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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 02/03/2023, 05/30/2023, and 11/20/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The specification filed on 02/03/2023 was reviewed and is acceptable.
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) 1-8, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito (JP 3680454 B2, filed in IDS dated 02/03/2023).
Regarding Claim 1, Ito discloses the limitations regarding a non-aqueous electrolyte (Ito, non-aqueous electrolyte, [0005]) comprising
an organic solvent (Ito, as the non-aqueous solvent, one or more solvents selected from the group consisting of cyclic esters, such as ethylene carbonate, can be used, [0052]),
a lithium salt (Ito, LiPF6, [0052]), and
a coumarin-based compound represented by Chemical Formula 1: (Ito, non-aqueous electrolyte contains, as an additive, coumarin and its derivatives, [0005]),
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in Chemical Formula 1, R is an alkyl group having 1 to 10 carbon atoms unsubstituted or substituted with at least one halogen, and n is an integer of 1 to 6 (Ito, In Chemical Formula 4, R6, R7, and R8 are any of Hydrogen (-H) and a Trifluoromethyl group (CF3), [0015]; CF3 has 1 carbon and 3 fluorine atoms, which falls within the claimed range of 1 to 10 carbon atoms and at least one halogen, and R6, R7, and R8 represent three positions on the coumarin-based compound, so n can be 3, which falls within the claimed range of 1 to 6). Ito further teaches that coumarin and its derivatives can further improve the charge/discharge efficiency of the non-aqueous electrolyte secondary battery (Ito, [0015]).
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Since Ito allows for R6, R7, and R8 to be any of Hydrogen (-H) and a Trifluoromethyl group (-CF3), and the disclosed coumarin derivatives may further improve the charge/discharge efficiency of the non-aqueous electrolyte secondary battery, one of ordinary skill in the art would understand that it would be obvious to try to routinely design the non-aqueous electrolyte secondary battery using the different coumarin derivatives to determine the effects of each coumarin derivative on the charge/discharge efficiency of the non-aqueous electrolyte secondary battery.
Regarding Claim 2, Ito discloses all of the claim limitations as set forth above. Ito discloses the limitations regarding the non-aqueous electrolyte (Ito, non-aqueous electrolyte, [0005]), wherein coumarin-based compound is a compound represented by Chemical Formula 1-1 or Chemical Formula 1-2: (Ito, In Chemical Formula 4, R6, R7, R8 are any of Hydrogen (-H) and a Trifluoromethyl group (CF3), [0015]; the Examiner notes that when Ito’s Chemical Formula 4 reads on the claimed Chemical Formula 1-1 when R6 is CF3, and R7 and R8 are Hydrogen, and Ito’s Chemical Formula 4 reads on the claimed Chemical Formula 1-2 when R8 is CF3, and R6 -and R7 are Hydrogen).
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One of ordinary skill in the art would understand that it would be obvious to try to routinely design the non-aqueous electrolyte secondary battery using the different coumarin derivatives to determine the effects of each coumarin derivative on the charge/discharge efficiency of the non-aqueous electrolyte secondary battery, as noted above.
Regarding Claim 3, Ito discloses all of the claim limitations as set forth above. Ito discloses the limitations regarding the non-aqueous electrolyte (Ito, non-aqueous electrolyte, [0005]), wherein the coumarin-based compound is selected from the group consisting of compounds represented by the following Chemical Formula 1C (Ito, In Chemical Formula 4, R6, R7, R8 are any of Hydrogen (-H) and a Trifluoromethyl group (CF3), [0015]; the Examiner notes that when Ito’s Chemical Formula 4 reads on the claimed Chemical Formula 1C when R6 is CF3, and R7 and R8 are Hydrogen).
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One of ordinary skill in the art would understand that it would be obvious to try to routinely design the non-aqueous electrolyte secondary battery using the different coumarin derivatives to determine the effects of each coumarin derivative on the charge/discharge efficiency of the non-aqueous electrolyte secondary battery, as noted above.
