CTNF 18/566,813 CTNF 97097 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Objections 07-29-01 AIA Claim 4 is objected to because of the following informalities: Claim 4 recites “Formulae 1a” in Line 3 and should read --Formula 1a --. Appropriate correction is required. Double Patenting 08-33 AIA The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. 08-35 Claim s 1, 5-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 5 and 10 of copending Application No. 19/168,615 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons: Claim 1 of the instant application claims a non-aqueous electrolyte solution for a lithium secondary battery, the non-aqueous electrolyte solution comprising a lithium salt, an organic solvent, and a compound represented by Formula 1 as an additive. Claim 8 of the instant application claims the non-aqueous electrolyte solution of claim 1, further comprising at least a second additive selected from a cyclic carbonate-based compound, a halogen-substituted carbonate-based compound, a sultone-based compound, a sulfate-based compound, a sulfite-based compound, a phosphate-based compound, a phosphite-based compound, a borate-based compound, a benzene-based compound, an amine-based compound, a silane-based compound, or a lithium salt-based compound. Claim 9 of the instant application claims A lithium secondary battery comprising a negative electrode, a positive electrode, a separator disposed between the negative electrode and the positive electrode, and the non-aqueous electrolyte solution of claim 1. Claim 1 of the reference application claims A lithium secondary battery comprising: a positive electrode; a negative electrode; a separator disposed between the positive electrode and the negative electrode; and a non-aqueous electrolyte, wherein the positive electrode includes a positive electrode active material, the positive electrode material includes a per lithium manganese-rich oxide containing about 50 mol% or more of Mn based on all metal elements excluding lithium, and having a molar ratio of lithium to all transition metals exceeding about 1, and the non-aqueous electrolyte includes a lithium salt, a compound represented by Chemical Formula 1-below, and a compound represented by Chemical Formula 2, where, in Chemical Formula 1, R ₁ is each independently a halogen, a nitrile group, a propargyl group, an ester group, an ether group, a ketone group, a carboxyl group, a substituted or unsubstituted alkyl group, a substituted or unsubstituted alkenyl group, a substituted or unsubstituted alkynyl group, a substituted or unsubstituted alkoxy group, a boron group, a borate group, an isocyanate group, an isothiocyanate group, a silyl group, a siloxane group, a sulfone group, a sulfonate group, a sulfate group, or a combination of two or more thereof, and n is an integer of 0 to 6, and where, in Chemical Formula 2, R ₂ is fluorine, a C1 to C10 alkyl group substituted with one or more fluorine, a C1 to C10 alkoxy group substituted with one or more fluorine, or a C6 to C20 aryloxy group substituted with one or more fluorine, and R ₃ and R4 are each independently hydrogen, a C1 to C10 alkyl group, or a C6 to C20 aryl group. Therefore, claims 1 and 8-9 of the instant application and claim 1 of the reference application claim a non-aqueous electrolyte solution for a lithium secondary battery, the non-aqueous electrolyte solution comprising a lithium salt, an organic solvent, and a compound represented by Formula 1 as an additive, at least a second additive selected from a cyclic carbonate-based compound, a halogen-substituted carbonate-based compound, a sultone-based compound, a sulfate-based compound, a sulfite-based compound, a phosphate-based compound, a phosphite-based compound, a borate-based compound, a benzene-based compound, an amine-based compound, a silane-based compound, or a lithium salt-based compound Claim 5 of the instant application claims the non-aqueous electrolyte solution of claim 1, wherein the compound represented by Formula 1 is present in an amount of 0.01 wt% to 5.0 wt% based on a total weight of the non-aqueous electrolyte solution. Claim 6 of the instant application claims the non-aqueous electrolyte solution of claim 5, wherein the compound represented by Formula 1 is present in an amount of 0.01 wt% to 3.0 wt% based on the total weight of the non-aqueous electrolyte solution. Claim 5 of the reference application claims the compound represented by Chemical Formula 1 is included in an amount of 0.01 wt% to 10 wt% on the basis of based on a total weight of the non-aqueous electrolyte. Therefore, the