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 .
Information Disclosure Statements
The information disclosure statements (IDS) submitted on 21 May 2024 and 03 February 2025 are in compliance with 37 CFR 1.97, 1.98, and have/has been considered.
Examiner Note
It is noted that all references hereinafter to Applicant’s specification are to the published application US 20250038262 A1 unless otherwise stated. Additionally, any italicized, bolded, or underlined text utilized hereinafter is to be interpreted as emphasis placed thereupon.
Claim Interpretation
The term “driving voltage” as used in claim 11 is being interpreted as the upper charge limit voltage.
Claim Objections
Claim 1 is objected to because of the following informalities: There is a grammatical mistake within claim 1, wherein the limitation reads “the positive electrode active material comprises lithium nickel composite oxide represented by Chemical Formula 3”. In order to be grammatically correct, it should read “the positive electrode active material comprises a lithium nickel composite oxide as represented by Chemical Formula 3”.
The spacing between the less than symbols hinders the readability of the claim. In order to improve the readability, the claim should read:
“0.5 ≤ w ≤ 1.8, 0.05 ≤ x < 1, 0 < y ≤ 0.7”.
Claim 10 is objected to because of the following informalities:
The spacing between the less than symbols hinders the readability of the claim. In order to improve the readability, the claim should read:
“0.9 ≤ w ≤ 1.1, 0.6 ≤ x < 1, 0 < y ≤ 0.4”.
Appropriate correction is required.
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.
Claims 7 and 8 are 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.
Claims 7 and 8 recite the term “about”. In determining the range encompassed by the term "about" one must consider the context of the term as it is used in the specification and claims of the application. Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1326, 81 USPQ2d 1427, 1432 (Fed. Cir. 2007). See MPEP 2173.05(b) III A.
The term “about” is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, limitations preceded by the term “about” are interpreted as including any reasonable deviation/error associated with the measurement as would be determined by one of ordinary skill in the art.
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.
Claims 1, 4-6, and 8-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, and 10 of copending Application No. 17/892,944 (reference application, claim set as of 27 August 2026) in view of Zhong et al. (US 20210020990 A1, “Zhong”). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although the claims at issue are not identical, they are not patentably distinct from each other because: Regarding claim 1, claim 1 of the copending application ‘944 discloses a rechargeable lithium battery comprising all the elements present in the instant application including a positive electrode comprising a positive active material layer, a negative electrode comprising a negative active material layer, and an electrolyte solution comprising a non-aqueous organic solvent, a lithium salt, and an additive.
Claim 1 of copending application ‘944 further discloses the additive as comprising the generic a 5- or 6- membered dioxaphospholane ring derivative (i.e. the generic structure represented by Chemical Formula 1 in the copending application; chemical formula 2 in the instant application; see the generic structure below) wherein in Chemical Formula 1, X1 is a fluoro group (-F), a chloro group (-CI), a bromo group (-Br), or an iodo group (-I), R1 to R6 are each independently hydrogen, a cyano group, a substituted or unsubstituted C1 to C20 alkyl group, a substituted or unsubstituted C1 to C20 alkoxy group, a substituted or unsubstituted C2 to C20 alkenyl group, a substituted or unsubstituted C2 to C20 alkynyl group, a substituted or unsubstituted C3 to C20 cycloalkyl group, a substituted or unsubstituted C6 to C20 aryl group, or a substituted or unsubstituted C2 to C20 heteroaryl group, and n is 0 or 1.
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The composite as described in chemical formula 3 of copending application ‘044 overlaps in scope with the composite as claimed in the instant application. For example, wherein y1=0 and M3 is Mn, the composite shares a chemical formula that overlaps in scope with the instant application as all the elements listed under M4 are present in the M1 group of the instant application.
However, the copending application does not claim the additive as comprising an isocyanuric acid derivative.
