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 .
The Applicant’s amendment filed on 4/24/2026 was received. Claims 1, 14 were amended. Claim 4 was cancelled. Claim 21 was newly added.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office action issued on 1/27/2026.
Claim Rejections - 35 USC § 103
Claims 1-6, 8-12, 14-18, 20 remain rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20190198865 A1) in view of Zhang et al. (CN 105261790 A). The rejections are restated below to address the amendment.
Regarding to claim 1: Kim et al. disclose a lithium battery (30) (equivalent to an electrode assembly) (abstract) comprising:
an electrolyte (24) (equivalent to an electrolytic solution) (par. 74, figure 2A), wherein the electrolytic solution comprises fluoroethylene carbonate and/or other solvents (par. 126, 127); and
an anode (20) (equivalent to a negative electrode) (par. 30, figure 2A), wherein the anode (20) comprises a second anode layer (11b) (equivalent to an active material) (par. 30, figure 1) and an inorganic protection layer (12) (par. 30, figures 1, 2A) covering the second anode layer (11b) (figure 1), the inorganic protection layer (12) is located between the electrolyte (24) and the second anode layer (11b) (figure 1, 2A), the inorganic protection layer (12) is in contact with the electrolyte (24) (figure 2A), the second anode layer (11b) comprises lithium metal (par. 60), and the protection layer can be a metal oxide (e.g., silica (SiO2) or alumina (Al2O3) (par. 66).
Kim et al. fail to explicitly disclose a weight percentage of the fluoroethylene carbonate in a total mass of the solvent and the additive is 10% to 30%. However, Zhang et al. disclose a lithium-ion battery comprising an electrolyte (par. 2). The electrolyte comprises an organic solvent, a lithium salt, and an additive (par. 14). The additive comprises an additive A and fluoroethylene carbonate (par. 14). The content of the fluoroethylene carbonate is 10% to 40% of the total weight of the electrolyte (par. 21). The battery comprises a silicon-based (silicon oxides (par. 25)) negative electrode (par. 21). Zhang et al. teach that when an electrolyte containing additive A and fluoroethylene carbonate is applied to a lithium-ion battery, the cycle performance of the lithium-ion battery, especially the silicon-based negative electrode lithium-ion battery, can be improved (par. 8). Zhang et al. further recognize when the content of fluoroethylene carbonate in the electrolyte is too low, the active interface of the negative electrode, especially the active interface of the silicon-based negative electrode, cannot be effectively protected; and when the content of fluoroethylene carbonate in the electrolyte is too high, the electrolyte and the positive electrode material will have side reactions, causing damage to the positive electrode active material (par. 21). Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention can adjust the concentration of fluoroethylene carbonate to yield the desired protection of the negative electrode and avoid the damage of the positive electrode. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Kim et al. and Zhang et al. fail to explicitly disclose in the active material and the protection layer, a volume ratio between lithium and silicon is greater than 10 : 1. However, Kim et al. disclose a thickness of the second anode layer (11b) may be in a range about 1,000 μm to about 1 μm (par. 62). A thickness of the inorganic protection layer (12) may be about 100 nm or less, about 60 nm or less, about 50 nm or less, about 40 nm or less, about 30 nm or less, about 20 nm or less, or about 10 nm or less (par. 69).
As Kim et al. disclose the second anode layer (11b) and the inorganic protection layer (12) can be lithium and metal oxide, respectively, in Examples 1, 2, the volume ratio between lithium and SiO2 is related to the thickness of each layer. The thicker second anode layer (11b) and inorganic protection layer (12) result in higher lithium and SiO2 volumes, respectively.
Examiner takes the following thickness as an example to roughly calculate the volume ratio between lithium and SiO2. The thickness of the second anode layer (11b) (comprising lithium metal (par. 60)) is 1 μm, and the thickness of the inorganic protection layer (12) (comprising silica (SiO2) (par. 66)) is 10 nm. The volume ration be between lithium and SiO2 is 100:1. Therefore, The volume ration be between lithium and Si is greater than 100:1.
