.g., [0027], regarding the concentration of an additional lithium salt which may correspond to a first lithium salt ranging from 0.8 to 1.2 mol/L which overlaps with the claimed range of 0.5 to 3 mol/L).
A concentration of the second lithium salt ranges from 0.1 mol/L to 2 mol/L (see e.g., [0029]-[0036], regarding embodiments wherein the second lithium salt, LiPF6, has a concentration of 0.8 M to 1.2 M which overlaps with the claimed 0.1 mol/L to 2 mol/L).
Therefore, because Doelle discloses the same lithium salt composition comprising a first and second lithium salt, and discloses the ranges of concentration of the first and second lithium salts, which are the same as those provided in the instant specification, it is the examiners position that the resulting structure would have a LUMO value of -2 eV to -1 eV.
MPEP 2112 I. states “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 6, modified Doelle teaches the electrolyte composition of claim 1. Doelle discloses the first additive LiBOB (see e.g., [0027], regarding lithium bis(oxalato)borate LiBOB provided in addition to lithium nitrate). Because the composition of this additive is the same as the instant specifications, it is the examiners position that the LUMO value of the first additive ranges from -4 eV to -3 eV.
“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 7, modified Doelle teaches the electrolyte composition of claim 1, wherein the first additive comprises lithium bis(oxalato)borate (LiBOB) (see e.g., [0027], regarding lithium bis(oxalato)borate LiBOB provided in addition to lithium nitrate).
Regarding claim 9, modified Doelle teaches the electrolyte composition of claim 1. Doelle discloses the second additive of LiPF6 (see e.g., [0027], regarding lithium hexafluorophosphate LiPF6 provided in addition to lithium nitrate). Because the composition of this additive is the same as the instant specifications, it is the examiners position that the LUMO value of the second additive ranges from -1.5 eV to 2 eV.
“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 10, modified Doelle teaches the electrolyte composition of claim 1, wherein the second additive comprises LiPF6 (see e.g., [0027], regarding lithium hexafluorophosphate LiPF6 provided in addition to lithium nitrate).
Regarding claim 12, modified Doelle teaches the electrolyte composition of claim 1, further comprising an organic solvent such as 1,2-dimethoxyethane (DME) (see e.g., [0023]).
Regarding claim 13, modified Doelle discloses an anode for a lithium secondary battery (see e.g., [0003], regarding at least one anode and a lithium-ion battery), comprising: a lithium electrode (see e.g., [0014], [0043], regarding a silicon anode); and an SEI layer (see e.g., [0014], regarding SEI layer) wherein the SEI layer is derived from the electrolyte composition of claim 1.
Doelle discloses the compositions of the electrolyte and the electrode which are the same as the instant specification, including the electrolyte containing LiNO3 in addition to other lithium salts such as LiPF6, and LiBOB (see e.g., [0027]) and a silicon anode (see e.g., [0043]). Doelle does not explicitly disclose the SEI layer comprises a first layer disposed on the lithium electrode, a second layer disposed on the first layer and a third layer disposed on the second layer, wherein the first layer comprises at least one of LiF, LixPOyFz (0.1:x:1,2<y<3, 1:z:2), or any combination thereof, the second layer comprises Li3N, and the third layer comprises at least one of LiF, LixPOyFz (0.1:x:1,2<y<3,1:z:2), or any combination thereof.
Hashizume further discloses a SEI formation procedure that is similar to the instant specification: the formation process is performed by repeating charging and discharging 1 to 5 times under conditions of a current density 0.4 to 1 mA/cm2 and a capacity per unit area of 2.4 to 10 mAh/cm2 (see e.g., [0080], regarding cycles 1-4 at a current density of 0.4 mA/cm2, cycle 5 at a current density of 1 mA/cm2, and capacity changing from 10 to 8.8 to 2.4 to 6.4 and to 4 mAh/cm2).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the SEI layer disclosed by Doelle by providing the formation charging and discharging process disclosed by Hashizume. One of ordinary skill in the art would have been motivated to make this modification in order to form an SEI and battery capable of operating for many cycles that has reduced dendrite growth (see e.g., [0080], [0083]).