instant claims 5-6 claim a range within the claimed range of reference claim 5. Claim 7 of the instant application claims the non-aqueous electrolyte solution of claim 1, wherein the organic solvent comprises at least one selected from a cyclic carbonate- based organic solvent, a linear carbonate-based organic solvent, and or a linear ester-based organic solvent. Claim 10 of the reference application claims the non- aqueous electrolyte comprises an organic solvent, and the organic solvent comprises at least one selected from the group consisting of a cyclic carbonate-based organic solvent, a linear carbonate-based organic solvent, a linear ester-based organic solvent, and-or a cyclic ester-based organic solvent. Therefore, both claim 7 of the instant application and claim 10 of the reference application claim the organic solvent comprises at least one selected from a cyclic carbonate- based organic solvent, a linear carbonate-based organic solvent, and or a linear ester-based organic solvent . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. 08-35 Claim s 1, and 5-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 4, 11, and 13 of copending Application No. 18/609,360 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons: Claim 1 of the instant application claims a non-aqueous electrolyte solution for a lithium secondary battery, the non-aqueous electrolyte solution comprising a lithium salt, an organic solvent, and a compound represented by Formula 1 as an additive. Claim 8 of the instant application claims the non-aqueous electrolyte solution of claim 1, further comprising at least a second additive selected from a cyclic carbonate-based compound, a halogen-substituted carbonate-based compound, a sultone-based compound, a sulfate-based compound, a sulfite-based compound, a phosphate-based compound, a phosphite-based compound, a borate-based compound, a benzene-based compound, an amine-based compound, a silane-based compound, or a lithium salt-based compound. Claim 9 of the instant application claims A lithium secondary battery comprising a negative electrode, a positive electrode, a separator disposed between the negative electrode and the positive electrode, and the non-aqueous electrolyte solution of claim 1. Claims 1 and 13 of the reference application claims a non-aqueous electrolyte comprising: lithium salts; an organic solvent; and an additive including a first additive and a second additive, wherein the first additive includes a compound represented by following Formula 1, where R ₁ includes halogen, a nitrile group, a propargyl group, an ester group, an ether group, a ketone group, a carboxyl group, a substituted or unsubstituted alkyl group, a substituted or unsubstituted alkenyl group, a substituted or unsubstituted alkynyl group, a substituted or unsubstituted alkoxy group, a boron group, a borate group, an isocyanate group, an isothiocyanate group, a silyl group, a siloxane group, a sulfone group, a sulfonate group, a sulfate group, or a combination of two or more thereof, and where n is an integer of 0 to 6, wherein the second additive includes a compound represented by following Formula 2, where R ₂ and R ₃ are independently selected from among an alkyl group having 1 to 10 carbon atoms, an alkenyl group having 2 to 10 carbon atoms, an alkynyl group having 2 to 10 carbon atoms, and a substituent represented by following Formula 3, and at least one of R ₂ and R ₃ is selected from among an alkenyl group having 2 to 10 carbon atoms, an alkynyl group having 2 to 10 carbon atoms, and a substituent represented by the following Formula 3, and where m is an integer of 3 to 10, where L ₁ is a direct bond, an alkylene group having 1 to 10 carbon atoms, an ester group, a sulfone group, a sulfonate group, a sulfate group, or a combination of two or more thereof, R4 is an alkoxy group having 1 to 10 carbons, which is substituted with at least one fluorine atom, and * is a binding site. Therefore, claims 1 and 8-9 of the instant application and claims 1 and 13 of the reference application claim a non-aqueous electrolyte solution for a lithium secondary battery, the non-aqueous electrolyte solution comprising a lithium salt, an organic solvent, and a compound represented by Formula 1 as an additive, at least a second additive selected from a cyclic carbonate-based compound, a halogen-substituted carbonate-based compound, a sultone-based compound, a sulfate-based compound, a sulfite-based compound, a phosphate-based compound, a phosphite-based compound, a borate-based compound, a benzene-based compound, an amine-based