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
The amendment filed on 10/28/2025 has been entered. Claim 1 has been amended to incorporate the limitations of claim 2, Claim 2 has been canceled and Claims 1 and 3-26 are pending.
Claim Objections
The objection to Claim 1 has been withdrawn in view of the claim amendments filed on 10/22/2025. Claim 2 is objected to because the numbering of claims is not in accordance with 37 CFR 1.126, which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered and in the instant case, the numbering of claim 2 is struck through. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 5-8, 9-11, 16-19, and 20-25 are rejected under 35 U.S.C. 103 as being unpatentable over Guo et al. (CN 110400961 A - Machine Translation), hereinafter “Guo” in view of Tochio et al. (US 20220393165 A1), hereinafter “Tochio”. Guo et al. and Tochio et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely lithium battery material and electrolyte additives.
In regard to Claims 1 and 3, Guo et al. discloses a rechargeable lithium battery, comprising an electrolyte including a non-aqueous organic solvent, a lithium salt, and an additive (Guo, Abstract]) and a positive electrode including a positive electrode active material and a negative electrode including a negative electrode active material (Guo, Paragraph [8]). Guo et al. also discloses, wherein the additive includes at least one of a first compound with specific examples of 1, 3, 6 hexane nitrile, succinonitrile, adiponitrile, methoxy acetyl nitrile which fall within the claimed groups (Guo, Example 4). Further, Guo et al. discloses wherein the additive also includes at least one of a second compound and the second compound is a cyclic phosphazene with a specific example of pentafluoro ethoxy cyclotriphosphazene (Guo, Example 1).
Further, Guo et al. also discloses a positive electrode active material comprising a cobalt-free lithium nickel manganese-based oxide (Guo, Example 1) but is silent as to the specific composition of the cobalt-free lithium nickel manganese-based oxide, for example wherein the cobalt-free lithium nickel manganese-based oxide includes a lithium composite oxide represented by Chemical Formula 1.
Tochio et al. discloses a rechargeable lithium battery, comprising an electrolyte including a non-aqueous organic solvent, a lithium salt, and a nitrile additive (Tochio, Paragraphs [0007,0058, 0062]) where the positive electrode active material includes a lithium transition metal composite oxide containing 85 mol % or more of Ni and 1 mol % or more and 15 mol % or less of Al (which is a common doping element), and having a total content of Ni, Al, and Mn of 99.9 mol % or more, with respect to a total number of moles of metal elements excluding Li as well as a specific example of LiNi0.92Al0.05Mn0.03O2, which falls within the boundaries set by the claimed formulas 1 and 1-1 (Tochio, [0007], Example 1).
In addition, when a material such as the LiNi0.92Al0.05Mn0.03O2 taught in Tochio is selected as the cobalt-free lithium nickel manganese-based oxide there is a disclosed benefit of achieving a high electrode density while minimizing particle cracking (Tochio, Paragraphs [0006, 0023-0031]). The skilled artisan of Guo understands the requirement for the positive electrode active material to be a cobalt-free lithium nickel manganese-based oxide in order to successfully combine with the electrolyte comprising the additives of Guo and would thus need to select an appropriate and beneficial material. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a positive electrode active material comprising the cobalt-free lithium nickel manganese-based oxide taught in Tochio to the rechargeable lithium battery disclosed in Guo, as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Tochio, and as doing so would be nothing more than a variation of an active material for use in the same field based on design incentives or other market forces, as the variations are predictable to one of ordinary skill in the art.
In regard to Claim 5, Guo in view of Tochio et al. discloses the rechargeable lithium battery of claim 1. Guo et al. also discloses wherein the first compound is selected from 1, 3, 6 hexane nitrile, succinonitrile, and adiponitrile, which by definition fall within the claimed constraints and explicitly within formula 2-3 (Guo, Example 4). The same additives disclosed by Guo are also used within examples in the original specification (Original Specification, Page 6).
In regard to Claims 6-8, Guo in view of Tochio et al. discloses the rechargeable lithium battery of Claim 5. Claim 5 requires the first compound to be represented by "any one of Chemical Formula 2-1 to Chemical Formula 2-3" and Guo et al. also discloses wherein the first compound is selected from 1, 3, 6 hexane nitrile, succinonitrile, and adiponitrile, which by definition fall within the claimed constraints and explicitly within formula 2-3 (Guo, Example 4). With respect to Claims 6-8, it is noted that the limitations are directed to non-selected options of parent Claim 5, which allows for additives that also fall within Formula 2-2 and 2-3 and would not be affected by a change in the Formula 2-1 constraints. Accordingly, the limitations of claims 6-8 are reasonably considered to be optional limitations which depend upon the selection of Formula 2-1 recited in claim 5, and which in this case have not been selected because Guo et al. discloses the use of compounds covered under Formula 3, as noted above.
