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 .
Election/Restrictions
Applicant’s election without traverse of Chemical Formula 1B, Chemical Formula 1B-II, Chemical Formula 1B-II-1, Chemical Formula 2, Chemical Formula 2-2, Chemical Formula 1B-II-3 in the reply filed on Feb. 6, 2026 is acknowledged. All other non-elected species or/and sub-species presented in the claims are withdrawn.
Accordingly, claims 1-4, 6 and 9-20 are being examined on the merits. Claims 5 and 7-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species or/and sub-species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on Feb. 6, 2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on Dec. 23, 2022 and Apr. 11, 2025 have been considered by the examiner.
Claim Objections
Claims 2-4, 6 and 9-13 are objected to because of the following informalities:
It appears that claims 12-13 have grammatical errors.
The “the rechargeable lithium battery” recited in claims 2-4, 6 and 9-11 should read “a rechargeable lithium battery”.
Appropriate correction is required.
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 18-20 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.
In claim 18, the recitation “an amorphous carbon coating layer” can be interpreted in at least two ways: 1) the amorphous carbon coating layer is coated on the core; and 2) the amorphous carbon coating layer is coated on the Si-based particles. The claim scope is unclear and ambiguous, rendering the claim indefinite. For purposes of examination, the amorphous carbon coating layer is interpreted as being coated on the core.
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-4, 6 and 9-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (US 20220069350 A1, hereafter Cho) in view of Kim et al. (US 20190207258 A1, hereafter Kim).
Regarding claims 1-3, Cho teaches an electrolyte for a rechargeable lithium battery, comprising (See, at least, [0019] and [0005]):
a non-aqueous organic solvent,
a lithium salt, and
an additive represented by the following formula:
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111
398
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which reads on the second compound represented by the Chemical Formula 1B as claimed.
Cho is silent on the claimed first compound being a cesium salt compound. However, in the same field of endeavor, Kim discloses that an electrolyte additive including a cesium salt compound comprising a cation Cs+ and an imide-based anion represented by the following formula ([0018], [0021]):
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123
427
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The addition of this electrolyte additive comprising an imide-based anion and a cation Cs+ would suppress an increase of the irreversible capacity loss of the secondary battery as well as a deterioration of the lifetime characteristics ([0008]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have modified Cho to include an electrolyte additive comprising a cation Cs+ and the imide-based anion taught by Kim in the electrolyte of Cho in order to achieve advantages such as suppressing an increase of the irreversible capacity loss of the secondary battery as well as a deterioration of the lifetime characteristics ([0008], Kim). As a result, the electrolyte additive comprising a cation Cs+ and the imide-based anion reads on the first compound as claimed. Note also that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP § 2144.06.
Overall, the combination of the first compound and the second compound described above reads on the “a composition” as claimed.
Regarding claim 4, Cho in view of Kim teaches the electrolyte for a rechargeable lithium battery of claim 3, wherein the cesium salt compound may be represented by combining the following anion ([0024], Kim) with a cation Cs+:
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75
391
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Regarding claim 6, Cho in view of Kim teaches the electrolyte for a rechargeable lithium battery of claim 1, wherein the first compound is included in an amount of 0.5 wt% based on the total amount of the electrolyte for a rechargeable lithium battery ([0066], Kim).
Regarding claim 9, Cho in view of Kim teaches the electrolyte for a rechargeable lithium battery of claim 1, wherein the second compound may be represented by the following formula ([0013], Cho):
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91
370
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which reads on the claimed Chemical Formula 1B-II.
Regarding claim 10, Cho in view of Kim teaches the electrolyte for a rechargeable lithium battery of claim 9, wherein the second compound may be represented by the following ([0015], Cho):
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125
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which reads on the instantly claimed Chemical Formula 1B-II-1.
Regarding claim 11, Cho in view of Kim teaches the electrolyte for a rechargeable lithium battery of claim 1, wherein the second compound may be represented by the following ([0017], Cho):
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143
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which reads on the instantly claimed Chemical Formula 1B-II-3.
Regarding claim 12, Cho in view of Kim teaches the electrolyte for a rechargeable lithium battery of claim 1, wherein the second compound is included in an amount of about 0.1 wt% to about 10 wt% based on a total weight of the electrolyte for a rechargeable lithium battery ([0020], Cho). The instantly claimed range of 0.05 wt% to 5 wt% overlaps the above range. 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).
Regarding claim 13, Cho in view of Kim teaches the electrolyte for a rechargeable lithium battery of claim 1, wherein the composition is included in an amount of about 0.6 wt% to about 10.5 wt% (0.5+0.1 to 0.5+10, see the rejections of claim 6 and claim 12). The instantly claimed range of 0.5 wt% to 8.0 wt% overlaps the above range. 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).
Regarding claim 14, Cho in view of Kim teaches a rechargeable lithium battery, comprising a positive electrode including a positive electrode active material, a negative electrode including a negative electrode active material, and the electrolyte for the rechargeable lithium battery of claim 1 ([0100], Cho).
Regarding claims 15-16, Cho in view of Kim teaches the rechargeable lithium battery of claim 14, wherein the positive electrode active material is represented by LiNi0.91Co0.07Al0.02O2 ([0166], Cho), which reads on the formulae recited in claims 15 and 16.
Regarding claim 17, Cho in view of Kim teaches the rechargeable lithium battery of claim 14, wherein the negative electrode active material includes a Si composite (“Si-C composite”) and graphite (at least: [0168]-[0169], [0131], [0135]).
Regarding claims 18-20, Cho in view of Kim teaches the rechargeable lithium battery of claim 17, wherein the Si composite include a core including Si-based particles and an amorphous carbon coating layer, the Si-based particle includes Si-C composite, the Si-C composite includes a core includes a core including Si particles and crystalline carbon and an amorphous carbon coating layer on the surface of the core (See, at least: [0131]-[0136] and [0140], Cho). An average particle diameter of the Si particles is in the range of 50 nm to 200 nm ([0132], Cho).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6 and 9-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12218308 B2 (‘308) in view of Kim. All the instantly claimed limitations are taught by the limitations recited in the claims of ‘308 together with the teachings of Kim. The Kim reference is applied for the same reasons stated in the rejection above.
Conclusion
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727