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 11 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 11 recites “the adduct of chemical formula 2 is a compound represented by Chemical Formula 2-2 or 2-2”. To which of the previously recited adducts does “the adduct” refer?
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) 1-20 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 attached machine translation of record), and further in view of Liang et al (CN113328141A, see attached machine translation of record).
Regarding Claim 1, Lee discloses a rechargeable lithium battery 100 (fig. 1), comprising: a cylindrical can having a volume of greater than or equal to about 15 cm3 (claim 4), an electrode assembly accommodated in the cylindrical can (claim 4), and an electrolyte impregnated 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 first additive comprising a compound represented by Chemical Formula 1; wherein, in Chemical Formula 1, Xi 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, a 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, or P.
Lim discloses a first additive comprising a compound represented by Chemical Formula 1 wherein, in Chemical Formula 1, Xi 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, a vinyl group, a substituted or unsubstituted C6 to C10 aryl group, or a substituted or unsubstituted C2 to C10
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heteroaryl group comprising a hetero atom of N, O, 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 serves to stabilize the LiPF6 salt in the electrolyte to prevent hydrolysis” (para 38).
Lee and Lim fail to disclose a second additive comprising a compound represented by Chemical Formula 2, a derivative thereof, and/or an adduct thereof, a content of the second additive is less than about 5 wt% based on 100 wt% of the electrolyte: wherein, in Chemical Formula 2, Z is N or CH.
Liang discloses a second additive comprising a compound represented by Chemical Formula 2 (claim 3, “acid-binding agent” hereinafter referred to as DABCO), ,a content of the second additive is less than about 5 wt% based on 100 wt% of the electrolyte (claim 2).
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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 and Lim such that electrolyte comprised a second additive represented by chemical formula 2 as taught by Liang above as doing such reduces the consumption of the electrolyte (para 23).
Regarding claim 2 and 3, Lee discloses the volume of cylindrical can is greater than or equal to about 24 cm3.
Regarding claim 4, Lim discloses X is a fluoro group (para 10).
Regarding claim 5, Y1 and Y2 are oxygen in Chemical formula 1 provided by Lim.
Regarding claims 6, Lim discloses R1 to R6 can be each independently substituted or unsubstituted C2 To C20 alkynyl group (para 11)
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Regarding claim 7and 8, Lim discloses Z1 is *-ch2- *and Z2 is *-ChCh3-*.
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).
Claims 10-11 are optional since the adduct is not required by claim 1. Lee, Lim and Liang disclose the chemical formula 2 of claim 1 as detailed above and thus meet the optional limitations of claims 10-11.
Regarding claim 12, Liang teaches a second additive comprising compound represented by Chemical Formula 2-1-1 (claim 3).
Regarding claim 13, Liang discloses that the amount of DABCO added is 0.5-1% of the total mass of the electrolyte (claim 2).
Regarding claim 14, Lee, Lim and Liang do not explicitly disclose the weight ratio of the first additive to the second additive is about 1:0.1 to about 1:3.
Lim teaches that “when the content of the compound represented by Formula 1 is less than 0.05% by weight, there is a problem in that the effect of improving the high temperature storage and swelling is reduced, and when the content is more than 3% by weight, there is a problem in that the life is reduced by increasing the interface resistance” (para 47).
Liang teach that when the adding amount of DABCO is too small, it does not completely absorb the acidic substance formed by the oxidation of the positive electrode; and then it cannot completely avoid the acidic substance to the SEI film; when the adding amount of DABCO is too large, it causes the internal resistance of electrolyte to increase, but it will react to the performance of the battery (para 31).
The weight ratio of the first additive to the second additive is 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 weight ratio through routine experimentation to achieve an electrolyte with “improved temperature storage” (Lim, para 47). 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 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).
Double Patenting
Claims 2-8, 15-20 of this application is patentably indistinct from claim 2-8 of Application No. 18/487,948. 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 Arguments
Applicant's arguments filed 3/16/2026 have been fully considered but they are not persuasive.
Regarding the rejection of under 35 U.S.C. § 112, the previously presented rejection of claim 11 is maintained. Claim 11 continues to be unclear. One possible amendment is “the adduct of chemical formula 2 is a compound represented by Chemical Formula 2-2 or 2-[2]3”.
Regarding the rejection of claims 1-20 under 35 U.S.C. § 103, on page 9 of the Remarks, the applicant submits comparative experimental data and argues the “claimed embodiments exhibit unexpected and desirable results over the subject matter of Lee… [and] the claimed embodiments would not have been obvious over Lee, even in view of Lim and Liang, at the time when the present application was effectively filed”. The applicant asserts “change in the amount of metal elution occurs when the volume of the cylindrical can exceeds 15 cm3, for example, is greater than or equal to 16 cm3”. The argument is not persuasive because the applicant has failed to show criticality and/or unexpected results. The submitted data include only data points at 1, 17, 24, 133 and 296 cm3. The data does not establish that 15 cm3 represents a critical or unexpected threshold, particularly where no data are provided for volumes near 15 cm3.
Additionally, the applicant has not provided comparative data corresponding to the closest prior art or demonstrated that the alleged improvement is unexpected relative to the 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 16, the applicant subsequently argues that examples including “both additives …[with] the second additive in an amount of less than 5 wt%” unexpectedly improved “high-temperature characteristics of the rechargeable lithium battery cells… compared to the Comparative Examples, which, like Lee, did not include both additives, or included both additives but included the second additive in an amount greater than or equal to 5 wt%”. This argument is not persuasive for several reasons. First, although the applicant provides data for combinations of the first and second additives at 1/0.5, 1/1, 1/3 and 1/5 wt% comparison, the data does not establish the claimed “less than 5 wt%” range produces unexpected result relative to the closest prior art. The evidence does not establish that 5 wt% represents a critical threshold or demonstrates an unexpected change in the measured properties as the evidence lacks data as the second additive crosses the alleged 5 wt% boundary.
Second, the argument is not persuasive because the applicant has failed to establish the differences are statistically and practically significant. See MPEP 716.02(b). For Example, the difference in capacity retention rate between Ex.1 (70.1) and Ex.5 (72.4) is 2.3. The difference between Ex. 2 (65.2) and Ex. 6 (67.5) is also 2.3. These differences are not significant, and the applicant failed to explain the practical significance of such a small difference. See MPEP 716.02(b) –
“the 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)
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 and 2. Rather, the specification states “the first additive [is] represented by Chemical Formula 1-1-1 (CAS No. 16415-09-1)” and “the second additive [is] represented by Chemical Formula 2-1-1 (CAS No. 280-57-9) (page 21, para 114). MPEP 716.02 requires that unexpected results must be commensurate in scope with the claimed invention.
Regarding the double patenting rejection, on page 16 of the Remarks, the applicant argues “the present application has a priority date of June 5, 2023, while Application No. 18/487,948 ("the '948 application") also has a priority date of June 5, 2023. Therefore, the '948 application does not have an earlier priority date than the present application”. This argument is not persuasive. The June 5, 2023 foreign priority date is not considered in determining the patent-term filing date for purposes of non-statutory double patenting rejection (see MPEP § 804, “Benefit claims under 35 U.S.C. 119(e) and foreign priority claims under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) are not taken into account when determining the term of an issued patent (see 35 U.S.C. 154(a)(2) and (a)(3) ), and therefore, are not taken into account in determining the patent term filing date of an application”). The provisional nonstatutory double patenting rejection is maintained.
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.
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/A.K./Examiner, Art Unit 1746
/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
