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 .
Status of Claims
Claims 1-20, as filed 25 April 2024, are examined herein. No new matter is included.
Claim Objections
Claim 8 is objected to because of a typographical error. In Claim 8, the recitations: “in Chemical Formula 1-1,” and “in Chemical Formula 1-2,” should be amended to recite --in Chemical Formula 2-1,--and -- in Chemical Formula 2-2--, respectively.
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 Zhang (US 20120088160 A1) in view of Choi (US 20220173439 A1).
Regarding claim 1, Zhang teaches an electrolyte ([0007]) comprising:
a non-aqueous organic solvent; ([0007] non-aqueous electrolytes)
a lithium salt; ([0038])
a first additive represented by Chemical Formula 1; (Page 3, row 3, compound on the left, and [0070] “triglycidyl isocyanurate”. Examiner notes that this is also known as CAS No. 2451-62-9.)
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in Chemical Formula 1, X1 to X3 are each N or CH and at least one selected from among X1 to X3 is N; L1 to L3 are each independently a single bond, or a substituted or unsubstituted C1 to C10 alkylene group; and R1 to R3 are each independently an epoxy group, or a substituted or unsubstituted C1 to C10 alkyl group, and at least one selected from among R1 to R3 is an epoxy group; (as shown at page 3, row 3, compound on the left, and [0070] triglycidyl isocyanurate)
wherein the electrolyte is for a rechargeable lithium battery. ([0002], [0007])
This also renders obvious the limitation of claim 15, a rechargeable lithium battery comprising: a positive electrode comprising a positive electrode active material; ([0042] cathode active materials) a negative electrode comprising a negative electrode active material; ([0043] anode active materials) and the electrolyte as claimed in claim 1, and the limitation of claim 16, wherein the rechargeable lithium battery further comprises a separator between the positive electrode and the negative electrode and impregnated with the electrolyte. ([0041])
Zhang teaches [0007] that the disclosed additives at stabilizing additives that provide long life and high capacity retention. At [0017] Zhang discloses the use of one or more stabilizing additives but does not explicitly teach a second additive represented by Chemical Formula 2.
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Choi, in the field of (abstract) electrolyte for a rechargeable lithium battery, discloses at [0110] the use of 0.5 wt % of 2-fluoro-1,3,2-dioxaphospholane, which Choi refers to as “Chemical Formula 1” and 0.5 wt % of chemical formula 2-1, represented by chemical formula 2.
Examiner notes that Choi’s “Chemical Formula 1” (2-fluoro-1,3,2-dioxaphospholane) disclosed at [0110] is known in the instant specification as Chemical Formula 2-2a-1 and Choi’s “Chemical Formula 2-1” (phosphorodifluoridous acid, ethylene ester), disclosed at [0056], is known in the instant specification as Chemical Formula 2-1a-1.
At [0008-0010], Choi discloses that Choi’s electrolyte non-aqueous electrolyte suppresses an increase in resistance during high - temperature storage and improves battery performance by reducing gas generation. Choi at [0047-0048] discloses that [Choi’s] Chemical Formula 2 may form a stable SEI film having high heat resistance through a synergy effect with the phosphite functional group of the compound represented by Chemical Formula 1, so that the SEI film may remain still firm (e.g., may be stable) even when stored for a long time at a high temperature. As the SEI film is maintained, the SEI film may prevent or reduce exposure of the surface of the positive electrode and may thus more effectively suppress or reduce reactions on the interface of the positive electrode with the electrolyte, suppress or reduce high temperature-gas generation due to the stable film at a high temperature, and also suppress or reduce decomposition of the solvent of the electrolyte, thereby improving the high temperature storage characteristics of a rechargeable lithium battery.
A person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to modify the electrolyte of Zhang by adding the compounds of Choi’s Chemical Formula 1 and Chemical Formula 2 at 0.5 wt% each, with a reasonable expectation of successfully improving the high temperature storage characteristics of a rechargeable lithium battery. This renders obvious the second additive represented by Chemical Formula 2, as set forth in the instant claim 1.