In regard to Claim 9, Guo in view of Tochio et al. discloses the rechargeable lithium battery of Claim 5. Guo et al. also discloses wherein the first compound is selected from 1, 3, 6 hexane nitrile, succinonitrile, and adiponitrile, and of these, 1, 3, 6 hexane nitrile by definition falls within the claimed constraints and explicitly within formula 2-3 (Guo, Example 4). The 1, 3, 6 hexane nitrile additive disclosed by Guo is also used within examples in the original specification (Original Specification, Page 6).
In regard to Claim 10, Guo in view of Tochio et al. discloses the rechargeable lithium battery of claim 1. Guo et al. also discloses wherein the first compound is selected from 1, 3, 6 hexane nitrile, succinonitrile, and adiponitrile, which by definition fall within the claimed group (Guo, Example 4). The same additives disclosed by Guo are also used within examples in the original specification (Original Specification, Page 6).
In regard to Claim 11, Guo in view of Tochio et al. discloses the rechargeable lithium battery of claim 1. Guo et al. also discloses wherein the additive includes a second compound of pentafluoro ethoxy cyclotriphosphazene which falls within the claimed constraints and explicitly within formula 3 (Guo, Example 1).
In regard to Claim 16, Guo in view of Tochio et al. discloses the rechargeable lithium battery of claim 11. Guo et al. also discloses wherein the additive includes a second compound of pentafluoro ethoxy cyclotriphosphazene, which falls within the claimed constraints and explicitly within formula 3 and within Group 1 (Guo, Example 1).
In regard to Claim 17, Guo in view of Tochio et al. discloses the rechargeable lithium battery of claim 1. Guo et al. also discloses wherein the additive includes a second compound of pentafluoro ethoxy cyclotriphosphazene which falls within the claimed constraints and explicitly within the compounds listed in Group 1 (Guo, Example 1).
In regard to Claim 18, Guo et al. in view of Tochio et al. discloses the rechargeable lithium battery of claim 1. Guo et al. also discloses the volume % of the first compound in the range of 1-5% based on a total of 100 volume % of the electrolyte (Guo, Paragraph [8]). Given the commonly known densities of the materials of the electrolyte and using the disclosed succinonitrile as the first compound, the parts by weight can be calculated for the range of 1-5 volume % which is equivalent to 0.85-4.26 parts by weight of the first compound based on 100 parts by weight of the electrolyte and substantially overlaps the claimed range of 1-5 parts by weight. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obvious. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.
In regard to Claim 19, Guo et al. in view of Tochio et al. discloses the rechargeable lithium battery of claim 1. Guo et al. also discloses the volume % of the additives in the range of 1-5% based on a total of 100 volume % of the electrolyte (Guo, Paragraph [8]). Given the commonly known densities of the materials of the electrolyte and using the disclosed pentafluoro ethoxy cyclotriphosphazene as the second compound, the parts by weight can be calculated for the range of 1-5 volume % which is equivalent to 1.38-6.55 parts by weight of the first compound based on 100 parts by weight of the electrolyte and overlaps the claimed range. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obvious. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.
In regard to Claim 20, Guo in view of Tochio et al. discloses the rechargeable lithium battery of claim 1. Guo et al. also discloses the volume % of the additives in the range of 1-5% based on a total of 100 volume % of the electrolyte (Guo, Paragraph [8]). Further, Guo et al. discloses a specific example of the use of both a first nitrile compound and a second phosphazene compound in the electrolyte (Guo, Example 1) with a combined 5 volume % of additives based on 100 volume % of the electrolyte. Given the commonly known densities of the materials of the electrolyte and using the disclosed methoxyl acetyl nitrile and pentafluoro ethoxy cyclotriphosphazene as the first and second compound, the parts by weight can be calculated for the 5 volume % of additive, which is equivalent to 4.22 parts by weight of the first and second compound based on 100 parts by weight of the electrolyte, which falls within the claimed range.
In regard to Claim 21, Guo in view of Tochio et al. discloses the rechargeable lithium battery of claim 1. Guo et al. also discloses, wherein the additive further includes fluoroethylene carbonate (FEC) (Guo, Example 2).
In regard to Claim 22, Guo in view of Tochio et al. discloses the rechargeable lithium battery of claim 1. While Guo discloses the use of a negative electrode active material of lithium titanate combined in a slurry with graphite (Guo, Example 3) the graphite has a role of a conductive agent and not an active material and thus Guo fails to explicitly disclose wherein the negative electrode active material is graphite.