In addition, Kim et al. further recognize as the number of charging/discharging cycles are variables that can be modified, among others, by adjusting the thickness of the second anode layer (11b) (par. 59), with the number of charging/discharging cycles is variable increasing as the thickness of the second anode layer (11b) is increased, the precise thickness of the second anode layer (11b) would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention.
Kim et al. further recognize as the lifespan characteristics of the anode are variables that can be modified, among others, by adjusting the thickness of the inorganic protection layer (12) (par. 63, 67-69), with the lifespan characteristics of the anode are variable increasing as the thickness of the inorganic protection layer (12) is controlled within the desired thickness, the precise thickness of inorganic protection layer (12) would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention.
As the volume ratio between lithium and Si is related to the thickness of the second anode layer (11b) and the inorganic protection layer (12), without showing unexpected results, the claimed volume ratio between lithium and Si cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the volume ratio between lithium and Si by adjusting the thickness of the second anode layer (11b) and the inorganic protection layer (12) in the anode of Kim et al.to obtain the desired number of charging/discharging cycles and lifespan characteristics as taught by Kim et al. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
In addition, it is the position of the examiner that disclosure provides no evidence of criticality with regard to the volume ratio of lithium and silicon in the active material and the protection.
Regarding to claim 2: Kim et al. disclose a thickness of the inorganic protection layer (12) may be about 100 nm (equivalent to 0.1 µm) or less (par. 69). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding to claim 3: Kim et al. disclose the second anode layer (11b) comprises lithium metal (par. 60).
Regarding to claim 5: Kim et al. disclose the inorganic protection layer (12) can be silica (SiO2) (par. 66).
Regarding to claim 6: Kim et al. disclose the organic solvents in the electrolyte (24) may be propylene carbonate, ethylene carbonate, fluoroethylene carbonate, vinylethylene carbonate, diethyl carbonate, methylethyl carbonate, methylpropyl carbonate, butylene carbonate, benzonitrile, acetonitrile, tetrahydrofuran, 2-methyltetrahydrofuran, y-butyrolactone, dioxorane, 4-methyldioxorane, N,N-dimethyl formamide, dimethyl acetamide, dimethylsulfoxide, dioxane, 1,2-dimethoxyethane, sulforane, dichloroethane, chlorobenzene, nitrobenzene, dimethyl carbonate, methylisopropyl carbonate, succinonitrile, diethyl glycol dimethyl ether, tetraethylene glycol dimethyl ether, triethyl glycol dimethyl ether, polyethyl glycol dimethyl ether, ethylpropyl carbonate, dipropyl carbonate, dibutyl carbonate, diethylene glycol, dimethyl ether, or a mixture thereof (par. 127).
Regarding to claim 8: Kim et al. disclose the lithium battery (30) includes a cathode (21) (equivalent to a positive electrode) (par. 74, figure 2A) and a separator (24c) (par. 78, figure 2C).
Regarding to claim 9: Kim et al. disclose the lithium battery (30) as described above. Kim et al. fail to explicitly disclose a weight percentage of the fluoroethylene carbonate in a total mass of the solvent and the additive is 10% to 20%. %. However, Zhang et al. disclose a lithium-ion battery comprising an electrolyte (par. 2). The electrolyte comprises an organic solvent, a lithium salt, and an additive (par. 14). The additive comprises an additive A and fluoroethylene carbonate (par. 14). The content of the fluoroethylene carbonate is 10% to 40% of the total weight of the electrolyte (par. 21). The battery comprises a silicon-based (silicon oxides (par. 25)) negative electrode (par. 21). Zhang et al. teach that when an electrolyte containing additive A and fluoroethylene carbonate is applied to a lithium-ion battery, the cycle performance of the lithium-ion battery, especially the silicon-based negative electrode lithium-ion battery, can be improved (par. 8). Zhang et al. further recognize when the content of fluoroethylene carbonate in the electrolyte is too low, the active interface of the negative electrode, especially the active interface of the silicon-based negative electrode, cannot be effectively protected; and when the content of fluoroethylene carbonate in the electrolyte is too high, the electrolyte and the positive electrode material will have side reactions, causing damage to the positive electrode active material (par. 21). Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention can adjust the concentration of fluoroethylene carbonate to yield the desired protection of the negative electrode and avoid the damage of the positive electrode. