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 .
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 1-15 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.
Regarding claims 1 and 7, the limitation “a predicted oxidation potential Vox of 2.0<Vox<4.5” renders the claims indefinite because the claims do not specify the prediction methodology, reference electrode, solvent system, or computational level that governs Vox. Without an objective standard, one of ordinary skill in the art cannot ascertain whether a candidate additive falls within or outside the claimed range. See MPEP 2173.02 and 2173.05(a) (terms requiring a standard for measurement) and In re Packard, 751 F.3d 1307 (Fed. Cir. 2014) (reasonable clarity).
Applicant should provide, in the claims or by explicit incorporation from the specification, the method of predicting Vox (e.g., DFT level/basis set, solvent model, reference electrode), or amend to an experimentally measurable oxidation potential with defined test conditions (electrolyte composition, scan rate, electrode materials).
In claim 14, the limitation “further” renders the claim indefinite because it is unclear how it adds to the claim. The examiner suggests removing “further” from the claim.
Claim 15 is indefinite for the following: Claim 7 recites “one or more additives, each additive having … and each atom selected from the group consisting of: C; H; O; N; S and Si.” Claim 15 then recites “the one or more additive is selected…” (singular/plural mismatch) which creates a grammatical ambiguity. See MPEP 2173.05(n) (grammar/antecedent basis).
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 1-5 and 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ou et al. (“Ou”, EP 4,160,775 A1) in view of Dahn et al. (“Dahn”, WO 2006/124738 A1).
Regarding claims 1, 5, 7, and 14, Ou discloses an additive suitable for an electrolyte of a lithium ion battery ([0006]). Ou teaches the negative electrode material can be artificial graphite, natural graphite, silicon carbon composite material and silicon oxide, inter alia ([0025]), which reads on the anode active material. Ou teaches the positive electrode material is nickel cobalt manganese oxide ([0023]). Ou teaches carbonate solvents ([0021], LiPF6 [[0019]), and vinylene carbonate [0022].
Ou teaches an additive that has less than or equal to nine carbons, at least one unsaturated bond, and a five membered ring with a silicon heteroatom ([0015]; Compounds 1, 2, 3, 4).
Ou does not expressly teach the predicted oxidation potential Vox of 2.0<Vox<4.5. A 112 rejection has been applied above with regard to this limitation.
Furthermore, since Ou teaches compounds with a substantially similar structure (<=9 carbons, at least one unsaturated bond, five membered ring with a silicon heteroatom), there would be a reasonable expectation that the predicted oxidation potential would fall within the same range.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See MPEP 2144.09(I).
Still further, Dahn discloses redox shuttles for rechargeable lithium-ion cells (title) and teaches oxidation potentials in the range of 3.1 to 4.5V ([0034]).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to use an additive with an oxidation potential in the range taught by Dahn to prevent irreversible cell damage and excessive cell heating or outgassing, as taught by Dahn ([0034]).
As to claims 2 and 10, Ou teaches the chemical formula of the nickel cobalt manganese oxide is LiNix-CoyMn(1-x-y)MzO2, where 0.6<=x<0.9, x+y<1, 0<=z<0.08, and M is at least one of Al, Mg, Zr, and Ti ([0024]), which is considered to read on claims 2 and 10, since Applicant uses a similar convention in Applicant’s PgPub US 2025/0006979A1 ([0016]).
As to claims 3, 4, 12, and 13, Ou teaches the negative electrode material can be artificial graphite, natural graphite, silicon carbon composite material and silicon oxide, inter alia ([0025]).
As to claim 8, Ou teaches including ethylene carbonate ([0021]), diethyl carbonate ([0021]), and fluoroethylene carbonate ([0022]). Ou also teaches the lithium salt may be LiPF6 ([0019]).
As to claim 9, Ou teaches dioxolane (claim 8) and also teaches the lithium salt may be LiFSI and LiTFSI ([0019]).
As to claim 11, Ou teaches including VC (vinylene carbonate, [0022]) at 0.5g per 100g (Table 1, Ex. 9), which reads on 0.5 wt.%.
Allowable Subject Matter
Claim 16 is allowed.
The additive in claims 6 and 15 are not taught or suggested in the prior art. However, claims 6 and 15 are rejected under 35 U.S.C. 112 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL H. LEE whose telephone number is (571)272-2548. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL H LEE/Primary Examiner, Art Unit 1746