Regarding claims 2 -6 and 17, Zhang in view of Choi teaches all of the limitations as set forth above. Zhang’s teaching at page 3, row 3 and [0070] of “triglycidyl isocyanurate”(CAS No. 2451-62-9) renders obvious the limitations of clams 2-6 and 17.
Regarding claims 7-10 and 18 -19, Zhang in view of Choi teaches all of the limitations as set forth above. Zhang in view of Choi, as set forth in claim 1 and incorporated herein by reference, renders obvious the modification of Zhang’s electrolyte by adding the compounds of Choi’s Chemical Formula 1 and Choi’s Chemical Formula 2 at 0.5 wt% each, [Equivalent to the instant Chemical Formula 2-1a-1 and Chemical Formula 2-2a-1] thus rendering obvious the limitations of claims 7-10 and 18-19.
Regarding claims 11 and 20, Zhang in view of Choi teaches all of the limitations as set forth above. Zhang at [0028] teaches the stabilizing additive at 5 wt% to 20 wt%. Zhang in view of Choi, as set forth in claim 1 and incorporated herein by reference, renders obvious the modification of Zhang’s electrolyte by adding the compounds of Choi’s Chemical Formula 1 and Choi’s Chemical Formula 2 at 0.5 wt% each, therefore “second additive” is at 1 wt.%. The created a weight ratio of 5:1 to 20: 1, which falls within the claimed range of about 2:1 to about 100:1.
Regarding claim 12, Zhang in view of Choi teaches all of the limitations as set forth above, and Zhang at [0028] teaches the stabilizing additive at 5 wt% to 20 wt%, which equals the claimed range.
Regarding claim 13, Zhang in view of Choi teaches all of the limitations as set forth above. Zhang in view of Choi, as set forth in claim 1 and incorporated herein by reference, renders obvious the modification of Zhang’s electrolyte by adding the compounds of Choi’s Chemical Formula 1 and Choi’s Chemical Formula 2 at 0.5 wt% each, therefore “second additive” is at 1 wt.%, which falls within the claimed range of about 0.1 to about 2 wt%, based on a total amount of the electrolyte.
Regarding claim 14, Zhang in view of Choi teaches all of the limitations as set forth above. At [0039] Zhang teaches that candidates for the non-aqueous organic solvent include ethylene carbonate, ethylmethyl carbonate, and dimethyl carbonate. While Zhang does not teach a specific embodiment having EC, EMC, and DC, a person of ordinary skill in the art would have been motivated, as of before the effective filing date of the instant invention, to select EC, EMC, and DC as components for the organic solvent of the instant electrolyte as they represent three known solutions to the problem of electrolyte selection. Choi at [0109] and Table 1, disclose an EC:EMC:DC solvent electrolyte with excellent storage properties after high temperature use, providing further motivation for the selection of this solvent combination, with a reasonable expectation of creating an electrolyte with good high temperature storage properties.
Double Patenting
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.
Claim 1-3, 8-13, and 15-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/670386 (reference application) in view of Zhang (US 20120088160 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the reference application recites in part: “A rechargeable lithium battery, comprising: a positive electrode comprising a positive electrode active material; a negative electrode comprising a negative electrode active material; an electrolyte solution for a rechargeable lithium battery comprising a non-aqueous organic solvent, a lithium salt, and an additive, wherein the additive comprises a first compound represented by Chemical Formula 1 and a second compound represented by Chemical Formula 2, and the positive electrode active material comprises lithium nickel composite oxide represented by Chemical Formula 3…” The reference claim 1 is similar to the instant claim 1, except that the reference claim 1 requires a positive active material which can be NMC. The use of NMC as a positive active material is well known in the art, evidence is provided by Zhang at [0042]. Dependent claims 2-8 of the reference application contain limitations similar to the dependent claims 2-3, 8-13 and 15-17 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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CLAIRE A. RUTISER
Examiner
Art Unit 1751
/C.A.R./Examiner, Art Unit 1751
/Haroon S. Sheikh/Primary Examiner, Art Unit 1751
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