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 .
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/02/2026 has been entered.
Response to Amendment
In response to the amendment received on 7/02/2026:
Claims 1-5 and 7-13 are pending in the current application. Claims 1, 5, 7, and 8 are amended and Claim 6 is canceled.
The previous objection to Claim 5 has been overcome in light of the amendment.
The cores of the previous prior art-based rejections have been maintained in light of the amendment. All changes made to the rejection are necessitated by the amendment.
Response to Arguments
Applicant’s arguments have been fully considered.
Arguments directed at unexpected results
Applicant argues that the relationship of the compound represented by Formula 1 being equal to or greater than a content of the at least one compound from among compounds represented by Formula 2-1 and Formula 2-2 generates unexpected results.
The examiner respectfully disagrees. There does not appear to be a significant enough difference between the results of the disclosed examples and comparative examples to show unexpected results (see examples below).
Item
Content of Formula 1 Compound (wt%)
Content of Formula 2-1 Compound (wt%)
Initial Direct Current Resistance (DCIR, mΩ)
DCIR increase (%), after 30 day-storage at 60°C
DCIR increase (%), after 30 day-storage at 25°C
DCIR increase (%), at fast charging rate
Example 4
1
0.5
21.43
25
9.25
11.95
Example 5
1
0.5
21.82
24
8.62
9.40
Example 6
1
1
21.91
22
8.90
12.05
Example 5 (affidavit)
1
0.5
Not available
24
8.62
Not available
Comparative Example 7
N/A
N/A
21.28
34
10.81
13.21
Comparative Example 8
1
N/A
21.46
28
10.55
13.07
Comparative Example 9
N/A
0.5
21.19
32
9.38
11.43
Comparative Example 10
N/A
0.5
21.29
31
9.14
11.27
Comparative Example 11
1
N/A
21.9
26
10.91
13.31
Comparative Example 12
1
5
22.5
25
9.80
13.08
Additional Comparative Example 2
0.5
1
Not available
27
12.16
Not available
As seen above, Comparative Example 12 and Additional Comparative Example 2 (disclosed in the affidavit) contain a compound represented by Formula 2-1 in a greater amount than a compound represented by Formula 1. Examples 4-6 and Example 5 from the affidavit contain a compound represented by Formula 1 in a greater amount than a compound represented by Formula 2-1 and show similar and, in the case of Example 4 and Comparative Example 12, the same DCIR increase (%), after 30 day-storage at 60°. In some cases, other metrics are better in the comparative examples, such as Comparative Example 10 having better Initial Direct Current Resistance, DCIR increase (%), after 30 day-storage at 25°C, and DCIR increase (%), at fast charging rate than Example 4.
Further, there do not appear to be enough data points showing the results of varying the relationship between the content of the compound represented by Formula 1 and the content of the compound from among compounds represented by Formula 2-1 and Formula 2-2. Only Comparative Example 12 and Additional Comparative Example 2 show results containing both of the claimed compounds at amounts outside of the claimed relationship. For example, Table A of the affidavit shows the content of compounds switched, but the difference in results could also be attributed to the fact that there is less wt% of Formula 1 in Additional Comparative Example 2 than Example 5. Comparative Example 12, which does contain Formula 1 in 1 wt%, contains Formula 2-1 in an amount of 5 wt%, which is much greater than the amount of Formula 1, and does not provide enough support for the claimed relationship of a content of Formula 1 having equal to or greater than a content of the at least one compound from among compounds represented by Formula 2-1 and Formula 2-2.
Applicant argues that a person of ordinary skill would not have a reason to select the claimed direction of the relative-content relationship because Son and Kim do not appear to teach the relative amounts so that the content of the Formula 1 compound is equal to or greater than the content of the Formula 2-1/Formula 2-2 compound. However, there are only 3 possibilities with respect to the ratio of the weights of the additives, that the Formula 1 compound is greater, less than, or equal to that of the Formula 2-1/Formula 2-2 compound, and all 3 possibilities are obvious to try and all possibilities have a reasonable expectation of success, as they all fall within the disclosed ranges of Son and Kim.
Claim Rejections - 35 USC § 103
Claims 1-5, 7-10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Son et al. US-20170237126-A1 (hereinafter “Son”) in view of Kim et al. WO-2020009340-A1 (US-20210265662-A1 used as translation and cited in PTO-892) (hereinafter “Kim”).
Regarding Claims 1 and 3-4, Son discloses an electrolyte for a lithium battery (see abstract and paragraph [0006]), the electrolyte comprising:
a lithium salt (see paragraphs [0006] and [0017]);
a non-aqueous organic solvent (see paragraphs [0006] and [0170]); and
an additive comprising a compound represented by Formula 1 (which is a bicyclic sulfate-based compound) wherein in Formula 1, A1, A2, A3, and A4 each are independently a single (covalent) bond, an unsubstituted or substituted C1-C5 alkylene group, a carbonyl group, or a sulfinyl group (see paragraphs [0006] and [0036]-[0037]). As such, Son discloses the same formula as is claimed (see comparison of Formulas below).
