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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/11/2026 has been entered.
Response to Arguments
Applicant's arguments filed 05/11/2026 have been fully considered but they are not persuasive. Iwama (US-20170047613-A1) is used to teach modified claim 1.
Amended claim 1 provides a capacity retention rate and remaining electrolyte amount test including charge/discharge cycles for 400 cycles, an environment of 45 °C, and charged and discharged at specific voltage and predetermined resting times. Amended claim 1 therefore claims a specific test that is independent of the physical device. That is, in the amendment of claim 1, the test involving the capacity retention rate and remaining electrolyte amount is being claimed as opposed to the non-aqueous electrolyte secondary battery device.
Regarding the claimed capacity retention rate and remaining electrolyte amount test, Iwama discloses that the carbon material causes extremely small change in a crystal structure thereof during charge and discharge which makes it possible to stably achieve high energy density, and also serves an anode conductor to improve conductivity (see e.g., Iwama; [0075]). Furthermore, Iwama discloses that the silicon material of silicon oxide helps achieve higher energy density and is more resistant to deterioration than silicon, which makes it possible to achieve high discharge capacity from an initial cycle of charge and discharge, and makes discharge capacity less prone to decrease in following cycles (see e.g., Iwama; [0076]). Iwama also discloses that the combination of the carbon material and silicon oxide makes it possible to suppress expansion and contraction during charge and discharge while achieving high theoretical capacity (see e.g., Iwama; [0077]). Furthermore, Iwama discloses wherein a capacity retention of the examples are 82-89% after 100 cycles in an environment of 23 °C (see e.g., Iwama; table 1, [0277]). In addition, tables 2-12 of Iwama demonstrate multiple similar battery configurations which have a cycle retention ratio of about 54-82%. Because electrolyte volume retention is directly interdependent on the capacity retention, Iwama demonstrates that high electrolyte retention is desirable. That is, because Iwama provides that a high capacity retention of the battery is achievable and desirable such as up to 89% after 100 cycles, by the depending relationship with electrolyte retention, Iwama demonstrates that high electrolyte retention is also achievable and desirable. Iwama further discloses the desirability of this configuration from the demand to further reduce size and weight of electronic apparatuses, and that the batteries need to achieve high energy density and longer lives (see e.g., Iwama; [0003]). Therefore, because Iwama provides the desirability of the configuration with high capacity retention, the configuration is thus results effective and it is the examiner’s position that Iwama inherently provides the claimed capacity retention rate and remaining electrolyte amount determined by a charging/discharging test of 400 cycles under an environment of 45°C, the charge/discharge cycle including, charging the battery at a constant electric current of 0.5 C until a voltage of 4.2 V is reached, and then charging the battery at a constant voltage of 4.2 V until a current reached 0.05 C, resting for 10 minutes, and discharging the battery at a constant electric current of 0.7 C until the voltage reaches 2.5 V, would result in a capacity retention rate of 79% and a remaining electrolyte of 73.7% or more.
MPEP 2112 I. states ‘“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.’
The examiner notes that the specific test as claimed cannot be performed at the USPTO. However, as described above, Iwama shows that high capacity retention and consequently high electrolyte retention is achievable and one of ordinary skill in the art would have been motivated to provide these characteristics.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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 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.
Claim(s) 1-4, 8-11, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iwama (US-20170047613-A1).
Regarding claim 1, Iwama teaches a non-aqueous electrolyte secondary battery (see e.g., Iwama; [0011]) comprising a positive electrode, a separator, a negative electrode facing the positive electrode with the separator interposed therebetween (see e.g., [0041] regarding battery configuration), and an electrolyte (see e.g., Iwama; [0011]), wherein the electrolyte includes an acid anhydride (see e.g., Iwama; [0173] regarding acid anhydrides such as maleic anhydride, [0170] regarding the solvent may further include an acid anhydride), the negative electrode includes a negative electrode mixture including a negative electrode active material (see e.g., Iwama; [0011], [0014] regarding carbon material and silicon oxide as the active material) and a carbon nanotube (see e.g., Iwama; [0111] regarding anode may include carbon nanotubes which remarkably improves conductivity of the anode, [0298] regarding experimental examples wherein 2% of graphite active material in the anode was replaced with carbon nanotube), and the negative electrode active material includes a silicon-containing material and a carbon material (see e.g., Iwama; [0011], [0014] regarding carbon material and silicon oxide as the active material).
Iwama discloses that the acid anhydride may be included in the electrolyte solvent among a list of other solvents. KSR Rationale E states that it is obvious to choose "from a finite number of identified, predictable solutions, with a reasonable expectation of success". Therefore, it would have been obvious for one of ordinary skill in the art to include acid anhydride from the list of possible solvents taught by Iwama. One of ordinary skill in the art would have been motivated to select an acid anhydride to improve chemical stability of the electrolytic solution (see e.g., Iwama; [0170]).
