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 Amendment
1. Applicant’s amendments with respect to claims filed on 05/29/2026 have been entered. Claims 1-20 remain pending in this application and are currently under consideration for patentability under 37 CFR 1.104.
Claim Rejections - 35 USC § 112
2. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
3. Claim 9, 11-12, and 15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 9, the recitation “wherein the chain carboxylic acid is a first chain carboxylic acid and the non-aqueous solvent further includes a second chain carboxylic acid” in claim 9, lines 1-3 is indefinite because claim 7 upon which claim 9 depends upon introduces a chain carboxylic acid ester not a chain carboxylic acid. Further, paragraph [0083] of the instant published specification does not mention any chain carboxylic acids, but rather details chain carboxylic acid esters. For examination purposes the aforementioned recitation will be interpreted as “wherein the chain carboxylic acid ester is a first chain carboxylic acid ester and the non-aqueous solvent further includes a second chain carboxylic acid ester”.
Regarding claim 11, the recitation “wherein the first non-aqueous solvent is a chain carboxylic acid and the second non-aqueous solvent includes one or more of a cyclic carbonic acid, a chain carbonic acid, a cyclic carboxylic acid ester” in claim 11, lines 1-3 is indefinite in view of the instant published specification because as described in paragraph [0083] of the instant published specification the solvent includes only acid esters therefore it is unclear if the chain carboxylic acid, cyclic carbonic acid, and chain carbonic acid include the ester form as described in the instant published specification. Further the specific chain carboxylic acids mentioned in claim 12 are chain carboxylic acid esters. For examination purposes the aforementioned recitation will be interpreted as “wherein the first non-aqueous solvent is a chain carboxylic acid ester and the second non-aqueous solvent includes one or more of a cyclic carbonic acid ester, a chain carbonic acid ester, a cyclic carboxylic acid ester”.
Regarding claim 12, the recitation “the chain carboxylic acid” in claim 12, lines 1-2 is indefinite under the previous interpretation of claim 11, and indefinite because the list of possible compounds which can be the chain carboxylic acid are chain carboxylic acid esters. For examination purposes the aforementioned recitation will be interpreted as “the chain carboxylic acid ester”.
Regarding claim 15, the recitation “the third non-aqueous solvent includes a cyclic carbonic acid” in claim 15, lines 1-2 is indefinite in view of the instant published specification as paragraph [0083] describes only cyclic carbonic acid esters, therefore it is unclear if the chain carbonic acid includes the ester form as described in the instant published specification. For examination purposes the aforementioned recitation will be interpreted as “the third non-aqueous solvent includes a cyclic carbonic acid ester”.
Claim Rejections - 35 USC § 103
4. 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.
5. Claim(s) 1-7, 17-18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Onuma et al. (Pub. No. US 20220246979 A1) in view of Watarai et al. (Pub. No. US 20160359197 A1).
Regarding claim 1, Onuma teaches a non-aqueous electrolyte secondary battery (see Fig. 1, [0036], further see [0042] describes the electrolytic solution as a liquid electrolyte, and see [0075] the electrolytic solution is non-aqueous electrolytic solution), comprising: a positive electrode (11, Fig. 2, [0042]), a negative electrode (12, Fig. 2, [0042]), and a non-aqueous electrolyte (see [0042], electrolytic solution is a liquid electrolyte, and see [0075] the electrolytic solution is non-aqueous electrolytic solution), wherein the negative electrode (12, Fig. 2, [0042]) includes a negative electrode material mixture (12B, Fig. 2, see [0052]) containing a negative electrode active material (see [0052]) capable of electrochemically absorbing (insertable, see [0052]) and releasing (extractable, see [0052]) lithium ions (see [0052]), and carbon nanotubes (see [0061]), the negative electrode active material (see [0052]) includes a silicon-containing material (see [0053]), the non-aqueous electrolyte (see [0042], electrolytic solution is a liquid electrolyte, and see [0075] the electrolytic solution is non-aqueous electrolytic solution) includes a non-aqueous solvent (non-aqueous solvent, see [0075]) and a lithium salt (electrolyte salt, see [0078] where the electrolyte salt is a lithium salt) dissolved in the non-aqueous solvent (non-aqueous solvent, see [0075], see [0197] where the lithium salt is stirred into the solvent, therefore it is the examiner’s position that the electrolyte salt is dissolved in the solvent), and a content of the carbon nanotubes (see [0061]) in the negative electrode material mixture (12B, Fig. 2, see [0052]) is 0.005 mass% or more and 0.05 mass% or less (see [0069] 0.01 wt % to 0.03 wt %), but Onuma fails to teach in the embodiment of Fig. 1 that the negative electrode active material contains a carbonaceous material.