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204
468
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Figure 1. Formula 1 of Instant Application
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358
604
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Figure 2. Formula 1 of Son
Son also discloses additional additives may be included in the electrolyte as well to further enhance battery performance (see paragraphs [0080]), but is silent on the electrolyte further comprising at least one compound from among compounds represented by Formula 2-1 and Formula 2-2, wherein in Formula 2-1, R1 is a hydrogen atom, a halogen atom, an unsubstituted or substituted C1-C20 alkyl group, or a —(CH2)n—X group, wherein n is an integer of 1 to 10 and X is a halogen atom; and R2 is a —(CH2)n′—N═C═O group or a —(CH2)m—N═C═S group, wherein n′ and m′ are each from 0 to 10 and wherein in Formula 2-2, R1′ and R′3 are each independently a —(CH2)n′—N═C═O group or a —(CH2)m′—N═C═S group, wherein n′ and m′ are each from 0 to 10; and R′2 is an unsubstituted or substituted C1-C20 alkylene group.
However, in the same field of endeavor of electrolyte solutions for batteries (see abstract), Kim discloses an electrolyte for a lithium battery, the electrolyte comprising: a lithium salt, a non-aqueous organic solvent, and an additive Chemical Formula 1 having the structure seen below (see comparison between the instant application and Kim below) (see paragraphs [0009]-[0014] and [0035]-[0038]).
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275
639
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Figure 3. Formula 2-1 of Instant Application
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765
590
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Greyscale
Figure 4. Chemical Formula 1 of Kim
Kim discloses an N=C=O group (meeting Claim 1 and Claim 4), L may be a single bond or a substituted or unsubstituted C1-C20 alkylene group (meeting Claim 1), and X may be an R4-SO2 group, with R4 being a substituted or unsubstituted C1-C20 alkylene group (meeting Claim 1 and Claim 3) (see paragraphs [0009]-[0014]), and as such Chemical Formula 1 of Kim renders obvious the claimed chemical formula.
Kim further discloses an electrolyte solution with the compound of Chemical Formula 1 results in improved high temperature stability, a battery internal resistance decrease, and low temperature cycle-life characteristics (see paragraph [0039]). As such, a skilled artisan would recognize that this is an appropriate and functional additive to include in the electrolyte solution of Son.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the electrolyte solution disclosed by Son wherein the electrolyte solution further comprises an additive meeting the limitations of Formula 2-1 in claims 1 and 3-4, as disclosed by Kim, in order to achieve a functional electrolyte solution that has improved high temperature stability, a battery internal resistance decrease, and low temperature cycle-life characteristics.
Son further discloses a content of the compound represented by Formula 1 (correlating to the claimed compound represented by Formula 1) may be from about 0.1 wt% to 5 wt% with respect to a total weight of the electrolyte and specifically may be 1 wt% of the electrolyte solution (see paragraph [0074] and [0124]-[0126]). Additionally, Son discloses if the content of the compound correlating to the claimed Formula 1 is in the appropriate range, further enhanced battery characteristics may be obtained (see paragraph [0074]). So, the wt% of the compound represented by Formula 1 is a result effective variable and as such, a skilled artisan is capable of optimizing the wt% of the compound in the electrolyte to achieve the appropriate amount and achieve the enhanced battery characteristics.
Son is silent on a content of the compound represented by Formula 1 being equal to or greater than a content of the at least one compound from among compounds represented by Formula 2-1 and Formula 2-2.
However, Kim discloses the content of Chemical Formula 1 (correlating to the claimed compound represented by Formula 2-1, see rejection of claim 1 above) may be 0.05 to 10 wt% of the electrolyte solution (see paragraphs [0016] and [0048]).
Kim further discloses too small of an amount may deteriorate the effect of improving high temperature storage and swelling and too high of an amount may deteriorate the battery performance (see paragraph [0048]). So, the wt% of the Chemical Formula 1 is a result effective variable and as such, a skilled artisan is capable of optimizing the wt% of the compound in the electrolyte to achieve the appropriate amount and avoid the negative effect of reduced battery performance.
Additionally, a skilled artisan would be capable of optimizing the amounts of additives correlating to the claimed Formula 1 and Formula 2-1 to arrive at a content of the compound represented by Formula 1 being equal to or greater than a content of the compound represented by claimed Formula 2-1. “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the electrolyte solution disclosed by Son wherein a content of the compound represented by Formula 1 is equal to or greater than a content of the compound represented by Formula 2-1, as disclosed by Son and Kim, in order to optimize the enhanced battery characteristics and avoid reduced battery life.