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding to claim 10: Kim et al. disclose the lithium battery (30) as described above. Kim et al. fail to explicitly disclose a weight percentage of the fluoroethylene carbonate in a total mass of the solvent and the additive is 15% to 30%. However, Zhang et al. disclose a lithium-ion battery comprising an electrolyte (par. 2). The electrolyte comprises an organic solvent, a lithium salt, and an additive (par. 14). The additive comprises an additive A and fluoroethylene carbonate (par. 14). The content of the fluoroethylene carbonate is 10% to 40% of the total weight of the electrolyte (par. 21). The battery comprises a silicon-based (silicon oxides (par. 25)) negative electrode (par. 21). Zhang et al. teach that when an electrolyte containing additive A and fluoroethylene carbonate is applied to a lithium-ion battery, the cycle performance of the lithium-ion battery, especially the silicon-based negative electrode lithium-ion battery, can be improved (par. 8). Zhang et al. further recognize when the content of fluoroethylene carbonate in the electrolyte is too low, the active interface of the negative electrode, especially the active interface of the silicon-based negative electrode, cannot be effectively protected; and when the content of fluoroethylene carbonate in the electrolyte is too high, the electrolyte and the positive electrode material will have side reactions, causing damage to the positive electrode active material (par. 21). Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention can adjust the concentration of fluoroethylene carbonate to yield the desired protection of the negative electrode and avoid the damage of the positive electrode. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding to claim 11: Kim et al. disclose the thickness of the inorganic protection layer (12) may be about 100 nm (equivalent to 0.1 µm) or less (par. 69). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding to claim 12: Kim et al. disclose the thickness of the inorganic protection layer 12 may be about 100 nm (equivalent to 0.1 µm) or less (par. 69). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding to claim 14: Kim et al. disclose a battery pack (equivalent to an electrochemical device) that is formed by a plurality of lithium batteries (30) (equivalent to an electrode assembly) (par. 132). The lithium battery (30) comprising:
an electrolyte (24) (equivalent to an electrolytic solution) (par. 74, figure 2A), wherein the electrolytic solution comprises fluoroethylene carbonate and/or other solvents (par. 126, 127); and
an anode (20) (equivalent to a negative electrode) (par. 30, figure 2A), wherein the anode (20) comprises a second anode layer (11b) (equivalent to an active material) (par. 30, figure 1) and an inorganic protection layer (12) (par. 30, figures 1, 2A) covering the second anode layer (11b) (figure 1), the inorganic protection layer (12) is located between the electrolyte (24) and the second anode layer (11b) (figure 1, 2A), the inorganic protection layer (12) is in contact with the electrolyte (24) (figure 2A), the second anode layer (11b) comprises lithium metal (par. 60), and the protection layer can be a metal oxide (e.g., silica (SiO2) or alumina (Al2O3) (par. 66).
Kim et al. fail to explicitly disclose a weight percentage of the fluoroethylene carbonate in a total mass of the solvent and the additive is 10% to 30%. However, Zhang et al. disclose a lithium-ion battery comprising an electrolyte (par. 2). The electrolyte comprises an organic solvent, a lithium salt, and an additive (par. 14). The additive comprises an additive A and fluoroethylene carbonate (par. 14). The content of the fluoroethylene carbonate is 10% to 40% of the total weight of the electrolyte (par. 21). The battery comprises a silicon-based (silicon oxides (par. 25)) negative electrode (par. 21). Zhang et al. teach that when an electrolyte containing additive A and fluoroethylene carbonate is applied to a lithium-ion battery, the cycle performance of the lithium-ion battery, especially the silicon-based negative electrode lithium-ion battery, can be improved (par. 8). Zhang et al. further recognize when the content of fluoroethylene carbonate in the electrolyte is too low, the active interface of the negative electrode, especially the active interface of the silicon-based negative electrode, cannot be effectively protected; and when the content of fluoroethylene carbonate in the electrolyte is too high, the electrolyte and the positive electrode material will have side reactions, causing damage to the positive electrode active material (par. 21). Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention can adjust the concentration of fluoroethylene carbonate to yield the desired protection of the negative electrode and avoid the damage of the positive electrode. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Kim et al. and Zhang et al. fail to explicitly disclose in the active material and the protection layer, a volume ratio between lithium and silicon is greater than 10 : 1. However, Kim et al. disclose a thickness of the second anode layer (11b) may be in a range about 1,000 μm to about 1 μm (par. 62). A thickness of the inorganic protection layer (12) may be about 100 nm or less, about 60 nm or less, about 50 nm or less, about 40 nm or less, about 30 nm or less, about 20 nm or less, or about 10 nm or less (par. 69).
