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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
`
`16/496,556
`
`09/23/2019
`
`Hiroshi Minami
`
`P190921US00
`
`6106
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`PARSONS, THOMAS H
`
`ART UNIT
`1729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/08/2021
`
`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*
`1-10 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-10 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)C The specification is objected to by the Examiner.
`11)(¥ The drawing(s)filed on 23 September 2019 is/are: a)(¥| accepted or b)L) 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 04/29/2019;11/01/2019.
`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 20210602
`
`Application No.
`Applicant(s)
`16/496 556
`Minami etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`THOMAS H PARSONS
`1729
`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 23 September 2019.
`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: 16/496,556
`Art Unit: 1729
`
`Page 2
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`Notice of Pre-AIA or AIA Status
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`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`underthe first inventorto file provisions of the AIA.
`
`DETAILED ACTION
`
`Claim Rejections - 35 USC § 102
`
`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-ATIA 35 U.S.C. 102 and 103) is incorrect,
`
`any correction of the statutory basis for the rejection will not be considered a new
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`groundofrejection if the prior art relied upon, and the rationale supporting the
`
`rejection, would be the same undereitherstatus.
`
`3.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102
`
`that form the basis for the rejections underthis section madein this Office action:
`
`A personshall be entitled to a patent unless —
`
`(a)(1) the claimed invention waspatented, described in a printed
`
`publication, or in public use, on sale, or otherwise available to the public
`
`before the effective filing date of the claimed invention.
`
`4,
`
`Claims1, 3-7 and 9-10 are rejected under 35 U.S.C. 102(a)(1) as being
`
`anticipated by WO 2016190404 (hereafter WO ‘404)(using US 20180138551 as
`
`translation)(hereafter US *551).
`
`

`

`Application/Control Number: 16/496,556
`Art Unit: 1729
`
`Page 3
`
`Claim 1:
`
`WO ‘404 discloses a non-aqueouselectrolyte secondary battery
`
`(US ‘551, paragraph [0001]) comprising:
`
`a positive electrode having a positive electrode current collector and a positive
`
`electrode mixture layer formed on the collector (US ‘551, paragraphs [0329]-[0334]);
`
`a negative electrode having a negative electrode current collector (US ‘551,
`
`paragraphs [0319]-[0328]) (US ‘551, abstract); and
`
`a non-aqueouselectrolyte, wherein
`
`the non-aqueouselectrolyte containsa lithium salt (US ‘551, paragraphs
`
`[0253]-[0257]) containing an oxalate complex as an anion (US ‘551, paragraphs
`
`[0030] and [0288]). See also entire document.
`
`WO ‘404 does not disclose that a lithium metal is deposited on the negative
`
`electrode current collector during charging andthe lithium metal is dissolved into the
`
`non-aqueouselectrolyte during discharging.
`
`However, given that the non-aqueouselectrolyte secondary battery of WO *404
`
`is structurally similar to that instantly claimed, and operating the sameas instantly
`
`claimed(i.e., the battery charges and discharges), the a non-aqueouselectrolyte
`
`secondary battery of WO ‘404 anticipates a lithium metal deposited on the negative
`
`electrode current collector during charging and the lithium metalis dissolved into the
`
`non-aqueouselectrolyte during discharging.
`
`

`

`Application/Control Number: 16/496,556
`Art Unit: 1729
`
`Page 4
`
`Claim 3:|WO ‘404discloses that the negative electrode current collector is
`
`copper foil (US ‘551, paragraphs [0327]-[0328] and [0359], line 2, which disclose
`
`copperfoil).
`
`Claim 4: WO ‘404 discloses that the electrolyte further contains lithium
`
`hexafluorophosphate (US ‘551, paragraph [0257]).
`
`Claim 5:|=WO ‘404 discloses that the non-aqueouselectrolyte further
`
`contains at least one selected from vinylene carbonate, fluoroethylene carbonate, and
`
`vinyl ethylene carbonate (US ‘551, paragraphs [0188] and [0190]).
`
`Claim 6:=WO ‘404discloses that the lithium salt containing an oxalate
`
`complex as an anion is contained at a concentration of at least 0.01 M in the non-
`
`aqueous electrolyte (US “551, paragraphs [0258] and [0261]).
`
`Claim 7: WO ‘404discloses that the lithium salt containing an oxalate
`
`complex as an anion contains boron or phosphorus (US ‘551 disclosing that M
`
`represents a boron atom or a phosphorous atom).
`
`Claim 9:
`
`The non-aqueouselectrolyte secondary battery according claim 1,
`
`wherein an electrolyte salt to be combined with the lithium salt includes LiBF4,
`
`LiClOa, LiPFo, LiAsFe, LiSbFe, and imide salts including LIN(SO2CF3)2 (US “551,
`
`paragraphs [0257] and 0255)]).
`
`Claim 10: WO ‘404discloses that an electrolyte salt to be combined with the
`
`lithium salt is LiPFs (US 551, paragraph [0257]).
`
`

