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 .
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.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-9 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR10-2020-0005369; English equivalent US Pub. No. 2021/0265662 relied upon).
Regarding claims 1-3 and 9, Kim teaches an electrolyte for a lithium secondary battery (title), the electrolyte comprising a lithium salt, an organic solvent, and an additive, wherein the additive comprises a compound represented by Chemical Formula 1, which is X-L-N=C=O (an -N=C=O group being an isocyanate group, and thus taken to be the claimed isocyanate-based additive) (paragraphs [0009]-[0013]), the additive may comprise an additional additive of vinylethylene carbonate (VEC) and/or fluoroethylene carbonate (FEC) (taken to be the claimed carbonate-based additive) (paragraph [0018]), where the weight of the compound represented by Chemical Formula 1 may be 0.05 wt % to 10 wt % based on a total amount of electrolyte (paragraph [0016]), overlapping the range of claim 1, and the weight of the additional additive may be 0.1 wt % to 10 wt % based on a total amount of electrolyte (paragraph [0019]), overlapping the range of claim 1, resulting in a range of ratio of weight of carbonate-based additive to isocyanate-based additive of from 0.01 (0.1/10) to 200 (10/0.05), overlapping the claimed ranges of claims 1-3. Accordingly, it would have been obvious to one of ordinary skill in the art to use a ratio of weight of carbonate-based additive to isocyanate-based additive as claimed because Kim teaches overlapping ranges.
Regarding claims 4-7, Kim teaches that in Chemical Formula 1, L can be a combination of a single bond, SO2, a substituted C1 to C20 alkylene group, and an unsubstituted C1 to C20 alkylene group, and X can be Si(R1)(R2)(R3) or R4- SO2, where R1 to R4 may independently be hydrogen, a halogen, deuterium, a cyano group, an isocyanate group, a substituted or unsubstituted C1 to C20 alkyl group, a substituted or unsubstituted C1 to C20 alkoxy group, a substituted or unsubstituted C2 to C20 alkenyl group, a substituted or unsubstituted C2 to C20 alkynyl group, or a combination (paragraphs [0009]-[0013]).
Regarding claim 8, for the Chemical Formula 1 set forth above, this simplifies to claimed Formula 2-1 when L is an unsubstituted C1 alkylene group (a methylene group, CH2), X is R4- SO2, and R4 is an unsubstituted C1 alkylene group (a methylene group, CH2), and Chemical Formula 1 simplifies to claimed Formula 3-1 when L is an unsubstituted C1 alkylene group (a methylene group, CH2), X is R4- SO2, and R4 is a combination of an unsubstituted C1 alkylene group (a methylene group, CH2) and an isocyanate group.
Regarding claim 12, Kim teaches a lithium secondary battery comprising a positive electrode, a negative electrode, and the electrolyte set forth above reading on claim 1 located between the positive and the negative electrodes (paragraphs [0067] and [0096]; figure 1), where the positive electrode comprises a positive active material (paragraph [0068]) and the negative electrode comprises a negative active material (paragraph [0081]).
Regarding claim 13, Kim teaches that the positive electrode can be represented by LiaNi1-b-cMnbXcO2-αTα (0.90≤a≤1.8, 0≤b≤0.5, 0≤c≤0.05, 0<α<2), where X can be Co and T can be F or S (paragraphs [0071]-[0073]), this formula reading on the claimed Formula 7.
Regarding claims 14-15 and 20, Kim teaches that the weight of the compound represented by Chemical Formula 1 may be 0.05 wt % to 10 wt % based on a total amount of electrolyte (paragraph [0016]), and the weight of the additional additive may be 0.1 wt % to 10 wt % based on a total amount of electrolyte (paragraph [0019]), these ranges overlapping the ranges of claim 20, resulting in a range of ratio of weight of carbonate-based additive to isocyanate-based additive of from 0.01 (0.1/10) to 200 (10/0.05), overlapping the claimed ranges of claims 14-15.
Regarding claims 16-18, Kim teaches that in Chemical Formula 1, L can be a combination of a single bond, SO2, a substituted C1 to C20 alkylene group, and an unsubstituted C1 to C20 alkylene group, and X can be Si(R1)(R2)(R3) or R4- SO2, where R1 to R4 may independently be hydrogen, a halogen, deuterium, a cyano group, an isocyanate group, a substituted or unsubstituted C1 to C20 alkyl group, a substituted or unsubstituted C1 to C20 alkoxy group, a substituted or unsubstituted C2 to C20 alkenyl group, a substituted or unsubstituted C2 to C20 alkynyl group, or a combination (paragraphs [0009]-[0013]).
Regarding claim 19, Kim teaches that the additive may comprise an additional additive of vinylethylene carbonate (VEC) and/or fluoroethylene carbonate (FEC) (paragraph [0018]).
Response to Arguments
Applicant's arguments filed March 3, 2026 have been fully considered but they are not persuasive.
Applicant argues that the reasoning in the prior Office action treats “overlap” as a per se rule and does not identify a teaching or rationale to coordinate both variables within the now-claimed pair of ranges to obtain the observed performance. However, it is noted that the MPEP is quite clear about the rationale of overlapping ranges, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” MPEP at 2144.05 I citing In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, since Kim teaches an overlapping range of content of the isocyanate and carbonate based additives, as well as an overlapping range of the ratio, a prima facie case of obviousness has been set forth.
Applicant argues that routine optimization is not appropriate for the pair of additive variables as a pair, because there is no teaching in Kim about the importance of such as a pair. However, routine optimization is not required here – there are only 3 possibilities with respect to the ratio of the weights of the additives, that the carbonate-based additive is greater, less than, or equal to that of the isocyanate based additive, and all 3 possibilities are obvious to try and all possibilities have a reasonable expectation of success, as they all fall within the claimed ranges.
Applicant is correct in arguing that a prima facie case can be overcome where the claimed range is critical and produces unexpected results. However, in the instant case, unexpected results commensurate in scope with the claims have not been demonstrated for numerous reasons, including that all of the inventive embodiments (Examples 1-6) use 0.5% by weight of the isocyanate-based additive and 1% by weight of the carbonate based additive, thus there are no embodiments having either of the additives below the claimed range, at the lower end of the claimed range, at the upper end of the claimed range, or above the claimed range for either of the claimed additives, and the only ratio set forth by the embodiments is 2, so there are no embodiments below, at the lower end, at the upper end, or above the upper end of the claimed range of ratio.
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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/P.N.S/ Examiner, Art Unit 1749 May 27, 2026
/KATELYN W SMITH/ Supervisory Patent Examiner, Art Unit 1749
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