As Kim et al. disclose the second anode layer (11b) and the inorganic protection layer (12) can be lithium and metal oxide, respectively, in Examples 1, 2, the volume ratio between lithium and SiO2 is related to the thickness of each layer. The thicker second anode layer (11b) and inorganic protection layer (12) result in higher lithium and SiO2 volumes, respectively.
Examiner takes the following thickness as an example to roughly calculate the volume ratio between lithium and SiO2. The thickness of the second anode layer (11b) (comprising lithium metal (par. 60)) is 1 μm, and the thickness of the inorganic protection layer (12) (comprising silica (SiO2) (par. 66)) is 10 nm. The volume ration be between lithium and SiO2 is 100:1. Therefore, The volume ration be between lithium and Si is greater than 100:1.
In addition, Kim et al. further recognize as the number of charging/discharging cycles are variables that can be modified, among others, by adjusting the thickness of the second anode layer (11b) (par. 59), with the number of charging/discharging cycles is variable increasing as the thickness of the second anode layer (11b) is increased, the precise thickness of the second anode layer (11b) would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention.
Kim et al. further recognize as the lifespan characteristics of the anode are variables that can be modified, among others, by adjusting the thickness of the inorganic protection layer (12) (par. 63, 67-69), with the lifespan characteristics of the anode are variable increasing as the thickness of the inorganic protection layer (12) is controlled within the desired thickness, the precise thickness of inorganic protection layer (12) would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention.
As the volume ratio between lithium and Si is related to the thickness of the second anode layer (11b) and the inorganic protection layer (12), without showing unexpected results, the claimed volume ratio between lithium and Si cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the volume ratio between lithium and Si by adjusting the thickness of the second anode layer (11b) and the inorganic protection layer (12) in the anode of Kim et al.to obtain the desired number of charging/discharging cycles and lifespan characteristics as taught by Kim et al. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
In addition, it is the position of the examiner that disclosure provides no evidence of criticality with regard to the volume ratio of lithium and silicon in the active material and the protection.
Regarding to claim 15: Kim et al. disclose the lithium battery (30) as described above. Kim et al. fail to explicitly disclose a weight percentage of the fluoroethylene carbonate in a total mass of the solvent and the additive is 10% to 20%. %. However, Zhang et al. disclose a lithium-ion battery comprising an electrolyte (par. 2). The electrolyte comprises an organic solvent, a lithium salt, and an additive (par. 14). The additive comprises an additive A and fluoroethylene carbonate (par. 14). The content of the fluoroethylene carbonate is 10% to 40% of the total weight of the electrolyte (par. 21). The battery comprises a silicon-based (silicon oxides (par. 25)) negative electrode (par. 21). Zhang et al. teach that when an electrolyte containing additive A and fluoroethylene carbonate is applied to a lithium-ion battery, the cycle performance of the lithium-ion battery, especially the silicon-based negative electrode lithium-ion battery, can be improved (par. 8). Zhang et al. further recognize when the content of fluoroethylene carbonate in the electrolyte is too low, the active interface of the negative electrode, especially the active interface of the silicon-based negative electrode, cannot be effectively protected; and when the content of fluoroethylene carbonate in the electrolyte is too high, the electrolyte and the positive electrode material will have side reactions, causing damage to the positive electrode active material (par. 21). Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention can adjust the concentration of fluoroethylene carbonate to yield the desired protection of the negative electrode and avoid the damage of the positive electrode. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding to claim 16: Kim et al. disclose the lithium battery (30) as described above. Kim et al. fail to explicitly disclose a weight percentage of the fluoroethylene carbonate in a total mass of the solvent and the additive is 15% to 30%. %. However, Zhang et al. disclose a lithium-ion battery comprising an electrolyte (par. 2). The electrolyte comprises an organic solvent, a lithium salt, and an additive (par. 14). The additive comprises an additive A and fluoroethylene carbonate (par. 14). The content of the fluoroethylene carbonate is 10% to 40% of the total weight of the electrolyte (par. 21). The battery comprises a silicon-based (silicon oxides (par. 25)) negative electrode (par. 21). Zhang et al. teach that when an electrolyte containing additive A and fluoroethylene carbonate is applied to a lithium-ion battery, the cycle performance of the lithium-ion battery, especially the silicon-based negative electrode lithium-ion battery, can be improved (par. 8). Zhang et al. further recognize when the content of fluoroethylene carbonate in the electrolyte is too low, the active interface of the negative electrode, especially the active interface of the silicon-based negative electrode, cannot be effectively protected; and when the content of fluoroethylene carbonate in the electrolyte is too high, the electrolyte and the positive electrode material will have side reactions, causing damage to the positive electrode active material (par. 21). Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention can adjust the concentration of fluoroethylene carbonate to yield the desired protection of the negative electrode and avoid the damage of the positive electrode. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding to claim 17: Kim et al. disclose the thickness of the inorganic protection layer (12) may be about 100 nm (equivalent to 0.1 µm) or less (par. 69). ). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding to claim 18: Kim et al. disclose the thickness of the inorganic protection layer (12) may be about 100 nm (equivalent to 0.1 µm) or less (par. 69). ). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding to claim 20: Kim et al. disclose any suitable device (equivalent to an electronic device), for example, a laptop computer, a smart phone, or an electric vehicle, can use a battery pack (equivalent to an electrochemical device) that is formed by a plurality of the lithium batteries (30) (par. 132).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20190198865 A1) and Zhang et al. (CN 105261790 A) as applied in claim 1, and further in view of Morinaka et al. (US 20200313236 A1).
Regarding to claim 7: Kim et al. disclose the lithium battery (30) as described in paragraph 2 above. Kim et al. fail to explicitly disclose the electrolytic solution further comprises vinylene carbonate. However, Morinak et al. disclose an additive for a non-aqueous electrolyte solution (abstract). The electrolyte solution can comprise additives of vinylene carbonate and fluoroethylene carbonate (par. 81). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to add vinylene carbonate of Morinak et al. in the electrolyte (24) of Kim et al. because Morinak et al. teach that vinylene carbonate can have overcharge prevention effect, negative electrode film-forming effect, and positive electrode protection effect (par. 81).
Claim 13 remains rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20190198865 A1) and Zhang et al. (CN 105261790 A) as applied in claim 1, and further in view of Guo et al. (CN104617259 A).
Regarding to claim 13: Kim et al. disclose the lithium battery (30) as described in paragraph 2 above. Kim et al. fail to explicitly disclose a thickness of the protection layer is 1 µm to 50 µm. However, Guo et al. disclose a method of growing an in-situ protective layer of silicon dioxide on metallic lithium to inhibit the growth of lithium dendrites, and effectively controls the thickness of the protective layer by controlling the reaction time, the amount of reactants, etc. (par. 7). The thickness of the protective layer in Guo et al. ranges from 50nm to 2µm in Example 1-10. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the thickness of the in-situ protective layer of Guo et al. as the thickness of the inorganic protection layer (12) of Kim et al. because Guo et al. teach that the in-situ grown protective layer can effectively inhibit the growth of lithium dendrites, thereby improving the cycle performance of lithium secondary batteries (par. 7). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Claim 19 remains rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20190198865 A1) and Zhang et al. (CN 105261790 A) as applied in claim 14, and further in view of Guo et al. (CN104617259 A).
