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 .
Claim Status
Applicant’s arguments and claim amendments submitted on January 16th, 2026 have been entered into the file.
Currently claims 1 and 15 are amended, clam 8 is cancelled, and claims 16-18 are new, resulting in claims 1-7, 9-18 pending for examination.
Response to Amendment
The amendments filed January 16th, 2026 have been received
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 16 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 16, the claim recites “the electrolyte is free of 1,3-propane sultone.” The instant disclosure lacks support for the instant claim as filed. The remarks submitted on January 16th, 2026 indicates support for the limitations of the new claim 16 provided in that 1,3-propane sultone appears only explicitly in the comparative examples. However, the electrolyte being free of 1,3-propane sultone as claimed is a different scope than what it provided in the examples and the comparative examples of the instant disclosure. The instant specification appears to only provide support in Examples 1-3 (Pages 23-25) embodiments in which the electrolyte does not explicitly contain the 1,3-propane sultone additive. Thus, the disclosure does not provide support for the scope of claim 16 as written.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 16 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 16, there is insufficient antecedent basis for “the compound.” It is unclear to which compound this recitation refers to. For the purposes of examination, the compound is assumed to refer to the second compound represented by chemical formula 2-1a. Appropriate correction is required.
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.
Claims 1-7, 9-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (Korean Patent Publication No. 20190115705 A) (machine translation relied upon) in view of Kawabata (U.S. Patent Publication No. 20210020992 A1) (hereafter “Kawabata”) and Kawasaki (U.S. Patent Publication No. 20190051928 A1) (hereafter “Kawasaki”).
Regarding claim 1, Kim teaches an electrolyte for a lithium secondary battery (Page 1, Paragraph 1), comprising a non-aqueous organic solvent, a lithium salt, and an additive (Page 1, Paragraph 7).
Kim teaches the additive includes a (first) compound represented by Chemical Formula 1 of Kim,
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(Page 2, Paragraph 9). Element A of Kim is considered equivalent to Element L of instant Chemical Formula 2,
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, as Kim teaches A is a substituted or unsubstituted aliphatic chain (corresponding to instant substituted alkylene group) or (-C2H4-O-C2H4-)n (corresponding to instant unsubstituted ether group) (Page 2, Paragraph 10).
Kim teaches that the when A contains a hydrocarbon chain, there are 2-20 carbon atoms (Page 2, Paragraph 11), which overlaps the C1 to C10 alkylene group of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Kim teaches that n of (-C2H4-O-C2H4-)n, is an integer of 1 to 10 (Page 2, Paragraph 10), which overlaps the instant C2 to C10 ether group. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Kim is silent as to the additive including a composition including a first compound represented by Chemical Formula 1,
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, wherein R1 to R4 are each independently hydrogen, a halogen, a C1 to C10 alkyl group that is substituted or unsubstituted with a halogen, or a C2 to C10 alkenyl group, and n1 and n2 are each independently one of integers of 1 to 3.
However, Kawabata discloses an electrolytic solution for a nonaqueous electrolyte battery (Paragraph 0032) comprising a component (II), at least one selected from the group consisting of a cyclic sulfonic acid compound and a cyclic sulfuric ester compound (Paragraph 0034).
Kawabata teaches the component (II), which may be represented more specifically by formula II-1b (Paragraphs 0038, 0040),
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, wherein O is an oxygen atom; S is a sulfur atom; R7 and R8 are each independently selected from a hydrogen atom, a halogen atom and a C1 - C5 substituted or unsubstituted alkyl group; R9 and R10 are each independently selected from a hydrogen atom, a halogen atom, a C1 - C5 substituted or unsubstituted alkyl group and a C1 – C4 substituted or unsubstituted fluoroalkyl group; n2 is an integer of 0 to 4; and n3 is an integer of 0 to 4 (Paragraph 0040).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select n2=0 and n3=0 from the finite lists of possible combinations for n2 and n3, respectively, to arrive at the compound of the instant claim (when n1 and n2 = 1) since the combination of components would have yielded predictable results as an additive in an electrolytic solution, absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
When n2=0 and n3=0, the compound of Kawabata is represented by:
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.
R7 and R8 of Kawabata correspond to R3 and R4 of the instant claim Chemical Formula 1. As stated above, Kawabata teaches R7 and R8 are each independently selected from a hydrogen atom, a halogen atom and a C1 - C5 substituted or unsubstituted alkyl group, which corresponds with R3 and R4 of the instant claim being hydrogen, halogen, or a C1 to C10 alkyl group that is substituted with a halogen, meeting the limitations of the instant claim.
