Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 30, 2026, has been entered.
Response to Arguments
Applicant's arguments filed June 30, 2026, have been fully considered but they are not persuasive.
Applicant contends that the rejected claim language is definite and clear and cites three supporting examples with similar language (pp. 9-10). However, the cited examples use different wording and different measurements.
US 2024/0280727 A1 uses the phrase “relative to” instead of “to” as used in the instant claims, and the cited values extend well beyond 100%, making it clear exactly what meaning is intended.
US 2023/0282888 A1 uses “to” as used in the instant claims, but it has a completely different meaning. The values are clearly ratios that add to 100%. In other words, mass of the first material is expressed as a percentage of the total mass of the two materials.
US 2025/0323324 A1 uses the “ratio of A to B” structure, but it is not made ambiguous by the use of percentages, which typically refer to fractions of a whole.
Applicant contends that the Examiner’s interpretation in the Final Rejection demonstrates that the intended meaning is clear (p. 10). However, that interpretation is based on Applicant’s response (October 10, 2025) to the Non-Final Rejection mailed July 11, 2025. The Non-Final Rejection interpreted the limitation as the mass percentage of the electrolyte relative to the total mass of the electrolyte and anode material.
The rejections are maintained.
It was previously conceded that the amendment adding Compound I as an option would make the evidence of unexpected results commensurate in scope with the claims (Examiner Interview Summary mailed April 15, 2026). However, the examples in the instant specification are limited to one electrolyte (LiPF6 in EC/FEC/DEC/EMC), one cathode active material (nickel-rich NCM), and one anode active material (SiO-C), all of which are known to affect battery performance and interaction with other components (e.g. electrolyte interaction at the cathode surface), and none of which are required by the claims. In addition, the inventive examples and counterexamples use only Compound 1, while the claims allow for the use of Compounds 1-3, 7-15, 17, and 18. In order for the evidence of unexpected results to be commensurate in scope with the claims, the claims should be narrowed to be consistent with details of the examples, or evidence should be provided to demonstrate that these discrepancies are not expected to affect the results.
Claim Rejections - 35 USC § 112
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.
Claims 1, 2, 4 and 8-11 are 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.
Claim 1 includes the limitation, “m is a mass percentage of the non-aqueous electrolyte to the negative electrode material layer.” It is unclear what this means. For the purpose of examination, m will be interpreted as the ratio of the mass of the electrolyte to the mass of the anode active material layer (as a percentage).
Claims 2, 4, and 8-11 depend from claim 1 and therefore include the same indefinite limitation.
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.
Claim(s) 1, 2, 4, and 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugawara et al. (US 2021/0296703 A1) in view of Wan et al. (CN 111755753 A; all citations refer to the English translation attached to the office action mailed December 3, 2025) and Günter et al. ("Influence of the Electrolyte Quantity on Lithium-Ion Cells", Journal of the Electrochemical Society 166 A1709, May 2019).
Regarding claim 1, Sugawara teaches a lithium-ion battery comprising a positive electrode, a negative electrode with a negative electrode material layer comprising a silicon-based material (SiOx), and a non-aqueous electrolyte comprising a solvent (EC/DMC/EMC), a lithium salt (LiPF6), and an additive C1 ([0264]-[0283]) selected from a group including dioxathiolane dioxide (DTD) (Sugawara [0084]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any of these compounds, including DTD, since Sugawara teaches that they are all preferred examples. The additive is 0.5 wt% of the electrolyte ([0278]), and the compressed density of the negative electrode active material layer is 1.5 g/cm3 ([0266]), each of which falls within the ranges of the instant claim.
Sugawara does not teach the use of Compound 8 as an additive. Wan discloses an additive for lithium-ion batteries (Wan Compound 1, Claim 1), which is compound 8 of the instant claim. Wan teaches that the additive can reduce the cost of the electrolyte by replacing DTD. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to replace the DTD of Sugawara with Compound 1 of Wan in order to reduce the cost of the electrolyte.
Sugawara does not explicitly teach that silicon content must be from 5-15 wt%. Sugawara teaches the use of SiO (SiOx for x=1; [0265]). Sugawara teaches that the SiOx content of the negative electrode active material layer should be 1-20 wt% ([0224]), or 0.64-12.8 wt% Si for SiO, which overlaps the range of the instant claim. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Sugawara does not teach any particular mass fraction of the electrolyte relative to the total mass of the electrolyte and negative active material layer. Günter teaches that electrolyte content must be optimized to balance battery life and energy density (Günter Conclusions). Electrolyte content is therefore a recognized result effective variable. It would have been obvious to one having ordinary skill in the art at the time of the invention to select an appropriate amount of electrolyte, including values within the range of the instant claim, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See, e.g., In re Boesch, 617 F.2d 272,205 USPQ 215 (CCPA 1980); MPEP 2144.05.
Sugawara does not teach any particular value for m*n*r/S. However, the values for n, r, and S fall overlap the ranges of the instant claim. [W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 2, Sugawara does not teach any particular value for m*n*r/S. However, the values for n, r, and S all overlap the ranges of the instant claim. [W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 4, the additive is 0.5 wt% of the electrolyte (Sugawara [0278]), which falls within the range of the instant claim.
Regarding claim 8, SiOx is an oxide of silicon.
Regarding claim 9, the battery of modified Sugawara includes an additional electrolyte additive comprising a cyclic carbonate compound (fluoroethylene carbonate) (Sugawara [0276]).
Regarding claim 10, the battery of modified Sugawara includes the FEC at 3 wt% (Sugawara [0276]), which falls within the range of the instant claim.
Regarding claim 11, the cyclic carbonate of modified Sugawara is fluoroethylene carbonate (Sugawara [0276]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES A CORNO JR whose telephone number is (571)270-0745. The examiner can normally be reached M-F 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niki Bakhtiari can be reached at (571) 272-3433. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.A.C/ Examiner, Art Unit 1722
/KOURTNEY R S CARLSON/ Primary Examiner, Art Unit 1721 9/8/2026
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