compound, a silane-based compound, or a lithium salt-based compound. Claim 5 of the instant application claims the non-aqueous electrolyte solution of claim 1, wherein the compound represented by Formula 1 is present in an amount of 0.01 wt% to 5.0 wt% based on a total weight of the non-aqueous electrolyte solution. Claim 6 of the instant application claims the non-aqueous electrolyte solution of claim 5, wherein the compound represented by Formula 1 is present in an amount of 0.01 wt% to 3.0 wt% based on the total weight of the non-aqueous electrolyte solution. Claim 4 of the reference application claims the compound represented by Chemical Formula 1 is included in an amount of 0.01 wt% to 10 wt% on the basis of based on a total weight of the non-aqueous electrolyte. Therefore, the instant claims 5-6 claim a range within the claimed range of reference claim 4. Claim 7 of the instant application claims the non-aqueous electrolyte solution of claim 1, wherein the organic solvent comprises at least one selected from a cyclic carbonate- based organic solvent, a linear carbonate-based organic solvent, and or a linear ester-based organic solvent. Claim 11 of the reference application claims the organic solvent includes at least one selected from the group consisting of a cyclic carbonate-based organic solvent, a linear carbonate-based organic solvent, a linear ester-based organic solvent, and a cyclic ester-based organic solvent. Therefore, both claim 7 of the instant application and claim 11 of the reference application claim the organic solvent comprises at least one selected from a cyclic carbonate- based organic solvent, a linear carbonate-based organic solvent, and or a linear ester-based organic solvent . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. 08-35 Claim s 1, and 5-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 4, and 11 of copending Application No. 18/530,873 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons: Claim 1 of the instant application claims a non-aqueous electrolyte solution for a lithium secondary battery, the non-aqueous electrolyte solution comprising a lithium salt, an organic solvent, and a compound represented by Formula 1 as an additive. Claim 8 of the instant application claims the non-aqueous electrolyte solution of claim 1, further comprising at least a second additive selected from a cyclic carbonate-based compound, a halogen-substituted carbonate-based compound, a sultone-based compound, a sulfate-based compound, a sulfite-based compound, a phosphate-based compound, a phosphite-based compound, a borate-based compound, a benzene-based compound, an amine-based compound, a silane-based compound, or a lithium salt-based compound. Claim 9 of the instant application claims A lithium secondary battery comprising a negative electrode, a positive electrode, a separator disposed between the negative electrode and the positive electrode, and the non-aqueous electrolyte solution of claim 1. Claims 1 of the reference application claims A lithium secondary battery comprising: a positive electrode; a negative electrode; a separator disposed between the positive electrode and the negative electrode; and a non-aqueous electrolyte, wherein the positive electrode comprises an overlithiated manganese-rich oxide containing Mn in an amount of 50 mol% or greater with respect to all metals excluding lithium and having a lithium-to-transition metal 10 molar ratio of greater than 1, the non-aqueous electrolyte comprises a lithium salt, an organic solvent, and an additive, the additive comprises a first additive and a second additive, the first additive comprises a compound represented by Formula 1, and the second additive comprises a compound represented by Formula 2, wherein in Formula 1 above, R ₁ each independently comprises halogen, a nitrile group, a propargyl group, an ester group, an ether group, a ketone group, a carboxyl group, 5 a substituted or unsubstituted alkyl group, a substituted or unsubstituted alkenyl group, a substituted or unsubstituted alkynyl group, a substituted or unsubstituted alkoxy group, a boron group, a borate group, an isocyanate group, an isothiocyanate group, a silyl group, a siloxane group, a 10 sulfone group, a sulfonate group, a sulfate group, or a combination of two or more thereof, and n is an integer of 0 to 6, and wherein in Formula 2 above, A is a substituted or unsubstituted heteroaryl group having 3 to 5 carbon atoms, 15 and R ₂ is an alkylene group having 1 to 3 carbon atoms. Therefore, claims 1 and 8-9 of the instant application and claim 1 of the reference application