Regarding Claim 2, modified Son discloses the electrolyte of claim 1 (see rejection of claim 1 above). Son further discloses in Formula 1, A1, A2, A3, and A4 may be an unsubstituted C1-C5 group (see formulas 6-8), a carbonyl group (see formulas 14-15), or a substituted C1-C5 group (see formulas 2-5), wherein the substituted C1-C5 alkylene group is a substituted C1-C5 alkylene group substituted with at least one functional group selected from among a halogen atom (see formulas 10-13), and a C6-C20 aryl group (see formula 9) (see paragraphs [0007] and [0010]-[0016]).
Regarding Claim 5, modified Son discloses the electrolyte of claim 1 (see rejection of claim 1 above).
Son is silent on wherein the compounds represented by Formula 2-1 and Formula 2-2 comprise one or more compounds represented by Formulas 4 to 7.
However, Chemical Formula 1 taught by Kim and discussed in Claim 1 above can simplify to claimed Formula 4 when L is an unsubstituted C1 alkylene group (a methyl group, CH2), X is R4-SO2, and R4 is an unsubstituted C1 alkyl group (a methyl group, CH3). Chemical Formula 1 can simplify to claimed Formula 5 when L is an unsubstituted C1 alkylene group (a methylene group, CH2), X is R4-SO2, and R4 is an unsubstituted C2 alkyl group (an ethyl group, C2H5). Chemical Formula 1 can simplify to claimed Formula 6 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 (an ethylene group, CH2) and an isocyanate group. Chemical Formula 1 can simplify to claimed Formula 7 when L is an unsubstituted C2 alkylene group (an ethylene group, C2H4), X is R4-SO2, and R4 is a combination of an unsubstituted C2 alkylene group (an ethylene group, C2H4) and an isocyanate group.
Kim further discloses an electrolyte solution with the compound of Chemical Formula 1 results in improved high temperature stability, a battery internal resistance decrease, and low temperature cycle-life characteristics (see paragraph [0039]). As such, a skilled artisan would recognize that this is an appropriate and functional additive to include in the electrolyte solution of Son.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the electrolyte solution disclosed by Son wherein the compounds represented by Formula 2-1 and Formula 2-2 comprise one or more compounds represented by Formulas 4 to 7, as disclosed by Kim, in order to achieve a functional electrolyte solution that has improved high temperature stability, a battery internal resistance decrease, and low temperature cycle-life characteristics.
Regarding Claim 7, modified Son discloses the electrolyte of claim 1 (see rejection of claim 1 above). Son further discloses a content of the compound represented by Formula 1 may be from about 0.1 wt% to 5 wt% with respect to a total weight of the electrolyte and specifically may be 1 wt% of the electrolyte solution (see paragraphs [0074] and [0124]-[0126]). This falls within and therefore anticipates the claimed range of a content of the compound represented by Formula 1 being from 0.01 wt% to 5 wt% with respect to a total weight of the electrolyte.
Regarding Claim 8, modified Son discloses the electrolyte of claim 1 (see rejection of claim 1 above).
Son is silent on a content of the at least one compound represented by claimed Formula 2-1 and Formula 2-2 is from 0.01 wt% to 3 wt% with respect to a total weight of the electrolyte.
However, Kim discloses the content of Chemical Formula 1 (correlating to the claimed compound represented by Formula 2-1, see rejection of claim 1 above) may be 0.05 to 10 wt% of the electrolyte solution (see paragraphs [0016] and [0048]), which overlaps and therefore renders obvious the claimed range of a content of Formula 2-1 being 0.01 wt% to 3 wt%.
Kim further discloses too small of an amount may deteriorate the effect of improving high temperature storage and swelling and too high of an amount may deteriorate the battery performance (see paragraph [0048]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the electrolyte solution disclosed by Son wherein a content of Formula 2-1 is 0.01 wt% to 3 wt%, as disclosed by Kim, in order to avoid deteriorated battery life.
Regarding Claim 9, modified Son discloses the electrolyte of claim 1 (see rejection of claim 1 above). Son further discloses a lithium battery 1 (see paragraphs [0089] and [0111]-[0112]) comprising:
a positive electrode (cathode) 3 comprising a positive electrode active material (see paragraphs [0090]-[0098] and [0111]-[0112]);
a negative electrode (anode) 2 comprising a negative electrode active material (see paragraphs [0099]-[0106] and [0111]-[0112]); and
an electrolyte according to the aforementioned claim 1, positioned between the positive electrode and the negative electrode in Fig. 7 (injected into the case/battery impregnated (which is comparable to published instant application injecting the electrolyte into the case (see paragraphs [0108]-[0110] of published instant application)), which would result in the electrolyte solution filling the case and therefore being between the positive electrode and the negative electrode) (see paragraphs [0006], [0036]-[0037], and [0110]-[0112]).