However, Onuma teaches in a different embodiment wherein the negative electrode active material (see [0052]) contains a carbonaceous material (carbon containing material, see [0056]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Onuma to add the carbon containing material to the negative electrode active material as taught by Onuma (see [0056]) for reducing expansion or contraction of the negative electrode active material layer while charging and discharging (see [0060]). Further, it has been held that combining two embodiments disclosed adjacent to each other in a prior art does not require a leap of inventiveness and involves only routine skill in the art. And Onuma teaches that modifications can be made (see [0233]).
Onuma fails to teach wherein the non-aqueous electrolyte includes an alkene sultone.
However, Watarai teaches wherein the non-aqueous electrolyte (non-aqueous electrolytic solution, see [0121], see [0122] where the solution includes a cyclic sulfonic ester) includes an alkene sultone (1-propene-1,3-sultone, see [0181] where the cyclic sulfonic ester is 1-propene-1,3-sultone) wherein a content of the alkene sultone (1-propene-1,3-sultone, see [0181]) in the non-aqueous electrolyte (non-aqueous electrolytic solution, see [0121]) is 0.01 mass% or more and 5 mass% or less (0.2% by mass or more and 1.8% by mass or less, see [0183]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Onuma to add 1-propene-1,3-sultone in 0.2% by mass or more and 1.8% by mass or less as taught by Watarai as a compound which contributes to formation of a stable film-form structure (see [0181] of Watarai) and improvement of cycle characteristics and preventing increase in production costs (see [0183] of Watarai). Further Onuma teaches that modifications can be made (see [0233] of Onuma).
Regarding claim 2, Onuma in view of Watarai teaches wherein a proportion of the silicon-containing material (see [0053]) occupying the negative electrode active material (see [0052]) is 4 mass% or more (see Table 1-3 on Page 17, the mass percent of Silicon when mixed with a carbon material is 4 mass% or more).
Regarding claim 3, Onuma in view of Watarai teaches wherein the alkene sultone (1-propene-1,3-sultone, see [0181] of Watarai, see modifications above) includes a C3-5 alkene sultone (1-propene-1,3-sultone, see [0181] of Watarai, see modifications above, 1-propene-1,3-sultone is a C3 alkene sultone).
Regarding claim 4, Onuma in view of Watarai teaches wherein a content of the alkene sultone (1-propene-1,3-sultone, see [0181] of Watarai, see modifications above) in the non-aqueous electrolyte (see [0042], electrolytic solution is a liquid electrolyte, and see [0075] the electrolytic solution is non-aqueous electrolytic solution) is 0.01 mass% or more and 5 mass% or less (0.2% by mass or more and 1.8% by mass or less, see [0183] of Watarai, see modifications above).
Regarding claim 5, Onuma in view of Watarai teaches wherein the carbon nanotubes (see [0061]) include single-walled carbon nanotubes (see [0061]).
Regarding claim 6, Onuma in view of Watarai teaches wherein a ratio of the single-walled carbon nanotubes (see [0061]) occupying the carbon nanotubes (see [0061]) is 90% or more (see [0061], single-walled carbon nanotubes make up 100% of the carbon nanotubes).