claim a non-aqueous electrolyte solution for a lithium secondary battery, the non-aqueous electrolyte solution comprising a lithium salt, an organic solvent, and a compound represented by Formula 1 as an additive, at least a second additive selected from a cyclic carbonate-based compound, a halogen-substituted carbonate-based compound, a sultone-based compound, a sulfate-based compound, a sulfite-based compound, a phosphate-based compound, a phosphite-based compound, a borate-based compound, a benzene-based compound, an amine-based compound, a silane-based compound, or a lithium salt-based compound. Claim 5 of the instant application claims the non-aqueous electrolyte solution of claim 1, wherein the compound represented by Formula 1 is present in an amount of 0.01 wt% to 5.0 wt% based on a total weight of the non-aqueous electrolyte solution. Claim 6 of the instant application claims the non-aqueous electrolyte solution of claim 5, wherein the compound represented by Formula 1 is present in an amount of 0.01 wt% to 3.0 wt% based on the total weight of the non-aqueous electrolyte solution. Claim 4 of the reference application claims the compound represented by Chemical Formula 1 is included in an amount of 0.01 wt% to 10 wt% on the basis of based on a total weight of the non-aqueous electrolyte. Therefore, the instant claims 5-6 claim a range within the claimed range of reference claim 4. Claim 7 of the instant application claims the non-aqueous electrolyte solution of claim 1, wherein the organic solvent comprises at least one selected from a cyclic carbonate- based organic solvent, a linear carbonate-based organic solvent, and or a linear ester-based organic solvent. Claim 11 of the reference application claims the organic solvent includes at least one selected from the group consisting of a cyclic carbonate-based organic solvent, a linear carbonate-based organic solvent, a linear ester-based organic solvent, and a cyclic ester-based organic solvent. Therefore, both claim 7 of the instant application and claim 11 of the reference application claim the organic solvent comprises at least one selected from a cyclic carbonate- based organic solvent, a linear carbonate-based organic solvent, and or a linear ester-based organic solvent . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Tan et al. (CN102569889(A) as cited in IDS and using Machine Translation as English version), hereinafter Tan, in view of Bhat et al. (U.S. PGPub US 2013/0059200 A1), hereinafter Bhat . Regarding claim 1 , Tan discloses a non-aqueous electrolyte solution for a lithium secondary battery, the non-aqueous electrolyte solution comprising a lithium salt, an organic solvent, and a compound represented by Formula 1 as an additive (i.e., at least non-aqueous electrolyte for lithium-ion batteries, comprising: lithium salt, organic solvent, and additives as disclosed in [0017], whereby the additives include coumarin and their derivatives as shown in structural formula I, etc., such as shown in Annotated Formula I, etc., as disclosed in [0018]-[0019], wherein as disclosed in [0020] R 1 -R 6 are independently selected from hydrogen, alkyl with 1-4 carbon atoms, alkoxy with 1-4 carbon atoms, etc., which at least provides R 1 to R 6 are each independently hydrogen, an alkyl group having 1 to 5 carbon atoms, etc., also see [0023]-[0027]). However, Tan is silent as to wherein at least one of R 1 , R 2 , R 3 , R 4 or R 5 is -SiR 7 R 8 R 9 , (wherein R 7 to R 9 are each independently an alkyl group having 1 to 10 carbon atoms), or -O-SiR 10 R 11 R 12 , (wherein R 10 to R 12 are each independently an alkyl group having 1 to 10 carbon atoms). Bhat teaches materials for battery electrolytes and methods for use (Title). Bhat further teaches in [0141] according to certain embodiments, suitable silicon-containing compounds according to formula (3) include compounds where at least one of X 1 , X 2 , X 3 , and X 4 is an organic group including 1 to 20 carbon atoms, for other embodiments X 1 , X 2 , X 3 , and X 4 is an organic group including more than 20 carbon atoms, and in some embodiments, at least one of X 1 , X 2 , X 3 , and X 4 includes an ether linkage, and in other embodiments, at least one of X 1 , X 2 , X 3 , and X 4 includes another heteroatom, whereby X 1 , X 2 , X 3 , and X 4 can independently be selected from, for example, aryl groups, heterocycle groups, etc., (i.e., at least commensurate in scope with that disclosed by Tan) such that as taught in [0143] in certain preferred embodiments, X 1 , X 2 , X 3 are alkyl groups, and in particular methyl groups, etc., such as trimethylsilyl (“TMS”), etc., which at least provides SiR 7 R 8 R 9 , (wherein R 7 to R 9 are each independently an alkyl group having 1 to 10 carbon atoms), whereby R 7 to R 9 are, for example, methyl groups, etc., (also see [0080]-[0081], [0135], [0137]-[0139], [0149]-[0152], etc.). Bhat further teaches in [0200] the inclusion of a set of one or more stabilizing additive compounds in an electrolyte solution can, upon operation of the battery (e.g., during conditioning thereof) passivate a high voltage cathode material, thereby reducing or preventing reactions between bulk electrolyte components and the cathode material that can degrade battery performance. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to have modified Tan with the teachings of Bhat , whereby the non-aqueous electrolyte solution for a lithium secondary battery including the additive as disclosed by Tan further includes at least one of R 1 , R 2 , R 3 , R 4 or R 5 is -SiR 7 R 8 R 9 , (wherein R 7 to R 9 are each independently an alkyl group having 1 to 10 carbon atoms) (e.g., trimethylsilyl (“TMS”)) as taught by Bhat so that upon operation of the battery (e.g., during conditioning thereof) passivate a high voltage cathode material, thereby reducing or preventing reactions between bulk electrolyte components and the cathode material that can degrade battery performance. PNG media_image1.png 192 531 media_image1.png Greyscale Annotated Formula I (Tan) Regarding claim 2 , Tan and Bhat discloses the non-aqueous electrolyte solution as discussed above in claim 1. Tan further discloses in [0020] R 1 -R 6 are independently selected from hydrogen, alkyl with 1-4 carbon atoms, alkoxy with 1-4 carbon atoms, etc., which at least provides in Formula 1, R ₁ to R ₆ are each independently hydrogen, and further provides R ₂ to R4 and R6 are each independently hydrogen or an alkyl group having 1 to 5 carbon atoms, etc. from the group. However, Tan is silent as to wherein at least one of R ₁ or R ₅ is -SiR ₇ R ₈ R ₉ , (wherein R ₇ to R9 are each independently an alkyl group having 1 to 7 carbon atoms), or -O- SiR ₁₀ R ₁₁ R ₁₂ , (wherein R 10 to R ₁₂ are each independently an alkyl group having 1 to 7 carbon atoms). As discussed above in claim 1 , Bhat in [0143] teaches in certain preferred embodiments, X 1 , X 2 , X 3 are alkyl groups, and in particular methyl groups, etc., such as trimethylsilyl (“TMS”), etc., which at least provides at least one of R ₁ or R ₅ is -SiR ₇ R ₈ R ₉ , (wherein R ₇ to R 9 are each independently an alkyl group having 1 to 7 carbon atoms) whereby R 7 to R 9 are, for example, methyl groups, etc., (also see [0080]-[0081], [0135], [0137]-[0139], [0149]-[0152], etc.). Bhat further teaches in [0200] the inclusion of a set of one or more stabilizing additive compounds in an electrolyte solution can, upon operation of the battery (e.g., during conditioning thereof) passivate a high voltage cathode material, thereby reducing or preventing reactions between bulk electrolyte components and the cathode material that can degrade battery performance. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to have modified Tan with the teachings of Bhat , whereby the non-aqueous electrolyte solution for a lithium secondary battery including the additive (e.g., as shown above in claim 1 and the various derivatives of said formula) as disclosed by Tan further includes at least one of R ₁ or R ₅ is -SiR ₇ R ₈ R ₉ , (wherein R ₇ to R9 are each independently an alkyl group having 1 to 7 carbon atoms) (e.g., trimethylsilyl (“TMS”)) as taught by Bhat so that upon operation of the battery (e.g., during conditioning thereof) passivate a high voltage cathode material, thereby reducing or preventing reactions between bulk electrolyte components and the cathode material that can degrade battery performance. Regarding claim 3 , Tan and Bhat discloses the non-aqueous electrolyte solution as discussed above in claim 1. Tan further discloses in [0020] R 1 -R 6 are independently selected from hydrogen, alkyl with 1-4 carbon atoms, alkoxy with 1-4 carbon atoms, etc., which at least provides in Formula 1, R ₁ to R ₆ are each independently hydrogen, and further provides R ₂ to R4 and R 6 are each independently hydrogen or an alkyl group having 1 to 5 carbon atoms, etc. from the group. However, Tan is silent as to wherein at least one of R ₁ or R ₅ is -SiR ₇ R ₈ R ₉ , (wherein R ₇ to R9 are each independently an alkyl group having 1 to 5 carbon atoms), or -O-SiR ₁₀ R ₁₁ R ₁₂ , (wherein R 10 to R ₁₂ are each independently an alkyl group having 1 to 5 carbon atoms). As discussed above in claim 