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 .
Response to Arguments
Applicant's arguments filed 06/08/2026 have been fully considered but they are not persuasive.
Applicant’s arguments are not commensurate with the scope of amended claim 1. Applicant argues that the application provides an SEI multilayer wherein the first layer comprises of the first additive, the second layer comprises of the lithium salt, and the third layer comprises of the second additive. However, amended claim 1 only provides the limitation that the multilayer SEI film is formed through sequential reduction and decomposition of the first additive, the lithium salt and the second additive. That is, the claim does not necessitate that the SEI multilayer has the first additive, lithium salt, and second additive in different and sequential layers of the SEI film; the claim language describes the structure of the multilayer SEI film in a product-by-process format, but the “sequential reduction and decomposition” of the components does not equate to precisely a three layer SEI film with the individual components in each layer of the film as argued.
Applicant argues that Doelle fails to provide the LUMO value of the components, and fails to disclose the concept of sequentially forming a multilayer structure by using different LUMO values between the lithium salt and additives. Applicant further submits that Doelle merely lists the various lithium salts in parallel without selection criteria, which is different from the instant application’s selection criteria of LUMO values and the benefits of selection according to LUMO values.
However, selection criteria of the 3 out of the 7 components as listed by Doelle does not necessarily need to be based on the same LUMO value selection criteria as in the instant application. Doelle provides that selection of the components may be in order to improve the SEI durability (see e.g., Doelle; [0010]), service life, and cycle stability (see e.g., Doelle; [0014]). Doelle provides 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 selected 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. In conclusion, Doelle does not need to specifically provide the LUMO values of the components in order for one of ordinary skill in the art to choose from the limited selection of components in Doelle to pick a first additive, a lithium salt, and a second additive. One of ordinary skill in the art has motivation other than LUMO value to select these specific components, such as to improve the SEI durability (see e.g., Doelle; [0010]), service life, and cycle stability (see e.g., Doelle; [0014]). 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 this case, the discovery of the property of the LUMO values of components already well known and used together in prior art does not make the discovery patentable.
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding applicant’s arguments over Hashizume, Hashizume is no longer applied to modify Doelle. Tan (CN-110649341-A) (see translation) is newly applied to modify Doelle as Tan provides a multilayer SEI film. Tan discloses a charging method to wherein a multilayer SEI film can be formed (see e.g., Tan; [0007], [0032]). Tan is analogous art because Tan provides that the charging method may be applied to a plurality of battery types, including carbon-based lithium-ion batteries and silicon-based lithium-ion batteries (see e.g., Tan; [0031]). 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 applied the charging method for forming a multilayer SEI film as disclosed by Tan to the battery of Doelle. One of ordinary skill in the art would have been motivated to make this modification in order to control the insertion and extraction of lithium ions, suppress the deterioration of the electrode material structure, and extend service life (see e.g., Tan; [0034]).
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) 1-4, 7, 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 Tan (CN-110649341-A) (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, and wherein the LUMO value of the lithium salt ranges from -2 eV to -1 eV, the LUMO value of the first additive ranges from -4 eV to -3 eV, and the LUMO value of the second additive ranges from -1.5 eV to 2 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).
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. However, Tan discloses a charging method to wherein a multilayer SEI film can be formed (see e.g., Tan; [0007], [0032]). Tan is analogous art because Tan provides that the charging method may be applied to a plurality of battery types, including carbon-based lithium-ion batteries and silicon-based lithium-ion batteries (see e.g., Tan; [0031]). 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 applied the charging method for forming a multilayer SEI film as disclosed by Tan to the battery of Doelle. One of ordinary skill in the art would have been motivated to make this modification in order to control the insertion and extraction of lithium ions, suppress the deterioration of the electrode material structure, and extend service life (see e.g., Tan; [0034]).
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 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 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 Tan (CN-110649341-A) (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
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 KEVIN SONG whose telephone number is (571)270-7337. The examiner can normally be reached Monday - Friday 9:00 am - 5:00 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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/KEVIN SONG/Examiner, Art Unit 1728
/MATTHEW T MARTIN/Supervisory Patent Examiner, Art Unit 1728
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