R9 and R10 of Kawabata correspond to R1 and R2 of the instant claim Chemical Formula 1. As stated above, R9 and R10 are each independently selected from a hydrogen atom, a halogen atom, a C1 - C5 substituted or unsubstituted alkyl group and a C1 – C4 substituted or unsubstituted fluoroalkyl group, which corresponds with R1 and R2 of the instant claim being hydrogen, halogen, a C1 to C10 alkyl group that is substituted with a halogen, meeting the limitations of the instant claim.
Kawabata teaches the compound (II) contained in the nonaqueous electrolytic solution to form a stable coating film on positive and negative electrode surfaces (Paragraph 0084).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the additive composition of the electrolytic solution of Kim to incorporate the teachings of Kawabata in which a first compound represented by the formula II-1b of Kawabata is included. Doing so would advantageously result in a stable coating film formed on the positive and negative electrode surfaces, as recognized by Kawabata.
Kim is silent as to the first compound being included in an amount of 0.2 wt% to 2 wt% based on the total weight of the electrolyte for a lithium secondary battery.
However, Kawasaki discloses an electrolytic solution for a lithium ion secondary battery (Paragraphs 0013, 0069) comprising an additive including a cyclic disulfonic acid ester (Paragraph 0074). Kawasaki teaches the cyclic disulfonic acid ester component represented by Formula (C) (Paragraphs 0079-0080),
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and more preferably represented by compounds such as compound 1 (Paragraph 0082),
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, which overlaps with cyclic disulfonic acid ester compounds described in the instant disclosure (methylenemethane disulfonate) (Page 3, Line 14) and those taught by Kawabata, as described above.
Kawasaki teaches the content of the cyclic disulfonic acid ester in the electrolyte solution is preferably 0.01% by mass or more and 10% by mass or less. Kawasaki teaches that when the content of the cyclic disulfonic acid ester is included in this range, a sufficient film effect can be obtained as well as an increase in electrolyte viscosity and suppression of resistance increase (Paragraph 0086).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrolytic solution comprising a compound represented by Chemical Formula II-1b of Kim in view of Kawabata to incorporate the teachings of Kawasaki in which the cyclic disulfonic acid ester compound is contained in the electrolyte from 0.01 – 10 wt%. Doing so would advantageously result in a sufficient film effect as well as an increase in electrolyte viscosity and suppression of resistance increase, as recognized by Kawasaki.
The range of the content of the first compound of Kim in view of Kawasaki and Kawabata overlaps with the weight of the first compound in the electrolyte of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Regarding claim 2, Kim teaches the electrolyte for a lithium secondary battery of claim 1, wherein the n1 and n2 are each independently an integer of 1 or 2.
As discussed above in the rejection of claim 1, Kim in view of Kawabata teaches the first compound
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when n2=0 and n3=0, which corresponds with n1 = 1 and n2 = 1, meeting the instant claimed limitations.
Regarding claim 3, Kim teaches the electrolyte for a lithium secondary battery of claim 1.
As discussed above, Kim in view of Kawabata teaches the first compound of the general formula (II-1b), which is further exemplified by compound 2-1 of Kawabata (Paragraph 0047):
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. As is seen by this compound, Kawabata teaches that R7, R8, R9, and R10, corresponding to instant R3, R4, R1, and R2, respectively, are hydrogen, meeting the instant claimed limitations.
Regarding claim 4, Kim teaches the electrolyte for a lithium secondary battery of claim 1.
As discussed above, Kim in view of Kawabata teaches the first compound of the general formula (II-1b), which is further exemplified by compound 2-1 of Kawabata (Paragraph 0047):
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, which is referred to in the art as methylenemethane disulfonate, meeting the instant claimed limitations.
Regarding claim 5, Kim teaches the electrolyte for a lithium secondary battery of claim 1.
As discussed above in the rejection of claim 1, Kim teaches the additive includes a second compound represented by Chemical Formula 1 of Kim,
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(Page 2, Paragraph 9), which is equivalent to the instant compound represented by Chemical Formula 2.
Further discussed above, Kim teaches that A is a C2 to C20 hydrocarbon chain (Page 2, Paragraph 11). This would result in a molecule,
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, where m is 2-20.
