www.uspto.gov
`
`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
`
`DELIVERY MODE
`
`12/20/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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)
`
`

`

`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 DATEof this 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 09/07/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J 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.
`
`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.
`Cj] Claim(s)
`is/are allowed.
`Claim(s) 1 and 3-12 is/are rejected.
`1) Claim(s)__is/are objectedto.
`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://Awww.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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20221205
`
`

`

`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page 2
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 103
`
`2.
`
`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 for the rejection will not be
`
`considered a new ground ofrejection if the prior art relied upon, and the rationale
`
`supporting the rejection, would be the same under either status.
`
`3.
`
`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.
`
`4.
`
`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
`
`battery comprising a cathode (positive electrode), and anode (negative electrode),
`
`and an electrolyte layer between the two (PP 0055). The cathode comprises a
`
`conductive polyaniline which is doped with anions (PP 0094-0094). The polyaniline
`
`is dedoped which reduces the polyaniline (PP 0038). The doping and dedoping the
`
`

`

`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page 3
`
`polyaniline is charging and discharging the battery (PP 0039). Polyaniline having a
`
`dopant is a known cathode active material (PP 0006). The nonaqueous electrolyte
`
`secondary battery is a lithium ion battery in which lithium ions are inserted and
`
`extracted from the bases (PP 0111), including the anode. The anions and cations
`
`pass through the electrolytic solution (PP 0095) and therefore the electrolytic
`
`solution would contain the anions and lithium ions. Abe fails to teach the molar
`
`ratio of the total anions in the battery to the monomer units of the polyaniline.
`
`It
`
`would have been obvious to one of ordinary skill in the art to use a workable
`
`amount of anions and polyaniline to facilitate the charging and discharging of the
`
`lithium ion battery, which would 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 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 has been demonstrated in the specification
`
`with regard to the amounts recited in the claims.
`
`With respect to claims 3 and 7, the anion may betetrafluoroborate anions
`
`(PP 0095).
`
`With respect to claims 4 and 8, the electrolyte comprises a solvent such as
`
`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
`
`anions in a concentration of 1 mol/dm? (equivalent to mol/L) (PP 0209). Abefails
`
`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
`
`

`

`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page 4
`
`anions are on the electrode) and higher in a discharged state (when the anions are
`
`“free”). Therefore one of ordinary skill in the art would expect the concentration to
`
`be substantially similar to those of the claimed ranges.
`
`With respect to claim 11, Abe fails to teach the molar ratio of anions that are
`
`doped into the polyaniline in the charged state to the amount of monomers that
`
`constitute the polyaniline in the positive electrode. It would have been obvious to
`
`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
`
`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
`
`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
`
`has been demonstrated in the specification with regard to the amounts recited in
`
`the claims.
`
`5.
`
`Applicant's argumentsfiled 09/07/2022 have been fully considered but they
`
`Response to Arguments
`
`are not persuasive.
`
`The affidavit is not commensurate in scope with the claims. The affidavit
`
`showsthe capacitance retention of a positive electrode comprising a polyaniline
`
`doped with sulfate ions, a negative electrode having a carbon paste comprising
`
`carboxycellulose and styrene butadiene, and an electrolyte comprising a propylene
`
`carbonate, dimethyl carbonate, and LiPFe to produce hexafluorophosphateanions.
`
`(see instant Examples). The amount of anions are varied (as detailed in Table 1).
`
`

`

`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page 5
`
`This composition is not commensurate with the claimed electrochemical device,
`
`which requires a positive electrode having a polyaniline and an unrestricted anion, a
`
`negative electrode having any material which occludes and releases lithium ions,
`
`and an unrestricted electrolytic solution containing the anions and lithium ions.
`
`There is no showing that the capacitance retention of the affidavit would occur
`
`over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289,
`
`296 (CCPA 1980); see MPEP 716.02(d).
`
`The affidavit further does not establish that the differences in results are in
`
`fact unexpected and unobvious and of both statistical and practical significance. Ex
`
`parte Gelles, 22 USPQ2d 1318, 1319. The affidavit shows that when the ratio of
`
`B/A is less than 0.7, the initial capacitance retention rate is between 97.3%to
`
`99.7%. Abe teaches a battery which has a capacity retention of about 85-90%
`
`after 400 charge/discharge cycles (PP 0193).
`
`It is known that the capacity
`
`retention diminishes over a large number of charge/discharge cycles, and therefore
`
`one of ordinary skill in the art would expect the initial capacity retention of Abe to
`
`be higher than that at 400 cycles, and would be close to the initial capacity of the
`
`affidavit/instant specification. Applicant may rebut the prima facie case of
`
`obviousness by comparing the claimed subject matter with the closest prior art, In
`
`re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979); MEPE 716.02(e). However
`
`no comparison has yet been presented.
`
`Conclusion
`
`6.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of
`
`time policy as set forth in 37 CFR 1.136(a).
`
`

`

`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page 6
`
`A shortened statutory period for reply to this final action is set to expire
`
`THREE MONTHS from the mailing date of this action.
`
`In the eventa first reply is
`
`filed within TWO MONTHS of the mailing date of this final action and the advisory
`
`action is not mailed until after the end of the THREE-MONTH shortened statutory
`
`period, then the shortened statutory period will expire on the date the advisory
`
`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be
`
`calculated from the mailing date of the advisory action.
`
`In no event, however,will
`
`the statutory period for reply expire later than SIX MONTHS from the mailing date
`
`of this final action.
`
`7.
`
`Any inquiry concerning this communication or earlier communications from
`
`the examiner should be directed to RACHEL L ZHANG whose telephone 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
`
`examiner’s supervisor, Miriam Stagg can be reached on 5712705256. 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
`
`

`

`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page 7
`
`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 aboutfiling
`
`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.
`
`/R.L.Z/
`Examiner, Art Unit 1724
`
`/SARAH A. SLIFKA/
`Primary Examiner, Art Unit 1759
`
`