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 .
Claim Status
Claims 2-4, 10, 12, and 16 have been cancelled, claims 1, 6-9, 11, 13-15, and 19 have been amended, and new claims 21-26 have been added. Claims 1, 5-9, 11, 13-15, and 17-26 are currently pending.
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.
Claim(s) 1, 9, 11, 19, 21, 23-24, and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bhat et al. (U.S. 20120328939).
With respect to claims 1, 9, 21, 23, Bhat discloses a battery that cycles lithium ions ([0003]), the battery comprising:
a positive electrode (106 - cathode) (Fig. 1);
a negative electrode (102 – anode) comprising a silicon-containing (silicate) electroactive active material (Fig. 1; [0181])); and
an electrolyte (104) infiltrating the positive electrode and the negative electrode ([0013]) ([abstract]), the electrolyte comprising:
an organic solvent (ethylene carbonate and dimethyl carbonate ([0132]), thus reading on claim 9);
an inorganic lithium salt (LiFP.sub.6; thus reading on claim 9) in the organic solvent ([0132]); and
a fluoroalkoxysilane additive (silane stabilizing additive) in the organic solvent ([0013]; [0133]),
the fluoroalkoxysilane additive comprising Pentafluorophenyl)triethoxysilane (a known synonym of triethoxy(perfluorophenyl)silane, [0147]; thus reading on claim 21) or 1h,1h,2h,2h-Perfluorooctyitriethoxysilane ([0143]; thus reading on claim 23).
With respect to claims 11, 19, 24, and 26 Bhat discloses a battery that cycles lithium ions ([0003]), the battery comprising:
a positive electrode (106 - cathode) (Fig. 1) comprising a nickel-based electroactive material (nickel high-voltage phosphate ([0181];[0183]);
a negative electrode (102 – anode) comprising a silicon-containing (silicate) electroactive active material (Fig. 1; [0181])); and
an electrolyte (104) infiltrating the positive electrode and the negative electrode ([0013]) ([abstract]), the electrolyte comprising:
an organic solvent (ethylene carbonate and dimethyl carbonate ([0132]), thus reading on claim 19);
an inorganic lithium salt (LiFP.sub.6; thus reading on claim 19) in the organic solvent ([0132]); and
a fluoroalkoxysilane additive (silane stabilizing additive) in the organic solvent ([0013]; [0133]),
the fluoroalkoxysilane additive comprising Pentafluorophenyl)triethoxysilane (a known synonym of triethoxy(perfluorophenyl)silane, [0147]; thus reading on claim 24) or 1h,1h,2h,2h-Perfluorooctyitriethoxysilane ([0143]; thus reading on claim 26).
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.
Claim(s) 5-9, 13-15, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Bhat et al. as applied to claims 1 and 11 above.
With respect to claim 5, Bhat discloses an electrolyte including Pentafluorophenyl)triethoxysilane or 1h,1h,2h,2h-Perfluorooctyitriethoxysilane as an additive (see above rejection of claims 2-4), but does not disclose the LUMO or HOMO for the additive.
However, applicant is reminded that when the structure recited in the reference is identical to that of the claims, the claimed properties are presumed to be inherent (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). In this instance, the Pentafluorophenyl)triethoxysilane or 1h,1h,2h,2h-Perfluorooctyitriethoxysilane referenced in Bhat is identical to that of the application, therefore its LUMO and HOMO energy levels, which are inherent properties present in chemical compounds, are presumed to be inherent in Bhat and would thus read on the claimed ranges.
With respect to claim 6, Bhat discloses the fluoroalkoxysilane additive constitutes, by weight, 0.2 wt. % to about 5 wt. % of the electrolyte solution ([0176]), thus encompassing the claimed range of 0.2% to 1.5%.
Applicant is reminded that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
With respect to claims 7-8, Bhat discloses Pentafluorophenyl)triethoxysilane or 1h,1h,2h,2h-Perfluorooctyitriethoxysilane as the fluoroalkoxysilane additive in an electrolyte (see above rejection of claims 2-4) decomposes to form an interphase layer (206 – anode SEI) is formed (in-situ [0191]; thus reading on claim 8) on the active material of the negative electrode (106 - anode).
While Bhat does not explicitly disclose the presence of a hybrid organic-inorganic material in the SEI, Bhat does explain that that “the set of one or more additives or a derivative thereof (e.g., their decomposition product) can improve the stability of the electrolyte 202 by chemically reacting or forming a complex with other electrolyte components. As a further example, the set of one or more additives or a derivative thereof (e.g., their decomposition product) can scavenge decomposition products of other electrolyte components or dissolved electrode materials in the electrolyte 202 by chemical reaction or complex formation. Any one or more of the cathode SEI 208, the anode SEI 206, and the other decomposition products or complexes can be viewed as derivatives, which can include a set of one or more chemical elements corresponding to, or derived from, those present in the set of one or more additives, such as silicon or other heteroatom included in the set of additives,” [0197]). Thus, since it has already been shown that the active materials of the negative electrode and electrolyte materials (specifically the fluoroalkoxysilane additive, lithium salt, and solvent) disclosed by Bhat are identical to those of the instant application (rejection of claim 1), the “decomposition products” formed at the SEI disclosed by Bhat would necessarily contain the hybrid organic-inorganic material claimed.
The limitations “during cycling of the battery, the fluoroalkoxysilane additive decomposes and forms an interphase layer on surfaces of the silicon-containing electroactive active material of the negative electrode that isolates the silicon-containing electroactive active material from physical contact with the electrolyte,” is an example of a product by process limitation. Applicant is reminded that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this instance, the interphase (SEI) layer and its components are shown to be present in the battery according to the prior art, and formed on the anode, thus separating it from the electrolyte (Fig. 2), thus the product formed is the same and the claimed mechanism to achieve the product is unpatentable.