The range of m of the compound of Formula 1 of Kim overlaps with that of the instant claim (1 to 5). Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Regarding claim 6, Kim teaches the electrolyte for a lithium secondary battery of claim 5, wherein the second compound is represented by Chemical Formula 2-1a
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(Chemical Formula 1-1 of Kim) (Page 2, Paragraph 13).
Regarding claim 7, Kim teaches the electrolyte for a lithium secondary battery of claim 1, including a first compound.
Kim is silent as to the first compound and the second compound are included in a weight ratio of 1 : 1.5 to 1 : 4.
However, as discussed above, Kim in view of Kawasaki and Kawabata teaches the first compound (cyclic disulfonic acid ester) included at a range of 0.01 wt% to 10 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Paragraph 0086). Also discussed above, Kim teaches the second compound (first additive including a compound represented by Chemical Formula 1) included at a range of 0.01 wt% to 5 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Page 3, Paragraph 10
Therefore, the upper and lower limits of the weight ratio of the first compound to the second compound is calculated as follows:
When first compound is 0.01 wt% of electrolyte solution and second compound is 5 wt% of electrolyte solution : 0.01 : 5 = 1 : 500
When first compound is 10 wt% of electrolyte solution and second compound is 0.01 wt% of electrolyte solution : 10 : 0.01 = 1 : 0.001
When expressed as fractions, the weight ratio of the first compound and the second compound calculated above may be expressed as 0.002 (1:500) and 1000 (1:0.001). Therefore, Kim in view Kawasaki and Kawabata teach the weight of the first compound to the second compound to lie within 0.02-1000.
When expressed as fractions, the instant weight ratio of the first compound and the second compound may be expressed as 0.7 (1:1.5) and 0.25 (1:4). Therefore, the limitations of the instant claim require the weight of the first compound to the second compound to lie within 0.25-0.7.
The weight ratio of the first compound to the second compound of Kim in view of Kawasaki and Kawabata overlaps with that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Regarding claim 9, Kim teaches the electrolyte for a lithium secondary battery of claim 1.
Kim teaches the second compound (first additive including a compound represented by Chemical Formula 1) included at a range of 0.01 wt% to 5 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Page 3, Paragraph 10). The range of the second compound of Kim overlaps with that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Regarding claim 10, Kim teaches the electrolyte for a lithium secondary battery of claim 1.
As discussed above, Kim teaches the first compound (first additive including a compound represented by Chemical Formula 1) included at a range of 0.01 wt% to 5 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Page 3, Paragraph 10). The range of the second compound of Kim overlaps with that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
As discussed above, Kim in view of Kawasaki and Kawabata teaches the first compound (cyclic disulfonic acid ester) included at a range of 0.01 wt% to 10 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Paragraph 0086). The range of the first compound of Kim in view of Kawasaki and Kawabata overlaps with that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Regarding claim 11, Kim teaches the electrolyte for a lithium secondary battery of claim 1.
Kim is silent as to the composition is included in an amount of 0.7 wt% to 3 wt% based on the total weight of the electrolyte for a lithium secondary battery.
However, as discussed above, Kim in view of Kawasaki and Kawabata teaches an additive for an electrolyte which is a composition including the first compound (cyclic disulfonic acid ester) included at a range of 0.01 wt% to 10 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Paragraph 0086). Also discussed above, Kim teaches the second compound (first additive including a compound represented by Chemical Formula 1) included at a range of 0.01 wt% to 5 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Page 3, Paragraph 10).
Therefore, the upper and lower limits of the weight percent of the composition in the electrolyte is calculated as follows:
When first compound is 0.01 wt% of electrolyte solution and second compound is 0.01 wt% of electrolyte solution : 0.01 wt% + 0.01 wt% = 0.02 wt%
When first compound is 10 wt% of electrolyte solution and second compound is 5 wt% of electrolyte solution : 10 wt% + 5 wt% = 15 wt%
Therefore, Kim in view of Kawasaki and Kawabata teach the weight percentage of the additive composition (comprised of the first and second compounds) is between 0.02 wt% and 15 wt%.
The weight percent of the composition based on the total weight of the electrolyte taught by Kim in view of Kawasaki and Kawabata overlaps with that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Regarding claim 12, Kim teaches a lithium secondary battery, comprising a positive electrode including a positive electrode active material (Page 5, Paragraph 9; Page 6, Paragraph 1); a negative electrode including a negative electrode active material (Page 5, Paragraph 9; Page 7, Paragraph 3); and the electrolyte for a lithium secondary battery of claim 1 (Page 1, Paragraph 5).