Regarding the claimed capacity retention rate and remaining electrolyte amount test, Iwama discloses that the carbon material causes extremely small change in a crystal structure thereof during charge and discharge which makes it possible to stably achieve high energy density, and also serves an anode conductor to improve conductivity (see e.g., Iwama; [0075]). Furthermore, Iwama discloses that the silicon material of silicon oxide helps achieve higher energy density and is more resistant to deterioration than silicon, which makes it possible to achieve high discharge capacity from an initial cycle of charge and discharge, and makes discharge capacity less prone to decrease in following cycles (see e.g., Iwama; [0076]). Iwama also discloses that the combination of the carbon material and silicon oxide makes it possible to suppress expansion and contraction during charge and discharge while achieving high theoretical capacity (see e.g., Iwama; [0077]). Furthermore, Iwama discloses wherein a capacity retention of the examples are 82-89% after 100 cycles in an environment of 23 °C (see e.g., Iwama; table 1, [0277]). In addition, tables 2-12 of Iwama demonstrate multiple similar battery configurations which have a cycle retention ratio of about 54-82%. Because electrolyte volume retention is directly interdependent on the capacity retention, Iwama demonstrates that high electrolyte retention is desirable. That is, because Iwama provides that a high capacity retention of the battery is achievable and desirable such as up to 89% after 100 cycles, by the depending relationship with electrolyte retention, Iwama demonstrates that high electrolyte retention is also achievable and desirable. Iwama further discloses the desirability of this configuration from the demand to further reduce size and weight of electronic apparatuses, and that the batteries need to achieve high energy density and longer lives (see e.g., Iwama; [0003]). Therefore, because Iwama provides the desirability of the configuration with high capacity retention, the configuration is thus results effective and it is the examiner’s position that Iwama inherently provides the claimed capacity retention rate and remaining electrolyte amount determined by a charging/discharging test of 400 cycles under an environment of 45°C, the charge/discharge cycle including, charging the battery at a constant electric current of 0.5 C until a voltage of 4.2 V is reached, and then charging the battery at a constant voltage of 4.2 V until a current reached 0.05 C, resting for 10 minutes, and discharging the battery at a constant electric current of 0.7 C until the voltage reaches 2.5 V, would result in a capacity retention rate of 79% and a remaining electrolyte of 73.7% or more.
MPEP 2112 I. states ‘“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.’
The examiner notes that the specific test as claimed cannot be performed at the USPTO. However, as described above, Iwama shows that high capacity retention and consequently high electrolyte retention is achievable and one of ordinary skill in the art would have been motivated to provide these characteristics.
Regarding claim 2, modified Iwama teaches the non-aqueous electrolyte secondary battery of claim 1. Iwama further teaches in experimental examples 10-1 to 10-3 wherein propane disulfonic anhydride (PSAH), one of the listed possible acid anhydrides, was included in the electrolytic solution at 0.5 wt% (see e.g., Iwama; [0300], table 10), which overlaps with the claimed the electrolyte containing 5 mass% or less of the acid anhydride.
Regarding claim 3, modified Iwama teaches the non-aqueous electrolyte secondary battery of claim 1, wherein the acid anhydride may be maleic anhydride (see e.g., Iwama; [0173] regarding acid anhydrides such as maleic anhydride), which has a carbon-carbon unsaturated bond.
Regarding claim 4, modified Iwama teaches the non-aqueous electrolyte secondary battery of claim 1, wherein the acid anhydride includes maleic anhydride (see e.g., Iwama; [0173] regarding acid anhydrides such as maleic anhydride).
Regarding claim 8, modified Iwama teaches the non-aqueous electrolyte secondary battery of claim 1, wherein the electrolyte includes a chain carboxylate ester (see e.g., Iwama; [0167], regarding the solvent may include a chain carboxylate ester), which makes it possible to achieve high battery capacity, superior cycle characteristics, and superior storage characteristics (see e.g., Iwama; [0167]).
Regarding claim 9, modified Iwama teaches the non-aqueous electrolyte secondary battery of claim 8, wherein the chain carboxylate includes at least methyl acetate (see e.g., Iwama; [0167]).
KSR Rationale E states that it is obvious to choose "from a finite number of identified, predictable solutions, with a reasonable expectation of success". Therefore, it would have been obvious for one of ordinary skill in the art to select methyl acetate from the list of possible carboxylate esters taught by Iwama. One of ordinary skill in the art would have been motivated to select methyl acetate in order to achieve high battery capacity, superior cycle characteristics, and superior storage characteristics (see e.g., Iwama; [0167]).