Regarding to claim 19: Kim et al. disclose the lithium battery (30) as described in paragraph 2 above. Kim et al. fail to explicitly disclose a thickness of the protection layer is 1 µm to 50 µm. However, Guo et al. disclose a method of growing an in-situ protective layer of silicon dioxide on metallic lithium to inhibit the growth of lithium dendrites, and effectively controls the thickness of the protective layer by controlling the reaction time, the amount of reactants, etc. (par. 7). The thickness of the protective layer in Guo et al. ranges from 50nm to 2µm in Example 1-10. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the thickness of the in-situ protective layer of Guo et al. as the thickness of the inorganic protection layer (12) of Kim et al. because Guo et al. teach that the in-situ grown protective layer can effectively inhibit the growth of lithium dendrites, thereby improving the cycle performance of lithium secondary batteries (par. 7). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Claim 13 remains rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20190198865 A1) and Zhang et al. (CN 105261790 A) as applied in claim 1, and further in view of Wang et al. (US 20130177808 A1).
Regarding to claim 13: Kim et al. disclose the lithium battery (30) as described in paragraph 2 above. Kim et al. fail to explicitly disclose an anode protector of a lithium-ion battery thickness of the protection layer is 1 µm to 50 µm. However, Wang et al. disclose an anode protector of a lithium-ion battery (abstract). The battery comprises an anode (102) (equivalent to a negative electrode) (par. 31). A passivation protector (110) (equivalent to a protection layer) is disposed on the surface of the anode (102) and in contact with a electrolyte solution (108) (par. 31, fig. 1B). The passivation protector (110) includes a silicon oxide (SiO2) (par. 37). The anode (102) includes an anode active material (102b). The anode active material (102b) can be LiAl (par. 32). The thickness of the passivation protector (110) is about 1 nm to 1 µm (par. 31). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the thickness of the passivation protector (110) of Wang et al. as the thickness of the inorganic protection layer (12) of Kim et al. because Wang et al. teach that the passivation protector, formed on the surface of the anode, can make the lithium-ion battery operate at high temperature and have a good battery efficiency (par. 19). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
In addition, Wang et al. recognize it is important to control the thickness of the passivation protector (110) to both extend the lifetime of the battery at high temperature and promote the electrochemistry reaction of charge and discharge of the battery. The anode (102) cannot be effectively protected if the passivation protector (110) is too thin. On the other hand, the transfer of electrons and lithium ions between the anode (102) and the cathode (104) is impeded if the passivation protector (110) is too thick (par. 38). Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention can adjust the thickness of the passivation protector (110) to yield the optimum balance between the protection of the anode (102) and the electrochemistry reaction. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Claim 19 remains rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20190198865 A1) and Zhang et al. (CN 105261790 A) as applied in claim 14, and further in view of Wang et al. (US 20130177808 A1).
Regarding to claim 19: Kim et al. disclose the lithium battery (30) as described in paragraph 2 above. Kim et al. fail to explicitly disclose an anode protector of a lithium-ion battery thickness of the protection layer is 1 µm to 50 µm. However, Wang et al. disclose an anode protector of a lithium-ion battery (abstract). The battery comprises an anode (102) (equivalent to a negative electrode) (par. 31). A passivation protector (110) (equivalent to a protection layer) is disposed on the surface of the anode (102) and in contact with a electrolyte solution (108) (par. 31, fig. 1B). The passivation protector (110) includes a silicon oxide (SiO2) (par. 37). The anode (102) includes an anode active material (102b). The anode active material (102b) can be LiAl (par. 32). The thickness of the passivation protector (110) is about 1 nm to 1 µm (par. 31). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the thickness of the passivation protector (110) of Wang et al. as the thickness of the inorganic protection layer (12) of Kim et al. because Wang et al. teach that the passivation protector, formed on the surface of the anode, can make the lithium-ion battery operate at high temperature and have a good battery efficiency (par. 19). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
In addition, Wang et al. recognize it is important to control the thickness of the passivation protector (110) to both extend the lifetime of the battery at high temperature and promote the electrochemistry reaction of charge and discharge of the battery. The anode (102) cannot be effectively protected if the passivation protector (110) is too thin. On the other hand, the transfer of electrons and lithium ions between the anode (102) and the cathode (104) is impeded if the passivation protector (110) is too thick (par. 38). Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention can adjust the thickness of the passivation protector (110) to yield the optimum balance between the protection of the anode (102) and the electrochemistry reaction. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Allowable Subject Matter
Claim 21 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: claim 21 is drawn to the protection layer comprises a silicon-containing alloy SiMy, wherein, y < 0.05, and M is at least one of B, Al, P, Fe, Co, Ni, Zn, Ge, Ga, As, Zr, In, or Sn. The closest reference, Kim et al. (US 20190198865 A1), and other references, Guo et al. (CN104617259 A), Wang et al. (US 20130177808 A1), and Zhang et al. (CN 105261790 A) do not teach the protection layer comprises a silicon-containing alloy SiMy, wherein, y < 0.05, and M is at least one of B, Al, P, Fe, Co, Ni, Zn, Ge, Ga, As, Zr, In, or Sn.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Amendment
Applicant’s arguments filed on 4/24/2026 have been fully considered. Applicant primarily argues:
The Claimed Ratio Is Not a Simple Thickness Ratio
No Teaching or Motivation in Kim to optimize this volume ratio
The Ratio Reflects Coordinated Material Design and Demonstrates Unexpected Results
The Proposed Modification Renders Kim Unsatisfactory for Its Intended Purpose.
