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.
Claim 10 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 10 lines 2-3 recite “an electrode assembly in which a plurality of cathodes and a plurality of anodes are repeatedly laminated” which renders the meaning of the claim indefinite as the claim is directed toward a product and the claim limitation is a method step which does not provide additional structure. In order to advance prosecution the examiner is interpreting the limitation in light of the Instant specification [0096] (“an electrode cell is defined by the cathode 100, the anode 130, and the separation membrane 140, and a plurality of electrode cells are laminated to form…[an] electrode assembly 150”) as an electrode assembly comprising a plurality of cathodes and a plurality of anodes wherein the plurality of cathodes and anodes are laminated.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee US20240287229A1.
Regarding claim 1, Lee discloses an electrolyte solution (Lee, [0162], [0210]) for a lithium secondary battery (Lee, [0210]) comprising:
an additive (Lee, [0162], monomer of Formula (I)) including a compound represented by Chemical Formula 1 below
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wherein, in Chemical Formula 1, R1 to R10 are the same as or different from each other, and are each independently hydrogen, or a substituted or unsubstituted C1-C10 alkyl group, and L is a substituted or unsubstituted C1-C10 alkylene group (Lee, [0144]),
an organic solvent (Lee, [0183], FEC),
and a lithium salt (Lee, [0181]).
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Regarding claim 2, Lee also discloses wherein R1 to R10 are the same as or different from each other, and are each independently hydrogen or a substituted or unsubstituted C1-C6 alkyl group, and L is a substituted or unsubstituted C1 to C6 alkylene group (Lee, [0144]).
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Regarding claim 3, Lee additionally discloses wherein R1 to R10 are the same as or different from each other, and are each independently hydrogen or an unsubstituted C1 to C6 alkyl group, and L is an unsubstituted C1 to C6 alkylene group (Lee, [0144]).
Regarding claim 9, Lee further discloses wherein the organic solvent includes at least one selected from the group consisting of a carbonate organic solvent (Lee, [0183], FEC).
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.
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.
Claim(s) 4-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee US20240287229A1 in view of Odani US20130093392A1.
Regarding claim 4, Lee does not disclose wherein the additive is included in an amount of 0.1 to 10% by weight based on a total weight of the electrolyte solution.
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Odani teaches an additive including a compound represented by (Odani, formula 1)
wherein R3 represents a hydrocarbon group optionally having a substituent (excluding substituents containing nitrogen or oxygen), or a substituent group containing nitrogen or oxygen (Odani, [0097]), wherein the substituent group containing oxygen is an ester group (Odani, [0099]), such as the art known alkyl ester group disclosed by Lee. Odani further teaches wherein the additive is included in an amount of 0.1 to 10% by weight based on a total weight of the electrolyte solution (Odani, [0104], 0.01% by mass or more and 10% by mass or less). Therefore it would be obvious to the skilled artisan to add the additive of Odani in Lee thereby increasing its effectiveness (Odani, [0104]). See MPEP § 2144.05.
Regarding claim 5, Lee does not disclose wherein the additive is included in an amount of 0.3 to 7% by weight based on the total weight of the electrolyte solution.
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Odani teaches an additive including a compound represented by (Odani, formula 1)
wherein R3 represents a hydrocarbon group optionally having a substituent (excluding substituents containing nitrogen or oxygen), or a substituent group containing nitrogen or oxygen (Odani, [0097]), wherein the substituent group containing oxygen is an ester group (Odani, [0099]), such as the art known alkyl ester group disclosed by Lee. Odani further teaches wherein the additive is included in an amount of 0.1 to 10% by weight based on a total weight of the electrolyte solution (Odani, [0104], 0.01% by mass or more and 10% by mass or less). Therefore it would be obvious to the skilled artisan to add the additive of Odani in Lee thereby increasing its effectiveness (Odani, [0104]). See MPEP § 2144.05.
Regarding claim 6, Lee does not disclose wherein the electrolyte solution comprises at least one auxiliary additive selected from the group consisting of a cyclic carbonate compound, a fluorine-substituted cyclic carbonate compound, a sultone compound, a cyclic sulfate compound and a fluorophosphate compound.