1 , Bhat in [0143] teaches in certain preferred embodiments, X 1 , X 2 , X 3 are alkyl groups, and in particular methyl groups, etc., such as trimethylsilyl (“TMS”), etc., which at least provides at least one of R ₁ or R ₅ is -SiR ₇ R ₈ R ₉ , (wherein R ₇ to R 9 are each independently an alkyl group having 1 to 5 carbon atoms) whereby R 7 to R 9 are, for example, methyl groups, etc., (also see [0080]-[0081], [0135], [0137]-[0139], [0149]-[0152], etc.). Bhat further teaches in [0200] the inclusion of a set of one or more stabilizing additive compounds in an electrolyte solution can, upon operation of the battery (e.g., during conditioning thereof) passivate a high voltage cathode material, thereby reducing or preventing reactions between bulk electrolyte components and the cathode material that can degrade battery performance. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to have modified Tan with the teachings of Bhat , whereby the non-aqueous electrolyte solution for a lithium secondary battery including the additive (e.g., as shown above in claim 1 and the various derivatives of said formula) as disclosed by Tan further includes at least one of R ₁ or R ₅ is -SiR ₇ R ₈ R ₉ , (wherein R ₇ to R9 are each independently an alkyl group having 1 to 5 carbon atoms) (e.g., trimethylsilyl (“TMS”)) as taught by Bhat so that upon operation of the battery (e.g., during conditioning thereof) passivate a high voltage cathode material, thereby reducing or preventing reactions between bulk electrolyte components and the cathode material that can degrade battery performance. Regarding claim 4 , Tan and Bhat discloses the non-aqueous electrolyte solution as discussed above in claim 1. Tan further discloses in [0020] R 1 -R 6 are independently selected from hydrogen, alkyl with 1-4 carbon atoms, alkoxy with 1-4 carbon atoms, etc. However, Tan is silent as to the compound represented by Formula 1 comprises at least one selected from compounds represented by Formula 1a or 1b. As discussed above in claim 1 , Bhat in [0143] teaches in certain preferred embodiments, X 1 , X 2 , X 3 are alkyl groups, and in particular methyl groups, etc., such as trimethylsilyl (“TMS”), etc., which at least provides -SiR ₇ R ₈ R ₉ , such that R 7 to R 9 are, for example, methyl groups, etc., (also see [0080]-[0081], [0135], [0137]-[0139], [0149]-[0152], etc.). Bhat further teaches in [0200] the inclusion of a set of one or more stabilizing additive compounds in an electrolyte solution can, upon operation of the battery (e.g., during conditioning thereof) passivate a high voltage cathode material, thereby reducing or preventing reactions between bulk electrolyte components and the cathode material that can degrade battery performance. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to have modified Tan with the teachings of Bhat , whereby the non-aqueous electrolyte solution for a lithium secondary battery including the additive (e.g., as shown above in claim 1 and the various derivatives of said formula) as disclosed by Tan further includes at least one of R ₁ or R ₅ is -SiR ₇ R ₈ R ₉ , such that R 7 to R 9 are, for example, methyl groups, etc., (e.g., trimethylsilyl (“TMS”)) as taught by Bhat so that upon operation of the battery (e.g., during conditioning thereof) passivate a high voltage cathode material, thereby reducing or preventing reactions between bulk electrolyte components and the cathode material that can degrade battery performance. Regarding claim 5 , Tan and Bhat discloses the non-aqueous electrolyte solution as discussed above in claim 1. Tan further discloses in [0028] the content of coumarin and its derivatives in the electrolyte is preferably 0.1%-3% based on the total weight of the electrolyte, etc. , which at least provides a range within the claimed range of the compound represented by Formula 1 is present in an amount of 0.01 wt% to 5.0 wt% based on a total weight of the non-aqueous electrolyte solution, thus a prima facie case of anticipation exists (MPEP 2131.03, I., Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)). Regarding claim 6 , Tan and Bhat disclose the non-aqueous electrolyte solution as discussed above in claim 5. Tan further discloses in [0028] the content of coumarin and its derivatives in the electrolyte is preferably 0.1%-3% based on the total weight of the electrolyte, etc. , which at least provides a range within the claimed range of the compound represented by Formula 1 is present in an amount of 0.01 wt% to 3.0 wt% based on the total weight of the non-aqueous electrolyte solution, thus a prima facie case of anticipation