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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
`
`16/343,922
`
`04/22/2019
`
`Yuanlong Zhong
`
`P190412US00
`
`5776
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`YANCHUK,STEPHENJ
`
`ART UNIT
`1723
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/22/2021
`
`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):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-6 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-6 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://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
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`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J 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)[M) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a) All
`1.2 Certified copies of the priority documents have been received.
`2.1.) 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) (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 20210419
`
`Application No.
`Applicant(s)
`16/343 922
`Zhong, Yuanlong
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`STEPHEN J YANCHUK
`1723
`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 01/04/2021.
`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.
`
`

`

`Application/Control Number: 16/343,922
`Art Unit: 1723
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application,filed on or after March 16, 2013, is being examined under the first
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`inventorto file provisions of the AIA.
`
`Response to Arguments
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`Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because
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`the new ground of rejection does not rely on any reference applied in the prior rejection of record for
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`any teaching or matter specifically challenged in the argument.
`
`Previous claims presented pertain to a markush group of maleimide (claim 5). The applicant has
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`deleted the previously presented phenylmaleimide to overcome the previous rejection, but does not
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`presentcriticality or unexpected results for the selection of materials separate from phenylmaleimide. A
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`rejection is presented below showing that it is obvious to replace the various maleimide markush groups
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`in the same utility. For brevity, a rejection is presented below to the art and additional prior art is
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`presented in the conclusion paragraph that also support the obviousness of selecting the materials for
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`the purpose claimed.
`
`Claim Rejections - 35 USC § 103
`
`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 fora claimed invention may not be obtained, notwithstanding that the claimed inventionis
`notidentically disclosed as set forth ins ection 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 ofthe claimed invention to a person having ordinaryskillin the art to which the
`claimed invention pertains. Patentability s hall 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:
`
`

`

`Application/Control Number: 16/343,922
`Art Unit: 1723
`
`Page 3
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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 obviousness or
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`nonobviousness.
`
`Claims 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burkhardtet al
`
`(PGPUB 2019/0058221) and further in view of Wang et al (PGPUB 2017/0210855) and Ohta et al (PGPUB
`
`2018/0226634)
`
`Claim 1, 5: Burkardt teaches a non-aqueous electrolyte composition for use in electrochemical
`
`cells such as lithium ion batteries [Abstract]. The electrochemical cell comprises an anode, cathode, and
`
`separator having a non-aqueouselectrolyte (0028-0032, 0238]. The electrolyte solvent is taught to
`
`comprise at least acyclic carbonate exemplified to be a fluorinated carbonate [0094]. The electrolyte is
`
`taught to comprise an additive as a gas-reduction additive exemplified to be diglycolic acid anhydride
`
`[0138].
`
`Burkardtis silent to teacha maleimide compound used in the electrolyte layer of a battery.
`
`Wang teachesan oligomer additive for non-aqueous electrolyte batteries [Abstract]. According
`
`to one embodiment of Wang, the electrolyte solution comprises an organic solvent,lithium salt, and
`
`additive [0014] wherein the additive includes a mono-maleimide, polymaleimide or other such
`
`compounds [0015]. Wang teaches the maleimide compound exemplified to be N-phenylmaleimide
`
`[0011, 0030, 0048]. It would have been obvious to one having ordinaryskill in the art at the time of
`
`invention/filing to modify the electrolyte of Burkardt to include a maleimide compound as taught by
`
`Wangin order to improve thermal stability and thermal reactivity as well as improve the reaction rate,
`
`conversion, and structure [0016].
`
`

