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
The amendment filed 30 December 2025 has been entered. Claims 1-11 and 14 have been amended, claims 12 and 13 have been canceled.
The objection to claim 8 is withdrawn due to applicant’s amendment.
The previous rejections under 35 USC 103 are maintained, and the rejections below are adjusted to reflect the current amendments.
Claim Rejections - 35 USC § 103
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.
Claims 1-11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Iwatani et al (JP 2015018601 A), disclosed in the IDS submitted 01/13/2023, in view of Noguchi et al (US 20150236376 A1), disclosed in the IDS submitted 06/27/2023.
Regarding claim 1, Iwatani teaches a lithium secondary battery (p1 para 2; the Technical Field describes the invention being pertinent to a lithium ion secondary battery) including a positive electrode, a negative electrode, and a separator interposed between the positive electrode and the negative electrode (p2 para 7) and a nonaqueous electrolytic containing one or more compounds γ selected from the group of a compound represented by formula (II) and a compound represented by formula (III) (translation, p7 para 10-11 to p8 para 1-4), wherein formula (III) includes III-1 (original, p12 lines 40-50), reproduced below. Formula III-1 teaches a class of phosphate additives with a cyclic phosphate group having two carbon atoms in the ring and having a functional group R4, in which R4 can be a fluorine-containing alkyl group which may contain an etheric oxygen atom and wherein a portion of the hydrogen atoms of the alkyl group is substituted partially with a fluorine atom (translation, p7 para 10-11 to p8 para 1-4) and includes the -R-O-X functional group of the claimed species; therefore, the class of phosphate additives taught by Iwatani includes the claimed species.
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Reproduced structure of Formula III-1 from Iwatani et al.
Iwatani further teaches SiOx (0≤x≤2) as a negative electrode active material (p4 last para discloses Si, which corresponds to SiOx, x=0)
However, Iwatani does not explicitly disclose a structure for R4 wherein the claimed R has 1 to 5 carbon atoms and wherein the claimed X is a perfluoroalkyl group having 1 to 5 carbon atoms.
One of ordinary skill in the art would have looked to prior art using electrolytes with similar phosphate additives to select the substituent functional group. In a similar field of endeavor, Noguchi provides in [0030] a compact list of useful examples of similar phosphate additives with the general formula O=P(O-R1)(O-R2)(O-R3) ([0012]). The second phosphate compound in Noguchi’s list contains the functional group -O-C2H4-O-CF3, and it is an example of Iwatani’s –O-R4 group, wherein R4 is a fluorine-containing alkyl group which may contain an etheric oxygen atom and wherein a portion of the hydrogen atoms of the alkyl group is substituted partially with a fluorine atom. In addition, Noguchi teaches that use of their fluorine-containing phosphate compound increases the oxidation stability of the electrolyte solution and enables use of the electrolyte in a high voltage battery ([0021], [0028]).
A skilled artisan would have turned to Noguchi to select the substituent corresponding to -O-C2H4-O-CF3 to use for Noguchi’s -O-R4 functional group of Formula III-1 given that it is a suitable option and the resulting phosphate additive supports use of the electrolyte in a high voltage battery, which primary reference Iwatani teaches as being an important function of the additive compound (translation: p8 para 5 states “when the non-aqueous electrolyte contains the compound (γ), good cycle characteristics can be obtained even when charging and discharging are performed at a high voltage”). The combined prior art of Iwatani in view of Noguchi thus teaches Iwatani’s Formula III-1 with -O-C2H4-O-CF3 as its -O-R4 group, which reads on the claimed limitation of Chemical Formula 1.
Regarding claim 2, the combination above teaches the lithium secondary battery of claim 1, and the additive previously taught in addressing claim 1 also meets the limitations of claim 2, wherein R is an alkylene group having 2 carbon atoms.
Regarding claim 3, the combination above teaches the lithium secondary battery of claim 1, and the additive previously taught in addressing claim 1 also meets the limitations of claim 3 (X=CF3).
Regarding claim 4, the combination above teaches the lithium secondary battery of claim 1, and the additive previously taught in addressing claim 1 also meets the limitations of claim 4, wherein R is an alkylene group having 2 carbon atoms.
Regarding claim 5, the combination above teaches the lithium secondary battery of claim 1, and the additive previously taught in addressing claim 1 also meets the limitations of claim 5, wherein the additive is Chemical Formula 2-2.
