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 22 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.
Regarding Claim 22, the limitation “a compound represented by Chemical Formula 1a” is unclear because “Chemical Formula 1a” is not detailed in the claims or the specification. One possible amendment is “a compound represented by Chemical Formula 1”.
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.
Claim(s) 1, 4-20 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2020350568 A1) in view of Lim et al. (KR 20190127412 A, see machine translation of record), and further in view of Son et al. (US 20170237126 A1).
Regarding Claim 1, Lee discloses a rechargeable lithium battery 100 (fig. 1), comprising: a cylindrical can having a volume of about 10 cubic centimeters (cm3) to about 140 cm3 (claim 4); an electrode assembly accommodated in the cylindrical can (claim 4), and an electrolyte in the electrode assembly (para 31; fig. 1), wherein the electrolyte comprises: a non-aqueous organic solvent and a lithium salt (para 60).
Lee fails to disclose a lithium salt comprising about 20 wt% to about 70 wt% of a lithium imide salt based on a total amount of the lithium salt.
Son teaches that “amount of the second lithium salt may be appropriately adjusted as desired” to get battery with further enhanced characteristics (para 85). The amount of lithium imide salt in the total amount of lithium salt and the electrolytic solution is a result effective variable. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, for the lithium imide salt to comprises an amount of 20 wt% to about 70 wt% based on the total amount of the lithium salt as a POSITA would have achieved such by optimizing the amount through routine experimentation to achieve an electrolyte with “enhanced characteristics” (para 85). The MPEP notes that finding workable or optimum ranges for an art recognized result effective variable generally do not amount a patentable distinction (MPEP 2144.05).
Lee and Son fail to disclose an additive comprising a compound represented by Chemical Formula 1; wherein, in Chemical Formula 1, X1 is a halogen atom; Y1 and Y2 are each independently O or S; and R1 and R2 are each independently H, a halogen atom, a substituted or unsubstituted C1 to C10 alkyl group, vinyl group, a substituted or unsubstituted C6 to C10 aryl group, or a substituted or unsubstituted C2 to C10 heteroaryl group comprising a hetero atom of N, O, S, or P.
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Lim discloses a first additive comprising a compound represented by Chemical Formula 1 wherein, in Chemical Formula 1, X1 is a halogen atom; Y1 and Y2 are each independently O or S; R1 and R2 are each independently H, a halogen atom a substituted or unsubstituted C1 to C10 alkyl group, vinyl group, a substituted or unsubstituted C6 to C10 aryl group, or a substituted or unsubstituted C2 to C10 heteroaryl group comprising a hetero atom of N, O, S, or P.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the rechargeable lithium battery of Lee such that electrolyte comprised an additive represented by chemical formula 1 as taught by Lim above as doing such “serves to stabilize the LiPF6 salt in the electrolyte to prevent hydrolysis” (para 38).
Regarding claim 4, Lim discloses X1 is a fluorine atom (para 10).
Regarding claim 5, Y1 and Y2 simultaneously are both oxygen in Chemical formula 1 disclosed by Lim.
Regarding claims 6, Lim discloses R1 to R6 can be each independently substituted or unsubstituted C1 To C20 alkyl group (para 11).
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Regarding claim 7 and 8, Lim discloses Z1 is *-ch2- *and Z2 is *-ChCh3-* (Formula 1).
Regarding claim 9, Lim discloses a content of the first additive is about 0.05 to about 3 wt% based on 100 wt% of the electrolyte (para 15). The amount disclosed by Lim overlaps with instant application’s amount of about 0.1 to about 10 wt%. It has been held that in the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists (MPEP 2144.05). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to modify the amount a such that “initial swelling inhibitory effect at high temperature may be improved” (para 46).
Regarding claim 10, 11 and 12, Son discloses second lithium salt (lithium imide salt) represented by formula 25; where in R3 and R4 are each independently a fluoro group (para 84).
