DETAILED ACTION
Claims 1-9 and 13-20 are pending as amended on 14 June 2026, claims 10-12 are withdrawn from consideration.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant’s amendments to the claims and the remarks/arguments have been entered and fully considered.
Response to Amendment and Arguments
Applicant’s amendment overcomes the objection to claims 2, 6, 13, 14, 15 and 17. The objection has been withdrawn.
Applicant’s amendment overcomes the rejection of claims 1-9 and 13-20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. The rejection has been withdrawn.
Applicant’s arguments have been fully considered but are not persuasive.
In response to applicant's argument that neither Yu nor Wang recognizes that a separator additive can reduce side reactions caused by lithium migration from a lithium supplement or improve utilization efficiency of a specific lithium supplement, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
With respect to claim 2, Applicant argues that Yun in view of Wang fails to recognize the claimed ratio to improve utilization efficiency. However, as set forth in previous office action, Yun teaches that the amount of the lithium compensation additive is preferably present in an amount of 10% by weight or less of the cathode active material layer to avoid gelation during preparation while supply a greater amount of lithium ions([0050]), and Wang teaches that the free radical capturing agent is coated at a coating thickness of 1 to 8µm to effectively retard flame without affecting the volume of the battery cell ([0039]), thus both amount are result effective variables and a person of ordinary skill in the art would have been motivated to adjust the amount of the lithium compensation additive of Yun and the amount of the free radical capturing nitrone compound of Wang in order to obtain a workable product. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Applicant’s other arguments are moot as they do not apply to the current rejection.
Claim Rejections - 35 USC § 103
Claims 1-4 , 7, 8, 13, 14 and 16-20 stand, and claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Yun in view of Wang.
Regarding claims 1, 3-4, 7, 8, 16 and 18-20, Yun teaches a lithium secondary battery useful in electric vehicle comprises an anode having an anode active material layer coated onto at least one surface of an anode current collector, a cathode having a cathode active material layer coated onto at least one surface of a cathode current collector, a separator separating the anode and the cathode([0054]), and an electrolyte ([0003], [0007] and [0009]), wherein the cathode active material layer further includes an irreversible lithium compensation additive such as Li5FeO4 ([0047]-[0049]), which meets the claimed lithium supplement of formula (I), wherein m is 3, x1 is 1.67, n is 1 and y5 is 1, y1, y2, y3 and y4 are all 0.
Yun further teaches that the separator may be selected from polyester, polyethylene, polypropylene, or a non-woven fabric form([0054]), which meets the claimed separator substrate, wherein the separator includes a coating layer containing ceramic components or polymer materials to secure heat resistance ([0055]).
Yun does not teach the separator comprises a nitrone additive.
Wang teaches coating one or both sides of a lithium secondary battery separator with a flame-retarding/free radical capturing agent such as N-tert-butyl-phenyl nitrone, which meets the claimed nitrone additive, formula (II), greatly improves the safety of the battery at high temperature and avoid battery explosion(abstract, [0006], [0008] and [0023]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to coat the separator of Yun with N-tert-butyl-phenyl nitrone of Wang. The rationale to do so would have been the motivation provided by the teachings of Wang that to do so would predictably provide improved safety([0023]), which is desirable by Yun ([0006]).
Regarding claim 2, Neither Yun nor Wang discloses the claimed molar content ratio. However, Yun teaches that the amount of the lithium compensation additive is preferably present in an amount of 10% by weight or less of the cathode active material layer to avoid gelation during preparation while supply a greater amount of lithium ions([0050]), and Wang teaches that the free radical capturing agent is coated at a coating thickness of 1 to 8µm to effectively retard flame without affecting the volume of the battery cell ([0039]), thus both amount are result effective variables and a person of ordinary skill in the art would have been motivated to adjust the amount of the lithium compensation additive of Yun and the amount of the free radical capturing nitrone compound of Wang in order to obtain a workable product.
Regarding claim 4, Wang teaches N-tert-butyl-phenyl nitrone , which renders formula (II’) obvious since R1 is t-butyl and R2 is phenyl, which is a close structural homolog of tolyl. Absent evidence to the contrary, one of ordinary skill would have reasonable expectation that a methyl substituent of the phenyl of N-tert-butyl-phenyl nitrone, i.e., N-tert-butyl-tolyl nitrone would have flame retarding function similar to that of N-tert-butyl-phenyl nitrone since it has been held that "Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties." See, e.g., Dillon, 919 F.2d at 693, 696,16 USPQ2d at 1901,1904. See also Deuel, 51 F.3d at 1558, 34 USPQ2d at 1214. MPEP 2144.09[R-08.2017].
