ALKOXYSILYL COMPOUND AND NONAQUEOUS ELECTROLYTIC SOLUTION ADDITIVE CONTAINING SAME, AND NONAQUEOUS ELECTROLYTIC SOLUTION AND NONAQUEOUS ELECTROLYTIC SOLUTION SECONDARY BATTERY CONTAINING SAID ADDITIVE
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 .
Response to Amendment
In response to communication filed on 2/10/2026:
Claims 1, 4-6, 9, and 10 have been amended; claims 2, 3, 7, 8, 11, and 12 have been canceled. Claims 13-15 have been newly added.
Previous 35 USC 102 rejections under Suguro, Hamada, Hinoto, Kim have been withdrawn due to amendment.
Previous 35 USC 102 rejections under Usami have been upheld.
Response to Arguments
Applicant's arguments filed 2/10/2026 have been fully considered but they are not persuasive.
The Applicant discloses: “Usami states that a silicon compound having a specific structure is contained in an electrolyte to function as an electrode surface treatment agent. Examples of the silicon compound are listed in paragraph [0021]-[0024], which include a part of the alkoxysilyl compound recited in original claims 1 to 5. However, the presently claimed battery enables a higher capacity retention rate by inhibiting side reactions in a negative electrode by forming a film derived from the alkoxysilyl compound on the surface of a material including a silicon element used as a negative electrode active material.”
The Examiner respectfully traverses. The formation of a film is not commensurate within the scope of the claims.
The Applicant discloses: “In the presently claimed battery, the alkoxy group in each silyl group of the alkoxysilyl compound forms an X-O-Si bond with the surface of the material including silicon so that the surface of the material including silicon is covered with the film that has a silyl ether structure having a stable siloxane bond at both ends. This configuration inhibits the side reactions in the negative electrode to stably increase the capacity retention rate in the charge/discharge cycle. See paragraphs [0013] and [0014] of the present application. In short, the presently claimed battery exhibits effects unexpected for nonaqueous secondary batteries with a negative electrode containing a silicon element as a negative electrode active material.
Usami asserts at paragraph [0015] that addition of a silicon compound can make the state of its electrode surface an ideal state, enhance durability and heat resistance of the electrode surface, and improve Li conductivity of the electrode surface. Although Usami does relate to surface treatment of electrodes, Usami fails to teach that such treatment is effective, particularly when material including a silicon element is used as a negative electrode active material. In fact, in the Examples of Usami (see paragraph [0058]), a negative electrode with graphite is used, not a negative electrode active material including a silicon material.”
The Examiner respectfully traverses. The arguments are not commensurate within the scope of the claim. Further, one cannot argue obviousness (or lack thereof) when the rejection is clearly anticipated by the reference.
The Applicant discloses: “In amended claim 1, which includes the subject matter of former claim 12, the silicon material is specified as "a composite material including a lithium ion conductive phase and a silicon phase dispersed in the lithium ion conductive phase." The Office relies on paragraph [0043] of Usami in rejecting claim 12. However, paragraph [0043] of Usami actually refers to "an inorganic compound such as a tin-silicon compound" for a negative electrode active material. Usami fails to disclose a composite material including a lithium ion conductive phase and a silicon phase dispersed in the lithium ion conductive phase."
The Examiner respectfully traverses. Usami teaches tin-silicon as a negative electrode active material which is a “material including a silicon element” and commensurate with the scope of the claim as worded. This is an example of a silicon alloy which Applicant discloses as an option for the negative electrode active material (as-filed specification paragraph 0044).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4-5, 9, 10, and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Usami et al (JP 2009-004352 A).