exists (MPEP 2131.03, I., Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)). Regarding claim 7 , Tan and Bhat disclose the non-aqueous electrolyte solution as discussed above in claim 1. Tan further discloses in [0032] the organic solvent is preferably a mixture of cyclic carbonates and chain carbonates, etc., whereby as disclosed in [0068] the organic solvent is propylene carbonate and dimethyl carbonate, etc. , which at least provides the organic solvent comprises at least one selected from a cyclic carbonate-based organic solvent, a linear carbonate-based organic solvent, etc. (also see [0032], [0068], also see claims 6-8, [0045]). Regarding claim 8 , Tan and Bhat disclose the non-aqueous electrolyte solution as discussed above in claim 1. Tan further discloses in [0045] 4-fluoro-1,3-dioxolane-2-one and coumarin are further added to prepare the electrolyte, etc., which at least provides a second additive selected from a halogen-substituted carbonate-based compound from the group, etc. Regarding claim 9 , Tan and Bhat disclose the non-aqueous electrolyte solution as discussed above in claim 1. Tan further discloses in [0005] the core components of a lithium-ion battery include the positive electrode, negative electrode, electrolyte, and separator, etc., whereby as disclosed in [0044]-[0049] a polyethylene microporous membrane is placed between the positive and negative plates as a separator, and the sandwich structure composed of the positive plate, negative plate and separator is wound up, etc., which at least provides lithium secondary battery comprising a negative electrode, a positive electrode, a separator disposed between the negative electrode and the positive electrode, and a non-aqueous electrolyte solution. Regarding claim 10 , Tan and Bhat disclose the non-aqueous electrolyte solution as discussed above in claim 1. However, Tan is silent as to wherein in Formula 1, R 7 to R 12 each independently include a primary, secondary, or tertiary alkyl group having 1 to 10 carbon atoms and being unsubstituted or substituted with an alkyl group. As discussed above in claim 1 , Bhat in [0143] teaches in certain preferred embodiments, X 1 , X 2 , X 3 are alkyl groups, and in particular methyl groups, etc., such as trimethylsilyl (“TMS”), etc., which at least provides -SiR ₇ R ₈ R ₉ , such that R 7 to R 9 are, for example, methyl groups, etc., (also see [0080]-[0081], [0135], [0137]-[0139], [0149]-[0152], etc.), such that in Formula 1, R 7 to R 9 each independently include a primary, alkyl group having 1 to 10 carbon atoms and being unsubstituted or substituted with an alkyl group, such as methyl groups. Bhat further teaches in [0200] the inclusion of a set of one or more stabilizing additive compounds in an electrolyte solution can, upon operation of the battery (e.g., during conditioning thereof) passivate a high voltage cathode material, thereby reducing or preventing reactions between bulk electrolyte components and the cathode material that can degrade battery performance. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to have modified Tan with the teachings of Bhat , whereby the non-aqueous electrolyte solution for a lithium secondary battery including the additive (e.g., as shown above in claim 1 and the various derivatives of said formula) as disclosed by Tan further includes -SiR ₇ R ₈ R ₉ , such that R 7 to R 9 are, for example, methyl groups, etc., (e.g., trimethylsilyl (“TMS”)), such that in Formula 1, R 7 to R 9 each independently include a primary alkyl group having 1 to 10 carbon atoms and being unsubstituted or substituted with an alkyl group, etc., as taught by Bhat so that upon operation of the battery (e.g., during conditioning thereof) passivate a high voltage cathode material, thereby reducing or preventing reactions between bulk electrolyte components and the cathode material that can degrade battery performance. Regarding claim 11 , Tan and Bhat disclose the lithium secondary battery as discussed above in claim 9. Tan further discloses in [0047] positive electrode preparation including lithium cobalt oxide (LiCoO 2 ), which at least provides the positive electrode comprises a positive electrode active material comprising at least one selected from lithium-cobalt oxide, etc., from the group . 