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
The amendment filed on July 20, 2026 is acknowledged. Claims 1, 4, and 9-10 are currently amended. Claims 2-3 and 5 are canceled. Claims 6-8 remain withdrawn in the application. Claims 1, 4, and 6-11 remain pending in the application.
Application’s amendments to the specification and claims 1 and 9 have overcome each and every objection and 112(b) rejection previously set forth in the Non-Final Office Action mailed on April 20, 2026.
The previous rejections under 35 U.S.C. 102 and 35 U.S.C. are withdrawn due to Applicant’s amendment. New rejections follow.
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 1, 4, and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko et al. (US 2019/0198926 A1, hereinafter “Kaneko”) in view of Cecilia et al. (Journal of Environmental Chemical Engineering 2018, hereinafter “Cecilia”).
Regarding claim 1, Kaneko discloses an additive for secondary battery electrolyte, containing magnesium silicate ([0036]-[0037], inorganic adsorbent that includes inorganic porous material that may be magnesium silicate), wherein the magnesium silicate has a pore size of 0.1 to 20 nm ([0041], inorganic adsorbent has a pore size of 3Å to 10Å), and wherein the magnesium silicate has a particle size of 0.5 μm to 10 μm ([0045]). 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)). Kaneko further discloses that the inorganic adsorbent has a function of adsorbing CO2 generated by decomposition of the electrolyte ([0036]).
Kaneko does not disclose wherein the magnesium silicate has a mass ratio of 50 to 65 wt% of oxygen (O), 10 to 15 wt% of magnesium (Mg), and 20 to 30 wt% of silicon (Si).
Cecilia discloses sepiolite with excellent CO2 adsorption capability (page 4576, Table 1 and page 4578, col. 1, Sep with 61.682 wt% O, 13.623 wt% Mg, and 22.928 wt% Si).
Kaneko and Cecilia are considered to be analogous to the claimed invention because they are in the same field of magnesium silicate additives. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the inorganic adsorbent of Kaneko with the teachings of Cecilia using known methods to yield the predictable result of a magnesium silicate with CO2 adsorption capabilities, and one of ordinary skill in the art would have a reasonable expectation of success in doing so. See MPEP § 2143(I)(A).
Regarding claim 4, modified Kaneko discloses the limitations of claim 1. Modified Kaneko further discloses wherein the magnesium silicate has a surface area of 120-420 m2/g (Cecilia page 4577, col. 2 and page 4580, Table 2, sepiolite BET SSA of 182 m2/g).
Regarding claim 9, modified Kaneko discloses the limitations of claim 1. Kaneko further discloses a secondary battery electrolyte comprising an additive for secondary battery electrolyte, containing the additive according to claim 1 ([0035], electrolyte with inorganic adsorbent).
Regarding claim 10, modified Kaneko discloses the limitations of claim 9. Kaneko further discloses wherein the inorganic adsorbent is provided in 0.1 to 5 parts by weight with respect to 100 parts by weight of a non-aqueous electrolyte ([0046]). 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 11, modified Kaneko discloses the limitations of claim 9. Kaneko further discloses a secondary battery comprising the secondary battery electrolyte according to claim 9 ([0034], non-aqueous electrolyte secondary battery with electrolyte).
Response to Arguments
Applicant’s arguments with respect to claims 1, 4, and 9-11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Jackie Liang whose telephone number is (571)272-0880. The examiner can normally be reached M to F 8:45AM to 4:45PM.
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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 3 August 2026
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