DETAILED ACTION
Status of Claims
Claims 2 and 4 have been cancelled and claim 1 has been amended by the Applicant. It is unclear why Applicant stated in the Remarks “No amendments are made to the claims”.
Claims 1, 3 and 5-8 are pending and being examined on the merits in this office action.
Remarks
Applicant’s arguments and the Declaration have been entered. A reply to the Applicant’s remarks/arguments is presented after addressing the claims.
Any rejections and/or objections made in the previous Office Action and not repeated below, are hereby withdrawn in view of Applicant’s amendments or/and arguments.
The text of those sections of Title 35, U.S. Code not included in this action can be found in the prior Office action. References cited in the current Office action can be found in the prior Office action.
Claim Rejections - 35 USC § 103
Claims 1, 3 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Mu et al. (CN 111244546 A, whose English machine translation is being employed for citation purposes, hereafter Mu).
Regarding claim 1, Mu teaches a non-aqueous electrolyte for a lithium secondary (See Abstract) comprising:
an additive (e.g., an imidazole carboxylic ester compound represented by formula 2, Abstract and [0011]),
an additional additive (e.g., Abstract and [0011]: lithium difluorophosphate, which is a phosphate-based compound),
a lithium salt (e.g., a lithium salt compound represented by formula 1, and [0011]), and
a non-aqueous organic solvent ([0011]).
Mu teaches the additive is a compound represented by the following formula:
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where R2 can be an unsubstituted methyl group, as shown in the formula B4, and can also be a substituted alkyl group ([0013]). The claimed additive is an analogue to the formula 2 of Mu, because the only difference is that the claimed additive represented by the chemical formula 1 has fluoro-substituted methyl groups instead of a methyl group. However, one of ordinary skill in chemistry art would not expect a significant change in properties resulted from the difference between a saturated alkyl group and a substituted saturated alkyl group. Furthermore, no record of evidence shows that the substitution of hydrogen atom in the methyl group by fluorine atoms causes any unexpected results. Thus, the claimed additive having fluoro-substituted methyl groups does not patentably distinguish the instant invention from the prior art. It has been held that closely related homologs, analogues, and isomers in chemistry creates a prima facie case of obviousness. In re Dillon 16 USPQ 2d 1897, 1904 (Fed. Cir. 1990); In re Payne 203 USPQ 245 (CCPA 1979); In re Mills 126 USPQ 513 (CCPA 1960); In re Henze 85 USPQ 261 (CCPA 1950); In re Hass 60 USPQ 544 (CCPA 1944). See MPEP § 2144.09.
Regarding claim 3, Mu teaches the non-aqueous electrolyte for a lithium secondary according to claim 1, wherein the additive is included in an amount of 0.1% to 5% by weight ([0019]) based on the total weight of the non-aqueous electrolyte for a lithium secondary battery.
Regarding claim 5, Mu teaches a lithium secondary battery comprising the non-aqueous electrolyte for a lithium secondary battery according to claim 1, a positive electrode, a negative electrode, and a separator ([0031]-[0032]).
Regarding claim 6, Mu teaches the lithium secondary battery according to claim 5, wherein the negative electrode comprises a carbon-based negative electrode active material and a silicon-based negative electrode active material (e.g., “silicon-carbon composite material”, [0036]).
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Mu, as applied to claim 6 above, and further in view of Park et al. (US 2011/0177393 A1, hereafter Park).
Regarding claims 7-8, Mu teaches the lithium secondary battery according to claim 6, but is silent as the ratio of the carbon-based negative electrode active material and the silicon-based negative electrode active material as claimed.
However, it is well known in the art that a composite of silicon and carbon is used as a negative electrode active material. For instance, Park discloses that a carbon-silicon composite may contains 40% to 75% by weight of graphite (the end of [0045]) and about 20% by weight of silicon ([0043], line 20), corresponding to a ratio of about 2 to 37.5. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have employed the ratio taught by Park as the ratio of carbon-based negative electrode active material and the silicon-based negative electrode active material of Mu, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP § 2144.07. As a result, the claimed ranges overlap that of 2 to 37.5, respectively. 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 MPEP § 2144.05 (I).
Response to Arguments
Applicant's arguments filed Feb. 2, 2026 have been fully considered but they are not persuasive.
1) MPEP § 602.01(a)-I-A states: The requirements that an oath or declaration must identify the inventor or joint inventor executing the oath or declaration by their legal name and identify the application to which it is directed are necessary for the Office to ensure compliance with the requirement of 35 U.S.C. 115(a). Specifically, 35 U.S.C. 115(a) requires that each individual who is the inventor or a joint inventor of a claimed invention in an application for patent has executed an oath or declaration in connection with the application (except as provided for in 35 U.S.C. 115 ). See MPEP § 602.08(b) for additional information pertaining to inventor names.
In this case, the Declaration with only two inventors’ signatures is improper.
In addition, the attachment “Verification statement of the translator” mentioned in the Declaration does not appear to be available to the examiner.
2) The applicant’s arguments and the declaration under 37 CFR 1.132 filed Feb. 2, 2026 are insufficient to overcome the rejections, because there are no enough reasons to conclude that the structure difference between the formula 2 of Mu and the claimed chemical formula 1 cause a significant difference in properties. The minimal difference in properties presented in the Declaration may be due to deviations of measurement. No data for measurement errors/deviations are provided. The said minimal difference in properties is likely within the error range. Thus, the data provided are not sufficient to overcome the rejections under prima facie case of obviousness.
3) In response to Applicant’s argument with respect to “Mu does not disclose an electrolyte containing only the imidazole carboxylate compound as the primary additive component”, it is respectfully noted that this argument is not commensurate with the scope the claim(s) because the transitional term "comprising" in claim 1, which is synonymous with "including," "containing," or "characterized by," is inclusive or open- ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004).
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 ZHONGQING WEI whose telephone number is (571)272-4809. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727