`

`Application/Control Number: 16/343,922
`Art Unit: 1723
`
`Page 4
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`The prior art establishes it is obvious to utilize N-phenylmaleimide, butis silent to teach N-
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`ehylmaleimide for use in the electrolyte.
`
`Ohta teachesa slurry composition for an electrolyte batterythat includes a maleic acid in the
`
`copolymer [Abstract]. The preferred example establishes that N-ethylmaleimide and N-phenylmaleimide
`
`are art recognized equalivalents usable for the same purpose in an electrolyte [0024] wherebyit is
`
`interpreted that one having ordinary skill
`
`in the art at the time offiling would have found it obvious to
`
`replace OR add N-ethylmaleimide to the N-phenylmaleimide of the obviated electrolyte. It would have
`
`been obvious to one having ordinaryskill inthe art at the time of invention/filing to modify the
`
`electrolyte of Burkardt to include N-ethylmaleimide as taught by Ohta in order to produce a electrically
`
`and thermally stable electrolyte that is capable of achieving a high discharge capacity retention ratio
`
`without decreasing the positive electrode active material capacity [0012].
`
`Claim 2: Burkardt teaches the electrolyte to comprise a fluorinated solvent or mixture thereof to
`
`be 5-95% the weightof the electrolyte composition [0092]. Discovery of optimized concentrationsis
`
`non-obvious and routine and experimental based upon the disclosure of the prior art for the
`
`motivations presented by the prior art. MPEP 2144.04. It is obvious to adjust the composition of the
`
`electrolyte solvent depending on desired properties of the electrolyte composition [0100-0101].
`
`Claim 3: Burkardtis silent to teacha maleimide compound.
`
`Wang teachesthe additive to be added in an amountof 0.5-10wt% [0045]. The amountof the
`
`additive added to the system is obvious to optimize in order to adjust the reaction rate of the system
`
`[Fig 2-4]. Discovery of optimized concentrations is non-obvious and routine and experimental based
`
`upon the disclosure of the prior art for the motivations presented by the prior art. MPEP 2144.04. It
`
`would have been obvious to one having ordinaryskill in the art at the time of invention/filing to modify
`
`the electrolyte of Burkardt to include a maleimide compound as taught by Wang in order to improve
`
`

`

`Application/Control Number: 16/343,922
`Art Unit: 1723
`
`Page5S
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`thermal stability and thermal reactivity as well as improve the reaction rate, conversion, and structure
`
`[0016].
`
`Claim 4: Burkardt teaches the gas reduction additive to be 0.05-10wt% or more preferentially
`
`0.5-2wt% [0137]. Discovery of optimized concentrations is non-obvious and routine and experimental
`
`based upon thedisclosure of the prior art for the motivations presented by the prior art. MPEP 2144.04.
`
`Itis obvious to optimize the amountof this material relative the electrolyte in order to have enough
`
`material to impart a gas-reductive effect produced during charging and discharging [0137] but not too
`
`much material whereby the electrolyte overall main function as an ionic separator is impaired.
`
`Claim 6: Burkardt teaches the electrolyte to comprise an additive as a gas-reduction additive
`
`exemplified to be diglycolic acid anhydride [0138].
`
`Claims 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burkhardtet al
`
`(PGPUB 2019/0058221) and further in view of Sawaet al (PGPUB 2013/0316229)
`
`Claim 1: Burkardt teaches a non-aqueous electrolyte composition for use in electrochemical
`
`cells such as lithium ion batteries [Abstract]. The electrochemical cell comprises an anode, cathode, and
`
`separator having a non-aqueouselectrolyte (0028-0032, 0238]. The electrolyte solvent is taught to
`
`comprise at least acyclic carbonate exemplified to be a fluorinated carbonate [0094]. The electrolyte is
`
`taught to comprise an additive as a gas-reduction additive exemplified to be diglycolic acid anhydride
`
`[0138].
`
`Burkardtis silent to teacha maleimide compound used in the electrolyte layer of a battery.
`
`Sawa teaches a lithium non-aqueous electrolyte that has improved durability through the
`
`electrolyte comprising at least one compound selected of a carbonate, cyclic carbonate, and isocynate
`
`groups [Abstract]. The preferred examples of compounds included include N-ethylmaleimide [0075-
`
`0076]. It would have been obvious to one having ordinary skill
`
`in the art at the time of invention/filing to
`
`