Tochio et al. discloses a specific example of a negative electrode active material of natural graphite (Tochio, Paragraph [0091]) and when combined with the positive electrode comprising the cobalt-free lithium nickel manganese-based oxide falling within Chemical Formula 1 and 1-1 (Tochio, Example 1) and the electrolyte comprising a first compound comprising a nitrile additive, the experimental results show the capacity retention was higher, and the direct current resistance was lower (Tochio, Paragraph [0098]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a negative electrode with an active material comprising graphite, as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Tochio and as doing so would be nothing more than applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
In regard to Claims 23-25, Guo et al. in view of Tochio et al. discloses the rechargeable lithium battery of Claim 22. Claim 22 requires the negative electrode active material to be comprised of graphite or a Si composite and graphite together and Tochio et al. discloses the negative electrode active material is natural graphite (Tochio, Paragraph [0091]) which by definition falls within the claimed constraints. With respect to Claims 23-25, it is noted that the limitations are directed to non-selected options of parent Claim 22, which allows for a negative electrode active material comprising only graphite such as in Tochio et al. and would not be relevant to the constraints of Claims 23-25. Accordingly, the limitations of claims 23-25 are reasonably considered to be optional limitations which depend upon the selection of a negative active material of Si composite and graphite together recited in claim 22, and which in this case have not been selected because Tochio et al. discloses the use of a negative electrode active material of natural graphite, as noted above.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Guo et al. (CN 110400961 A - Machine Translation), hereinafter “Guo” in view of Tochio et al. (US 20220393165 A1), hereinafter “Tochio” as applied to claim 1 above and further in view of Yi et al. (Chem. Mater., vol 34, pgs 629−642), hereinafter “Yi”. Guo, Tochio, and Yi et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely lithium battery material and electrolyte additives.
In regard to Claim 4, Guo et al. in view of Tochio et al. discloses the rechargeable lithium battery of claim 3. Guo et al. discloses a positive electrode active material comprising a cobalt-free lithium nickel manganese-based oxide but is silent as to the specific composition of the cobalt-free lithium nickel manganese-based oxide, for example wherein the cobalt-free lithium nickel manganese-based oxide includes a lithium composite oxide represented by Chemical Formula 1-1 wherein in Chemical Formula 1-1, x1 is 0.6≤x1≤0.79, y1 is 0.2≤y1≤0.39, and z1 is 0.01≤z1<0.1. While Tochio et al. discloses a rechargeable lithium battery, comprising an electrolyte including a non-aqueous organic solvent, a lithium salt, and a nitrile additive (Tochio, Paragraphs [0007,0058, 0062]) where the positive electrode active material comprises LiNi0.92Al0.05Mn0.03O2 which falls within the claimed formula 1-1, it fails to explicitly comply with the constraints of x1 is 0.6≤x1≤0.79, y1 is 0.2≤y1≤0.39, and z1 is 0.01≤z1<0.1 (Tochio, Example 1).
Although the stochiometric ratios in Tochio differ slightly from the claimed constraints, such a variation falls within a predictable range of values that would have been obvious to the skilled artisan as held in In re Aller, 220 F.2d 454 (CCPA 1955) see MPEP § 2144.05. Nevertheless, Yi et al. discloses a cobalt-free, high-nickel cathode LiNi0.7Mn0.25Al0.05O2 (NMA70) which falls within the claimed formula and constraints and also displays a high initial C/10 capacity of 210 mA h g−1, matching that of NMC70 in half cells with a cutoff voltage of 4.5 V. and also exhibits an impressive high-voltage full cell cycling performance with a cutoff voltage of 4.4 V with a nearly identical capacity retention of 83% compared to that of 82% for NMC70 after 300 cycles (Yi, Abstract). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a positive electrode active material comprising the cobalt-free lithium nickel manganese-based oxide taught in Yi to the rechargeable lithium battery disclosed in Guo as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Yi, and as doing so would be nothing more than a variation of it for use in the same field based on design incentives or other market forces, as the variations are predictable to one of ordinary skill in the art.
Claims 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Guo et al. (CN 110400961 A - Machine Translation), hereinafter “Guo” in view of Tochio et al. (US 20220393165 A1), hereinafter “Tochio” as applied to claim 1 above, in view of Hidaka et al. (US 20210391597 A1), hereinafter “Hidaka”. Guo, Tochio et al. and Hidaka et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely lithium battery material and electrolyte additives.