Hashizume combined with Doelle discloses a charging procedure applied to an electrolyte and anode composition that is similar to the instant specification. Therefore, it is the examiners position that the resulting structure would have the elements of claim 13: The SEI layer comprises a first layer disposed on the lithium electrode, a second layer disposed on the first layer and a third layer disposed on the second layer, wherein the first layer comprises at least one of LiF, LixPOyFz (0.1:x:1,2<y<3, 1:z:2), or any combination thereof, the second layer comprises Li3N, and the third layer comprises at least one of LiF, LixPOyFz (0.1:x:1,2<y<3,1:z:2), or any combination thereof.
MPEP 2112 I. states “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Claim(s) 8, 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Doelle (US-20160087311-A1) and Hashizume (WO-2020175488-A1) (see translation) as applied to claim 1 above, and further in view of Li (WO-2020088664-A1) (see translation).
Regarding claim 8, modified Doelle teaches the electrolyte composition of claim 1. Doelle also discloses the concentration of the first lithium salt ranges from 0.8 to 1.2 mol/L (see e.g., [0027], regarding the concentration of an additional lithium salt which may correspond to a first lithium salt ranging from 0.8 to 1.2 mol/L which overlaps with the claimed range of 0.5 to 3 mol/L), which overlaps with the instant specifications.
Doelle does not explicitly disclose wherein an amount of the first additive ranges from 0.1 wt% to 10 wt% with respect to the electrolyte composition. However, Li discloses a first additive provided in an electrolyte at 2% by mass (see e.g., [0038], regarding example 2, 2% of lithium salt III wherein lithium salt III is LiBOB) and a lithium bis(oxalatoborate) LiBOB corresponding to a first additive in the range of 0.1% to 10% by weight of the electrolyte composition (see e.g., [0014], regarding lithium salt III may comprise of lithium bis(oxalatoborate), [0020], regarding lithium salt III at 0.1% to 10%). Li is equivalent analogous art and combinable to Doelle because Li similarly discloses in example 2 that another lithium salt II is lithium nitrate, lithium nitrate is included at 3% by mass which overlaps with 0.05 to 20 percent by weight disclosed by Doelle, there is a plurality of lithium salts within the electrolyte composition, and 1,3 dioxolane is used as the solvent. Li discloses that LiBOB can significantly improve the cycle performance of the battery (see e.g., [0061]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrolyte disclosed by Doelle by providing an amount of the first additive in 3 wt% disclosed by Li. One of ordinary skill in the art would have been motivated to make this modification in order to significantly improve the cycle performance of the battery (see e.g., [0061]).
Regarding claim 11, modified Doelle teaches the electrolyte composition of claim 1. Doelle also discloses the second lithium salt, LiPF6, has a concentration of 0.8 M to 1.2 M which overlaps with the instant specification range of 0.1 mol/L to 2 mol/L. Doelle does not explicitly disclose wherein an amount of the second additive ranges from 0.1 wt% to 10 wt% with respect to the electrolyte composition.
However, Li discloses a lithium hexafluorophosphate LiPF6 corresponding to a second additive in the range of 0.1% to 10% by weight of the electrolyte composition (see e.g., [0014], regarding lithium salt III may comprise of lithium hexafluorophosphate LiPF6, [0020], regarding lithium salt III at 0.1% to 10%, [0050], regarding example 5 which discloses lithium hexafluorophosphate at 1 wt%), which overlaps with the claimed range. The described example 5 also discloses lithium nitrate included in the electrolyte at 2 wt%.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrolyte disclosed by Doelle by providing the second additive in a range of 0.1 wt% to 10 wt% disclosed by Li. One of ordinary skill in the art would have been motivated to make this modification in order to provide a lithium metal battery electrolyte that improves the cycle performance of the battery (see e.g., [0007]).
Conclusion
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/KEVIN SONG/Examiner, Art Unit 1728
/MATTHEW T MARTIN/Supervisory Patent Examiner, Art Unit 1728