`

`Application/Control Number: 16/343,922
`Art Unit: 1723
`
`Page 6
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`modify the electrolyte of Burkardt to include N-ethylmaleimide and other maleimides of preferred
`
`example [0075-0076] as taught by Sawa in order to improve the manufacturing of the electrolyte in an
`
`effort to create a more favorable development of the function of the electrode surface [0077-0078].
`
`Claim 2: Burkardt teaches the electrolyte to comprise a fluorinated solvent or mixture thereof to
`
`be 5-95% the weightof the electrolyte composition [0092]. Discovery of optimized concentrationsis
`
`non-obvious and routine and experimental based upon the disclosure of the prior art for the
`
`motivations presented by the prior art. MPEP 2144.04. It is obvious to adjust the composition of the
`
`electrolyte solvent depending on desired properties of the electrolyte composition [0100-0101].
`
`Claim 3: Burkardtis silent to teacha maleimide compound.
`
`Sawa teaches a lithium non-aqueous electrolyte that has improved durability through the
`
`electrolyte comprising at least one compound selected of a carbonate, cyclic carbonate, and isocynate
`
`groups [Abstract]. The preferred examples of compounds included include N-ethylmaleimide [0075-
`
`0076]. The amountis taught to be 0.001mass%-10mass% [0078]. The discovery of workable ranges is
`
`obvious to optimize for the reasons set forth by Sawa. It would have been obvious to one having
`
`ordinary skill
`
`in the art at the time of invention/filing to modify the electrolyte of Burkardt to include N-
`
`ethylmaleimide and other maleimides of preferred example [0075-0076] as taught by Sawa in order to
`
`improve the manufacturing of the electrolyte in an effort tocreatea more favorable developmentof the
`
`function of the electrode surface [0077-0078].
`
`Claim 4: Burkardt teaches the gas reduction additive to be 0.05-10wt% or more preferentially
`
`0.5-2wt% [0137]. Discovery of optimized concentrations is non-obvious and routine and experimental
`
`based upon thedisclosure of the prior art for the motivations presented by the prior art. MPEP 2144.04.
`
`Itis obvious to optimize the amountof this material relative the electrolyte in order to have enough
`
`material to impart a gas-reductive effect produced during charging and discharging [0137] but not too
`
`much material whereby the electrolyte overall main function as an ionic separator is impaired.
`
`

`

`Application/Control Number: 16/343,922
`Art Unit: 1723
`
`Page 7
`
`Claim 5: Burkardtis silent to teachthe maleimide compound.
`
`Sawa teaches a lithium non-aqueous electrolyte that has improved durability through the
`
`electrolyte comprising at least one compound selected of a carbonate, cyclic carbonate, and isocynate
`
`groups [Abstract]. The preferred examples of compounds included include N-ethylmaleimide [0075-
`
`0076]. It would have been obvious to one having ordinary skill
`
`in the art at the time of invention/filing to
`
`modify the electrolyte of Burkardt to include N-ethylmaleimide and other maleimides of preferred
`
`example [0075-0076] as taught by Sawa in order to improve the manufacturing of the electrolyte in an
`
`effort to create a more favorable development of the function of the electrode surface [0077-0078].
`
`Claim 6: Burkardt teaches the electrolyte to comprise an additive as a gas-reduction additive
`
`exemplified to be diglycolic acid anhydride [0138].
`
`The prior art made of recordand notrelied upon is considered pertinent to applicant's
`
`Conclusion
`
`disclosure.
`
`Uematsu et al (PGPUB 2016/0248121) Imide selection is established to be art recognizing
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`between N-ethylmaleimde, maleimide, N-methylmalemide, N-ethylmaleimide, N-phenylmaleimide
`
`[0122].
`
`Applicant's amendmentnecessitated the new ground(s) of rejection presented in this Office
`
`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
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`extension of time policy as set forth in 37 CFR 1.136(a).
`
`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 event a first reply is filed within TWO MONTHS of the mailing date
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`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the advisory
`
`

`

`Application/Control Number: 16/343,922
`Art Unit: 1723
`
`Page 8
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`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
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`SIX MONTHS from the date ofthis final action.
`
`Anyinquiry concerning this communication or earlier communications from the examiner
`
`should be directed to STEPHENJ YANCHUK whosetelephone number is (571)270-7343. The examiner
`
`can normally be reached on M-Th 10a-8p.
`
`Examiner interviews are available via telephone, in-person, and video conferencing using a
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`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reachthe examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Milton Cano canbe reached on 313-446-4937. The fax phone number for the organization wherethis
`
`application or proceedingis assigned is 571-273-8300.
`
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`
`/STEPHEN J YANCHUK/
`Primary Examiner, Art Unit 1723
`
`