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 06/08/2026 have been entered. Claims 1, 3, 5-6, and 9-11 remain pending in this application and are currently under consideration for patentability under 37 CFR 1.104. Claims 7-8 and 12 have been cancelled.
Claim Rejections - 35 USC § 103
2. 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.
3. Claim(s) 1, 3, 6, and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (Pub. No. US 2020/0251778) in view of Watarai et al. (Pub. No. US 20200274199 A1) in view of Lee et al. (Pub. No. US 20220102699 A1).
Regarding claim 1, Choi teaches a lithium secondary battery (1, Fig. 5, see [0029], see [0068] details secondary battery) comprising: a positive electrode (3, Fig. 5, [0029]) comprising a positive electrode active material (see [0072]), a negative electrode (2, Fig. 5, [0029]) comprising a negative electrode active material (see [0082]), a separator (4, Fig. 5, [0029]) interposed between (see Fig. 5, separator 4 is between positive electrode 3 and negative electrode 2) the positive electrode (3, Fig. 5, [0029]) and the negative electrode (2, Fig. 5, [0029]), and an electrolyte solution (see [0068]), wherein the electrolyte solution (see [0068]) comprises a lithium salt (see [0060]), a non-aqueous organic solvent (see [0060]), and a difluorophosphite compound (see [0038], Formula 1, see [0052] it is called a difluorophosphate but structurally the same as a difluorophosphite) represented by the following Chemical Formula 1: ##STR00015## (Compound 1, see [0050] the compound represented by Formula 1 may be compound 1) wherein A is C2-C10 alkylene (C2 alkylene, see Compound 1, [0050]), haloC2-C10 alkylene, or C3-C8 cycloalkylene; R is hydrogen, cyano (cyano, see compound 1, [0050]), C1-C5 alkyl, or haloC1-C5 alkyl; and n is an integer of 0 to 3 (0, see compound 1, [0050]).
Choi fails to explicitly teach in the embodiment of Fig. 5 that the negative electrode active material comprises a silicon-based oxide. However, in a different embodiment Choi teaches that a negative electrode active material (see [0082]) comprises a silicon-based oxide (SiO.sub.x, see [0086]) wherein the silicon-based oxide (SiO.sub.x, see [0086]) is represented by SiO.sub.x (SiO.sub.x, see [0086]) wherein x is a real number satisfying 0<x≤2 (0<x<2, see [0086]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to have the negative electrode active material be comprised of a silicon-based oxide of SiO.sub.x as taught by different embodiments of Choi as Choi teaches it is known in the art to use SiOx wherein (0<x<2) (see [0086]) as a negative electrode active material (see [0082]). Further, it has been held that combining two embodiments disclosed adjacent to each other is a prior art patent does not require a leap of inventiveness and involves only routing skill in the art.
Choi fails to teach wherein the negative electrode active material comprises a mixture of a silicon-based oxide and graphite; and wherein the electrolyte solution comprises a fluorine-substituted cyclic carbonate compound represented by the following Chemical Formula 3, [Chemical Formula 3] wherein R.sub.11 is fluoro; and R.sub.12 to R.sub.14 are independently of one another hydrogen, fluoro, or C1-C4 alkyl.
However, in a similar field of endeavor Watarai teaches wherein the electrolyte solution (non-aqueous electrolyte solution, see [0133]) comprises a fluorine-substituted cyclic carbonate compound (fluorine atom-containing cyclic carbonate, see [0128]) represented by the following Chemical Formula 3, [Chemical Formula 3] (fluoroethylene carbonate, see [0132] where fluoroethylene carbonate is the fluorine atom-containing cyclic carbonate) wherein R.sub.11 is fluoro (fluoro group, see chemical diagram of fluoroethylene carbonate below); and R.sub.12 to R.sub.14 (hydrogen groups connected to carbons, see chemical diagram below) are independently of one another hydrogen (hydrogen groups connected to carbons, see chemical diagram below), fluoro, or C1-C4 alkyl, wherein the fluorine-substituted cyclic carbonate compound (fluorine atom-containing cyclic carbonate, see [0128]) is included at 0.1 to 10 wt% (0.1% by mass or higher and 8.0 by mass or less, see [0134]) with respect to the total weight of the electrolyte solution (non-aqueous electrolyte solution, see [0133]).
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Chemical Diagram Provided by Millipore Sigma
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Choi to add fluoroethylene carbonate in 0.1 to 8.0 % by mass with respect to a total weight of electrolyte as taught by Watarai to contribute to the formation of a stable film-like structure (see [0132] of Watarai).
Choi in view of Watarai fails to teach wherein the negative electrode active material comprises a mixture of a silicon-based oxide and graphite.