Regarding claim 7, Onuma in view of Watarai teaches wherein the non-aqueous solvent (non-aqueous solvent, see [0075]) includes a chain carboxylic acid ester (carboxylic-acid-ester-based compound, see [0076] gives examples which are chain carboxylic acid esters).
Regarding claim 17, Onuma in view of Watarai teaches wherein the C3-5 alkene sultone (1-propene-1,3-sultone, see [0181] of Watarai, see modifications above, 1-propene-1,3-sultone is a C3 alkene sultone) includes 1,3 propene sultone (1-propene-1,3-sultone, see [0181] of Watarai, see modifications above).
Regarding claim 18, Onuma in view of Watarai teaches wherein a content of the alkylene sultone (1-propene-1,3-sultone, see [0181] of Watarai, see modifications above) in the non-aqueous electrolyte (see [0042], electrolytic solution is a liquid electrolyte, and see [0075] the electrolytic solution is non-aqueous electrolytic solution) is 0.1 mass% or more and 2 mass% or less (0.2% by mass or more and 1.8% by mass or less, see [0183] of Watarai, see modifications above).
Regarding claim 20, Onuma in view of Watarai teaches wherein the carbonaceous material (carbon containing material, see [0056]) includes a graphite (graphite, see [0057]), a soft graphitized carbon, or a hard graphitized carbon, or any combination thereof.
6. Claim(s) 8-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Onuma et al. (Pub. No. US 2022/0246979) view of Watarai et al. (Pub. No. US 20160359197 A1) as applied to claim 1 and 7 above, and further in view of Kitada et al. (Pub. No. US 2021/0288322).
Regarding claim 8, Onuma in view of Watarai fails to teach wherein the chain carboxylic acid ester contains at least methyl acetate.
However, Kitada teaches wherein the chain carboxylic acid ester (chain carboxylate ester, see [0121] wherein the solvent includes cyclic carbonate ester, chain carbonate ester and chain carboxylate ester) contains at least methyl acetate (methyl acetate, see [0122] where the chain carboxylate ester includes methyl acetate).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Onuma in view of Watarai such that the solvent is formed to include cyclic carbonate ester, chain carbonate ester and chain carboxylate ester wherein the chain carboxylate ester includes at least methyl acetate as taught by Kitada to increase softness of the positive electrode and ensuring ion conductivity of lithium ions, and suppressing cracking of the positive electrode while achieving higher energy density (see [0123] of Kitada). Further Onuma in view of Watarai teaches that modifications can be made (see [0233] of Onuma).
Regarding claim 9, Onuma in view of Watarai fails to teach wherein the chain carboxylic acid is a first chain carboxylic acid and the non-aqueous solvent further includes a second chain carboxylic acid. See 112 rejection above for interpretation.
However, Kitada teaches wherein the chain carboxylic acid (chain carboxylate ester, see [0121] wherein the solvent includes cyclic carbonate ester, chain carbonate ester and chain carboxylate ester) is a first chain carboxylic acid (acetate ester, see [0122] where the chain carboxylate ester includes acetate ester and propionate ester) and the non-aqueous solvent (solvent, see [0121]) further includes a second chain carboxylic acid (propionate ester, see [0122] where the chain carboxylate ester includes acetate ester and propionate ester).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Onuma in view of Watarai such that the solvent is formed to include cyclic carbonate ester, chain carbonate ester and chain carboxylate ester wherein the chain carboxylate ester includes an acetate ester and a propionate ester as taught by Kitada to increase softness of the positive electrode and ensuring ion conductivity of lithium ions, and suppressing cracking of the positive electrode while achieving higher energy density (see [0123] of Kitada). Further Onuma in view of Watarai teaches that modifications can be made (see [0233] of Onuma).
Regarding claim 10, Onuma in view of Watarai fails to teach wherein the non-aqueous solvent includes a first non-aqueous solvent and a second non-aqueous solvent.