In regard to Claims 12-15, Guo in view of Tochio et al. discloses the rechargeable lithium battery of claim 1. Guo et al. also discloses wherein the additive includes a second compound of pentafluoro ethoxy cyclotriphosphazene, which falls explicitly within formula 3 (Guo, Example 1). However, Guo et al. fails to explicitly disclose a second compound that falls within Formula 3 when at least one of Y1 to Y5 is a halogen group, Y1 to Y5 are each a halogen group, Y1 to Y5 are each a fluoro group, and where in Formula 3, Z is NR2R3 wherein R2 and R3 are each independently a substituted or unsubstituted C1 to C10 alkyl group or a substituted or unsubstituted C3 to C10 cycloalkyl group.
Hidaka et al. discloses a lithium ion battery with an electrolyte that comprises at least one additive, a first nitrile compound and a second additive comprising a phosphazene-based compound, including dimethylaminopentafluorocyclotriphosphazene (Hidaki, Abstract, Paragraphs [0646, 0680]). Dimethylaminopentafluorocyclotriphosphazene or PFDN falls withing the claimed constraints and explicitly within formula 3 and provide the benefits of improved high temperature performance by acting as fireproofing/flameproofing agents (Hidaki, Paragraph [0645]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide the PFDN taught in Hidaki to the electrolytic solution disclosed in Guo as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Hidaki, and as doing so would be nothing more than a simple substitution of one known element for another to obtain predictable results.
Response to Arguments
Applicant's arguments filed 10/28/2025 have been fully considered but they are not persuasive. In response to applicant's argument that the positive electrode active material of Tochio would not be an obvious material for the skilled artisan of Guo et al., 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).
As the skilled artisan of Guo contemplates a material for selection for the positive electrode active material, they understand that it must meet certain criteria in order to be successfully combined with an electrolyte comprising a non-aqueous organic solvent, a lithium salt, and a nitrile additive comprising the at least two disclosed compounds of Guo. The positive electrode active material criteria of Guo is namely providing a cobalt-free lithium nickel manganese-based oxide (Guo, Example 1), which is a class of materials specifically selected for its ability to combine with this specific combination electrolyte. This specific combination electrolyte is substantially similar to the electrolyte of the claimed invention as discussed in the 35 USC 103 rejection of Claims 1 and 3 above.
As the skilled artisan of Guo must provide this material, they would find Tochio a helpful reference as Tochio teaches a similar rechargeable lithium battery, comprising a similar electrolyte including a non-aqueous organic solvent, a lithium salt, and a nitrile additive (Tochio, Paragraphs [0007,0058, 0062]), wherein the positive electrode is similarly a cobalt-free lithium nickel manganese-based oxide with the added benefit of achieving a high electrode density, while minimizing particle cracking (Tochio, Paragraphs [0006, 0023-0031]), and thus it would be obvious for the skilled artisan to try this material as doing so would amount to nothing more than choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Further, in regard to applicants’ argument that the choice of positive electrode material would produce unexpected results, it is noted that the positive electrode active materials comprised by Formula 1 and 1-1 of the current application discloses a wide variety of doping elements (i.e. M2 is one or more elements selected from Al, B, Ba, Ca, Ce, Cr, Fe, Mg, Mn, Mo, Nb, Si, Sr, Ti, V, W, and Zr, and X is one or more elements selected from S, F, and P) and stoichiometries which encompass the cobalt-free lithium nickel manganese-based oxide active materials taught in Tochio. Selecting a material such as the positive electrode material of Tochio that falls within the range of materials encompassed by Formula 1 and 1-1 and combining that material with an electrolyte comprising nitrile additives as also taught in Tochio would be a reasonable motivation for the skilled artisans of Guo to apply the same material with a reasonable expectation of success.
Additionally, the tables provided in the original specification disclose the benefits of reduced transition metal elution, which is attributable to the combination of a cobalt free positive electrode material and the claimed electrolyte additive. When the same additives are combined with a different positive electrode that contains cobalt, the additive does not appear to produce the desired results (Original Specification, [0209-0210]). Therefore, the selection of a cobalt free active material in combination with the claimed electrolyte additive is the combination that ultimately produces the results and of which Guo and Tochio also provide. Finally, as the skilled artisan of Guo must provide a cobalt-free lithium nickel manganese-based oxide to combine with the electrolyte additives of Guo, which are substantially similar to the additives of the original specification, then selecting such materials for the positive electrode including those from Tochio would be obvious to the skilled artisan and yield predictable results. It is also noted that the results of transition metal elution and high temperature cycle life characteristics in applicants’ arguments are not claimed features or properties of this material.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH MAX OTERO whose telephone number is (571)272-2559. The examiner can normally be reached M-F Generally 7:30-430.
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/K.M.O./Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/Supervisory Patent Examiner, Art Unit 1725
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