Regarding claim 6, the combination above teaches the lithium secondary battery of claim 1, and Iwatani further teaches the additive can be included in an amount 0.2 to 30.0 parts by mass with respect to 100 parts by mass of the base electrolyte (p8 para 6), which overlaps with the claimed range.
Regarding claim 7, the combination above teaches the lithium secondary battery of claim 1, and Iwatani further teaches the electrolyte includes a lithium salt (p7 para 5 teaches lithium salts) and an organic solvent (p5 para 5 and p6 para 3 teach a base electrolyte consisting of a cyclic carbonate compound, a chain carbonate compound, a cyclic ester compound, and a chain ester compound, examples are dimethyl carbonate DMC, ethyl methyl carbonate EMC, and diethyl carbonate DEC, and these are known to be organic solvents).
Regarding claim 8, the combination above teaches the lithium secondary battery of claim 7, and Iwatani further teaches the lithium salt is one or more from the claimed group (p7 para 5 teaches lithium salts LiPF6, LiClO4, LiBF4, LiCF3SO3, LiN(CF3SO2)2, which are claimed species).
Regarding claim 9, the combination above teaches the lithium secondary battery of claim 7, and Iwatani further teaches wherein the lithium salt is included at a concentration of 0.5 mol/l to 1.5 mol/l, that is 0.5 M to 1.5 M (p7 para 7), which is within the claimed range.
Regarding claim 10, the combination above teaches the lithium secondary battery of claim 7, and Iwatani further teaches the organic solvent includes at least one solvent selected from the claimed group (p5 para 5 and p6 para 3 teach a base electrolyte consisting of a cyclic carbonate compound, a chain (i.e., linear) carbonate compound, a cyclic ester compound, and a chain (i.e., linear) ester compound).
Regarding claim 11, the combination above teaches the lithium secondary battery of claim 11, and Iwatani further teaches the organic solvent includes a cyclic carbonate-based organic solvent (p5 para 5 and p6 para 3 teach a base electrolyte consisting of a cyclic carbonate compound).
Regarding claim 14, the combination above teaches the lithium secondary battery of claim 1, and the additive previously taught in addressing claim 1 also meets the limitations of claim 14, wherein the additive is Chemical Formula 2-2.
Response to Arguments
Applicant's arguments filed 30 December 2025 have been fully considered but they are not persuasive.
Applicant argues that Iwatani, other than a passing statement that R4 can be a fluorine-containing alkyl group which may contain an etheric oxygen atom, Iwatani does not elaborate on what R4 is, and does not specify alkyl-O-prefluoroalkyl. Separately, Applicant argues that Noguchi is limited to a non-cyclic phosphoric ester, and that when substitution on a cyclic phosphoric ester is applied to an acyclic phosphate, it does not result in a compound having the same properties, arguing that there would be no motivation for such a modification.
These arguments are not persuasive because it is not clear from the record or from the knowledge of one having ordinary skill in the art the a cyclic phosphoric ester and a non-cyclic phosphoric ester are somehow completely distinct additives, and that teachings relevant to one would categorically not apply to the other. Both Iwatani et al. and Noguchi et al. teach that their phosphoric esters improve stability of the electrolyte in high-voltage charging environments (Iwatani p 8, para 6-8, Examples; Noguchi [0021], [0030]). In the absence of evidence to the contrary, related phosphate ester additives would be expected to perform in similar fashion. Indeed, the related prior art has recognized cyclic and acyclic phosphate esters as related compounds providing similar benefits. (e.g. US 2014/0272607 to Amine et al, cited on the IDS of 27 June 2023. Iwatani here also specifically suggests the general type of substituent to the ester as R4, (i.e. a fluorine-containing alkyl group which may contain an etheric oxygen atom), which is not taken to be a passing statement but a straightforward teaching. Noguchi et al happens to teach a related phosphate ester compound having a specific example of such a substituent as -OCH2Ch@H2CH2OCF3, which one having ordinary skill in the art would have recognized as a suitable option for Iwatani’s R4 as described above. A prima facie case of obviousness is therefore present, and Applicant is invited to submit rebuttal evidence.
Applicant further argues that the problem of interfacial degradation related to expansion of the SiOx electrode was not recognized in the prior art. As an initial matter, this is not persuasive at least because evidence of this effect is not present in the application to an extent commensurate in scope with the claim. All examples in Applicant’s specification appear to use Si as opposed to any oxide compound, which is also taught in both prior art references. In addition, "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)
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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/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 19 May 2026
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