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
`
`16/498,205
`
`09/26/2019
`
`Tatsuya Akira
`
`P191002US00
`
`8966
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`KOPEC, MARKT
`
`ART UNIT
`1761
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/16/2021
`
`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)
`
`

`

`Office Action Summary
`
`Application No.
`16/498 205
`Examiner
`MARK T KOPEC
`
`Applicant(s)
`Akira etal.
`Art Unit
`1761
`
`AIA (FITF) Status
`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)C) Responsive to communication(s) filed on
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)C) This action is FINAL. 2b)¥)This action is non-final.
`3)0) 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\() 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*
`1-10 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.
`C] 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)M The drawing(s) filed on 09/26/19 is/are: a)() accepted or b)M 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.{¥] Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) 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 11/11/19.
`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 20210911
`
`

`

`Application/Control Number: 16/498,205
`Art Unit: 1761
`
`
`
`Page 2
`
`Notice of Pre-AIA or AIA Status
`
`
`The present application, filed on or after March 16, 2013,
`
`
`
`
`
`
`
`the first inventor to file provisions of
`
`is being examined under
`
`
`the AIA.
`
`
`This application is a 371 of PCT/JP2018/004963 (filed
`
`02/14/18), which application claims priority to JP 2017-069110
`
`
`
`
`
`(filed 03/30/17).
`
`
`
`
`The Preliminary Amendment filed 09/26/19 is entered.
`
`Claims 1-10 are pending.
`
`The amendment
`
`
`
`
`
`to the specification filed 09/26/19 is
`
`entered.
`
`
`The Drawing filed 09/26/19 is objected to:
`
`37 CFR 1.84(u) (1) states (emphasis added):
`
`The different views must be numbered in consecutive Arabi
`
`numerais, starting with 1,
`independent of the numbering of the
`sheets and,
`if possible,
`in the order in which they apcear on
`
`
`the drawing sheetis}. Partial views
`3 te form one
`
`
`complete view, on one or several
`be identified by
`
`
` Cap:
`
`the same number followed by
`View num
`Sas
` FLNG Le ViLew
`
`ceded by
`abbreviat:
`cation ic
`invention,
`FIG." must not
`
`
`
` Ln ar
`
`i
`
`mor be
`
`numbered and the
`
`
`Accordingly, applicant should submit a corrected Drawing
`
`
`without “Figure 1” and amend the specification to —-the Drawing-
`
`
`
`—(each occurrence).
`
`
`The IDS filed 11/11/19 has been considered.
`
`An initialed
`
`copy accompanies this action.
`
`
`
`
`
`The listing of references in the
`
`

`

`Application/Control Number:
`Art Unit: 1761
`
`
`
`16/498,205
`
`Page 3
`
`
`
`specification is not a proper ini
`ormation
`disclosure statement.
`
`
` for considerat
`
`all patents, publications, or
`
`
`
`
`
`ion by the Office, and
`
`be incorporated into
`
`37 CFR 1.98(b)
`
`requires
`
`a list of
`
`
`other init
`
`formation submitted
`
`
`MPEP §$ 609.04 (a)
`
`the specif
`
`
`
`states
`
`, "the list may not
`
`Fication but
`
`must be submitted in
`
`a separate paper."
`
`
`Therefore,
`
`unless the
`
`re
`
` ferences have been
`
`cited by the examiner
`
`
`on form PTO-892 or by
`
`applicant on
`
` form PT
`
`0-1449,
`
`they have not
`
`been considered.
`
`The following is a
`
`the basis
`
`
`for all obviousness rejec
`
`
`
`
`
`Office action:
`
`quotation o! tions s
`
`35 U.
`
`S.C.
`
`103 which
`forms
`
`
`et forth in this
`
`
`
`
`
`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 ski
`in the art to which the
`claimed invention pertains. Patentability shall 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. 10
`
`3 are summarized as
`
` follows:
`
`1.
`
`
`Determining the scope and contents of
`
`
`
`
`
`rences betw
`2. Ascertaining the diff
`n the prior art and
`
` fF the prior art.
`
`the claims at issue.
`
`3.
`
`Resolving the level
`
` of ordinary sk
`
`ill
`
`in the pertinent
`
`art.
`
`