Regarding claim 13, Yun teaches Li5FeO4 as lithium compensation additive ([0047]-[0049]), which is a single compound thus meets a purity greater than 90% .
Regarding the first delithiation capacity of the lithium supplement claim 14 and the first charge and discharge voltage of the lithium supplement of claim 15 , since Yun teaches the same Li5FeO4 as claimed, the first delithiation capacity, the first charging and discharging voltage range would inherently be the same as claimed under similar conditions. If there is any difference between the product of Yun and the product of the instant claims the difference would have been minor and obvious. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Regarding claim 17, Yun exemplifies a thickness of the separator is 15 µm ([0086]), which meets the claimed thickness.
7. Claims 1-5, 7, 8 and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Yun in view of CN111725575A (Wu), which is listed in Applicant’s information disclosure statement.
Regarding claims 1, 3-5, 7, 8, 16 and 18-20, Yun teaches a lithium secondary battery useful in electric vehicle comprises an anode having an anode active material layer coated onto at least one surface of an anode current collector, a cathode having a cathode active material layer coated onto at least one surface of a cathode current collector, a separator separating the anode and the cathode([0054]), and an electrolyte ([0003], [0007] and [0009]), wherein the cathode active material layer further includes an irreversible lithium compensation additive such as Li5FeO4 ([0047]-[0049]), which meets the claimed lithium supplement of formula (I), wherein m is 3, x1 is 1.67, n is 1 and y5 is 1, y1, y2, y3 and y4 are all 0.
Yun further teaches that the separator may be selected from polyester, polyethylene, polypropylene, or a non-woven fabric form([0054]), which meets the claimed separator substrate, wherein the separator includes a coating layer containing ceramic components or polymer materials to secure heat resistance or mechanic strength([0055]).
Yun does not teach the separator comprises a nitrone additive.
Wu teaches adding a free radical capturing agent to a lithium secondary battery separator can improve heat resistance of high temperature safety ([0002]-[0004] , wherein the free radical capturing agent includes N-tert-butyl-phenyl nitrone and tetramethyl piperidine oxide ([0007), which meets the claimed nitrone additive, formula (II) and cyclic nitrone derivative with a 4-8 membered ring, respectively.
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to coat the separator of Yun with N-tert-butyl-phenyl nitrone or tetramethyl piperidine oxide of Wu . The rationale to do so would have been the motivation provided by the teachings of Wu that to do so would predictably provide improved safety([0003]), which is desirable by Yun ([0006]).
Further, regarding claim 4, Wu teaches N-tert-butyl-phenyl nitrone , which renders formula (II’) obvious since R1 is t-butyl and R2 is phenyl, which is a close structural homolog of tolyl. Absent evidence to the contrary, one of ordinary skill would have reasonable expectation that a methyl substituent of the phenyl of N-tert-butyl-phenyl nitrone, i.e., N-tert-butyl-tolyl nitrone would have free radical capturing function similar to that of N-tert-butyl-phenyl nitrone since it has been held that "Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties." See, e.g., Dillon, 919 F.2d at 693, 696,16 USPQ2d at 1901,1904. See also Deuel, 51 F.3d at 1558, 34 USPQ2d at 1214. MPEP 2144.09[R-08.2017].
Regarding claim 2, Neither Yun nor Wu discloses the claimed molar content ratio. However, Yun teaches that the amount of the lithium compensation additive is preferably present in an amount of 10% by weight or less of the cathode active material layer to avoid gelation during preparation while supply a greater amount of lithium ions([0050]), and Wu teaches that the free radical capturing agent is added in an amount of 0.01 to 10 wt.% of the battery cell ([0022]), thus both amount are result effective variables and a person of ordinary skill in the art would have been motivated to adjust the amount of the lithium compensation additive of Yun and the amount of the free radical capturing nitrone compound of Wu in order to obtain a workable product.
Regarding claim 13, Yun teaches Li5FeO4 as lithium compensation additive ([0047]-[0049]), which is a single compound thus meets a purity greater than 90% .
Regarding the first delithiation capacity of the lithium supplement claim 14 and the first charge and discharge voltage of the lithium supplement of claim 15 , since Yun teaches the same Li5FeO4 as claimed, the first delithiation capacity, the first charging and discharging voltage range would inherently be the same as claimed under similar conditions. If there is any difference between the product of Yun and the product of the instant claims the difference would have been minor and obvious. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Regarding claim 17, Yun exemplifies a thickness of the separator is 15 µm ([0086]), which meets the claimed thickness.
