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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/6/2026 has been entered.
Response to Amendment
The Amendment filed on 5/6/2026 has been entered. Claims 1-4 and 11 remain pending in the application.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Adachi et al. (JP 2000058120, referring to previously provided translation thereof, hereinafter "Adachi") in view of Minami et al. (WO 2018179782, referring to Examiner-provided translation thereof, hereinafter "Minami").
Regarding claim 1, Adachi teaches a lithium secondary battery comprising a negative electrode [0001, “The present invention relates to an electrolyte for a lithium secondary battery having a metallic lithium negative electrode”]. Adachi teaches that in the metallic lithium negative electrode, lithium metal deposits during charging and dissolves during discharging [0013, “the amount of electricity required for charging, i.e., for depositing Li, was kept constant at around 0.2 coulombs, and discharging, i.e., dissolving Li”]. Adachi teaches that the lithium secondary battery further includes a nonaqueous electrolyte that includes a metal cation, a halide (iodide) anion, and a lithium salt dissolved in the electrolyte [0007, “it has been discovered that the charge-discharge cycle characteristics of a metallic lithium negative electrode can be improved by adding, as an additive, a compound consisting of a metal cation that alloys with lithium and an iodide anion to the electrolyte solvent, “this electrolyte is characterized in that it contains these metal iodides as additives … to the electrolyte, in which an organic fluorine-containing lithium salt is dissolved in a non-aqueous solvent”]. Since the lithium salt is dissolved in the nonaqueous electrolyte, the nonaqueous electrolyte also comprises lithium ions. Adachi discloses that the metal cation forms an alloy with lithium in the metallic lithium negative electrode [0011, “When electrochemical deposition and dissolution tests, i.e., charge/discharge tests, were conducted on a lithium metal negative electrode”, “the metal cations of the additive are reduced during charging, and these are alloyed with metallic lithium”]. Adachi is silent regarding the positive electrode, separator, oxalate complex anion, and lithium salt including at least one of the lithium salts recited in claim 1.
Minami teaches analogous art of a lithium secondary battery comprising a non-aqueous electrolyte [page 2, paragraph 1] and a negative electrode wherein lithium metal deposits during charging and dissolves during discharging [page 2, paragraph 5, “A nonaqueous electrolyte secondary battery comprising lithium metal deposited on the negative electrode current collector during charging and the lithium metal being dissolved in the nonaqueous electrolyte at the time of discharging”]. Minami teaches that the nonaqueous electrolyte comprises an oxalate complex anion in a lithium salt [page 2, paragraph 5, “the nonaqueous electrolyte secondary battery comprising: And a lithium salt containing an oxalate complex as an anion”], as well as another electrolyte salt in combination with the lithium salt containing the oxalate complex anion [page 5, paragraph 7, “Although the lithium salt functions as an electrolyte salt, since it decomposes at the negative electrode 12 and its concentration decreases, it is preferable to use another electrolyte salt in combination”]. Minami teaches that the electrolyte salt used in combination with the oxalate complex anion-containing lithium salt may be LiBF4, LiClO4, LiPF6, LiAsF6, LiSbF6, LiAlCl4, or LiSCN [page 6, paragraph 5, “Examples of electrolyte salts used in combination with a lithium salt having an oxalate complex as an anion are LiBF 4, LiClO 4, LiPF 6, LiAsF 6, LiSbF 6, LiAlCl 4, LiSCN”]. In the examples taught by Minami for the non-aqueous electrolyte, the electrolyte salt used in combination with the oxalate complex anion-containing lithium salt is LiPF6, added in a concentration of 1.0 mol/L, which is within the recited range [page 6, paragraph 10, page 7]. Minami also teaches that the secondary battery may comprise a positive electrode and a separator disposed in between the positive electrode and the negative electrode [page 3, paragraph 5, “The electrode body 14 has a positive electrode 11, a negative electrode 12, and a separator 13, and the positive electrode 11 and the negative electrode 12 are spirally wound with a separator 13 interposed therebetween.”].
Minami discloses that swelling of the negative electrode may cause the electrode to break [page 2, paragraph 4, “the electrode may be cut due to the influence of the stress generated by expansion of the negative electrode“]. Minami teaches that including a lithium salt having an oxalate complex anion in the nonaqueous electrolyte causes the lithium metal to uniformly deposit on the negative electrode, which suppresses swelling of the negative electrode [page 2, paragraph 8, “adding a lithium salt having an oxalate complex as an anion in a nonaqueous electrolyte, lithium metal is uniformly deposited on the negative electrode, expansion of the negative electrode Can be suppressed specifically”]. Minami also teaches that since the lithium salt having an oxalate complex anion decomposes and its concentration decreases that is preferable to use another electrolyte salt along with the lithium salt having an oxalate complex anion in the nonaqueous electrolyte [page 5, paragraph 7], and that by using the lithium salt having an oxalate complex anion in combination with LiPF6, the effect of suppressing the swelling of the negative electrode becomes even more pronounced [page 8, paragraph 1].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the nonaqueous electrolyte taught by Adachi to include an oxalate complex anion as taught by Minami in order to cause uniform deposition of lithium metal in the negative electrode to prevent negative electrode swelling and breakage, as well as to include an electrolyte salt such as LiBF4, LiClO4, LiPF6, LiAsF6, LiSbF6, LiAlCl4, or LiSCN in the concentration taught by Minami in order to maintain an electrolyte salt in the nonaqueous electrolyte even as the lithium salt containing an oxalate complex anion decomposes and to further suppress the swelling of the negative electrode. Furthermore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to combine the known positive electrode and separator taught by Minami with the negative electrode and nonaqueous electrolyte taught by Adachi in order to yield the predictable result of obtaining a lithium secondary battery.