07-22-aia AIA Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tan and Bhat as applied to claim 9 above, and further in view of Yoshimura et al. (U.S. PGPub US 2024/0194947 A1 with Foreign Application Date of August 12 th , 2021), hereinafter Yoshimura . Regarding claim 12 , Tan and Bhat disclose the lithium secondary battery as discussed above in claim 9 including the positive electrode, etc. Tan further teaches in [0005] the positive electrode is mainly a lithium transition metal oxide, etc. However, Tan is silent as to comprises at least one positive electrode active material of Li(Ni 1/3 Mn 1/3 Co 1/3 )O ₂, Li(Ni 0.6 Mn 0.2 Co 0.2 )O ₂ , Li(Ni 0.5 Mn 0.3 Co 0.2 )O ₂ , Li(Ni 0.7 Mn 0.15 Co 0.15 )O ₂ , Li(Ni 0.8 Mn 0.1 Co 0.1 )O ₂ , or Li(Ni 0.86 Co 0.057 Mn 0.07 Al 0.02 )O ₂ . Yoshimura teaches a electrolyte solution for secondary battery, and secondary battery (Title). Yoshimura further teaches in [0208]-[0209] the positive electrode active material is not particularly limited, and specific examples thereof include a lithium-containing compound, etc., whereby specific examples of the oxide include LiCoO 2 , LiNi 0.5 Co 0.2 Mn 0.3 O 2 , etc., which at least provides the positive electrode comprises a positive electrode active material of Li(Ni 0.5 Mn 0.3 Co 0.2 )O ₂ from the group. Yoshimura further teaches in [0207] the positive electrode active material layer ref. 21B includes any one or more of positive electrode active materials into which lithium is insertable and from which lithium is extractable, etc. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to have modified the combined teachings of Tan and Bhat with the teachings of Yoshimura , whereby the non-aqueous electrolyte solution for a lithium secondary battery including the additive (e.g., as shown above in claim 1 and the various derivatives of said formula), positive electrode including positive electrode active material as disclosed by the combined teachings of Tan and Bhat further include the positive electrode comprises a positive electrode active material of Li(Ni 0.5 Mn 0.3 Co 0.2 )O ₂ from the group as taught by Yoshimura so as to includes any one or more of positive electrode active materials into which lithium is insertable and from which lithium is extractable, etc. Furthermore, the skilled artisan would appreciate that since Yoshimura teaches specific examples of the oxide include LiCoO 2 , LiNi 0.5 Co 0.2 Mn 0.3 O 2 , etc., which is commensurate in scope with LiCoO 2 as disclosed by Tan, that simply substituting one known positive electrode active material for another is a matter of obvious engineering design choice so as to provide one or more of positive electrode active materials into which lithium is insertable and from which lithium is extractable, etc . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shin et al. (U.S. PGPub US 2006/0105246 A1) discloses an electrolyte for lithium battery and lithium battery comprising same (Title), whereby as disclosed in [0022] Formula 1 is used as an electrolyte additive to improve battery safety on overcharging, etc . Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA PATRICK MCCLURE whose telephone number is (571)272-2742. The examiner can normally be reached Monday-Friday 8:30am-5:00pm. 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, Barbara Gilliam can be reached on (571) 272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JOSHUA P MCCLURE/Examiner, Art Unit 1727 /BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727 Application/Control Number: 18/566,813 Page 2 Art Unit: 1727 Application/Control Number: 18/566,813 Page 3 Art Unit: 1727 Application/Control Number: 18/566,813 Page 4 Art Unit: 1727 Application/Control Number: 18/566,813 Page 5 Art Unit: 1727 Application/Control Number: 18/566,813 Page 6 Art Unit: 1727 Application/Control Number: 18/566,813 Page 7 Art Unit: 1727 Application/Control Number: 18/566,813 Page 8 Art Unit: 1727 Application/Control Number: 18/566,813 Page 9 Art Unit: 1727 Application/Control Number: 18/566,813 Page 10 Art Unit: 1727 Application/Control Number: 18/566,813 Page 11 Art Unit: 1727 Application/Control Number: 18/566,813 Page 12 Art Unit: 1727 Application/Control Number: 18/566,813 Page 13 Art Unit: 1727 Application/Control Number: 18/566,813 Page 14 Art Unit: 1727 Application/Control Number: 18/566,813 Page 15 Art Unit: 1727 Application/Control Number: 18/566,813 Page 16 Art Unit: 1727 Application/Control Number: 18/566,813 Page 17 Art Unit: 1727 Application/Control Number: 18/566,813 Page 18 Art Unit: 1727 Application/Control Number: 18/566,813 Page 19 Art Unit: 1727 Application/Control Number: 18/566,813 Page 20 Art Unit: 1727 Application/Control Number: 18/566,813 Page 21 Art Unit: 1727 Application/Control Number: 18/566,813 Page 22 Art Unit: 1727 Application/Control Number: 18/566,813 Page 23 Art Unit: 1727
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