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 .
Response to Amendment
In light of the amendment received 20 August 2026, the Examiner has entered a new rejection for claims 17-19 and maintained the prior art rejection for claims 1-5 and 7-16.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5, 7-9, 11-12 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Son et al. (WO 2022/186490 with US 2024/0154169 as an English-language equivalent; hereinafter “Son”) in view of Ko et al. (US 2019/0123352; hereinafter “Ko”).
In regard to claims 1-4 and 8-9, Son discloses an electrolyte solution for a rechargeable lithium battery (see at least [0010]) which necessarily comprising a positive electrode (cathode material discussed in [0003]); a negative electrode (material discussed in [0003]); an electrolyte (as discussed in at least [0003]) which comprises an imide cesium salt compound represented by Chemical Formula 1 as an additive (cesium bis(fluorosulfonyl)imide; [0031]) which has the structure of Chemical Formula 1-1 of claim 9 as both R1 and R2 are fluoro groups.
Son is silent in regard to wherein the positive electrode comprises a carbon nanotube as a conductive material.
Ko discloses an electrode for a rechargeable lithium battery 100 with a positive electrode 11, negative electrode 12 and electrolyte ([0072] wherein the positive electrode comprises carbon nanotubes as a conductive material, and further a positive electrode current collector and a positive electrode active material layer on the positive electrode current collector wherein a carbon nanotube as a conductive material is in the positive electrode active material layer (see abstract and [0031]-[0033]) as recited in claim 3. Ko discloses wherein the length of the carbon nanotubes is from 40 microns to 250 microns (see [0033]), which heavily overlaps with the range of claim 2, and provides an example wherein the length of the nanotubes is 55±5 microns (see [0083]) which is within the range of claim 2. Ko teaches that the content of the conductive material may be less than or equal to about 1.5 wt% or between about 0.2 wt% to about 1.5 wt% which heavily overlaps with the range of claim 4.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the carbon nanotubes of Ko with the positive electrode of the battery of Son for the purpose of reducing the resistance of the electrode. It would have also been within the ambit of one of ordinary skill in the art to have determined an optimum or workable range of nanotube length and weight percentage of conductive material through routine experimentation and without the creation of any new or unexpected results. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
In regard to claim 5, Son discloses wherein the positive active material layer further comprises a positive electrode active material which comprises a lithium cobalt oxide (LiCoO2). See [0036]-[0038].
In regard to claim 7, Son discloses wherein the positive electrode active material layer further comprises a binder comprised of polyvinylfluoride. See [0038].
In regard to claims 11-12, Son discloses wherein the electrolyte comprises a non-aqueous organic solvent comprising a carbonate-based solvent such as ethylene carbonate and propylene carbonate and an ester based solvent such as methyl propionate, ethyl propionate, prolyl acetate, butyl acetate and ethyl acetate. See [0033].
In regard to claim 14, Son discloses wherein the electrolyte further comprises a lithium salt selected from LiPF6, LiBF4, LiSbF6, LiAsF6, and LiClO4. See [0032].
In regard to claim 15, Son discloses wherein a concentration of the lithium salt in the electrolyte is about 1.0 M to about 2.0 M. See [0032].
In regard to claim 16, Son discloses wherein the negative electrode comprises a negative electrode active material layer comprising a negative electrode active material comprised of natural graphite. See [0039].
Claim 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Son in view of Ko as applied to claims 1 and 12 above and further in view of Kim et al. (US 2019/0207258; hereinafter “Kim”).
In regard to claim 10, Son is silent in regard to the amount of additive present in the electrolyte.