However, Lee teaches wherein the negative electrode active material (negative electrode active material, see [0119]) comprises a mixture of a silicon-based oxide (silicon oxide, see [0119]) and graphite (artificial graphite, see [0119]), and wherein the silicon-based oxide (silicon oxide, see [0119]) and the graphite artificial graphite, see [0119]) are included at a weight ratio of 1:9 (1:9, see [0119] where graphite and silicon oxide are in a weight ratio of 9:1) to 3:7.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Choi in view of Watarai such that the negative electrode active material is a mixture of silicon based oxide and graphite in a weight ratio of 1:9 as taught by Lee to achieve improved cycle characteristics (see [0011] of Lee). Further, Choi in view of Watarai teaches wherein the negative electrode active material may comprise a mix of silicon oxide and graphite (see [0083] where the negative active material is at least one of a non-transitional metal oxide and a carbonaceous material therefore could be both, see [0086] where the non-transition metal oxide is silicon oxide, see [[0087] where the carbonaceous material is graphite).
Regarding claim 3, Choi in view Watarai and further in view of Lee teaches wherein the silicon-based oxide (SiO.sub.x (0<x<2), see [0086], see modifications above) and the graphite (see modification of Choi in view of Watarai above) are included at a weight ratio of 1:9 (1:9, see [0119] of Lee, see modifications above) to 3:7.
Regarding claim 6, Choi in view of Watarai and further in view of Lee teaches wherein the difluorophosphite compound (see [0038], Formula 1, see [0052] it is called a difluorophosphate but structurally the same as a difluorophosphite) is included at 0.1 to 5 wt % (see [0061]) with respect to a total weight of the electrolyte solution (see [0068], further see [0061]).
Regarding claim 9, Choi in view of Watarai and further in view of Lee teaches wherein the fluorine-substituted cyclic carbonate compound (fluorinated ethylene carbonate, see modification of Choi above) is included at 0.1 to 10 wt % (5-10 wt%, see modification of Choi above) with respect to the total weight of the electrolyte solution (see modification of Choi above).
Regarding claim 10, Choi in view of Watarai and further in view of Lee fails to teach wherein the positive electrode active material comprises Li.sub.x1(Ni.sub.a1Co.sub.b1Mn.sub.c1)O.sub.2 (0.5<x1<1.3, 0<a1<1, 0<b1<1, 0<c1<1, a1+b1+c1=1), Li.sub.x2(Ni.sub.a2Co.sub.b2Mn.sub.c2)O.sub.4 (0.5<x2<1.3, 0<a2<2, 0<b2<2, 0<c2<2, a2+b2+c2=2), or a mixture thereof.
However, Choi teaches that the positive electrode active material (see [0072]) comprises Li.sub.x1(Ni.sub.a1Co.sub.b1Mn.sub.c1)O.sub.2 (see [0075] LiNi.sub.1-x-yCo.sub.xMn.sub.yO.sub.2 wherein 0≤x≤0.5 and 0≤y≤0.5, x1=1, 0≤a1≤1, 0≤b1≤0.5, 0≤c1≤0.5, a1+b1+c1=1 because a1=1-b1-c1).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Choi in view of Watarai in view of Lee such that the range of a1, b1, and c1 as stays in the range of 0<a1<1, 0<b1<0.5, 0<c1<0.5 as further taught by Choi as a prima facie case of obviousness exists “in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art” (MPEP 2144.05.I).
Regarding claim 11, Choi in view of Watarai and further in view of Lee teaches wherein the positive electrode active material (see [0072]) is Li.sub.x1(Ni.sub.a1Co.sub.b1Mn.sub.c1)O.sub.2 (see [0075] LiNi.sub.1-x-yCo.sub.xMn.sub.yO.sub.2 (wherein 0≤x≤0.5 and 0≤y≤0.5)) wherein 0.95≤x1≤1.10 (see [0075], x1=1), and a1+b1+c1=1 (see [0075], a1=1-b1-c1), but fails to teach 0.5≤a1<0.99. However, Choi teaches the encompassing range of 0≤a1≤1 (see [0075]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify the range of a1 as taught by Choi in view of Watarai and further in view of Lee to be 0.5≤a1<0.99 as taught by the encompassing range of Choi as a prima facie case of obviousness exists “in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art” (MPEP 2144.05.I).
4. Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (Pub. No. US 2020/0251778) in view of Watarai et al. (Pub. No. US 20200274199 A1) in view of Lee et al. (Pub. No. US 20220102699 A1) as applied to claim 1 above, and further in view of Cho et al. (Pub. No. KR 2019/0101876).
Regarding claim 5, Choi in view of Watarai and further in view of Lee fails to teach wherein the difluorophosphite compound of Chemical Formula 1 is represented by the following Chemical Formula 2:
R.sub.1—OPF.sub.2 [Chemical Formula 2] wherein R.sub.1 is C3-C8 alkyl.