However, Kitada teaches wherein the non-aqueous solvent (solvent, see [0121]) includes a first non-aqueous solvent (chain carboxylate ester, see [0121]), a second non-aqueous solvent (chain carbonate ester, see [0121]), and a third non-aqueous solvent (cyclic carbonate ester, see [0121]) wherein the first non-aqueous solvent (chain carboxylate ester, see [0121]) is methyl acetate (MA) (methyl acetate, see [0122]), the second non-aqueous solvent (chain carbonate ester, see [0121]) is dimethyl carbonate (DMC) (dimethyl carbonate, see [0122]), and the third non-aqueous solvent (cyclic carbonate ester, see [0121]) is ethylene carbonate (ethylene carbonate, see [0122]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Onuma in view of Watarai such that the non-aqueous solvent is formed to include chain carboxylate ester of methyl acetate, chain carbonate ester of dimethyl carbonate, and cyclic carbonate ester of ethylene carbonate as taught by Kitada to increase softness of the positive electrode and ensuring ion conductivity of lithium ions, and suppressing cracking of the positive electrode while achieving higher energy density (see [0123] of Kitada). Further Onuma in view of Watarai teaches that modifications can be made (see [0233] of Onuma).
Regarding claim 11, Onuma in view of Watarai and further in view of Kitada wherein the first non-aqueous solvent (chain carboxylate ester, see [0121] of Kitada, see modifications above) is a chain carboxylic acid (chain carboxylate ester, see [0121] of Kitada, see modifications above) and the second non-aqueous solvent (chain carbonate ester, see [0121] of Kitada, see modifications above) includes one or more of a cyclic carbonic acid, a chain carbonic acid (chain carbonate ester, see [0121] of Kitada, see modifications above), a cyclic carboxylic acid ester. See 112 rejection above for interpretation.
Regarding claim 12, Onuma in view of Watarai and further in view of Kitada teaches wherein the chain carboxylic acid (chain carboxylate ester, see [0121] of Kitada, see modifications above) includes one or more of methyl formate, ethyl formate, propyl formate, methyl acetate (MA) (methyl acetate, see [0122] of Kitada, see modifications above), ethyl acetate, propyl acetate, methyl propionate, ethyl propionate, and propyl propionate. See 112 rejection above for interpretation.
Regarding claim 13, Onuma in view of Watarai and further in view of Kitada teaches wherein the second non-aqueous solvent (chain carbonate ester, see [0121] of Kitada, see modifications above) is a chain carbonic acid ester (chain carbonate ester, see [0121] of Kitada, see modifications above).
Regarding claim 14, Onuma in view of Watarai and further in view of Kitada teaches wherein the non-aqueous electrolyte (see [0042], electrolytic solution is a liquid electrolyte, and see [0075] the electrolytic solution is non-aqueous electrolytic solution) includes a third non-aqueous solvent (cyclic carbonate ester, see [0121] of Kitada, see modifications above).
Regarding claim 15, Onuma in view of Watarai and further in view of Kitada teaches wherein the third non-aqueous solvent (cyclic carbonate ester, see [0121] of Kitada, see modifications above) includes a cyclic carbonic acid (cyclic carbonate ester, see [0121] of Kitada, see modifications above). See 112 rejection above for interpretation.
Regarding claim 16, Onuma in view of Watarai and further in view of Kitada teaches wherein the first non-aqueous solvent (chain carboxylate ester, see [0121] of Kitada, see modifications above) is methyl acetate (MA) (methyl acetate, see [0122] of Kitada, see modifications above), the second non-aqueous solvent (chain carbonate ester, see [0121] of Kitada, see modifications above) is dimethyl carbonate (DMC) (dimethyl carbonate, see [0122] of Kitada, see modifications above), and the third non-aqueous solvent (cyclic carbonate ester, see [0121] of Kitada, see modifications above) is ethylene carbonate (ethylene carbonate, see [0122] of Kitada, see modifications above).
7. Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Onuma et al. (Pub. No. US 2022/0246979) view of Watarai et al. (Pub. No. US 20160359197 A1) as applied to claim 1 above, and further in view of Chen et al. (Pub. No. US 20230026621 A1).