`

`Application/Control Number: 16/496,556
`Art Unit: 1729
`
`Page 5
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`Claim Rejections - 35 USC § 103
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`5.
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all
`
`obviousnessrejections set forth in this Office action:
`
`A patent for a claimed invention may notbe obtained, notwithstanding
`
`that the claimed inventionis 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 mannerin which the
`
`invention was made.
`
`6.
`
`Claims 2 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`WO 2016190404 (hereafter WO ‘404)(using US 20180138551 as
`
`translation)(hereafter US ‘551) as applied to claim 1 above, and further in view of
`
`Shakespeare et al. (US 20090214899),
`
`WO ‘404 is as applied, argued, and disclosed above, and incorporated herein.
`
`Claim 2:|WO ‘404 discloses a negative electrode having a negative
`
`electrode current collector and a negative electrode mixture (e.g. graphite as per US
`
`‘551, paragraph [0322]) formed thereon.
`
`

`

`Application/Control Number: 16/496,556
`Art Unit: 1729
`
`Page 6
`
`However, WO ‘404 doesnotdisclose that the negative electrode in an initial
`
`state (i.e. prior to charging) does not have a negative electrode active material.
`
`Shakespeareet al. also discloses a negative electrode having a negative
`
`electrode current collector and a negative electrode mixture (e.g. graphite).
`
`Shakespeareet al. further disclose a secondary battery comprising a positive
`
`electrode (cathode) having a positive electrode current collector (paragraph [0026])
`
`having a positive electrode mixture formed thereon (paragraph [0027]); and, an anode
`
`current collector (paragraph [0028]), wherein prior to charging, the anode does not
`
`contain active material (paragraphs [0029], [0049] and [0022]-[0023]). See also entire
`
`document.
`
`Therefore, it would have been obviousto one of ordinary skill in the art before
`
`the effective filing date of the claimed invention to have modified the negative
`
`electrode of WO ‘404 on light of the teaching of Shakespeareet al. such that the
`
`negative electrode in an initial state (i.e. prior to charging) does not have a negative
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`electrode active material.
`
`One having ordinary skill in the art would have been motivated to make the
`
`modification to a battery that would have beenreliable, had a long shelf life,
`
`and would have been made inexpensively and mass-produced, thus providing a
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`battery with sufficient energy storage that could be packaged with electronics to
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`accomplish at least one function (paragraph [0007]).
`
`

`

`Application/Control Number: 16/496,556
`Art Unit: 1729
`
`Page 7
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`Claim 8:|WO ‘404 doesnot disclose a layer containing at least one selected
`
`from solid electrolytes, organic substances, and inorganic substances is provided on a
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`surface of the negative electrode current collector.
`
`Shakespeareet al. disclose a layer (a passivation layer) containing at least one
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`selected from organic substances, and inorganic substances provided on a surface of
`
`the negative electrode current collector (paragraphs [0032]-[0034}).
`
`Therefore, it would have been obviousto one of ordinary skill in the art before
`
`the effective filing date of the claimed invention to have modified the battery of WO
`
`‘404 by incorporating the layer of Shakespeareetal.
`
`One having ordinary skill in the art would have been motivated to make the
`
`modification to passivation layer that would have prevented adverse environmental
`
`exposure of edges of adjacent metal and non-metal layers that would have provided a
`
`direct lateral pathway to sensitive components of the battery construction along a
`
`metal/non-metal interface (paragraph [0010)).
`
`Examiner Correspondence
`
`7.
`
`Any inquiry concerning this communication or earlier communications from
`
`the examiner should be directed to THOMAS H PARSONSwhosetelephone number
`
`is (571)272-1290. The examiner can normally be reached on 7-4:30.
`
`Examinerinterviewsare available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`

`

`Application/Control Number: 16/496,556
`Art Unit: 1729
`
`Page 8
`
`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, Ula Ruddock can be reached on (571) 272-1481. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR
`
`only. For more information about the PAIR system,see https://ppair-
`
`my.uspto.gov/pair/PrivatePair. Should you have questions on accessto the Private
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`
`CANADA)or 571-272-1000.
`
`/Thomas H. Parsons/
`Examiner, Art Unit 1729
`
`/ULA C RUDDOCK/
`Supervisory Patent Examiner, Art Unit 1729
`
`