With respect to claim 13, Bhat discloses the fluoroalkoxysilane additive constitutes, by weight, 0.2 wt. % to about 5 wt. % of the electrolyte solution ([0176]), thus encompassing the claimed range of 0.2% to 1.5%.
Applicant is reminded that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
With respect to claims 14-15 and 17-18, Bhat discloses an interphase layer (208 - cathode SEI) is formed on the active material of the positive electrode electroactive material (Fig. 2; [0191]), and a second interphase layer (206 – anode SEI) formed on the negative electrode electroactive material (Fig. 2; [0191]),
wherein the first interphase layer (208) and the second interphase layer (206) comprise decomposition products of the fluoroalkoxysilane additive ([0197]).
The limitations “the first interphase layer comprises byproducts of the electrochemical oxidation of the fluoroalkoxysilane additive, (claim 15)” “the second interphase layer comprises byproducts of the electrochemical reduction of the fluoroalkoxysilane additive, (claim 15)” “the first interphase layer and the second interphase layer each comprise a hybrid organic-inorganic material, (claim 17)” and “the first interphase layer and the second interphase layer each comprise a chemical compound including silicon-oxygen bonds, silicon-carbon bonds, carbon-carbon bonds, carbon-hydrogen bonds, or a combination thereof, (claim 17)” are not explicitly stated in the prior art. However, the mechanism that describes the decomposition that occurs at each SEI site has already been referenced in detail in the above rejection of claim 8 ([0197]). Additionally, all material of the electroactive material of the electrodes, as well of material of the electrolytes, have already been shown to be identical in the prior art compared to that of the instant application (see above rejection of claim 11). Therefore, the decomposition products claimed would inherently be the same.
The limitations “wherein the first interphase layer and the second interphase layer are formed in situ during cycling of the battery,” “wherein electrochemical oxidation of the fluoroalkoxysilane additive occurs at the positive electrode during charge of the battery,” and “wherein electrochemical reduction of the fluoroalkoxysilane additive occurs at the negative electrode during charge of the battery,” are an example of a product by process limitation. Applicant is reminded that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this instance, the interphase (SEI) layer and its components are shown to be present in the battery according to the prior art, and formed on the anode and cathode, thus separating it from the electrolyte (Fig. 2), thus the product formed is the same and the claimed mechanism to achieve the product is unpatentable.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Bhat as applied to claim 11 above, in view Choi et al. (U.S. 20150243970).
With respect to claim 20, Bhat discloses a nickel-based electroactive material and silicon-based electroactive material comprising silicon (see above rejection of claim 11), but does not disclose that nickel-based electroactive material comprises lithium nickel cobalt manganese aluminum oxide, lithium nickel manganese cobalt oxide, lithium nickel cobalt aluminum oxide, or a combination thereof.
Choi discloses a lithium battery ([abstract]) comprising a lithium nickel an electrolyte with a silane additive ([0120]) and teaches the positive electroactive material is a lithium nickel cobalt magnesium oxide ([0069]). Choi further teaches the lithium nickel magnesium cobalt oxide improves the structural stability of the positive active material ([0064]).
It would have been obvious for one having ordinary skill in the art at the time that the application was filed to ensure the nickel-based electroactive material disclosed by Bhat was a lithium nickel magnesium cobalt oxide as taught by Choi in order to improve the structural stability of the positive active material.
Claims 22 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Bhat as applied to claims 9 and 19 above, in view Che et al. (CN 112952199A, Espacenet translation provided for reference).
With respect to claims 22 and 25, Bhat discloses a fluoroalkoxysilane additive for an electrolyte (see above rejection of claims 1 and 11), but does not disclose the fluoroalkoxysilane additive comprises one of trimethoxy(3,3,3-trifluoropropyl)silane, dimethoxy(methyl)(3,3,3-trifluoropropyl)silane, or a combination thereof.
Che discloses a lithium battery ([0002]) comprising silicon-containing electroactive material for a negative electrode ([0011]) and an additive (B) in the electrolyte ([0010]) and teaches the additive (B) in the electrolyte is trimethoxy(3,3,3-trifluoropropyl)silane ([0010]). Che further teaches the trimethoxy(3,3,3-trifluoropropyl)silane is useful to form a stable protective film on the surface of the positive and negative electrodes at the same time, thereby improving the cycle life of the battery ([0011]).
It would have been obvious to one having ordinary skill in the art at the time that the application was filed to use trimethoxy(3,3,3-trifluoropropyl)silane as taught by Che as the fluoroalkoxysilane additive in the electrolyte disclosed by Bhat as trimethoxy(3,3,3-trifluoropropyl)silane is useful to form a stable protective film on the surface of the positive and negative electrodes at the same time, thereby improving the cycle life of the battery.
Response to Arguments
Applicant’s arguments, see pages 9-20 of response, filed 05/18/2026, with respect to the drawing objections and claims 1, 6, and 11 have been fully considered and are persuasive. The drawing objections, 35 U.S.C. 112(b) rejection of claim 6 and the 35 U.S.C. 103 rejection of claims 1 and 11 has been withdrawn.
Applicant’s arguments, pages 9-20 of response, filed 05/18/2026, with respect to the rejection(s) of claim(s) 1 and 11 under 35 U.S.C. 103 in view of Kageura, Mao, and Luyi have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Bhat et al., and no reference to Kageura, Mao, and Luyi has been made in any claim rejections.
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 JORDAN E BERRESFORD whose telephone number is (571)272-0641. The examiner can normally be reached M-F 8:00 am - 5:00 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (572)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.E.B./ Examiner, Art Unit 1727
/BARBARA L GILLIAM/ Supervisory Patent Examiner, Art Unit 1727
Prosecution Insights