However, Cho teaches wherein the difluorophosphite compound (see [64]) is represented by the following Chemical Formula 2:
R.sub.1—OPF.sub.2 (Formula 2, see [65]) [Chemical Formula 2] wherein R.sub.1 is C3-C8 alkyl (see [74], R is hydrogen, and n is an integer of 3-8 which is equivalent to R.sub.1 being C3-C8 alkyl).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Choi in view of Watarai and further in view of Lee to substitute the difluorophosphite compound as taught by Choi in view of Kim in view of Lee for the difluorophosphite compound represented by Formula 2 as taught by Cho as an art effective equivalent electrolyte additive for improving high temperature stability and preventing deterioration characteristics (see [43] of Cho).
Response to Arguments
5. Applicant's arguments filed 06/08/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that the advantageous effects of improved cycle-life characteristics, high-temperature stability, and low-temperature characteristics without capacity degradation even under high voltage conditions is only achieved when the specific combination of a mixture of silicon based oxide and graphite, and an electrolyte solution having a specific composition and not inherent effects that would naturally result from a mere combination of the cited references, 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 the applicant’s arguments that the combination of Kim and Choi the specific combination of features of the present invention and effects achieved therefrom could not be obviously derived or predicted. This argument is moot as the current rejection of record does not rely on the same combination of references previously cited, specifically Kim is not longer relied upon.
Regarding applicant’s argument that Choi merely discloses possible material in a broad and general manner and does not teach the specific combination of a mixed negative electrode comprising as silicon-based oxide and graphite, and an electrolyte solution comprising a difluorophosphite compound having a specific structure and a fluorine-substituted cyclic carbonate compound having a specific structure. This argument is moot as the rejection of record does not rely on Choi alone and instead relies on a combination of references, and it has been held that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Regarding applicant’s argument that the specific combination of Choi and Kim would not have obvious for one of ordinary skill in the art because Kim discloses the benefits of including fluoroethylene carbonate are achieved through the combination of addition of fluoroethylene carbonate and a magnesium salt. This argument is moot as the current rejection of record no longer relies on the same combination of references previously applied.
Regarding applicant’s arguments that the combination of Lee and Kim and Choi could not have obviously derived or predicted the specific combination of features of the present invention and the effects achieved therefrom. This argument is moot as the current rejection of record no longer relies on the same combination of references previously applied.
Regarding applicant’s arguments that Lee does not teach the specific concept of combining a specific negative electrode active material with an electrolyte solution having a specific composition. This argument is moot as the rejection of record does not rely on Lee alone and instead relies on a combination of references, and it has been held that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Regarding applicant’s arguments that the combination of Choi and Kim and Lee amounts to an ex post facto analysis based on prior knowledge of the present invention. This argument is moot as the current rejection of record no longer relies on the same combination of references previously applied.
Regarding applicant’s argument that the combination of Choi, Lee, Kim, and Cho would not have been able to obviously derive the specific combination of features and effects achieved therefrom. This argument is moot as the current rejection of record no longer relies on the same combination of references previously applied.
Regarding applicant’s arguments that Cho does not teach a combination of a mixed negative electrode comprising a silicon-based oxide and graphite with an electrolyte solution. This argument is moot as the rejection of record does not rely on Cho alone and instead relies on a combination of references, and it has been held that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Regarding applicant’s arguments that the examples and comparative examples provided in the instant specification show that the remarkable effects are achieved only when an electrolyte solution having a specific composition is used together. This argument is moot because 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 applicant’s argument that the electrolyte solution composition of the present invention would not have been obvious by extracting the fluorine-substituted carbonate FEC from Kim. This argument is moot as the current rejection of record no longer relies on the same combination of references previously applied.
Regarding applicant’s argument that the innovative synergistic effect of reduced gas generation as approximately one-sixth of that of the graphite-only negative electrode and maximized cycle-life stability could not have been predicted merely from the disclosure of the silicon/graphite ratio described in Lee. This argument is moot the rejection of record does not rely on Lee alone and instead relies on a combination of references, and it has been held that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986), and further 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 applicant’s argument that Lee does not teach battery characteristics achieved by combination with a specific electrolyte solution composition, and thus the synergistic effect of the present invention could not have been obviously derived. This argument is moot the rejection of record does not rely on Lee alone and instead relies on a combination of references, and it has been held that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986), and further 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 applicant’s argument that the example provided in the instant specification clearly demonstrate significant effects of gas generation suppression and delayed venting effects can only be achieved by the specific combination of a specific negative electrode active material and an electrolyte solution for that specific combination. This argument is moot as 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 applicant’s argument that the effects of the present invention could not have been obviously derived from the combination of Choi, Kim, Lee, and Cho and it is instead an ex post facto analysis based on prior knowledge of the present invention. This argument is moot as the current rejection of record no longer relies on the same combination of references previously applied.
Conclusion
6. 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.
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/DOUGLAS C MARROQUIN/Examiner, Art Unit 1723 /TIFFANY LEGETTE/Supervisory Patent Examiner, Art Unit 1723
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