Regarding Claim 4, Ito discloses all of the claim limitations as set forth above. Ito discloses the limitations regarding the non-aqueous electrolyte (Ito, non-aqueous electrolyte, [0005]), wherein the coumarin-based compound (Ito, non-aqueous electrolyte contains one or more heterocyclic compounds selected from the group consisting of coumarin and its derivative, [0005]) is included in an amount of 0.5 wt% to 3 wt% based on the total weight of the non-aqueous electrolyte (Ito, the non-aqueous electrolyte preferably contains the heterocyclic compound in a proportion of 0.01 mol·dm-3 or more and less than 0.2 mol·dm-3, [0008]; the disclosed molar amount of 0.01 mol·dm-3 or more and less than 0.2 mol·dm-3 overlaps with the claimed range of 0.5 wt% to 3 wt%. While Ito does not disclose total weight of the non-aqueous electrolyte, the heterocyclic compound is added in small amounts, similar to the claimed range, so it can be reasonable to determine the ranges would at least overlap).
It would have been obvious to one having ordinary skill in the art before the time of the effective filing date of the current invention to select the overlapping portions of the disclosed ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05 (I)).
Regarding Claim 5, Ito discloses all of the claim limitations as set forth above. Ito discloses the limitations regarding the non-aqueous electrolyte (Ito, non-aqueous electrolyte, [0005]), further comprising a halogen-substituted cyclic carbonate (Ito, as the non-aqueous solvent, one or more solvents selected from the group consisting of cyclic esters, such as ethylene carbonate, can be used, [0052]).
Regarding Claim 6, Ito discloses all of the claim limitations as set forth above. Ito discloses the limitations regarding the non-aqueous electrolyte (Ito, non-aqueous electrolyte, [0005]), wherein the halogen-substituted cyclic carbonate is fluorinated ethylene carbonate (Ito, as the non-aqueous solvent, one or more solvents selected from the group consisting of cyclic esters, such as ethylene carbonate, can be used, [0052]).
Regarding Claim 7, Ito discloses all of the claim limitations as set forth above. Ito discloses the limitations regarding the non-aqueous electrolyte (Ito, non-aqueous electrolyte, [0005]), wherein the halogen-substituted cyclic carbonate is included in an amount of 0.5 to 10 wt% based on the total weight of the non-aqueous electrolyte (Ito, The non-aqueous electrolyte was prepared by dissolving LiPF6 as an electrolyte in an equal volume mixed solvent of ethylene carbonate and dimethoxyethane to a concentration of 1 mol·dm-3, [0031]; the disclosed molar amount of 1 mol·dm-3 overlaps with the claimed range of 0.5 to 10 wt%. While Ito does not disclose total weight of the non-aqueous electrolyte, the ethylene carbonate is added in small amounts, similar to the claimed range, so it can be reasonable to determine the ranges would at least overlap).
It would have been obvious to one having ordinary skill in the art before the time of the effective filing date of the current invention to select the overlapping portions of the disclosed ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05 (I)).
Regarding Claim 8, Ito discloses all of the claim limitations as set forth above. Ito discloses the limitations regarding a lithium secondary battery (Ito, non-aqueous secondary battery, [0005]) comprising:
a positive electrode including a positive electrode active material (Ito, positive electrode is made by pressing a positive electrode active material, [0018]);
a negative electrode including a negative electrode active material (Ito, negative electrode made of lithium metal, [0005]); and
the non-aqueous electrolyte (Ito, non-aqueous electrolyte impregnated in the separator, [0005]).
Regarding Claim 15, Ito discloses all of the claim limitations as set forth above. Ito discloses the limitations regarding the non-aqueous electrolyte (Ito, non-aqueous electrolyte, [0005]), wherein the coumarin-based compound is selected from the group consisting of compounds represented by Chemical Formula 1C (Ito, In Chemical Formula 4, R6, R7, R8 are any of Hydrogen (-H) and a Trifluoromethyl group (CF3), [0015]; the Examiner notes that when Ito’s Chemical Formula 4 reads on the claimed Chemical Formula 1C when R6 is CF3, and R7 and R8 are Hydrogen).
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One of ordinary skill in the art would understand that it would be obvious to try to routinely design the non-aqueous electrolyte secondary battery using the different coumarin derivatives to determine the effects of each coumarin derivative on the charge/discharge efficiency of the non-aqueous electrolyte secondary battery, as noted above.
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito (JP 3680454 B2, filed in IDS dated 02/03/2023), as applied to Claim 1 above, in view of Wu et al. (US 20150104706 A1, hereinafter Wu).
