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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/341,945
`
`04/15/2019
`
`HIROKI HAYASHI
`
`083710-2615
`
`7432
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`ZHANG, RACHEL L
`
`1724
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`06/07/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1.and 3-12 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s)
`1 and 3-12 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11) The drawing(s) filed on 04/15/2019 is/are: a)[¥) accepted or b)( objected to by the Examiner.
`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).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.2 Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.4 Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 11/12/2021,
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220602
`
`Application No.
`Applicant(s)
`16/341,945
`HAYASHI et al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`RACHEL L ZHANG
`1724
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 03/03/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page 2
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
`
`Continued Examination Under 37 CFR 1.114
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`2.
`
`A request for continued examination under 37 CFR 1.114, including the fee
`
`set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since
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`this application is eligible for continued examination under 37 CFR 1.114, and the
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`fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous
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`Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission
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`filed on 03/03/2022 has been entered.
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`Information Disclosure Statement
`
`3.
`
`The information disclosure statement (IDS) submitted on 11/12/2021 was
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`filed after the mailing date of the application on 04/15/2019. The submission is in
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`compliance with the provisions of 37 CFR 1.97. Accordingly, the information
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`disclosure statement is being considered by the examiner.
`
`Claim Rejections - 35 USC § 103
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`4.
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`In the event the determination of the status of the application as subject to
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`AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is
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`incorrect, any correction of the statutory basis for the rejection will not be
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`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.
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`

`

`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page 3
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`5.
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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:
`
`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.
`
`6.
`
`Claim(s) 1 and 3-12 are rejected under 35 U.S.C. 103 as obvious over US
`
`PGPub 2014/0220438 (Abe).
`
`With respect to claim 1, Abe teaches a nonaqueous electrolyte secondary
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`battery comprising a cathode (positive electrode), and anode (negative electrode),
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`and an electrolyte layer between the two (PP 0055). The cathode comprises a
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`conductive polyaniline which is doped with anions (PP 0094-0094). The polyaniline
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`is dedoped which reduces the polyaniline (PP 0038). The doping and dedoping the
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`polyaniline is charging and discharging the battery (PP 0039). Polyaniline having a
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`dopant is a known cathode active material (PP 0006). The nonaqueous electrolyte
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`secondary battery is a lithium ion battery in which lithium ions are inserted and
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`extracted from the bases (PP 0111), including the anode. The anions and cations
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`pass through the electrolytic solution (PP 0095) and therefore the electrolytic
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`solution would contain the anions and lithium ions. Abe fails to teach the molar
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`ratio of the total anions in the battery to the monomer units of the polyaniline,
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`however it would have been obvious to one of ordinary skill in the art to use a
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`workable amount of anions and polyaniline to facilitate the charging and
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`discharging of the lithium ion battery, which would reasonably overlap with
`
`

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`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page 4
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`applicant’s claimed range. Where the general conditions of a claim are disclosed in
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`the prior art, it is not inventive to discover the optimum or workable ranges by
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`routine experimentation, In re Aller 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA
`
`1955), see MPEP 2144.05, II. It is noted that no criticality has been demonstrated
`
`in the specification with regard to the amountsrecited in the claims.
`
`With respect to claims 3 and 7, the anion may betetrafluoroborate anions
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`(PP 0095).
`
`With respect to claims 4 and 8, the electrolyte comprises a solvent such as
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`dimethylcarbonate and propylene carbonate, which may be used in combination (PP
`
`0108).
`
`With respect to claims 5, 6, 9, 10 and 12, Abe gives one example of the
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`anions in a concentration of 1 mol/dm? (equivalent to mol/L) (PP 0209). Abefails
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`to teach the concentration in the charged state, however one of ordinary skill would
`
`expect the concertation in the electrolyte to be lower in a charged state (when the
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`anions are on the electrode) and higher in a discharged state (when the anions are
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`“free”). Therefore one of ordinary skill in the art would expect the concentration to
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`be substantially similar to those of the claimed ranges.
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`With respect to claim 11, Abe fails to teach the molar ratio of anions that are
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`doped into the polyaniline in the charged state to the amount of monomers that
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`constitute the polyaniline in the positive electrode. It would have been obvious to
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`one of ordinary skill in the art to use a workable amount of anions and polyaniline
`
`which would optimize the charge/discharge of the lithium ion battery, which would
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`reasonably overlap with applicant’s claimed range. Where the general conditions of
`
`a claim are disclosed in the prior art, it is not inventive to discover the optimum or
`
`

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`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page 5
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`workable ranges by routine experimentation, In re Aller 220 F.2d 454, 456, 105
`
`USPQ 233, 235 (CCPA 1955), see MPEP 2144.05, II. It is noted that no criticality
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`has been demonstrated in the specification with regard to the amountsrecited in
`
`the claims.
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`Response to Arguments
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`7.
`
`Applicant’s arguments, see pages 5-11, filed 01/10/2022, with respect to the
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`rejection(s) of claim(s) 1, 3, 5-7, and 9-10 under Koshiba have been fully
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`considered and are persuasive. Therefore, the rejection has been withdrawn.
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`However, upon further consideration, a new ground(s) of rejection is made as
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`discussed above.
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`Conclusion
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`8.
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`Any inquiry concerning this communication or earlier communications from
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`the examiner should be directed to RACHEL L ZHANG whosetelephone number is
`
`(571)272-9802. The examiner can normally be reached M-Th 8-2, alt. F 7-3.
`
`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
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`examiner’s supervisor, Miriam Stagg can be reached on 5712705256. The fax
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`phone number for the organization where this application or proceeding is assigned
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`is 571-273-8300.
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`

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`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page 6
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`
`/RACHEL L ZHANG/
`Examiner, Art Unit 1724
`
`