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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
`
`02/02/2022
`
`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):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`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 8 October 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.
`
`Disposition of Claims*
`1.and 3-10 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 3-10 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.
`
`) ) ) )
`
`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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 10/08/2021.
`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 20220126
`
`

`

`Application/Control Number: 16/496,556
`Art Unit: 1729
`
`Page 2
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`underthe first inventorto file provisions of the AIA.
`
`Response to Arguments
`
`2.
`
`Applicant’s arguments with respect to claims 1 and 3-10 have been considered
`
`but are moot in view of a new groundofrejection.
`
`Response to Amendment
`
`This is in response to the Amendmentfiled 8 October 2021.
`
`(Previous) DETAILED ACTION
`
`Claim Rejections - 35 USC § 102
`
`3.
`
`Therejection of claims 1, 3-7 and 9-10 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) has been withdrawnin view of Applicants’
`
`Amendment.
`
`Claim Rejections - 35 USC § 103
`
`4.
`
`The rejection of claims 2 and 8 under 35 U.S.C. 103 as being unpatentable over
`
`WO 2016190404 (hereafter WO ‘404)(using US 20180138551 as
`
`

`

`Application/Control Number: 16/496,556
`Art Unit: 1729
`
`Page 3
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`translation)(hereafter US *551) as applied to claim | above, and further in view of
`
`Shakespeare et al. (US 20090214899) has been withdrawn in view of Applicants’
`
`Amendment.
`
`(New) DETAILED ACTION
`
`Claim Rejections - 35 USC § 103
`
`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 manner in which the
`
`invention was made.
`
`6.
`
`Claims 1, 3-7 and 9-10 rejected under 35 U.S.C. 103 as being unpatentable
`
`over WO 2016190404(hereafter WO ‘404)(using US 20180138551 as
`
`translation)(hereafter US *551) in view of Kurthara et al. (US 20170133660).
`
`

`

`Application/Control Number: 16/496,556
`Art Unit: 1729
`
`Page 4
`
`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 contains a lithium salt (US °551, paragraphs
`
`[0253]-[0257]) containing an oxalate complex as an anion (US ‘551, paragraphs
`
`[0030] and [0288]); and
`
`wherein the non-aqueouselectrolyte is a non-aqueousliquid electrolyte (i.e. a
`
`non-aqueouselectrolyte solution containing an electrolyte and a non-aqueoussolvent).
`
`See also entire document.
`
`WO ‘404 does not disclose that the negative electrode in an initial state does
`
`not have a negative electrode active material.
`
`Kuriharaet al. disclose a secondary battery comprising a liquid electrolyte
`
`(paragraph [0092] and (paragraphs [[0046] and a negative electrode that does not have
`
`a negative electrode active material in an initial state (abstract). See also entire
`
`document.
`
`

`

`Application/Control Number: 16/496,556
`Art Unit: 1729
`
`Page 5
`
`Therefore, it would have been obviousto one of ordinary skill in the art before
`
`the effective filing date of the claimed invention to have substituted the negative
`
`electrode of WO ‘804 with the negative electrode of Kuriharaet al.
`
`One having ordinary skill in the art would have been motivated to make the
`
`modification provide a negative electrode without using an active material formed of a
`
`carbon-based material, to provide a lithium-ion secondary battery without increasing
`
`temporal and financial costs accompanied by formation of a negative electrode active
`
`material layer, to reduce the amountof lithium in the form of dendrites (in the form of
`
`whiskers) that is deposited on a surface of lithium metal in the negative electrode at
`
`the time of charging, to provide a lithium-ion secondary battery with favorable cycle
`
`characteristics; and to provide a secondary battery with high capacity per unit mass
`
`and volume (paragraph [0012]).
`
`The WO ‘804 combination doesnot that a lithium metal is deposited on the
`
`negative electrode current collector during charging and the lithium metal is dissolved
`
`into the non-aqueouselectrolyte during discharging.
`
`However, given that the non-aqueouselectrolyte secondary battery of WO *404
`
`combinationis structurally similar to that instantly claimed, and operates in a manner
`
`the same as instantly claimed (i.e., the battery charges and discharges), the a non-
`
`aqueouselectrolyte secondary battery of the WO “404 combination renders obviousa
`
`lithium metal deposited on the negative electrode current collector during charging
`
`and the lithium metal is dissolved into the non-aqueouselectrolyte during discharging.
`
`