Claim 6 stands rejected under 35 U.S.C. 103 as being unpatentable over Yun in view of Wang as applied to claims 1-4, 7, 8 and 13-20 above, and further in view of Zhao.
The combined teachings of Yun and Wang are set forth above.
Neither Yun and Wang teaches the claimed surface area of the lithium supplement.
Zhao teaches that a specific surface area of lithium supplement additive exemplified as Li5FeO4 is in a range of 0.1-5.0 m2 /g to reduce the sensitivity of the material to the ambient environment and overall viscosity of the electrode paste to improve processability ([0057] and [0096]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to adjust the surface area of the lithium compensate additive of Yun and Wang to the range of 0.1-5.0 m2 /g of Zhao. The rationale to do so would have been the motivation provided by the teachings of Zhao that to do so would predictably reduce the sensitivity of the material to the ambient environment and overall viscosity of the electrode paste to improve processability ([0057] and [0096]). Such a range overlaps with the claimed range, and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yun in view of Wu as applied to claims 1-5, 7, 8 and 13-20 above, and further in view of Zhao.
The combined teachings of Yun and Wu are set forth above.
Neither Yun and Wu teaches the claimed surface area of the lithium supplement.
Zhao teaches that a specific surface area of lithium supplement additive exemplified as Li5FeO4 is in a range of 0.1-5.0 m2 /g to reduce the sensitivity of the material to the ambient environment and overall viscosity of the electrode paste to improve processability ([0057] and [0096]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to adjust the surface area of the lithium compensate additive of Yun and Wu to the range of 0.1-5.0 m2 /g of Zhao. The rationale to do so would have been the motivation provided by the teachings of Zhao that to do so would predictably reduce the sensitivity of the material to the ambient environment and overall viscosity of the electrode paste to improve processability ([0057] and [0096]). Such a range overlaps with the claimed range, and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Claim 9 stands rejected under 35 U.S.C. 103 as being unpatentable over Yun in view of Wang as applied to claims 1-4, 7, 8 and 13-20 above, and further in view of Liu.
The combined teachings of Yun and Wang are set forth above.
While Yun further teaches that the separator includes a coating layer containing ceramic components to secure heat resistance ([0055]), neither Yun nor Wang expressly discloses mixing nano-alumina with the separator coating additive.
Liu teaches nano-sized alumina is a preferred ceramic material that can be coated onto a separator of secondary battery to provide heat resistance ([0018], [0048] and [0060]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to include the nano alumina of Liu in the coating layer of the separator of Yun and Wang since it has been held that it is prima facie obviousness to use a known material based on its suitability for its intended use, in the instant case, a ceramic coating material for secondary battery separator to provide heat resistance (Liu, [0060]) . See MPEP 2144.06(II) and 2144.07; In re Fout, 675 F2d 297, 213 USPQ 532 (CCPA 1982); Sinclair & Carroll Co v Interchemical Corp, 325 US 327, 65 USPQ 297 (1945); In re Leshin, 227 F2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc v Ag-Bag Corp, 857 F2d 1418, 8 USPQ2d 1323 (Fed Cir 1988).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yun in view of Wu as applied to claims 1-5, 7, 8 and 13-20 above, and further in view of Liu.
The combined teachings of Yun and Wu are set forth above.
While Yun further teaches that the separator includes a coating layer containing ceramic components to secure heat resistance ([0055]), neither Yun nor Wu expressly discloses mixing nano-alumina with the separator coating additive.
Liu teaches nano-sized alumina is a preferred ceramic material that can be coated onto a separator of secondary battery to provide heat resistance ([0018], [0048] and [0060]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to include the nano alumina of Liu in the coating layer of the separator of Yun and Wu since it has been held that it is prima facie obviousness to use a known material based on its suitability for its intended use, in the instant case, a ceramic coating material for secondary battery separator to provide heat resistance (Liu, [0060]) . See MPEP 2144.06(II) and 2144.07; In re Fout, 675 F2d 297, 213 USPQ 532 (CCPA 1982); Sinclair & Carroll Co v Interchemical Corp, 325 US 327, 65 USPQ 297 (1945); In re Leshin, 227 F2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc v Ag-Bag Corp, 857 F2d 1418, 8 USPQ2d 1323 (Fed Cir 1988).
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 AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766
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