Regarding claim 13, Kim teaches the lithium secondary battery of claim 12, wherein the positive electrode active material is at least one type of lithium composite oxide (Paragraph 0060).
Kim is silent as to the positive electrode active material represented by Chemical Formula 3: LiaM11-y1-z1M2y1M3z1O2 wherein, in Chemical Formula 3, 0.9 ≤ a ≤1.8, 0 ≤ y1 <1, 0 ≤ z1 < 1, 0 ≤ y1+z1< 1, and M1, M2, and M3 are each independently one selected from a metal of Ni, Co, Mn, Al, Sr, Mg, or La, and a combination thereof.
However, Kim teaches that the positive active material represented by Chemical Formula 4: Lip(NixCoyMez)O2 wherein 0.9 ≤ p ≤ 1.1, 0.5 ≤ x ≤ 0.98, 0 < y ≤ 0.3, 0 < z ≤ 0.3, x+y+z=1, and Me is at least one from Al, Mn, Mg, Ti, and Zr (Page 6; Paragraphs 6-8).
The following equivalences between the elements and their subscript variables is denoted in the table below, where the underline denotes an inclusive boundary of the range.
Element in Formula of Kim
Subscript of Element in Formula of Kim
Subscript Range of Formula of Kim
Element of Instant Compositional Formula
Subscript of Instant Compositional Formula
Subscript Range of Instant Compositional Formula
Li
p
0.9 – 1.1
Li
a
0.9 – 1.8
Ni
x
0.5 – 0.98
M1
1-y1-z1
0 - 1
Co
y
0 – 0.3
M2
y1
0 - 1
Me
z
0 – 0.3
M3
z1
0 - 1
O
2
-
O
2
-
Kim teaches the variable Me as a placeholder for atoms including Al, Mn, Mg, Ti, and Zr which corresponds with the variable M3 of the instant formula, which is a placeholder for metal atoms such as Ni, Co, Mn, Al, Sr, Mg, or La.
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select Al, Mn, or Mg from the finite lists of possible combinations for Me of Kim to arrive at M3 of the instant claim since the combination of components would have yielded predictable results as a positive electrode active material absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
Further, Kim teaches the elements Ni and Co in the Formula 4 taught by Kim, which corresponds with M1 and M2, of the instant Formula 3, as M1 and M2 are each independently selected from a metal of Ni, Co, Mn, Al, Sr, Mg, or La.
Further, Kim teaches the subscripts y and z corresponding to y1 and z1, respectively, of the instant compositional formula. Kim teaches y and z are both within the range of 0 to 0.3 (inclusive). Therefore, 0 < y+z ≤ 0.6, which lies within the instant limitation 0 ≤ y1+z1< 1, meeting the instant claimed limitations of Formula 3.
As illustrated in the table above, the subscripts of the elements of the formula of Kim lie within the range of the subscripts of the elements in the instant compositional formula, meeting the instant claimed limitations. See MPEP 2144.05 (I).
Regarding claim 14, Kim teaches the lithium secondary battery of claim 12, wherein the positive electrode active material is at least one type of lithium composite oxide (Page 6, Paragraph 2).
Kim is silent as to the positive electrode active material represented by Chemical Formula 3-1: Lix2Niy2Coz2Al1-y2-z2O2, wherein, in Chemical Formula 3-1, 1 ≤ x2 ≤1.2, 0.5 ≤ y2 < 1, 0 ≤ z2 < 0.5
However, as discussed above, Kim teaches that the positive active material represented by Chemical Formula 4: Lip(NixCoyMez)O2 wherein 0.9 ≤ p ≤ 1.1, 0.5 ≤ x ≤ 0.98, 0 < y ≤ 0.3, 0 < z ≤ 0.3, x+y+z=1, and Me is at least one from Al, Mn, Mg, Ti, and Zr (Page 6; Paragraphs 6-8).
The following equivalences between the elements and their subscript variables is denoted in the table below, where the underline denotes an inclusive boundary of the range.