Zhong discloses an additive for a secondary battery comprising an isocyanuric acid derivative (i.e. the generic structure represented by Chemical Formula 1; see Formula 3 and [0037]-[0040]) wherein R1 is –CnH2n-CH=CH2 and R2/R3 are each independently H or –CnH2n-CH=CH2 wherein n is an integer between 1 and 20 (i.e. Chemical Formula 1, R1 to R3 are each independently a substituted or unsubstituted C2 to C20 alkenyl group; see [0038]) which includes triallyl isocyanurate and tributenyl isocyanurate (as depicted in Group 1; see [0039] and Formula 4).
Copending application ‘944 and Zhong each constitute prior art which is directly analogous to the claimed invention: secondary/rechargeable batteries. Therefore, in view of the combined teachings of the prior art, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to use the isocyanuric acid derivatives as taught by Zhong in the electrolyte of the copending application so as to prevent deterioration of the battery capacity and in the charge/discharge cycle characteristics ([0020] and [0021]).
Regarding Claim 4, claim 2 of the copending application ‘944 describes the 5- or 6-membered dioxaphospholane ring derivative as depicted in chemical formulas 2A and 2B of the instant application and the X1 and R group limitations are equivalent in scope.
Regarding claim 5, claim 3 of the copending application ‘944 uses the same language to claim each element of presently examined claim 5, differing only with respect to the Chemical Formula and R-group numbering conventions established within each application yet yielding the same potential chemical structures. Regarding claim 6, claim 4 of the copending application ‘944 describes the same 5-membered dioxaphospolane ring compounds as claimed in the instant application, only differing with respect to the chemical formula numbering convention. Regarding claim 8, claim 1 of the copending application ‘944 claims a range of the cyclic dioxaphospolane additive concentration in parts by weight of the electrolyte solution which overlaps with range of presently examined claim 8. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.
Regarding claim 9, claim 6 of the copending application ‘944 encapsulates each additional additive, or combinations of those additives, to claim each element of presently examined claim 9.
Regarding claim 10, claim 10 of the copending application ‘944 describes further limitations to the lithium composite material, namely chemical formula 2-1, that overlaps in scope with the instant application. In the case where y1=0, M3 is Mn, and M4 is any element other than calcium, the composite overlaps in scope with the presently examined claim 10. The claimed stoichiometric ranges also overlap in scope with the instant case. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.
Similar to the above analysis, claims 1, 4-6, and 8-10 of the present application are disclosed by claims 1-9 of copending application number 17/893,044 (claim set as of 22 April 2026) in view of Zhong.
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) 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 20230093801 A1, “Park”) in view of Zhong et al. (US 20210020990 A1, “Zhong”).
Regarding Claims 1-8 and 10, Park teaches a rechargeable lithium battery, ([0009]) which comprises a positive electrode including a positive electrode active material layer ([0011]), a negative electrode including a negative electrode active material layer ([0011]), and an electrolyte solution including a non-aqueous organic solvent, a lithium salt, and an additive ([0011], see [0090] for a complete list of lithium salts).
The positive electrode active material discussed above further consists of a lithium composite oxide with various metals including nickel (i.e. the positive electrode active material comprises lithium nickel composite oxide, see [0099]-[0103] for a complete list of composite oxides of a nickel-containing metal and lithium). Regarding the active material composition, Park discloses the composite formula: LiaNi1-b-cMnbXcDα wherein X is selected from Al, Ni, Co, Mn, Cr, Fe, Mg, Sr, V, a rare earth element, and a combination thereof, and D is selected from O, F, S, P, and a combination thereof, and the following values are true: 0.90≤ a≤ 1.8, 0≤ b ≤ 0.5, 0≤ c≤ 0.05, and 0< α≤ 2 (i.e. Chemical Formula 3, LiwNixMnyM11-x-yO2, where in M1 is Al, Fe, B, Ce, Cr, F, Mg, Mn, Mo, Nb, P, S, Si, Sr, Ti, V, W, Zr, or a combination thereof, and the following values are 0.5≤ w ≤1.8, 0.05≤ x< 1, 0<y ≤ 0.7 – overlapping elements are bolded for emphasis, for ease of comparison in the composite values; a = w, 1-b-c = x, b = y, and c = 1-x-y, see [0101] and [0102]). Furthermore, the disclosed composite formula of Park as outlined above, further overlaps with the narrower claimed range (e.g. wherein in Chemical Formula 3, LiwNixMnyM11-x-yO2, 0.9≤w≤1.1, 0.6≤x<1, and 0<y≤0.4; see [0101] and [0102]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.