Regarding claim 10, modified Iwama teaches the non-aqueous electrolyte secondary battery of claim 1, wherein the electrolyte may include a sulfur-containing compound such as a sulfonate ester (see e.g., Iwama; [0170]). Iwama discloses that the addition may make it possible to improve chemical stability of the electrolytic solution (see e.g., Iwama; [0170]).
Regarding claim 11, modified Iwama teaches the non-aqueous electrolyte secondary battery of claim 10, wherein the sulfur-containing compound may be a sulfonate ester (see e.g., Iwama; [0170]) which overlaps with the claimed group consisting of sulfate, sulfite, and sulfonate.
Regarding claim 13, modified Iwama teaches the non-aqueous electrolyte secondary battery of claim 1, wherein a ratio of the silicon-containing material in the negative electrode active material is 0.01% to 20% (see e.g., Iwama; [0011], [0014], [0080] regarding silicon oxide inclusion), which overlaps with the claimed range of 4 mass% or more. Iwama further provides examples wherein the weight ratio of SiO is in the claimed range of 4 mass% or more (see e.g., Iwama; tables 1-3).
Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iwama (US-20170047613-A1) as applied to claim 1 above, and in further view of Hashimoto (US-20190172604-A1).
Regarding claim 5, modified Iwama teaches the non-aqueous electrolyte secondary battery of claim 1. Iwama does not explicitly disclose wherein the carbon nanotube includes a single wall carbon nanotube. However, Hashimoto discloses carbon nanotubes that are single-walled carbon nanotubes (see e.g., Hashimoto; [0015], [0033], [0091]). Hashimoto is further analogous art because Hashimoto is in the art of lithium ion secondary batteries (see e.g., Hashimoto; [0005]-[0006]). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use single-walled carbon nanotubes disclosed by Hashimoto as the carbon nanotubes in Iwama because single-walled carbon nanotubes exhibit stronger intermolecular forces than multi-walled CNTs and due to this are advantageous (see e.g., Hashimoto; [0015]) and may function better as a binder (see e.g., Hashimoto; [0033]).
Regarding claim 6, modified Iwama teaches the non-aqueous electrolyte secondary battery of claim 5. As above regarding claim 5, Hashimoto discloses in modified Iwama that the preferred carbon nanotubes used are single-walled and advantageous over multi-walled carbon nanotubes (see e.g., Hashimoto; [0015]), which may be interpreted to mean that 100% of the carbon nanotubes are single-walled nanotubes.
Regarding claim 7, modified Iwama teaches the non-aqueous electrolyte secondary battery of claim 1. Iwama does not explicitly disclose wherein the negative electrode mixture has a carbon nanotube content of 0.005 mass% or more and 0.1 mass% or less. However, Hashimoto discloses that a content of the carbon nanotubes may be most preferably less than 1 mass% and suitably at least about 0.01 mass% (see e.g., Hashimoto; [0034]), which overlaps with the claimed range of 0.005 mass% or more and 0.1 mass% or less. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the inclusion of carbon nanotubes disclosed by Iwama to be 0.01 mass% to 1 mass% disclosed by Hashimoto to obtain a thin-film electrode structure and/or lower the resistance while raising the film strength (see e.g., Hashimoto; [0034]).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iwama (US-20170047613-A1) as applied to claim 10 above, and in further view of Koh (US-20180358647-A1).
Regarding claim 12, modified Iwama teaches the non-aqueous electrolyte secondary battery of claim 10. Iwama does not explicitly disclose wherein the electrolyte contains 5 mass% or less of the sulfur-containing compound.
However, Koh teaches wherein the electrolyte contains about 0.1 wt% to 2 wt% of a sulfur-containing compound (see e.g., Koh; [0050]), which overlaps with the claimed 5 mass% or less of the sulfur-containing compound. Koh is further analogous art because Koh teaches an electrolyte that includes an acid anhydride such as maleic anhydride (see e.g., Koh; [0048] regarding maleic anhydride as the acid anhydride, [0141] regarding example 15 electrolyte preparation), and the negative electrode active material includes a silicon-containing material (see e.g., Koh; [0080]-[0081], regarding silicon carbon composite material) and a carbon material (see e.g., Koh; [0090] regarding a conductive agent which may be carbon black, acetylene black, or graphite). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrolyte disclosed by Iwama by providing about 0.1 wt% to 2 wt% of a sulfur-containing compound disclosed by Koh. One of ordinary skill in the art would have been motivated to make this modification in order to improve chemical stability of the electrolytic solution (see e.g., Iwama; [0170]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN SONG whose telephone number is (571)270-7337. The examiner can normally be reached Monday - Friday 9:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Martin can be reached at (571) 270-7871. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN SONG/Examiner, Art Unit 1728
/MATTHEW T MARTIN/Supervisory Patent Examiner, Art Unit 1728
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