Regarding Claim 13, Son discloses the amount of the second lithium salt (lithium imide salt) in the organic electrolytic solution may be from about 0.1 wt % to about 4.5 wt % based on the total weight of the organic electrolytic solution (para 85). Song further teaches that “amount of the second lithium salt may be appropriately adjusted as desired” to get battery with further enhanced characteristics (para 85). The amount of lithium imide salt in the total amount of lithium salt and the electrolytic solution is a result effective variable. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to optimize the amount through routine experimentation to achieve an electrolyte with “enhanced characteristics” (para 85). The MPEP notes that finding workable or optimum ranges for an art recognized result effective variable generally do not amount a patentable distinction (MPEP 2144.05).
Regarding Claim 14, Son discloses the lithium salt “in the organic electrolytic solution may include at least one selected from LiPF6, LiBF4, LiSbF6, LiAsF6, LiClO4, LiCF3SO3 , Li(CF3SO2)2N, LiC4F9SO3, LiAlO2, LiAlCl4, LiN(CyF2x+1SO2)(CyF2y+1SO2 ) where 2 ≤ x ≤20 and 2 ≤ y ≤ 20, LiCl, and LiI." (para 17).
Regarding claim 15, Lee discloses the non-aqueous organic solvent comprises a carbonate-based, ester-based, ether-based, ketone-based, alcohol-based, and/or aprotic solvent (para 62).
Regarding claim 16, Lee discloses the non-aqueous organic solvent comprises a carbonate-based solvent comprising a mixture of a cyclic carbonate and a linear carbonate (para 64). Lee discloses the cyclic carbonate and the chain carbonate are mixed together at a volume ratio of about 1:1 to about 1:9 (para 64). The ratio disclosed by Lee overlaps with instant application’s ratio of about 5:95 (1:19) to about 50:50 (1:1). It has been held that in the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists (MPEP 2144.05). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to modify the ratio as it enhances electrolyte performance (para 64).
Regarding claim 17, Lee discloses the electrode assembly comprises: a positive electrode 114 comprising a positive active material layer; a negative electrode 112 comprising a negative electrode active material layer and a separator 113 between the positive electrode and the negative electrode (para 31; claim 1 and fig. 1).
Regarding claim 18, Lee discloses the positive active material layer comprises a lithium nickel-based composite oxide represented by LibM11--y1-z1M2y1 M3z1O2
wherein, in. 0.9≤b≤1.8, 0≤y1≤1, 0≤z1≤1, 0≤y1+z1≤1, M1, M2, and M3 are independently a metal of Ni, Co, Mn, Al, Sr, Mg, or La), and a combination thereof (claim 10).
Instant Application:
Lia1NiX1M1y1M2z1O2-b1Xb1
Wherein,
0.9≤a1≤1.2, 0.7≤x1≤1,
0≤y1≤0.2, 0≤z1≤0.2,
0.9≤x1+y1+z1≤1.1,
0≤b1≤0.1 X = F, P, and S
M1 and M2 = Al, B, Ba, Ca, Ce, Co, Cr, Cu, Fe, Mg, Mn, Mo, Nb, Si, Sr, Ti, V, W, and Zr
Lee Reference:
LibM11-y1-z1M2y1 M3z1O2
Wherein,
0.9≤b≤1.8,
0≤y1≤1,
0≤z1≤1,
0≤y1+z1≤1,
M1, M2, and M3 = Ni, Co, Mn, Al, Sr, Mg, or La
b1 = 0
Lia1NiX1M1y1M2z1O2
M1 = Ni
LibNi1-y1-z1M2y1 M3z1O2
a1= 0.9
X1 = 0.8
M1 = Al
M2 = Mn
Y1 = 0.1
Z1 = 0.1
Li0.9Ni0.8Al0.1Mn0.1O2
b=0.9
M2 = Al
M3 = Mn
Y1 = 0.1
Z1 = 0.1
Li0.9Ni0.8Al0.1Mn0.1O2
Regarding claim 19, Lee discloses the negative electrode active material layer comprises at least one selected from graphite and a Si composite (para 96).
Regarding claim 20, Lee discloses the rechargeable lithium battery further comprises a sealing member 140 that seals the battery case 120 (fig 1, para 31).