Further regarding claim 2, Adachi teaches that the metal cation, which is added to the nonaqueous electrolyte via a metal iodide compound, may be tin (Sn), magnesium (Mg), zinc (Zn), or indium (In) [0010].
Further regarding claim 3, Adachi teaches that the additive including the metal cation may be dissolved in the electrolyte solution in an amount of 10 ppm to 2000 ppm, and even more preferably 100 to 500 ppm relative to the electrolyte [0010]. While Adachi does not specifically teach the concentration of the metal cation in mmol/L, "[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 II A). Adachi teaches that there is a demand for the development of an electrolyte capable of improving the charge/discharge reversibility of the lithium negative electrode [0005]. Adachi further teaches that when the metal iodide additive was used, the reversibility of charge/discharge was greatly improved due to the improvement in precipitation morphology caused by the metal cations [0011]. Therefore, prior to the effective filing date of the claimed invention, a person having ordinary skill would have found it obvious to try to find the optimum range of concentrations of the metal cation from the finite number of identified concentrations taught by Adachi with a reasonable expectation of success (see MPEP 2143 I E).
Further regarding claim 4, Adachi teaches that the additive including the iodide ion may be dissolved in the electrolyte solution in an amount of 10 ppm to 2000 ppm, and even more preferably 100 to 500 ppm relative to the electrolyte [0010]. While Adachi does not specifically teach the concentration of the iodide ion in mmol/L, "[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 II A). Adachi teaches that there is a demand for the development of an electrolyte capable of improving the charge/discharge reversibility of the lithium negative electrode [0005]. Adachi further teaches that when the metal iodide additive was used, the reversibility of charge/discharge was greatly improved due to the suppression of side reactions between the metallic lithium and electrolyte by the iodide ions [0011]. Therefore, prior to the effective filing date of the claimed invention, a person having ordinary skill would have found it obvious to try to find the optimum range of concentrations of the iodide ion from the finite number of identified concentrations taught by Adachi with a reasonable expectation of success (see MPEP 2143 I E).
Further regarding claim 11, modified Adachi teaches the lithium secondary battery of claim 1. Adachi is silent regarding the oxalate complex anion.
Minami teaches that the lithium salt having an oxalate complex anion is preferably has a concentration of 0.01 mol/L, or 100 mmol/L, or more in the electrolyte, which overlaps the recited range [page 6, paragraph 3, “The lithium salt having an oxalate complex as an anion is preferably contained in the nonaqueous electrolyte in a concentration of at least 0.01 M (mol / L)”]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (see MPEP 2144.05 I).
Minami teaches that within the disclosed range, the effect of the oxalate complex anion of suppressing swelling of the negative electrode becomes significant [page 6, paragraph 3].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the lithium secondary battery taught by modified Adachi to include the oxalate complex anion in a concentration within the range disclosed by Minami, in order to significantly suppress swelling of the negative electrode.
Response to Arguments
Applicant's arguments filed 5/6/2026 have been fully considered but they are not persuasive.
Applicant argues that there is no reasonable motivation to combine the prior art references Adachi (JP 2000058120) and Minami (WO 2018179782) [Remarks, pg. 7]. Applicant alleges that the “essential component” of Minami is the oxalate complex salt, and that the inorganic lithium salt is a “supporting component” [Remarks, pgs. 6-7]. Applicant also alleges that the “essential component” of Adachi is the organic fluorine-containing salt, and that therefore, modifying Adachi to include the inorganic lithium salt of Minami at the recited concentration of 0.5 to 2.0 mol/L or replacing the organic fluorine-containing salt with the inorganic lithium salt of Minami is unreasonable [Remarks, pgs. 7-8].
In response to these arguments, it is noted that "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004) (emphasis added) [see MPEP 2123(II))]. Adachi does not criticize, discourage, or discredit the addition of other elements in the electrolyte, such as an inorganic lithium salt, therefore Adachi does not teach away from the claimed subject matter of “the lithium salt … a concentration of the lithium salt being 0.5 mol/L or more and 2.0 mol/L or less”.
Furthermore, Adachi teaches a nonaqueous electrolyte component for formation of an alloy between the lithium metal anode and the metal in the metal iodide additive [0011], but that does not preclude the addition of other electrolyte elements that can further improve battery performance, such as the salts of Minami used to form a solid-electrolyte interface (SEI) [page 3, paragraph 1]. Formation of the SEI would protect the lithium metal anode, thereby ensuring more Li is available for the battery reaction. "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR, 550 U.S. at 421, 82 USPQ2d at 1397. "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle."Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ."Id. at 418, 82 USPQ2d at 1396 [see MPEP 2141(II)(C)]. Therefore, it would have been obvious for a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have fit the teachings of Adachi and Minami together.
The claimed subject matter is rendered obvious over Adachi in view of Minami. Therefore, this argument is considered unpersuasive and the rejection of claims 1-4 and 11 is maintained.
Conclusion
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/M.F.O./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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