DETAILED ACTION
Status of Claims
Claims 1-20 are pending, wherein claims 1-6, 9-10, 15-17 and 19 are amended. Claims 1-20 are being examined on the merits in this office action.
Remarks
Applicant’s amendments and arguments 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Any rejections and/or objections made in the previous Office Action and not repeated below, are hereby withdrawn in view of Applicant’s amendments or/and arguments.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 a prior Office action. References cited in the current Office action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Itoh et al. (US 5405861 A, hereafter Itoh).
Regarding claims 1-7, Itoh teaches a compound represented by the following formula (See Table 1, Compound No. 3):
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As indicated by the structural formulae, the formula disclosed by Itoh and those recited in claim 7 (e.g., the left formula) are closely related analogues in chemistry, although they have a slight difference in an C2 alkylene group (i.e., substituted by hydroxy group and fluo-substituted benzene group in Itoh vs. unsubstituted in claim 7). However, one of ordinary skill in the chemistry field would readily appreciate that this slight difference is not expected to cause a significant property change. Thus, a prima facie case of obviousness has been established. 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). Furthermore, since the formulae recited in claim 7 are species of formulae recited in claims 1-6, the latter are thus also taught by Itoh under 35 USC § 103 obviousness.
Note that once a prima facie case of obviousness has been established, the burden of coming forward with evidence or arguments shifts to the applicant who may submit additional evidence of nonobviousness, such as comparative test data showing that the claimed invention possesses properties not expected by the prior art, or rebuttal arguments. See MPEP § 2142.
As for the preamble “An additive for an electrolyte”, it is generally not accorded any patentable weight where it merely recites the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). (Action Wizard). Even if Itoh does not expressly disclose that the compound shown above is used as an electrolyte additive, the claimed compounds are still obvious because they were suggested by, or structurally similar to, a prior art compound even though a particular benefit of the claimed compound asserted by patentee is not expressly disclosed in the prior art. It is the differences in fact in their respective properties which are determinative of nonobviousness. If the prior art compound does in fact possess a particular benefit, even though the benefit is not recognized in the prior art, applicant’s recognition of the benefit is not in itself sufficient to distinguish the claimed compound from the prior art. In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991).
In brief, the compound disclosed in Itoh, represented by the formula above, reads on claims 1-7.
Claims 8-20 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN 114156534 A, whose English machine translation is being employed for citation purposes, hereafter referred to as Liu) in view of Itoh and Choi et al. (US 20180342757 A1, hereafter Choi).
Regarding claims 8-20, Liu teaches a rechargeable lithium battery (at least: Abstract), comprising:
a positive electrode comprising a positive active material, a negative electrode comprising a negative active material ([n0023]), and an electrolyte. The electrolyte comprises ([n0010]) a non-aqueous organic solvent (e.g., ethylene carbonate, [n0013]), a lithium salt (e.g., lithium hexafluorophosphate, [n0015]), an additive (e.g., vinylene carbonate, [n0016], reading on the claimed “other additive”), and a compound represented by the formula:
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wherein R may be S. (See the formula (1) in Liu).
Liu is silent as to the additive of claim 1. However, Itoh discloses a similar compound (See Table 1, Compound No. 3) represented by the formula:
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, which is an analogue to the compound of Liu shown above. As indicated by the structural formulae, the formula disclosed by Itoh and that by Liu are closely related analogues in chemistry, although they have a slight difference in an C2 alkylene group (i.e., substituted by hydroxy group and fluo-substituted benzene group in Itoh vs. unsubstituted in claim 7). However, one of ordinary skill in the chemistry field would readily appreciate that this slight difference is not expected to cause a significant property change. Thus, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the compound of Itoh as an alternative to the compound (formula (1)) of Liu to be a component of the electrolyte of Liu, since 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).
As a result, the above formula of Itoh teaches the formulae of claims 1 and 17-20 for the same reasons provided in the rejection of claims 1-7. The compound of Itoh reads on the “additive” as claimed.
Liu as modified further teaches the additive is in an amount of 0.01 wt% to 2 wt% (claim 2, Liu). The claimed ranges in the instant claims 9 and 10 overlap the above range, 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).
Liu as modified further teaches the negative active material comprises graphite ([n0034]).
The limitation recited in claim 16 represents functional characteristic or property of the rechargeable lithium battery. Since Liu as modified teaches substantially the same rechargeable lithium battery as claimed, the claimed functional characteristic or property is necessarily present. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, functional characteristic or property is presumed to be necessarily present. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997).
As for claims 14-15, Liu as modified is silent as to the negative active material comprising a Si composite comprising a core and a coating layer, as claimed.
In the same field of endeavor, however, Choi discloses that Si as a negative electrode active material has very high capacity compared with graphite ([0033]). It would have been obvious to one of ordinary skill in the art to have further modified Liu in view Itoh to use Si as the negative electrode active material in order to achieve a very high capacity and improve the capacity of the battery ([0033], Choi). Choi further teaches the Si particles can be coated with an amorphous carbon coating layer in order to prevent additional oxidation and to improve electrical conductivity of the negative electrode active material ([0046]).
Response to Arguments
Applicant's arguments filed June 18, 2026 have been fully considered but they are not persuasive.
1) As to the rejection of claims 1-7, Applicant argues that Itoh does not teach the claimed formula with unsubstituted alkenylene group because Itoh’s alkenylene group is substituted by a hydroxy group and 2.4-difluorophenyl group.
In response, the rejection is made under 103 prima face case of obviousness, rather than under 102 anticipation. Substituted or unsubstituted alkenylene group included in the formula would not be expected to produce significant property change since the main structure of the formula as claimed and that of Itoh are analogous, which creates a prima facie case of obviousness. The burden is shift to the Applicant to come forward with evidence or arguments of nonobviousness. No evidence of record shows or demonstrates nonobviousness. Arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
2) As to the rejection of claims 8-20, Applicant argues that the heterocyclic ring in Liu is directly bonded to a carbonyl or sulfur-containing group, without an intervening alkylene linker as required by the claimed formula. Applicant also argues that Liu fails to provide the additive of amended claim 1.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, it is the combination of Liu and Itoh, rather than Liu only, that teaches the claimed formula.
3) In response to the argument with respect to removing the hydroxyl group and 2,4-difluorophenyl group from the structure of the antifungal compounds of Itoh, it is noted that the rejection does not involve this removal.
4) In response to the argument regarding the combination of Liu and Itoh, it is noted that Liu and Itoh disclose analogous formulae (compounds), and one of ordinary skill in the art would readily expect that they have similar properties and intended-uses (such as, as additive). MPEP § 2144, under the heading “Rationale May Be In A Reference, Or Reasoned From Common Knowledge In The Art, Scientific Principles, Art-Recognized Equivalents, Or Legal Precedent,” states “[t]he rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992). See also . . . In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (references do not have to explicitly suggest combining teachings).”
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).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (571)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZHONGQING WEI/Primary Examiner, Ph.D., Art Unit 1727
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