Regarding claim 22, the claim defers from claim 1 in that the volume of the cylindrical can is further limited to of about 16 cm3 to about 133 cm3 (refer to rejection of claim 1). Lee discloses a cylindrical battery can “having a volume of greater than or equal to about 24 cc” (claim 4). Lee further states cylindrical can with “minimum volume [of 24 cc] may more effectively implement high capacity of the rechargeable battery” (para 40). The volume of 24 cc disclosed by Lee falls inside the claimed range. It has been held that in the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists (MPEP 2144.05).
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2020350568 A1), Lim et al. (KR 20190127412 A, see machine translation of record), and Son et al. (US 20170237126 A1), as applied to claim 1 above, and further in view of Yasuke et al. (EP 4064407 A1).
Regarding claim 21, although Lee, Son and Lim do not expressly disclose at least one of Y1 or Y2 as S, Lim does disclose generally that O and S are interchangeable (paragraph 31). Furthermore, it is known and well-established that oxygen can be substituted with sulfur (for example see paragraph 50 and 58 of EP4064407) as both are from the same Period Table group and have the same reactivity. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, for at least one of Y1 or Y2 to be S instead of O, as selection of such is a design choice obvious to one of ordinary skill in the art as taught by paragraph 32 of Lim and/ 50 of Yasuke.
Double Patenting
Claims 2-8, 15-20 of this application is patentably indistinct from claim 2-8, 15-20 of Application No. 18/492,677. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 18/487,948 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the range in instant application lies within the range disclosed by reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Amendment
Applicant's arguments filed 7/10/2026 have been fully considered but they are not persuasive.
Regarding the rejection of claims 1-20 under 35 U.S.C. § 103, on page 9 of the Remarks, the applicant asserts although Son “teaches an electrolytic solution that may include first and second lithium salts having a range of structures “, “the example electrolytic solutions of Son contain the single lithium salt LiPF6, which excludes a lithium imide salt”. This argument is not persuasive because Son discloses lithium imide salt (Formula 25).
Subsequently, the applicant argues Son discloses lithium imide salt amount “based on a total weight of the organic electrolytic solution, not based on a total amount of the lithium salt” as stated by the claims. This argument is not persuasive. The rejection does not rely on the exemplary “amount of 0.05 wt% to 3 wt% with respect to the total amount of the lithium secondary battery electrolyte” disclosure as expressly teaching the claimed about 20 wt% to about 70 wt% range. Rather, the reference expressly teaches “the amount the second lithium salt [lithium imide salt] may be appropriately adjusted as desired” (para 85). As discussed in the rejection, the amount of lithium imide salt is a result effective variable. Optimizing the amount of lithium imide salt, including the claimed about 20 wt% to about 70 wt% and about 10 to about 50 wt% based on a total amount of the lithium salt, would have been an obvious matter of routine optimization absent evidence that the claimed range produces unexpected result.
The applicant submits comparative experimental data and argues “a cylindrical can cell including an electrolyte having the claimed lithium salt concentration has unexpected and superior performance relative to compositionally similar electrolytes falling outside the scope of the claims“. This argument is not persuasive because the applicant has failed to show criticality and/or unexpected results. First, the comparative experimental data is insufficient to establish that the reduction of resistance increase rate and increase in capacity retention is directly related to amount of lithium imide salt based on a total amount of the lithium salt and not another parameter. For example, the data does not show that the amount of additive is constant across all results. Specifically, Paragraph 70 states that addition of electrolyte additive and lithium imide salt can “reduce an increase in resistance at high temperatures and/or secure or improve the cycle-life of the battery”. Furthermore, referring to the example details in the specifications on page 27 and 30-32, Example 1, 4 and 7 differed in the amount of additive added to the electrolyte (see table below). Absent quantitative evidence that other parameters that can affect the capacity retention rate and resistance increase rate were the same, the applicant has failed to demonstrate criticality and/or unexpected results.