Element in Formula of Kim
Subscript of Element in Formula of Kim
Subscript Range of Formula of Kim
Element of Instant Compositional Formula
Subscript of Instant Compositional Formula
Subscript Range of Instant Compositional Formula
Li
p
0.9 – 1.1
Li
x2
1 – 1.2
Ni
x
0.5 – 0.98
Ni
y2
0.5 - 1
Co
y
0 – 0.3
Co
z2
0 – 0.5
Me
z
0 – 0.3
Al
1-y2-z2
0 - 0.5
O
2
-
O
2
-
Kim teaches the variable Me as a placeholder for atoms including Al, Mn, Mg, Ti, and Zr. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select Al from the finite lists of possible combinations for Me of Kim to arrive at the compound of the instant claim since the combination of components would have yielded predictable results as a positive electrode active material absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
As illustrated in the table above, the subscripts of the elements of the formula of Kim lie within the range of the subscripts of the elements in the instant compositional formula, meeting the instant claimed limitations. See MPEP 2144.05 (I).
Regarding claim 15, Kim teaches the lithium secondary battery of claim 1, wherein the negative electrode active material includes a Si-C composite including a Si- based active material and a carbon-based active material (Page 7, Paragraph 8).
Regarding claim 16, Kim teaches the electrolyte of claim 1.
As discussed above in the rejection of claim 6, Kim teaches a first additive (additive of the instant claim) that is the second compound of the instant claim, represented by Chemical Formula 2-1a
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(Chemical Formula 1-1 of Kim) (Page 2, Paragraph 13).
As discussed above, the modification of Kim in view of Kawabata resulted in the addition of the cyclic sulfonic acid compound (first compound) to the additive (first additive of Kim) composition. Kawabata teaches the first compound represented by the general formula II-1b is preferably compound 2-1,
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(methylenemethane disulfonate), further meeting the instant claimed (Paragraph 0047) of the additive consisting of methylenemethane disulfonate and a compound represented by Chemical Formula 2-1a.
As Kim does not explicitly teach 1,3-propane sultone present in the electrolyte, and the modifications of Kim by Kawabata and Kawasaki discussed above did not include the addition of 1,3-propane sultone into the electrolyte, the electrolyte taught by Kim is considered free of 1,3-propane sultone, thus meeting the claimed limitations,
Regarding claim 17, Kim teaches the electrolyte of claim 10.
As discussed above, Kim teaches the first compound (first additive including a compound represented by Chemical Formula 1) included at a range of 0.01 wt% to 5 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Page 3, Paragraph 10). The range of the second compound of Kim overlaps with that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
As discussed above, Kim in view of Kawasaki and Kawabata teaches the first compound (cyclic disulfonic acid ester) included at a range of 0.01 wt% to 10 wt% based on the total weight of the electrolyte for a rechargeable lithium battery (Paragraph 0086). The range of the first compound of Kim in view of Kawasaki and Kawabata overlaps with that of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Kim and Kawabata as applied to claims 1-7, 9-17 above, and further in view of Kang (U.S. Patent Publication No. 20150188126 A1).
Regarding claim 18, Kim teaches the lithium secondary battery of claim 15.
As discussed above in the rejection of claim 15, Kim teaches the negative electrode active material includes a Si-C composite (Page 7, Paragraph 8).
Kim teaches the silicon-carbon composite including carbon and silicon particles wherein the average diameter of the silicon particles in the composite are in the range of 10 nm to 200 nm (Page 7, Paragraph 8).
The range of the average particle diameter of the silicon particles in the silicon-carbon composite of Kim overlaps with the range of average particle diameter of the instant claim. Therefore, prima facie obviousness is established. See MPEP 2144.05 (I).
Kim is silent as to the Si content in the Si-C composite.
However, Kang discloses a lithium secondary battery with enhanced electrochemical characteristics (Paragraph 0001) including a negative electrode comprising a silicon-carbon composite as a negative active material (Paragraph 0012). Kang teaches that the content of silicon particles in the silicon-carbon composite is preferably in the range of 3 volume% to 60 volume%. Kang teaches that when the content of silicon particles is greater than 60%, volume expansion of the silicon may not be sufficiently suppressed but when the content of silicon particles in the composite is less than 3 volume %, the reduced amount of silicon results in energy density that is too low (Paragraph 0036).
Absent unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the mass percentage of silicon present in the silicon carbon composite to be within the range of 3 wt% to 7 wt% of the Si-C composite, since it has been held where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involved only routine skill in the art. See MPEP 2144.05.
