UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`15/781,578
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`06/05/2018
`
`Takashi K0
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`P180499US00
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`7814
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`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
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`TYSONS, VA 22182
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`DOUYETTE~ KENNETH]
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`1725
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`06/ 1 0/2020
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`patentmail@ whda.eom
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`PTOL-90A (Rev. 04/07)
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`

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`017/09 A0170” Summary
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`Application No.
`15/781,578
`Examiner
`KENNETH J DOUYETTE
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`Applicant(s)
`K0 et al.
`Art Unit
`1725
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`AIA (FITF) Status
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1)C] Responsive to communication(s) filed on
`C] A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)Cj This action is FINAL.
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`2b)
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`This action is non-final.
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`3)C] An election was made by the applicant in response to a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
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`4):] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s)
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`flis/are pending in the application.
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`5a) Of the above Claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(ss)_is/are allowed.
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`Claim(s)6_—12 is/are rejected.
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`E] Claim(ss_) is/are objected to.
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`) ) ) )
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`S)
`are subject to restriction and/or election requirement
`E] Claim(s
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`httpfiwww.”smogovmatentsflnit_events[pph[index.'§p or send an inquiry to PPeredhack@gsptg.ggv.
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`Application Papers
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`10):] The specification is objected to by the Examiner.
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`is/are: a)D accepted or b)lj objected to by the Examiner.
`11):] The drawing(s) filed on
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)C] Some**
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`c)l:] None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No.
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`3.. Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mai| Date 6/5/2018
`U.S. Patent and Trademark Office
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`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20200603
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`

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`Application/Control Number: 15/781 ,578
`Art Unit: 1725
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`Page 2
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 103
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`1.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`A patent for a claimed invention maynotbe obtained, notwithstanding that the claimed
`invention is not identicallydisclosed as set forth in section 102, if the differences between the
`claimed invention and the priorartare such that the claimed invention as awhole would have
`been obvious before the effective filing date of the claimed invention to a person having
`ordinaryskill in the art to which the claimed invention pertains. Patentabilitys hall notbe
`negated by the manner in which the invention was made.
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`2.
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`The factual inquiries set forth in Graham v. John Deere 00., 383 US. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under 35 U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`3.
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`This application currently names joint inventors.
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`In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was
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`commonly owned as of the effective filing date of the claimed invention(s) absent any
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`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`point out the inventor and effective filing dates of each claim that was not commonly
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`owned as of the effective filing date of the later invention in order for the examiner to
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`

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`Application/Control Number: 15/781 ,578
`Art Unit: 1725
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`Page 3
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
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`prior art against the later invention.
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`4.
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`Claims 6, 7, 9, 11 and 12 are rejected under 35 U.S.C. 103 as being
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`unpatentable over Koyama et al. (JP 2013069580, see Machine Translation) in view of
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`Lemmon et al. (US 2010/0279165).
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`Regarding claims 6, 7 and 11, Koyama et al. discloses in Figs 1-3, a nonaqueous
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`electrolyte secondary battery (ref 100) comprising a positive electrode (ref 30) and a
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`negative electrode (ref 40), wherein the positive electrode (ref 30) contains a lithium
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`transition metal oxide including tungsten ([0024], [0036], [0053]), at least one element of
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`group 5 and group 6 element in the periodic table ([0024], [0036], [0053]).
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`Koyama et al. does not explicitly disclose a metal hydrogen phosphate, the metal
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`comprising manganese.
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`Lemmon et al. discloses in Figs 1-3, a secondary lithium battery (ref 10, Abstract,
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`[0037], [0039]) including a cathode composition comprising a transition metal oxide
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`including manganese ([0013]) and metal hydrogen phosphate material ([0023]). This
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`configuration reduces ionic resistance, resulting in enhanced battery performance
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`([0047], [0048], [0051], [0052]).
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`Lemmon et al. and Koyama et al. are analogous since both deal in the same field of
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`endeavor, namely batteries.
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`It would have been obvious to one of ordinary skill in the art at the time of filing to
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`incorporate the mn and metal hydrogen phosphate material disclosed by Lemmon et al.
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`into the cathode composition of Koyama et al. to reduce ionic resistance within the
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`battery, thereby enhancing overall battery performance.
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`