The Proposed Method is Not Technically Feasible
In response:
Applicant’s argument is not persuasive. Kim teaches the second anode layer (11b) and the inorganic protection layer (12) are formed of lithium and alumina, respectively, in Example 1 (par. 125-137) and Example 2 (par. 142). Alumina can be replaced with silica as Kim teaches both are function equivalent metal oxides in the inorganic protection layer (12) (par. 66).
Applicant’s argument is not persuasive. The volume ratio is related to the thickness ratio as described in paragraph 2 above. The number of charging/discharging cycles and the lifespan characteristics can be modified by adjust the thickness of the second anode layer (11b) and the inorganic protection layer (12). Thus, one of ordinary skill in the art would optimize the thickness of the second anode layer (11b) and the inorganic protection layer (12) (which is related to the volume ratio between lithium and silicon ) to get the desired the number of charging/discharging cycles and the lifespan characteristics.
Applicant’s argument is not persuasive. The silicon-lithium reaction (Si + xLi → LixSi) and the technical objectives (reducing side reactions between lithium and electrolyte, suppressing dendrite growth, stabilizing the SEI film, and improving long-term cycle performance) are not recited in the instant claim. Thus, the silicon-lithium reaction and the technical objectives don’t have patentable weight.
Regarding to commensurability, Applicant’s argument is not persuasive because:
The results in table 1 do not show the results above 30% of FEC with the silicon-containing protection layer.
The results in table 1 do not show the results with many other silicon-containing compounds/alloys as the protection layer.
The results in table 1 do not show the results of the volume ratio between lithium and silicon.
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02(d). In addition, a greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected. See MPEP 716.02(a)(I).
Applicant’s argument is not persuasive. The intended purpose of the inorganic protection layer (12) of Kim is to suppress a side reaction between the second anode layer (11b) and the electrolyte (par. 63 in Kim). Guo discloses the silicon dioxide protective layer can effectively inhibit the growth of lithium dendrites (par. 81 in Guo). Wang discloses the passivation protector (110) may suppress the decomposition of the electrolyte solution (108) on the surface of the anode active material (102b) (par. 37 in Wang). Therefore, Kim, Guo, and Wang all use the protection layer to avoid the side reactions. Wang et al. further recognize the performance of the battery at high temperature improves with the thickness of the passivation protector is increases (par. 38 in Wang). Thus, one of ordinary skill in the art would increase the passivation protector for the battery used in high temperature. ‘[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine’" (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed. Cir. 2006). See MPEP 2143.01 V.
Applicant’s argument is not persuasive. Wang et al. teach the thickness of the passivation protector can be 1µm (par. 16), and the film deposition method includes atomic layer deposition (ALD), chemical vapor deposition (CVD), or pulse laser deposition (par. 17). Thus, one of ordinary skill in the art can use the methods taught by Wang to obtain 1µm thick of the passivation protector layer.
Conclusion
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 PIN JAN WANG whose telephone number is (571)272-7057. The examiner can normally be reached M-F 9am-5pm.
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/PIN JAN WANG/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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