Regarding Claim 10, modified Son discloses the electrolyte of claim 9 (see rejection of claim 9 above). Son further discloses the positive electrode (cathode) active material may be LiNi1/3Co1/3Mn1/3O2 (see paragraphs [0091]-[0095] and [0133]-[0135]). This material is a species of the claimed genus formula LiNixCoyM1-x-yO2-zAz, with M being Mn, x being 1/3, y being 1/3, and z being 0 and therefore anticipates the claimed genus formula.
Regarding Claim 12, modified Son discloses the electrolyte of claim 9 (see rejection of claim 9 above). Son further discloses suitable negative electrode (anode) materials may be used such as a carbon-based (carbonaceous) material and a silicon-based (SiOx) material (see paragraphs [0099]-[0104]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Son in view of Kim as applied to Claim 10 above and further in view of Park et al. KR-20190064272-A (hereinafter “Park”).
Regarding Claim 11, modified Son discloses the lithium battery of claim 10 (see rejection of claim 10 above). Son further discloses the positive electrode material may be a lithium-containing metal oxide (see paragraphs [0091]-[0095]).
Son and Kim are not sufficiently specific on, in the claimed Formula 9, 0.8 ≤ x < 1 with M being at least one selected from among aluminum (Al), manganese (Mn), vanadium (V), magnesium (Mg), molybdenum (Mo), iron (Fe), chromium (Cr), copper (Cu), zinc (Zn), and titanium (Ti).
However, Park discloses a positive electrode active material with the formula LiNi0.8Co0.15Al0.05O2 may be used in a lithium battery (see paragraphs [0127] and [0130]-[0131]). This material is a species of the claimed genus formula LiNixCoyM1-x-yO2-zAz, with M being Al, x being 0.8, y being 0.15, and z being 0 and therefore anticipates the claimed genus formula.
A skilled artisan would recognize this as an appropriate lithium-containing metal oxide positive electrode active material for the lithium battery of Son. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the lithium battery of Son and Kim wherein, in the claimed Formula 9, 0.8 ≤ x < 1, as disclosed by Park, as it is an appropriate material to use as a positive electrode active material in a lithium battery.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Son in view of Kim as applied to Claim 9 above and further in view of Katsuyuki et al. JP-2018181772-A (hereinafter “Katsuyuki”).
Regarding Claim 13, modified Son discloses the electrolyte of claim 9 (see rejection of claim 9 above). Son further discloses suitable negative electrode (anode) materials may be used (see paragraphs [0099]-[0104]).
Son and Kim are silent on the negative electrode active material being a silicon-carbon-based composite, wherein a content of the silicon is 1 wt% or more with respect to a total weight of the silicon-carbon-based composite.
However, in the same field of endeavor of electrolyte solutions for batteries (see paragraphs [0001]-[0002]), Katsuyuki discloses using a negative electrode active material comprising a silicon material mixed a carbon material (graphite) with an electrolyte comprising a cyclic sulfate ester (as is used the combination of Son and Kim, see rejection of claim 1 above) (see paragraphs [0012], [0031]-[0035], [0066], [0069]-[0070], and [0088] and Table 4). Katsuyuki further discloses silicon, graphite, and polyimide may be mixed at a mass ratio of 72:18:10 to create a negative electrode plate (see paragraphs [0069]-[0070]), which would result in a content of the silicon being 72 wt% with respect to a total weight of the silicon-carbon-based composite. This value falls within and therefore anticipates the claimed range of a content of the silicon being 1 wt% or more with respect to a total weight of the silicon-carbon-based composite.
Katsuyuki further discloses using a negative material containing silicon with a cyclic sulfate structure suppresses the formation of a coating on the silicon surface of the negative electrode, which affects high-rate discharge performance and results in a high capacity retention rate (see paragraphs [0012], [0066], [0069]-[0070], and [0088] and Table 4). Katsuyuki also discloses using silicon and a carbon material in combination further increases the capacity retention rate while maintaining the excellent high-rate discharge performance and the appropriate amount of silicon ensures good electrical conductivity and further improves high rate discharge performance (see paragraphs [0033]-[0034] and [0069]-[0070]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the electrolyte solution of Son and Kim wherein the negative electrode active material is a silicon-carbon-based composite, wherein a content of the silicon is 1 wt% or more with respect to a total weight of the silicon-carbon-based composite, as disclosed by Katsuyuki, in order to improve the capacity retention rate and achieve a high rate discharge performance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SYDNEY L KLINE whose telephone number is (703)756-1729. The examiner can normally be reached Monday-Friday 8:00am-5:00pm.
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/S.L.K./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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