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`Application/Control Number: 15/781 ,578
`Art Unit: 1725
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`Page 4
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`Regarding claim 9, modified Koyama et al. discloses all of the claim limitations as
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`set forth above and also discloses the positive electrode (ref 30) contains an element of
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`a group 6 element ([0024], [0036], [0053]) in the periodic table
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`Regarding claim 12, modified Koyama et al. discloses all of the claim limitations as
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`set forth above and also discloses the negative electrode (ref 40) contains a graphitic
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`carbon material and a non-crystalline carbon material fixed to a surface of the graphitic
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`carbon material ([0046], combination of different carbon materials disclosed).
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`5.
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`Claims 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Koyama et al. (JP 2013069580, see Machine Translation) in view of Lemmon et al. (US
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`2010/0279165) as applied to claim 6 above, and further in view of Yoshimura et al. (US
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`2002/0051910).
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`Regarding claims 8 and 10, modified Koyama et al. discloses all of the claim
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`limitations as set forth above and also discloses the cathode includes mn and metal
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`hydrogen phosphate (see above rejection) but does not explicitly disclose it includes a
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`niobium containing oxide
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`Yoshimura et al. discloses in Fig 1, a lithium secondary battery (Abstract) including a
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`positive active material comprising an oxide including niobium ([0018]). This
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`configuration enhances cycle characteristics, thereby enhancing overall battery
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`performance ([0018]).
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`

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`Application/Control Number: 15/781 ,578
`Art Unit: 1725
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`Page 5
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`Yoshimura et al. and Koyama et al. are analogous since both deal in the same field
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`of endeavor, namely batteries.
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`It would have been obvious to one of ordinary skill in the art at the time of filing to
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`incorporate the oxide including niobium disclosed by Yoshimura et al. into the positive
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`active material of Koyama et al. to enhance cycle characteristics, thereby enhancing
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`overall battery performance.
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`Double Parenting
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`6.
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`The nonstatutory double patenting rejection is based on ajudicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the conflicting claims are not identical, but at
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`least one examined application claim is not patentably distinct from the reference
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`claim(s) because the examined application claim is either anticipated by, or would have
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`been obvious over, the reference claim(s). See, e.g.,
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`In re Berg, 140 F.3d 1428, 46
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`USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
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`Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985);
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`In re Van Ornum,
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`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
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`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321 (d)
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`may be used to overcome an actual or provisional rejection based on nonstatutory
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`double patenting provided the reference application or patent either is shown to be
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`

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`Application/Control Number: 15/781 ,578
`Art Unit: 1725
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`Page 6
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`commonly owned with the examined application, or claims an invention made as a
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`result of activities undertaken within the scope of ajoint research agreement. See
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`MPEP § 717.02 for applications subject to examination under the first inventor to file
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`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) -
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`706.02(l)(3) for applications not subject to examination under the first inventor to file
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`provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
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`1.321(b).
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`The USPTO Internet website contains terminal disclaimer forms which may be
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`used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application
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`in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
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`PTO/AlA/25, or PTO/AlA/26) should be used. A web-based eTerminal Disclaimer may
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`be filled out completely online using web-screens. An eTerminal Disclaimer that meets
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`all requirements is auto-processed and approved immediately upon submission. For
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`more information about eTerminal Disclaimers, refer to
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`www. us pto.gov/patents/process/file/efs/gui dance/eTD -i nfo- l.jsp.
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`7.
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`Claims 6-12 are provisionally rejected on the ground of nonstatutory double
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`patenting as being unpatentable over claims 8-13 of copending Application No.
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`15/781,759 (reference application). Although the claims at issue are not identical, they
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`are not patentably distinct from each other because the claims of the copending
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`application anticipate the instant claims. In re Goodman, 11 F.3d 1046, 29 USPQ2d
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`2010 (Fed. Cir. 1993).
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
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`

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`Application/Control Number: 15/781 ,578
`Art Unit: 1725
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`Page 7
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`Conclusion
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`8.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to KENNETH J DOUYETTE whose telephone number is
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`(571)270-1212. The examiner can normally be reached on Monday - Friday 8A - 4P
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`EST.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Basia Ridley can be reached on 571-272—1453. The fax phone number for
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`the organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see https://ppair-
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`my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private
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`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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`If you would like assistance from a USPTO Customer Service Representative or access
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`to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-
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`272-1000.
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`/KENNETH J DOUYETTE/
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`Primary Examiner, Art Unit 1725
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`