Regarding Claim 9, Ito discloses all of the claim limitations as set forth above. Ito discloses the limitations a lithium secondary battery (Ito, non-aqueous secondary battery, [0005]). Ito is silent regarding the positive electrode active material includes a lithium-manganese-rich oxide including Mn in an amount of 50 mol% or more among all metals excluding lithium and having a molar ratio of lithium to a transition metal of more than 1, but Ito discloses that the positive electrode is capable of absorbing and desorbing lithium (Ito, [0005]).
Wu discloses a lithium ion secondary battery (Wu, Title), comprising a positive electrode material represented by a general formula LiaNibMncCodMeOf, wherein 0.5 ≤ a ≤ 2, b+c+d+e = 1. 0 < b < 1, 0 < c < 1, 0 ≤ d < 1, 0 ≤ e < 0.15, 2 ≤ f ≤ 3 (Wu, [0031]; the Examiner notes that Mn is included at 60 mol% among all metals excluding lithium, and a molar ratio of lithium to the transition metals is 1.2:1, which is greater than 1). Specifically, Wu discloses that Li1.2Ni0.4Mn0.6O2.2 is used (Wu, [0051], Table 2). Wu teaches that Li1.2Ni0.4Mn0.6O2.2 has a highest first charge cycle, first discharge cycle, and lowest first charge/discharge cycle irreversible capacity (Wu, [0062], Table 5).
Ito and Wu are analogous to the current invention as they are all directed towards a positive electrode.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use Li1.2Ni0.4Mn0.6O2.2 as the positive electrode active material, as taught Wu, in the non-aqueous electrolyte battery of Ito, in order to improve the performance of the positive electrode.
Regarding Claim 10, modified Ito discloses all of the claim limitations as set forth above. Modified Ito discloses the limitations a lithium secondary battery (Ito, non-aqueous secondary battery, [0005]), wherein the lithium-manganese-rich oxide is represented by Chemical Formula 2:
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in Chemical Formula 2, 0.05 ≤ a ≤ 1, 0 ≤ b ≤ 0.5, 0 ≤ c ≤ 0.3, 0.5 ≤ d ≤ 1.0, and 0 ≤ e ≤ 0.2 are satisfied, and M1 is at least one selected from the group consisting of Al, B, Co, W, Mg, V, Ti, Zn, Ga, In, Ru, Nb, Sn, Sr, and Zr (Wu, Li1.2Ni0.4Mn0.6O2.2 is used, [0051], Table 2;
Li = Li, and a = 0.2, meeting the claimed range of 0.05 ≤ a ≤ 1;
Ni = Ni, and b = 0.4, meeting the claimed range of 0 ≤ b ≤ 0.5;
c = 0, meeting the claimed range of 0 ≤ c ≤ 0.3;
Mn = Mn, and d = 0.6 meeting the claimed range of 0.5 ≤ d ≤ 1.0;
e = 0, meeting the claimed range of and 0 ≤ e ≤ 0.2;
O = O, and a = 0.2, meeting the claimed range of 0.05 ≤ a ≤ 1).
Claim(s) 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito (JP 3680454 B2, filed in IDS dated 02/03/2023), as applied to Claim 1 above, in view of Wu et al. (US 20150104706 A1, hereinafter Wu), and further in view of Park et al. (US 20140065483 A1, hereinafter Park).
Regarding Claim 11, modified Ito discloses all of the claim limitations as set forth above. Ito discloses the limitations a lithium secondary battery (Ito, non-aqueous secondary battery, [0005]). Ito is silent regarding the lithium-manganese-rich oxide is represented by Chemical Formula 2-1:
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in Chemical Formula 2-1, 0.1 ≤ X ≤ 0.5, 0.5 ≤ y ≤ 1, 0 ≤ z ≤ 0.3, and 0 ≤ w ≤ 0.2 are satisfied, and M1 is at least one selected from the group consisting of Al, B, Co, W, Mg, V, Ti, Zn, Ga, In, Ru, Nb, Sn, Sr, and Zr, but Ito discloses that the positive electrode is capable of absorbing and desorbing lithium (Ito, [0005]).