In the present invention, one would have been motivated to modify the silicon-carbon composite of Kim to incorporate the teachings of Kang described above and to further optimize the weight percentage of silicon to be within the claimed range of the instant claim in order to achieve suppression of silicon and sufficient energy density. The ordinary artisan would recognize that by tuning the volume percent of silicon present in the silicon-carbon composite, a balance can be achieved between suppression excessive expansion due to silicon and achieving a high enough energy density. Further, the ordinary artisan would recognize that a routine optimization in volume of the silicon would necessarily result in an optimization in mass, and the effects of silicon content on the Si-C composite characteristics taught by Kang motivates optimizing the mass percentage of silicon to lie within the instant claimed range.
Response to Arguments
On page 7 of the arguments received January 16th, 2026, applicant argues that the amendment with respect to claim 1 to further define the range of the first compound in the electrolyte yields unexpected results and is not suggested by the prior art, which teaches the broad range of 0.01 – 10 wt%, as critical. Applicant argues that the disclosed data demonstrates that the narrow range achieved superior performance metrics which distinguishes the claimed invention from any routine optimization. Thus, in summary, applicant argues that the disclosure satisfies the criteria for establishing unexpected results, particularly with respect to the first compound present in the critical claimed weight ratio.
The arguments have been fully considered but are not persuasive.
In response to applicant’s arguments, the Examiner presents in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 (I).
Further, the examiner presents that when any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration. See 37 CFR 1.132.
Further, it is noted that it is the burden of Applicant to provide evidence that establishes that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. See MPEP 716.02(b)(I). Applicants have the burden of explaining proffered data. See MPEP 716.02(b)(II).
It is further noted that in order 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. See MPEP 716.02(d) II. Additionally, the claims must be commensurate in scope with the proffered data to provide a nexus between the claims and the data establishing evidence of unexpected results. See MPEP 716.02(d).
The Examiner presents that there are limited instances in the examples and the comparative examples of the instant disclosure where a single variable is changed and thus can explain the difference in results. The Examiner presents, as seen in table 1, that when multiple variables are different in the additive composition (such as the wt% of the compounds and the identity of the compounds), it is difficult to determine which of the claimed variables can be attributable to unexpected results. Further, the Examiner presents that in Examples in which the conditions of a single variable are changed, such as Example 1 and Example 2 where only the wt% of the first compound is adjusted within the claimed range (the wt% of the second compound and the identity of the first and second compound are the same among examples 1 and 2), there is only a single comparative example (Example 3, when wt% of the first compound zero) having the same other conditions of the additive composition which the results can be compared to. The Examiner presents that this is certainly not a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range, as argued by applicant.
The examiner presents that the lack of description of the Examples in the instant disclosure and due to the absence of data presented in an affidavit comparing the data to the closest prior art, it cannot be determined whether the claims are commensurate in scope with the results which are relied upon in the arguments to support a finding of unexpected results.
In response to applicant’s arguments, the examiner presents that 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. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991). See MPEP 716.02(a)(I).
On page 8 of the arguments received January 16th, 2026, applicant argues that the Office has not provided reasoned motivation with a reasonable expectation of success for selecting the specific cyclic disulfonic acid ester compound of Kawasaki and incorporating that compounds as the first compound of the additive of Kim in the specifically recited wt%.
The arguments have been fully considered but are not persuasive.
In response to applicant’s arguments, the Examiner presents that a proper obviousness rejection was set forth in the Non-Final Rejection mailed October 20th, 2025 with respect to the combination of Kim in view of Kawabata and Kawasaki.
In response to applicant' s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
The Examiner further presents the as stated in the Non-Final rejection, while Kim does not teach an additive composition including a first compound represented by Chemical Formula 1 of the instant claim, Kawabata teaches that when a compound II represented by formula II-1b (and preferably compound 2-1) is included in the electrolyte (Paragraphs 0038, 0040), a stable coating film can be formed on the positive and negative electrode surface. Further, Kawasaki teaches an electrolytic solution including a disulfonic acid ester which is represented by formula (C) of Kawasaki, and is preferably of the form of compound 1.
Thus, Kawabata and Kawasaki both teach the electrolyte comprising an additive of the form
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132
194
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(Compound 1 of Kawasaki, Compound 2-1 of Kawabata). This overlap provides further evidence that Kim in view of Kawabata is open to the modification by Kawasaki in which an additive having the same composition is included in the electrolyte at a composition between 0.01 wt% - 10 wt%. Further, as indicated in the Non-Final Rejection, Kawasaki teaches the motivation for this modification including a sufficient film effect, increase in electrolyte viscosity, and suppression of resistance increase (Paragraph 0086).
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.
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/O.A.J./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789