Regarding claims 1, 4, 5, 13, and 15, Usami et al. teach a non-aqueous electrolyte secondary battery comprising: a negative electrode having a negative electrode mixture layer, a positive electrode, and a non-aqueous electrolyte (Paragraphs 0057-0059 disclose making the positive electrode, negative electrode, and non-aqueous electrolyte, respectively.), wherein the negative electrode mixture layer includes a negative electrode active material, and the negative electrode active material includes a material including a silicon element (Paragraph 0043),
the non-aqueous electrolyte comprising a non-aqueous solvent, a salt that dissolves in the non-aqueous solvent, and an additive for a non-aqueous electrolyte (Claim 1 discloses a non-aqueous electrolyte solution in which an electrolyte salt is dissolved in an organic solvent, characterized by containing at least one silicon compound. The formula for said silicon compound is shown in paragraph 0021 under formula 7.), the additive for a non-aqueous electrolyte includes an alkoxysilyl compound (Claim 1; paragraph 0021 discloses formula 7. Further, paragraph 0046 and examples disclose the alkoxysilyl compounds being used as additives in electrolytes.).
the alkoxysilyl compound comprising two or more silyl groups bonded with a chain including an ether group, wherein the two or more silyl groups each has at least one selected from the group consisting of an alkoxy group and an oxy alkyl group (Formula 7 discloses
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wherein there are two silyl groups bonded to an ether group. The ether group is represented as -C3H6-O-C3H6-.), the alkoxysilyl compound is bis(alkoxysilyl alkyl) ether represented by a general formula (1):
[Chem 1]
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where,
R1 is a chain including an ether group (Formula 7 shows R1 being an ether group.),
at least one of R2 to R4 is at least one selected from the group consisting of an alkoxy group with a number of carbon atoms of 1 to 6 and an oxy alkyl group represented by -O-(Cx1H2x+1Oy1), x1 is an integer of 1 to 6, and y1 is an integer of 1 or more (Formula 7 shows R3 being a methoxy group, -OCH3.), and
at least one of R5 to R7 is at least one selected from the group consisting of an alkoxy group with a number of carbon atoms of 1 to 6 and an oxy alkyl group represented by -O-(Cx2H2x2+1Oy2), x2 is an integer of 1 to 6, and y2 is an integer of 1 or more (Formula 7 shows R6 being a methoxy group, -OCH3.), and
the remainder of R2 to R7 is an alkyl group or oxy alkyl group each independently represented by Cx3H2x3+1Oy3, x3 is an integer of 1 or more, and y3 is an integer of 0 or more (Formula 7 shows R2, 4, 5, and 7 comprising methyl groups, -CH3.), and
the material including a silicon element is a composite material (Paragraph 0043), and the composite material includes a lithium-ion conductive phase and a silicon phase dispersed in the lithium-ion conductive phase (Paragraph 0043 discloses the negative electrode material can comprise silicon and is capable of absorbing and releasing lithium ions.).
Regarding claims 9 and 10, Usami et al. teach the non-aqueous electrolyte of claim 1, wherein the additive for a non-aqueous electrolyte has a concentration of 10 mass % or less; wherein the additive for a non-aqueous electrolyte has a concentration of 0.05 mass % or more (Claim 2 discloses wherein the content of the silicon compound 0.05 to 20% by mass based on the non-aqueous electrolyte.).
Regarding claim 14, Usami et al. teach the non-aqueous electrolyte secondary battery of claim 1, wherein a concentration of the additive for a non-aqueous secondary batter is 0.05 mass% or more and 10 mass% or less (Claim 2 discloses 0.05-20% by mass.).
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.
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Usami et al (JP 2009-004352 A) as applied to claim 1 above, and further in view of Suguro et al. (WO 2013/024639 A1).
Regarding claim 6, Usami et al. teach the non-aqueous electrolyte secondary battery of claim 1. However, they do not teach wherein R2 to R7 is a methoxy group.
Suguro et al. teach an additive comprising an alkoxysilyl group wherein R2 to R7 is a methoxy group (Paragraph 0063; formula 2 shows the two silicon atoms each are bonded to three methoxy groups
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.).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Usami with Suguro in order to improve cycle characteristics.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL S GATEWOOD whose telephone number is (571)270-7958. The examiner can normally be reached M-F 8:00-5:30.
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Daniel S. Gatewood, Ph.D.
Primary Examiner
Art Unit 1729
/DANIEL S GATEWOOD, Ph. D/Primary Examiner, Art Unit 1729 March 9th, 2026