The additive as taught by Park includes a 5- or 6- membered dioxaphospholane ring derivative (i.e. the generic structure represented by Chemical Formula 2, n is an integer of 0 or 1; see Chemical Formulas 1A and 1B, [0055]-[0063]) wherein X1 is a fluoro group, a chloro group, a bromo group, or an iodo group ([0057]) and R1 to R6 are each independently hydrogen, a cyano group, a substituted or unsubstituted C1 to C20 alkyl group, a substituted or unsubstituted C1 to C20 alkoxy group, a substituted or unsubstituted C2 to C20 alkenyl group, a substituted or unsubstituted C2 to C20 alkynyl group, a substituted or unsubstituted C3 to C20 cycloalkyl group, a substituted or unsubstituted C6 to C20 aryl group, or a substituted or unsubstituted C2 to C20 heteroaryl group (i.e. R4 to R9, the difference only exists due to the R-group numbering scheme, see [0058]).
Furthermore, the 5- or 6-membered dioxaphospholane ring derivative (i.e. Chemical Formulas 2A and 2B, see [0062]) may further feature where X1 is a fluoro group, a chloro group, a bromo group, or an iodo group (see [0064]), R3 and R4 may each be hydrogen (i.e. R4 and R5 are the same, [0066]), at least one selected from among R1. R2. R5, and R6 are a substituted or unsubstituted C1 to C10 alkyl group, a substituted or unsubstituted C1 to C10 alkoxy group, a substituted or unsubstituted C2 to C10 alkenyl group, or a substituted or unsubstituted C2 to C10 alkynyl group (i.e. R6, R7, R8, and R9 in chemical formulas 2A and 2B, see [0066]). The 5-membered dioxaphospholane ring represented in Chemical Formula 1A (i.e. Chemical Formula 2A, [0068]) includes the derivative wherein R3 and R4 each are hydrogen (i.e. R6 and R7 are each hydrogen, [0068]), R5 and/or R6 are substituted or unsubstituted C1 to C10 alkyl group, a substituted or unsubstituted C1 to C10 alkoxy group, a substituted or unsubstituted C2 to C10 alkenyl group, or a substituted or unsubstituted C2 to C10 alkynyl group (i.e. at least one selected from R8 and R9 is a substituted or unsubstituted C1 to C10 alkyl group, a substituted or unsubstituted C1 to C10 alkoxy group, a substituted or unsubstituted C2 to C10 alkenyl group, or a substituted or unsubstituted C2 to C10 alkynyl group, see [0068]). Explicitly, the dioxaphospholane ring, can be 2-fluoro-1,3,2-dioxaphospholane and/or 2-fluoro-4-methyl-1,3,2-dioxaphospholane (i.e. the compounds represented by Chemical Formula 2 as listed in Group 2, [0072]). The dioxaphospholane derivative is included in an amount ranging from 0.75 wt% and 2.0 wt% based on the total weight of the electrolyte solution (i.e. the second compound is included in an amount of about 0.05 wt% to about 3 wt% based on a total weight of the electrolyte solution; see the rightmost column in the table in [0179]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.
