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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-5 and 9-11 in the reply filed on March 20, 2026 is acknowledged.
Claims 6-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 20, 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities: on page 5, line 1 and page 10, lines 13 and 15, “(Al)” should read “(Mg)”. Appropriate correction is required.
Claim Objections
Claim 3 is objected to because of the following informalities: in line 3, “(Al)” should read “(Mg)”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 recites the limitation “an additive for secondary battery electrolyte” in lines 1-2. Claim 1, which claim 9 depends on, recites “an additive for secondary battery electrolyte” in line 1, but it is unclear if the “an additive for secondary battery electrolyte” of claim 9 refers to the “an additive for secondary battery electrolyte” of claim 1. For examination purposes, the examiner has interpreted the “an additive for secondary battery electrolyte” of claim 9 as the “an additive for secondary battery electrolyte” of claim 1. Claims 10-11, which depend on claim 9, are similarly rejected. The examiner suggests amending the limitation of claim 9 to “the additive for secondary battery electrolyte” to rectify this issue.
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, 3, 9, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hatta et al. (US 2016/0336614 A1).
Regarding claim 1, Hatta et al. discloses an additive for secondary battery electrolyte, containing magnesium silicate ([0814], [0818], and [0833], solid particles that can be hydrous magnesium silicate).
Regarding claim 3, Hatta et al. discloses the limitations of claim 1. Hatta et al. further discloses wherein the magnesium silicate has a mass ratio of 50 to 70 wt% of oxygen (O), 5 to 20 wt% of magnesium (Al), and 15 to 35 wt% of silicon (Si) ([0833], sepiolite with formula Mg9Si12O30(OH2)4•6H2O, 55.84 wt% O, 16.60 wt% Mg, and 25.57 wt% Si).
Regarding claim 9, Hatta et al. discloses the limitations of claim 1. Hatta et al. further discloses a secondary battery electrolyte comprising an additive for secondary battery electrolyte, containing the magnesium silicate according to claim 1 ([0793], electrolyte layer 56 including solid particles).
Regarding claim 11, Hatta et al. discloses the limitations of claim 9. Hatta et al. further discloses a secondary battery comprising the secondary battery electrolyte according to claim 9 ([0754] and [0760], non-aqueous electrolyte battery with wound electrode body 50 including electrolyte layer 56).
Claims 1 and 3-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sun et al. (Materials Letters 2020, disclosed by Applicant in IDS filed on August 02, 2023).
Regarding claim 1, Sun et al. discloses an additive containing magnesium silicate (page 1 abstract, hydrated magnesium silicate (MSH)).
Regarding claim 3, Sun et al. discloses the limitations of claim 1. Sun et al. further discloses wherein the magnesium silicate has a mass ratio of 50 to 70 wt% of oxygen (O), 5 to 20 wt% of magnesium (Al), and 15 to 35 wt% of silicon (Si) (page 2, col. 1, 2MgO•3SiO2•2H2O with sepiolite structure, 52.26 wt% O, 16.49 wt% Mg, and 28.57 wt% Si).
Regarding claim 4, Sun et al. discloses the limitations of claim 1. Sun et al. further discloses wherein the magnesium silicate has a surface area of 50 to 500 m2/g (page 2, col. 2, BET specific surface area of 453 m2/g).
Regarding claim 5, Sun et al. discloses the limitations of claim 1. Sun et al. further discloses wherein the magnesium silicate has a pore size of 0.1 to 20 nm (page 2, col. 2, pore size of MSH mainly 2-10 nm).
Claims 1, 9, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (US 2008/0254370 A1).
Regarding claim 1, Lee et al. discloses an additive for secondary battery electrolyte, containing magnesium silicate ([0020], multinary metal oxide salt including Mg2SiO4).
Regarding claim 9, Lee et al. discloses the limitations of claim 1. Lee et al. further discloses a secondary battery electrolyte comprising an additive for secondary battery electrolyte, containing the magnesium silicate according to claim 1 ([0013], electrolyte containing multinary metal oxide salt).
Regarding claim 11, Lee et al. discloses the limitations of claim 9. Lee et al. further discloses a secondary battery comprising the secondary battery electrolyte according to claim 9 ([0024] and [0025], lithium secondary battery comprising an electrolyte with multinary metal oxide salt).
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.
Claims 2, 4, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Hatta et al. (US 2016/0336614 A1).
Regarding claim 2, Hatta et al. discloses the limitations of claim 1. Hatta et al. further discloses wherein the solid particles have a particle size D50 of preferably 0.1 μm (100 nm) or more ([0861]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (see MPEP § 2144.05(I)).
Regarding claim 4, Hatta et al. discloses the limitations of claim 1. Hatta et al. further discloses wherein the magnesium silicate has a surface area of 50 to 500 m2/g ([0863], BET specific surface area of the solid particle is preferably 1 m2/g or more and 60 m2/g or less). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (see MPEP § 2144.05(I)).
Regarding claim 10, Hatta et al. discloses the limitations of claim 9. Hatta et al. further discloses wherein the secondary battery electrolyte comprises the additive for secondary battery electrolyte in an amount of 0.1 to 2.0% by weight based on the total weight% of the secondary battery electrolyte ([0864], solid particles added with respect to electrolytes in an amount of 1 mass % or more and 60 mass % or less). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (see MPEP § 2144.05(I)).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2008/0254370 A1).
Regarding claim 10, Lee et al. discloses the limitations of claim 9. Lee et al. further discloses wherein the secondary battery electrolyte comprises the additive for secondary battery electrolyte in an amount of 0.1 to 2.0% by weight based on the total weight% of the secondary battery electrolyte ([0021], multinary metal oxide salt used in an amount of 0.01-10 wt% by weight of the electrolyte). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (see MPEP § 2144.05(I)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hatta et al. (US 2016/0240887 A1) and Brambilla et al. (Journal of Sol-Gel Science and Technology 2009, disclosed by Applicant in IDS filed on August 02, 2023) disclose additives containing magnesium silicate.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jackie Liang whose telephone number is (571)-272-0880. The examiner can normally be reached M-F 8:30AM - 4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey T. Barton can be reached at (571)-272-1307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.L./Examiner, Art Unit 1726
/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 17 April 2026
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