`

`Application/Control Number: 16/496,556
`Art Unit: 1729
`
`Page 6
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`Claim 3:—Therejection of claim 3 is as set forth above in claim 1 wherein
`
`WO ‘404 further discloses that the negative electrode current collector is copper foil
`
`(US ‘551, paragraphs [0327]-[0328] and [0359], line 2, which disclose copperfoil).
`
`Claim 4:—Therejection of claim 4 is as set forth above in claim 1 wherein
`
`WO ‘404 further discloses that the electrolyte further contains lithium
`
`hexafluorophosphate (US 551, paragraph [0257]).
`
`Claim 5:—The rejection of claim 5 is as set forth above in claim 1 wherein
`
`WO ‘404 further 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:—Therejection of claim 6 is as set forth above in claim 1 wherein
`
`WO ‘404 further discloses 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-aqueouselectrolyte
`
`(US ‘551, paragraphs [0258] and [0261]).
`
`Claim 7:—The rejection of claim 7 is as set forth above in claim 1 wherein
`
`WO ‘404 further discloses 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:
`
`Therejection of claim 9 is as set forth above in claim | wherein
`
`

`

`Application/Control Number: 16/496,556
`Art Unit: 1729
`
`Page 7
`
`WO ‘404 further discloses that an electrolyte salt to be combined with the
`
`lithium salt includes LiBF4 , LiClO4, LiPFe, LiAsFo, LiSbFe, and imide salts including
`
`LiN(SO2CF3)2 (US ‘551, paragraphs [0257] and 0255]).
`
`Claim 10:
`
`The rejection of claim 10 is as set forth above in claim 1 wherein
`
`WO ‘404 further discloses that an electrolyte salt to be combined with the lithium salt
`
`is LiPFs (US “551, paragraph [0257]).
`
`7.
`
`Claims8 is rejected under 35 U.S.C. 103 as being unpatentable over WO
`
`2016190404 (hereafter WO °404)(using US 20180138551 as translation)(hereafter US
`
`*551) m view of Kurthara et al. (US 20170133660) as applied to claim 1 above, and
`
`further in view of Shakespeare et al. (US 20090214899).
`
`WO ‘404 and Kuriharaet al. are as applied, argued, and disclosed above, and
`
`incorporated herein.
`
`Claim 8:|=The WO ‘404 combination does not disclose a layer containing at
`
`least one selected from solid electrolytes, organic substances, and inorganic
`
`substances is provided on a surface of the negative electrode current collector.
`
`Shakespeareet al. disclose a thin film battery comprising an electrolyte,
`
`wherein the electrolyte can be a liquid, a solid, a semi-solid or a combination)
`
`(paragraph [0029], lines 8-10), and a layer (a passivation layer) containingat least
`
`one selected from organic substances, and inorganic substances provided on a surface
`
`of the negative electrode current collector (paragraphs [0032]-[0034]).
`
`

`

`Application/Control Number: 16/496,556
`Art Unit: 1729
`
`Page 8
`
`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 provide a passivation layer that would have prevented adverse
`
`environmental exposure of edges of adjacent metal and non-metal layers that would
`
`have provideda direct lateral pathway to sensitive components of the battery
`
`construction along a metal/non-metal interface (paragraph [0010)]).
`
`Conclusion
`
`8.
`
`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 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 MONTHSfrom the mailing date of this action. In the eventafirst reply is
`
`filed within TWO MONTHSofthe mailing date of this final action and the advisory
`
`action is not mailed until after the end of the THREE-MONTHshortenedstatutory
`
`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
`
`

`

`Application/Control Number: 16/496,556
`Art Unit: 1729
`
`Page 9
`
`the mailing date of the advisory action. In no event, however, will the statutory period
`
`for reply expire later than SIX MONTHSfrom the date of this final action.
`
`Examiner Correspondence
`
`9.
`
`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
`
`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 applicationsis available through Private PAIR
`
`only. For more information about the PAIR system, see https://ppair-
`
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`
`

`

`Application/Control Number: 16/496,556
`Art Unit: 1729
`
`Page 10
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`free). If you would like assistance from a USPTO Customer Service Representative or
`
`access to the automated information system,call 800-786-9199 (IN USA OR
`
`CANADA)or 571-272-1000.
`
`/Thomas H. Parsons/
`Examiner, Art Unit 1729
`
`/ULA C RUDDOCK/
`Supervisory Patent Examiner, Art Unit 1729
`
`