Odani teaches wherein the electrolyte solution comprises at least one auxiliary additive selected from the group consisting of a cyclic carbonate compound (Odani, [0106-0108]). Therefore it would be obvious to the skilled artisan to add the auxiliary additive of Odani to Lee thereby becoming possible to improve battery characteristics (Odani, [0106]).
Regarding claim 7, Lee as modified above by Odani does not teach wherein the auxiliary additive is included in an amount of 0.01 to 10% by weight based on the total weight of the electrolyte solution.
Odani teaches wherein the auxiliary additive is included in an amount of 0.01 to 10% by weight based on the total weight of the electrolyte solution (Odani, [0109], 0.01% by mass or more and 10% by mass or less). Therefore it would be obvious to the skilled artisan to further add the auxiliary additive in the amount taught by Odani to Lee thereby becoming possible to improve battery characteristics (Odani, [0106]). See MPEP § 2144.05.
Regarding claim 8, modified Lee additionally teaches wherein the auxiliary additive is included in an amount of 0.05 to 5% by weight based on the total weight of the electrolyte solution (Odani, [0109], 0.1% by mass or more and 5% by mass or less), thereby becoming possible to improve battery characteristics (Odani, [0106]). See MPEP § 2144.05.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee US20240287229A1 in view of Chen US20240372147A1.
Regarding claim 10, Lee also discloses a lithium secondary battery comprising:
an electrode assembly in which a plurality of cathodes and a plurality of anodes are repeatedly stacked (Lee, [0045], [0244]), thereby increasing the specific energy (Lee, [0244]),
a case in which the electrode assembly is housed (Lee, [0045], cell casing),
and the electrolyte solution for a lithium secondary battery according to claim 1 housed in the case together with the electrode assembly (Lee, [0045]).
Lee however does not disclose wherein the plurality of cathodes and anodes are laminated.
Chen teaches the electrode assembly comprising a plurality of cathodes and a plurality of anodes wherein the plurality of cathodes and anodes are laminated (Chen, [0125]). Therefore it would be obvious to the skilled artisan before the effective filing date of the claimed invention to add the laminated plurality of cathodes and a plurality of anodes of Chen to Lee, thereby obtaining a secondary battery (Chen, [0126]).
Response to Arguments
Applicant's arguments filed 28 August 2026 have been fully considered but they are not persuasive.
Applicant argues that claim 10 is not indefinite because the recitation indicates a laminate structure where the plurality of cathodes and a plurality of anodes are assembled and/or is a product-by-process claim. This is not persuasive.
It is the examiner’s position that the claim is indefinite because it is unclear whether the claim covers the physical item itself or when someone actively performs the step(s) of a method.
Applicant further argues the compound represented by Chemical Formula 1 of the present application is included in a liquid electrolyte solution in an unpolymerized, low-molecular-weight state and the compound of Lee is used as a monomer for forming the mechanical structure of a polymer electrolyte, whereas the compound of the present application is used as a film-forming additive that preferentially undergoes an electrochemical reaction at the electrode surface, the two compounds, as employed in the respective electrolyte systems, are clearly distinguishable in terms of their final chemical forms, mobility, available reactive functional groups, technical uses, and mechanisms of action. This is not persuasive as it is not commensurate in scope with the invention as currently claimed. Also, it does not appear that any special definitions are provided in the Instant specification supporting applicant’s arguments.
In response to applicant's argument that Lee merely lists (5-ethyl-1,3-dioxan-5-yl)methyl acrylate as one of numerous polymerizable monomers and provides no reason to select it in preference to the other monomers, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's argument that the compounds disclosed in Odani do not include such an acrylate moiety, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
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).
Applicant additional argues unexpected results are achieved. This is not persuasive as it is not commensurate in scope with the claim as currently drafted. The Courts have held that To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. Further, the results achieved and cited by applicant do not appear to show a marked improvement, over the results achieved in the prior art/comparative example. See MPEP § 716.02. Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. The Courts have held that the arguments of counsel cannot take the place of evidence in the record. See MPEP § 2145
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 JARED HANSEN whose telephone number is (571)272-4590. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tiffany Legette can be reached at 571-270-7078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JARED HANSEN/Examiner, Art Unit 1723
/TIFFANY LEGETTE/Supervisory Patent Examiner, Art Unit 1723
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