Park is silent regarding the isocyanuric acid derivative, as shown in Chemical Formula 1, being included in the additive. Zhong discloses an additive for a secondary battery comprising an isocyanuric acid derivative (i.e. the generic structure represented by Chemical Formula 1; see Formula 3 and [0037]-[0040]) wherein R1 is –CnH2n-CH=CH2 and R2/R3 are each independently H or –CnH2n-CH=CH2 wherein n is an integer between 1 and 20 (i.e. Chemical Formula 1, R1 to R3 are each independently a substituted or unsubstituted C2 to C20 alkenyl group; see [0038]) which includes triallyl isocyanurate and tributenyl isocyanurate (as depicted in Group 1; see [0039] and Formula 4). The isocyanurate derivative is in a range of 0.1% to 1.5% by mass based on the total mass of the non-aqueous electrolyte (i.e. the first compound is included in an amount of about 0.05 wt% to about 3 wt% based on a total weight of the electrolyte solution, see [0040]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05. Park and Zhong each constitute prior art which is directly analogous to the claimed invention: secondary/rechargeable batteries. Therefore, in view of the combined teachings of the prior art, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to use the isocyanuric acid derivatives as taught by Zhong in the electrolyte of Park so as to prevent deterioration of the battery capacity and in the charge/discharge cycle characteristics ([0020] and [0021]).
Regarding Claim 9, Park discloses the additive as further comprising vinylene carbonate (VC), fluoroethylene carbonate (FEC), difluoroethylene carbonate, chloroethylene carbonate, dichloroethylene carbonate, bromoethylene carbonate, dibromoethylene carbonate, nitroethylene carbonate, cyanoethylene carbonate, vinylethylene carbonate (VEC), adiponitrile (AN), succinonitrile (SN), 1,3,6-hexane tricyanide (HTCN), propene sultone (PST), propane sultone (PS), lithium tetrafluoroborate (LiBF4), lithium difluorophosphate (LiPO2F2), and 2-fluoro biphenyl (2-FBP). See [0027] and [0075].
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Zhong as applied to claims 1-10 above, and further in view of Lee et al. (US 12046751 B2, “Lee”).
Regarding Claim 11, Park in view of Zhong teaches a rechargeable lithium battery as described above.
Park and Zhong are silent regarding the driving voltage of the rechargeable lithium battery as being 4.3 V or higher.
Lee discloses a lithium secondary battery featuring a non-aqueous electrolyte solution wherein the driving voltage of the battery is 4.35 V or greater (see [0019] and [0099]). Park, Zhong, and Lee each constitute prior art which is directly analogous to the claimed invention: secondary/rechargeable batteries. Therefore, in view of the combined teachings of the prior art, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to operate the secondary lithium battery of Park at the voltage as taught by Lee as it’s conventional in the art to operate at such a voltage and therefore in order to create a battery consistent with other applications one would seek to do so. Furthermore, the simple substitution of known elements or methods (i.e. operation of a battery at a voltage of 4.35V or higher) for one another that would have provided predictable results (e.g., a functioning battery) would have been obvious to a person of ordinarily skill in the art at the time of filing. Please see MPEP 2143.
Pertinent Prior Art
The following constitutes a list of prior art which are not relied upon herein, but are considered pertinent to the claimed invention and/or written description thereof. The prior art are purposely made of record hereinafter to facilitate compact/expedient prosecution, and consideration thereof is respectfully suggested. Chu et al. (CN 103199302 A) discloses the use of triallyl isocyanurate in the use of non-aqueous electrolytes in a lithium ion secondary battery. Xiao et al. (US 20200274148 A1) discloses the use of triallyl isocyanurate in the use of non-aqueous electrolytes in a lithium ion secondary battery and reaches an operating voltage of 4.4 V. Xiao et al. (US 20220209297 A1) discloses the use of triallyl isocyanurate in the use of non-aqueous electrolytes in a lithium ion secondary battery and reaches an operating voltage of 4.4 V.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P MALONEY whose telephone number is (571)270-1730. The examiner can normally be reached M-Th: 7:30a-5p, F: 7:30a-4p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at (571) 272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL PATRICK MALONEY/Examiner, Art Unit 1782
/AARON AUSTIN/Supervisory Patent Examiner, Art Unit 1782
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