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 .
Specification
The abstract of the disclosure is objected to because it contains the implied phrases “are disclosed” in line 4 and “the description of Chemical Formula 1 follows the specification” in line 9. The abstract is also objected to because it repeats information already given in the title. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kishi et al. (US 2017/0077551) (Kishi) (of record).
Regarding claim 1, Kishi discloses an electrolyte additive (title, abstract), wherein the electrolyte additive (phosphate compound) can be represented by the formula (2):
PNG
media_image1.png
138
106
media_image1.png
Greyscale
([0019]-[0021]). Kishi further discloses that, in the formula (2), M is a C1 to C8 alkyl group, an aromatic site, or an ether bond ([0021]), which encompasses the scope of the compound L1 in the claimed formula. Kishi further discloses that R1, R2, R3, and R4 may each be identical to or different from each other and each can be represented by an alkyl group, an alkyl group having an unsaturated bond, an ether bond, amine, or halogen, an aromatic group (corresponding to the claimed aryl group), an alkoxy group, a halogen, or a hydroxy group ([0021]), which encompasses the scope of the R1 to R4 compounds in the claimed formula. Kishi further discloses a phenyl group (which is a C6 aryl compound) as an example aromatic compound ([0027]). A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP §2144.05. Therefore, absent any showing of unexpected results or criticality for the claimed formula, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have chosen an electrolyte additive that falls within the claimed Chemical Formula 1 through routine experimentation of the encompassing formula (2) disclosed by Kishi. Examiner notes that the limitation “wherein the electrolyte additive is for a rechargeable lithium battery” is merely an intended use limitation that does not require additional structure to the claimed electrolyte additive. Nevertheless, Kishi discloses that the electrolyte additive (phosphate compound) can be used in a rechargeable lithium battery (title; abstract; [0019]; [0062]-[0063]; see also Figs. 1-4).
Regarding claim 2, Kishi discloses all of the limitations as set forth above for claim 1. As set forth above, Kishi discloses that M (which corresponds to the claimed compound L1) can be a C1 to C8 alkyl group ([0021]), which encompasses the claimed scope of a C1 to C3 alkylene group. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP §2144.05. Therefore, absent any showing of unexpected results or criticality, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have reached the claimed L1 compound through routine experimentation of the encompassing M compound disclosed by Kishi.
Regarding claim 3, Kishi discloses all of the limitations as set forth above for claim 1. As set forth above, Kishi discloses that R1, R2, R3, and R4 (corresponding to the claimed R1 to R4 compounds) may each be identical to each other ([0021]), wherein at least one of R1, R2, and R3 can be a phenyl group ([0027]). Therefore, absent any showing of unexpected results or criticality, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have configured each of the R1, R2, R3, and R4 compounds to be a phenyl group based on the encompassing disclosure of Kishi.
Regarding claim 4, Kishi discloses all of the limitations as set forth above for claim 1. As set forth above, Kishi discloses that R1, R2, R3, and R4 (corresponding to the claimed R1 to R4 compounds) may each be identical to each other ([0021]), wherein at least one of R1, R2, and R3 can be a phenyl group ([0027]). Therefore, based on routine experimentation of these teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have configured each of the R1, R2, R3, and R4 compounds to be a phenyl group, which would lead to the claimed Chemical Formula 1-1.
Regarding claim 5, Kishi discloses all of the limitations as set forth above for claim 1. As set forth above, Kishi discloses that R1, R2, R3, and R4 (corresponding to the claimed R1 to R4 compounds) may each be identical to each other ([0021]), wherein at least one of R1, R2, and R3 can be a phenyl group ([0027]). Therefore, based on routine experimentation of these teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have configured each of the R1, R2, R3, and R4 compounds to be a phenyl group, as required by each of the claimed Chemical Formulas 1-1-1 to 1-1-3. Furthermore, Kishi discloses that M (which corresponds to the claimed compound L1) can be a C1 to C8 alkyl group ([0021]), which encompasses the claimed scope of a C1, C2, and C3 alkylene group in each of the Chemical Formulas 1-1-1 to 1-1-3. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP §2144.05. Therefore, absent any showing of unexpected results or criticality for the claimed formulas, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have satisfied the claimed formulas based on routine experimentation of Kishi’s encompassing disclosure.
Regarding claim 6, an electrolyte comprising: a non-aqueous organic solvent ([0030]; [0038]); a lithium salt ([0030]; [0039]); and the electrolyte additive (phosphate compound) of claim 1 ([0019]-[0021]; [0030]). Examiner notes that the limitation “wherein the electrolyte is for a rechargeable lithium battery” is merely an intended use limitation that does not require additional structure to the claimed electrolyte. Nevertheless, Kishi discloses that the electrolyte can be used in a rechargeable lithium battery (title; abstract; [0019]; [0062]-[0063]; see also Figs. 1-4).
Regarding claim 7, Kishi discloses all of the limitations as set forth above for claim 1. Kishi further discloses that the additive (phosphate compound) has a content of 0.1 wt% to 2 wt% based on 100 wt% of the electrolyte ([0033]), which falls within the claimed range of 0.05 wt% to 3 wt %.
Regarding claim 8, Kishi discloses a rechargeable lithium battery (title; abstract; [0062]-[0063]), comprising: a positive electrode (1) comprising a positive electrode active material (see Figs. 1-2; [0063]); a negative electrode (2) comprising a negative electrode active material (see Figs. 1-2; [0063]); and the electrolyte additive and electrolyte according to claims 1 and 6 ([0019]-[0021]; [0030]-[0039]; [0062]-[0063]).
Regarding claim 9, Kishi discloses all of the limitations as set forth above for claim 8. Kishi further discloses that the positive electrode active material comprises a lithium nickel-based composite oxide ([0045]-[0046]).
Regarding claim 10, Kishi discloses all of the limitations as set forth above for claim 9. Kishi further discloses that the lithium nickel-based composite oxide can be represented by the formula: LixNiO2 (0<x≤1) ([0046]), which overlaps in scope with the claimed Chemical Formula 11. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Therefore, absent any showing of unexpected results or criticality, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have chosen a lithium nickel-based composite oxide that falls within the claimed formula based on Kishi’s overlapping disclosure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ichinose et al. (US 2024/0079595) discloses a positive electrode mixture containing an organophosphorus compound with the formula (3-2):
PNG
media_image2.png
96
114
media_image2.png
Greyscale
, wherein a represents 1 or 2; R31 represents a hydrogen atom, a liner, branched, or cyclic, substituted or unsubstituted hydrocarbon group, a substituted or unsubstituted metallocenyl group, or a substituted or unsubstituted heterocyclic group; R32 and R33 independently represent an alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted heterocyclic group, or an aryl group; and in the case where a is 2, there are two each of R32 and R33, which may be the same or different ([0005]-[0012]; [0079]-0081]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDON C DARBY whose telephone number is (571)272-1225. The examiner can normally be reached Monday - Friday: 7:30am - 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, Katelyn Smith can be reached at (571) 270-5545. 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.
/B.C.D./Examiner, Art Unit 1749
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
Prosecution Insights