Regarding claim 19, Onuma in view of Watarai fails to teach wherein the non-aqueous electrolyte further comprises a cyclic sulfate ester, or a cyclic sulfite ester, or both.
However, Chen teaches wherein the non-aqueous electrolyte (electrolyte, see [0010], see [0021] the organic solvent of the electrolyte are non-aqueous solvents) further comprises a cyclic sulfate ester (ethylene sulfate, see [0019] where the sulfate compound is ethylene sulfate, see [0010] where the electrolyte includes a sulfate compound), or a cyclic sulfite ester, or both.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Onuma in view of Watarai to add ethylene sulfate to the electrolyte solution as taught by Chen as a low-impedance film-forming additive (see [0030] of Chen). Further Onuma in view of Watarai teaches that modifications can be made (see [0233] of Onuma).
Response to Arguments
8. Applicant's arguments filed 05/29/2026 have been fully considered but they are not persuasive.
Regarding applicants’ argument that the applicants’ previous arguments are still relevant to the new rejections as the primary reference remains Onuma. The Examiner respectfully disagrees as the previous arguments filed on 12/30/2025 were directed to Onuma in view of Chen being unable to teach all the limitations of amended claim 1. However, the amendments required a new grounds of rejection presented in the non-final rejection filed on 03/03/2026 based on the combination of Onuma in view of Ohsawa. Therefore, the new grounds of rejection did not rely on the previous combination of references for any teachings or matter specifically challenged in the argument as the arguments were related to the teachings introduced by Chen and since Chen was no longer relied upon, the arguments were considered moot.
Regarding applicants’ arguments that one of ordinary skill in the art would not have been motivated to modify Onuma to add ethylene sulfite and there would have been no reasonable expectation of success because Onuma already forms a sufficient SEI ethylene sulfite would reasonably be seen as interfering with the SEI formation mechanism of Onuma. The Examiner respectfully disagrees as first the addition of ethylene sulfite would not be reasonably expected to interfere with the SEI film formation as described in Onuma as it is an additive intended to promote SEI film formation therefore one of ordinary skill in the art would expect the addition of such a compound to further improve the principal SEI film formation present in Onuma which provides motivation for one of ordinary skill in the art to make such a modification with reasonable expectation of success. Further, it is not for the applicant to determine what is reasonable for one of ordinary skill in the art and the applicant provides no evidence that the addition of ethylene sulfite would be unsuccessful much less interfere with the SEI film formation of Onuma as it is an additive which is used to promote SEI formation.
Regarding the applicant's argument that the combination of elements presented in the claims present unpredictable results of a remarkable ability to suppress the reduction of non-aqueous electrolyte, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding applicants’ arguments that the examiner has failed to consider each claim as a whole and treated the CNTs recited as independent of the first component, and that the components are not independent as the alkene sultone makes almost no contribution in suppressing the reduction of non-aqueous electrolyte when CNTs are not contained in the negative electrode mixture. The Examiner respectfully disagrees as first, Watarai gives motivation for one of ordinary skill in the art to modify the invention of Onuma to add alkene sultone as seen in paragraph [0181] of Watarai teaches alkene sultone contributes to formation of a stable film-form structure, and further in paragraph [0183] teaches improvement of cycle characteristics and preventing increase in production costs. Therefore as Onuma already includes CNTs the combination of prior art provides the non-independent combination of CNTs and alkene sultone.
Regarding applicants’ argument that when the negative electrode mixture containing CNTs is combined with a non-aqueous electrolyte containing the first component, the non-aqueous electrolyte reduction suppression effect by the first component is exhibited and is an unexpected result provided by the specific combination of these elements, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
9. 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 DOUGLAS CALEB MARROQUIN whose telephone number is (571)272-0166. The examiner can normally be reached Monday - Friday 7:30-5:00 EST.
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/DOUGLAS C MARROQUIN/Examiner, Art Unit 1723 /TIFFANY LEGETTE/Supervisory Patent Examiner, Art Unit 1723
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