Preparation Example Used
Amount of Salt
Amount of Additive
Example 1
Electrolyte of preparation example 1
10 wt% LiFSI
90 wt % LiPF6
10 wt % based on 100 % of electrolyte
Example 4
Electrolyte of preparation example 2
10 wt% LiFSi
90 wt % LiPF6
20 wt % based on 100 % of electrolyte
Example 7
Electrolyte of preparation example 3
10 wt% LiFSi
90 wt % LiPF6
35 wt % based on 100 % of electrolyte
Second, although the applicant provides experimental results for embodiments within the claimed range, the applicant has not provided comparative results showing that those results are superior/unexpected relative to the closest prior art. MPEP 716.02(e) states the applicant “must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness.” The data establishes results obtained for embodiments tested by the applicant; it does not establish that those results are unexpected in view of the prior art (MPEP 716.02). Therefore, the evidence is insufficient to overcome the prima facie case of obviousness.
On page 12, the applicant argues the capacity retention and resistance increase rate “vary in a non-liner manner depending on both cylindrical-can volume and lithium imide salt concentration” and that such non-linear behavior demonstrates that the claimed range “would not have been reached merely by routine optimization of Son's second lithium salt amount based on total electrolyte weight”. This argument is not persuasive because the applicant has failed to establish the differences are statistically and practically significant. See MPEP 716.02(b).
In several instances, the resist increase percentage difference between data inside the claimed 20-70wt% range and outside said range is small. For example, the difference between Ex. 1 and Ex. 7 is 4.7. Between Comp. ex 30 and Comp ex 21, the difference is 2.6. These differences are not significant, and the applicant failed to explain the practical significance of such a small difference. See MPEP 716.02(b) –
“he evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992)
Son expressly teaches the amount of lithium imide salt may be “appropriately adjusted as desired”. The amount of lithium imide salt was recognized as a variable that could be adjusted to obtain desired characteristics, and the applicant’s data does not overcome this prima facie case of obviousness as detailed above.
Finally, the applicant’s results are not commensurate with the scope of the independent claim. The applicant has not demonstrated the results were obtained using all the compounds within the scope of Chemical Formula 1. Rather, the specification says “ In some embodiments, the additive is a compound (CAS No. 16415-06-1) represented by Chemical Formula 1-1-1” (para 176 of Publication). MPEP 716.02 requires that unexpected results must be commensurate in scope with the claimed invention.
On page 13, the applicant argues the cited references, Lee, Son and Lim, are directed to rechargeable lithium battery, organic electrolyte solution and electrolyte additive system respectively and the references do not provide an apparent reason why one of ordinary skill in the art would have combined Lee, Lim and Son to arrive at the claimed electrolyte composition and cylindrical can battery. This argument is not persuasive.
The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, as stated in the rejections, Lee is modified in view of Son to achieve an electrolyte with “enhanced characteristics” (Son, para 85). Lee and Son are further modified by Lim such that the LiPF6 salt in the electrolyte is stabilized “to prevent hydrolysis” (Lim, para 38).
The applicant subsequently states the cited reference, individually or combined, do not “appear to teach or suggest using a lithium imide salt in an amount of about 20 wt% to about 70 wt% based on the total amount of lithium salt in the presently claimed rechargeable lithium battery”. The applicant states Sons disclosure concerns “Son's own second lithium salt amount based on total organic electrolytic solution weight”. It does not identify the claimed total-lithium-salt basis as a result-effective variable, and it does not provide an apparent reason to select the claimed 20 wt% to 70 wt% fraction of the lithium salt package in the combined Lee/Lim/Son system. This argument is not persuasive. As discussed above, the amount of lithium imide concentration is recognized as a variable that van be adjusted to obtain desired electrolyte characteristic. The combination of this teaching with the teachings of Lee and Lim would have provided a skilled artisan with a reason to adjust the amount of lithium imide salt, including the amount of lithium imide salt based on a total amount of lithium salt, when implementing the electrolyte in the battery system of the combined references.
Applicant’s characterization of Son as concerning only its own lithium imide salt does not address the teaching Son suggests to one or ordinary skill in the art when considered together with teachings of Lee and Lim. It is also not necessary that the prior art expressly identify Applicant’s particular claimed combination as the desired combination. The combined teachings would have suggested the claimed subject matter to a person of ordinary skill in the art and thus, it does not overcome the prima facie case of obviousness (MPEP 2143).
The applicant further alleges that the rejection relies upon impermissible hindsight reconstruction. This argument is not persuasive. 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).
The double patenting rejection is maintained.
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.
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/A.K./Examiner, Art Unit 1746
/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
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