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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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.
Claim 5 is 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.
Claim 5 recites the limitation "the ternary additive" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
Claims 1-7, 11-17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cao et al. (US 2022/0115706) in view of Oh et al. (US 2023/0085811).
Regarding claims 1, 15, and 19 Cao discloses a battery that cycles lithium ions ([0326], all Figs), a positive electrode with the material as claimed [0196], a negative electrode comprising an electroactive material comprising a silicon-based material [0099], and an electrolyte in physical contact with the negative electrode, an electrolyte provides an ionically conductive pathway for the transport of lithium ions between the positive and the negative electrode [0115], the electrolyte consisting of an organic solvent consisting of a mixture of alkyl carbonates [0171], a lithium salt [[0168], and additives consisting of a phosphite compound [0173], a borate compound ([0166], claim 5), and a sulfate compound [0005], claim 5). Cao further discloses that FEC and VC can be present [0006], claims 1 and 5).
Although Cao fails to explicitly disclose an embodiment or example requiring the specific additives, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to pick the instant claimed elements as a mere combing prior art elements according to known methods to obtain predictable results i.e. electrolytes ( see MPEP 2143 I and 2144.06 I).
It has been held that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of these combinations less obvious, citing Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804 (Fed. Cir. 1989). It is also well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992)
Cao discloses electrode comprising an electroactive material comprising a silicon-based material as set forth above, Cao fails to explicitly disclose that it is of silicon oxide-based material as presently claimed.
Oh discloses a lithium secondary battery comprising negative electrode comprising an electroactive material comprising a silicon based or silicon oxide-based material [0095].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cao’s silicon-based to be of silicon oxide-based material, since Oh discloses that this is a known material for a negative electrode art [0092, 0095] and in order to obtain a higher capacity characteristics [0096].
Regarding claim 2, Cao discloses the claimed invention except that it uses tris(2,2,2-trifluoroethyl) phosphite instead of tris(trimethylsilyl) phosphite or TMSPi. Oh shows that TMSPi is an equivalent structure known in the art [0064]. Therefore, because these two materials were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute tris(2,2,2-trifluoroethyl) phosphite for TMSPi in the invention of Cao. Substitution of equivalents requires no express motivation as long as the prior art recognizes the equivalency. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Grover Tank & Mfg. Co. Inc V. Linde Air Products Co. 85 USPQ 328 (USSC 1950). It would further have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Cao’s phosphite compound to be of TMSPi, as suggested by Oh, in order to prevent the electrolyte solution from being decomposed in a high-output environment [0058].
Regarding claim 3, Cao discloses LiBOB [0006].
Regarding claim 4, Cao discloses ethylene sulfate [0006].
Regarding claim 5-6 and 16, Cao discloses that the additive is 0-10 wt.% of the electrolyte [0094]. In addition, Cao discloses that the electrolyte has a lithium salt-solvent-additive-diluent molar ratio of 1:x:y:z where 0.5≤x≤8, 0≤y≤2, and 0.5≤z≤5, thereby overlaps the claimed range for the phosphite, borate, and sulfate compound, and incorporates the specific compounds as claimed. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Regarding claim 7 and 17, please see [0005] and [0194].
Regarding claim 11, given that Cao in view of Oh discloses the composition and structure as claimed, Cao in view of Oh would inherently disclose the charging and cycling with its structure as claimed. It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC § 102 or on prima facie obviousness under 35 USC § 103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977).
Regarding claim 12, Cao discloses the lithium salt is lithium hexafluorophosphate (claim 2) and the molar concentration as claimed ([0185], claims 1 and 9). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Regarding claim 13, Cao discloses that the solvent comprises EC and DMC [0171, 0201] and Cao also discloses that EC can be included as additives [0181]. Cao further discloses that DMC is the majority material among the solvents ([0171]: consisting essentially of). However, Cao fails to explicitly disclose the concentration mixture of EC and DMC as presently claimed.
However, a person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation.
Additionally, a person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to optimize the concentration of DMC and EC relationship and the content based upon the electrolyte since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed amounts or concentration are critical and has unexpected results. In the present invention, one would have been motivate to optimize the concentration as claimed dependent on what type of battery properties to achieve [0004: achieving batterieris with desired specific energy, capacity retention, and cycling lifetimes].
Regarding claims 14 and 20, Cao discloses the materials as claimed [0181, 186].
Claims 8-10 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Cao et al. (US 2022/0115706) in view of Oh et al. (US 2023/0085811) and further in view of Jang et al. (US 2017/0294688).
Regarding claims 8-9 and 18, Cao in view of Oh discloses silicon-oxide based negative electrode active material to be of SiOx (0<x≤2) (Oh: [0095]) and graphite (Cao: [0194]), however, does not explicitly disclose LiySiOx, wherein y is 0<y≤1 and x is 0<x≤2.
However, Jang teaches an anode that comprises a lithium-silicon composite represented by formula 2 (Paragraph 0059).
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This formula overlaps with the claimed formula. Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the lithium silicon composite of Jang in order to improve the chemical stability and safety is improved, and initial charge and discharge efficiency is improved [0015].
Regarding claim 10, please see [0194]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/ Examiner, Art Unit 1785
/Holly Rickman/ Primary Examiner, Art Unit 1785
Prosecution Insights