Kim discloses the use of additives in rechargeable lithium batteries of the same composition as instantly recited. See [0021]-[0022]. Kim teaches that the additive is present in the electrolyte in the amount of 0.05 to 10 wt% or 0.1 to 3 wt% which entirely encapsulates the recited range. See [0033].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the additive in the electrolyte of the above combined battery of Son and Ko in the amount disclosed by Kim for the purpose of improving the lifetime and resistance characteristics of the battery at high temperatures. It would have also been within the ambit of one of ordinary skill in the art to have discovered the optimum value of the amount of additive through routine experimentation and without creating any new or unexpected results. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
In regard to claim 13, Son discloses wherein the carbonate-based solvent can be ethylene carbonate and propylene carbonate. Son is silent on wherein the ester based solvent can be propyl propionate but discloses such solvents as methyl propionate, ethyl propionate, prolyl acetate, butyl acetate and ethyl acetate. See [0033].
Kim discloses examples of ester for the electrolyte solvent may include methyl propionate, ethyl propionate, prolyl acetate, butyl acetate, ethyl acetate, and propyl propionate. See [0043].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted propyl propionate disclosed by Kim for the ester solvent of Son in the above combined battery without creating any new or unexpected results as the compositions are functionally equivalent and substitution of the composition would not result in any new or unexpected results. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Claims 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Son in view of Ko as applied to claim 16 above and further in view of Lee et al. (US 2018/0069235; hereinafter “Lee”).
In regard to claims 17-19, Son discloses wherein the anode material may include crystalline carbon. See [0036].
Son and Ko are silent in regard to wherein the negative electrode active material comprises a Si composite.
Lee discloses wherein an anode active material can include natural graphite, artificial graphite, or silicon composites in the form of nanoparticles 2 each having an amorphous carbon layer 3, as recited in claim 17, in a core with a crystalline carbon particle 1, as recited in claim 19. Lee teaches wherein the core comprising Si-containing particles 2 comprises at least one of a Si-C composite, Si-Q alloys or SiOx (0<c<2) as recited in claim 18. See paragraphs [0041]-[0048] and figure 1.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the anode active material of Lee for the negative electrode active material of the above combination without creating any new or unexpected results as the structures are functionally equivalent and/or for the purpose of creating a battery with high capacity and long-lifetime characteristics. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Allowable Subject Matter
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Son teaches wherein the positive electrode active material comprises lithium cobalt oxide but does not disclose wherein the lithium cobalt oxide is represented by the recited Chemical Formula 2. The prior art did not teach, suggest or render obvious lithium cobalt oxide with the Chemical Formula 2 being used as a positive electrode active material.
Response to Arguments
Applicant's arguments filed 20 August 2026 have been fully considered but they are not persuasive.
Applicant argues that that Son “does not disclose or suggest selecting CsFSI […] for use together with a carbon-nanotube-containing positive electrode.” The Examiner has fully considered the argument but has not found it to be persuasive. This is a piecemeal argument as Son is noted to not disclose a carbon-nanotube-containing positive electrode. The Courts have held that 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 argues that Son does not “recognize any SEI-forming benefit attributable to CsFSI of the kind relied upon herein.” The Examiner has fully considered the argument but has not found it to be persuasive. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). It is noted that the claims do not require any SEI-forming benefit, nor are the claims necessarily limited to the conditions which create such a benefit.
Applicant argues that Ko does not disclose that the CNT is used to improve the wettability of the positive electrode or “the resulting synergistic effect with the claimed CsFSI additive.” The Examiner has fully considered the argument but has not found it to be persuasive. The Examiner stated that the carbon nanotubes of Ko were combined with the positive electrode of the battery of Son for the purpose of reducing the resistance of the electrode. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, 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, the carbon nanotubes of Ko were combined with the positive electrode of the battery of Son for the purpose of reducing the resistance of the electrode. The Examiner notes that an expectation of “the wettability-related, high-temperature-storage benefit relied upon in the present application” is not needed in order as there is other motivation for one of ordinary skill it the art to combine the teachings of the references and an expectation of success. The fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Exparte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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 TIMOTHY C CLEVELAND whose telephone number is (571)270-5041. The examiner can normally be reached M-F 7:30 AM - 3:30 PM ET.
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, Claire Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY C CLEVELAND/Primary Examiner, Art Unit 1774
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