Park discloses a rechargeable lithium battery (Park, Title) comprising a positive active material that comprises an over lithiated oxide represented by the Chemical Formula xLi2MnO3 · (1-x)LiNieCofMngO2, wherein, 0.1 < X < 0.5, 0 < e < 1, 0 < f < 1, and e + f + g = 1, (Park, [0013-0016]);
X = x, and 0 < x < 1, overlapping the claimed range of 0.1 ≤ X ≤ 0.5;
Ni = Ni, and 0 < e < 1 and e + f + g = 1, meeting the claimed 1 – y – z – w;
Co = Co, and 0 < f < 1, overlapping the claimed 0 ≤ z ≤ 0.3;
Mn = Mn, and e + f + g = 1, overlapping the claimed range of 0.5 ≤ y ≤ 1;
w = 0, meeting the claimed range of and 0 ≤ w ≤ 0.2;
O2 = O2.
Park teaches that a positive electrode active material that includes the over lithiated oxide may realize a rechargeable lithium battery having high-capacity at a high voltage of about 4.55 V (Park, [0038]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include comprises an over lithiated oxide represented by the Chemical Formula xLi2MnO3 · (1-x)LiNieCofMngO2, wherein, 0.1 < X < 0.5, 0 < e < 1, 0 < f < 1, and e + f + g = 1, as taught by Park, in the lithium battery of modified Ito, in order to increase the capacity of the battery.
Regarding Claim 12, modified Ito discloses all of the claim limitations as set forth above. Modified Ito discloses the limitations a lithium secondary battery (Ito, non-aqueous secondary battery, [0005]), wherein the negative electrode active material (Park, the negative active material may include a material that is capable of doping/dedoping lithium, [0065]) includes a silicon-based negative electrode active material (Park, the material being capable of doping/dedoping lithium include a Si-based compound such as Si, SiO.sub.x (0 < x < 2), a Si--C composite, a Si-Q alloy (wherein Q is a Group 13 to 16 element or a transition element), or a combination thereof, [0068]).
Regarding Claim 13, modified Ito discloses all of the claim limitations as set forth above. Modified Ito discloses the limitations a lithium secondary battery (Ito, non-aqueous secondary battery, [0005]), wherein the silicon-based negative electrode active material (Park, the negative active material may include a material that is capable of doping/dedoping lithium, [0065]) is selected from the group consisting of Si, SiOm (wherein 0<m<2), a Si-C composite, a Si-Ma alloy (Ma is one or more selected from the group consisting of Al, Sn, Mg, Cu, Fe, Pb, Zn, Mn, Cr, Ti, and Ni), and a combination thereof (Park, the material being capable of doping/dedoping lithium include a Si-based compound such as Si, SiO.sub.x (0 < x < 2), a Si--C composite, a Si-Q alloy (wherein Q is a Group 13 to 16 element or a transition element), or a combination thereof, [0068]).
Regarding Claim 14, modified Ito discloses all of the claim limitations as set forth above. Modified Ito discloses the limitations a lithium secondary battery (Ito, non-aqueous secondary battery, [0005]), wherein the negative electrode active material (Park, the negative active material may include a material that reversibly intercalates/deintercalates lithium ions, [0065]) includes a carbon-based negative electrode active material (Park, the material that reversibly intercalates/deintercalates lithium ions may be a carbon material, [0066]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. US 12243985 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed towards a non-aqueous electrolyte solution for a lithium secondary battery, the non-aqueous electrolyte solution comprising: a lithium salt; an organic solvent; and a compound represented by Formula 1
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wherein, in Formula 1, R1 is a —CN group, or a nitrile group, as instantly claimed. R2 is hydrogen or an alkyl group having 1 to 3 carbon atoms, and R3 to R6 are each independently hydrogen, an alkyl group having 1 to 3 carbon atoms, or a —CN group. Further, Claim 3 of U.S. Patent No. US 12243985 B2 specifically claims Formula 1a, which falls within the scope of Instant Claim 1 and is the same chemical compound as Chemical Formula 1A from Instant Claims 3 and 15.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN NGUYEN whose telephone number is (703)756-1745. The examiner can normally be reached Monday-Thursday 9:50 - 7:50 ET.
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/K.N./Examiner, Art Unit 1752
/NICHOLAS A SMITH/Supervisory Primary Examiner, Art Unit 1752