`

`Application/Control Number: 16/498,205
`Art Unit: 1761
`
`
`
`Page 4
`
`
`4. Considering objectiv
`vidence present in the
`
`
`application indicating obviousness or nonobviousness.
`
`This application currently names joint inventors.
`
`
`In
`
`considering patentability of the claims the examiner presumes
`
`
`that the subject matter of
`
`the various claims was commonly owned
`
`
`
`
`
`as of the effective filing date of the claimed invention(s)
`
`
`absent any evidence to the contrary. Applicant is advised of
`
`the obligation under 37 CFR 1.56 to point out
`
`the inventor and
`
`
`
`
`
`
`
`
`
`
`
`
`
`effective filing dates of each claim that was not commonly owned
`
`
`
`
`as of the effective filing date of the later invention in order
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`for the examiner to consider the applicability of 35 U.S.C.
`
`102 (b) (2) (C)
`
`
`for any potential 35 U.S.C. 102(a) (2) prior art
`
`against the later invention.
`
`Claims 1-10 is/are rejected under 35 U.S.C. 103 as being
`
`unpatentable over WO 2016/121320 Al
`
`
`in view of Hirose et al US
`
`2015/0287989 Al.
`
`
`Applicant cannot rely upon the certified copy of the
`
` foreign priority application to overcome this rejection because
`
`
`
`
`a translation of said application has not been made of record in
`
`
`accordance with 37 CFR 1.55. See MPEP §§ 215 and 216.
`
`
`
` Initially, note that Akira US 10,312,516 B2 is relied upon
`
`
`
`
`
`
`
`
`below as the English language equivalent to WO ‘320.
`
`
`
`Also, applicant’s definition/description of the claim
`
`71
`MW
`terminology “alkali metal salt” (e.g.
`
`
`
`
`
`
`
`including silicates,
`
`

`

`Application/Control Number:
`Art Unit: 1761
`
`16/498,205
`
`Page 5
`
`carbonates,
`
`citrates and hydroxides)
`
`
`at para 0019 of
`
`the instant
`
`
`
`
`specification is noted.
`
`Akira discloses negative electrode active materials
`
`(Abstract).
`
`The materials comprise Li2Si03 having Fe metal-
`
`
`containing XRD peaks
`
`(0.02-5 mass%)
`
`(Col 11,
`
`lines 5-35;
`
`
`
`
`The ret
`Ference additional
`
`ly teaches that the
`
`may include either natural
`
`1:00 to 30:70
`
`(with respect to
`
`or synthetic graphite
`
` active material
`
`examples Al1-A9
`
`active material
`
`in an amount of
`
`particles)
`
`(Col 5,
`
`lines 45-56).
`
`While
`
`
`
`the
`reference
`teaches negative electrode compositions
`
`
`which may contain each of the claimed natural graphite, alkali
`
`metal salt
`
`(e.g.
`
`
`
`
`ficient specil
`reference does not do so with suf
`
`ante
`
`icipate the above listed claims.
`
`lithium silicate), and metal
`
`
`
`
`
`
`(e.g. Fe),
`
`the
`
`
`
`Ficity to
`
`
`
`Hirose is cited as evidence that it would have been obvious
`
`to the skilled artisan to add natural graphite material to the
`
`
`30-80mass%
`
`
`negative electrode compositions of WO
`
`
`the addition of
`
`‘320.
`
`The reference
`
`
`
`F natural graphite
`
`(in an
`
`teaches that
`
`clearly
`
`amount of
`
`total carbon)
`
`(0064)
`
`to negative electrode
`
`materials which include
`
`lithium silicate
`
`stress due to expansion and shrinkage
`
`
`
`(0050)
`
`helps reduce
`
` ing
`
`thereby enabl
`
`
`inhibition of breakage and improving cycle per!
`
`
`
`formance
`
`Accordingly,
`
`(0065).
`
` natural
`the examiner submits that the use of
`
`graphite would have been an obvious selection as WO
`
`‘320 teaches
`
`
`
`

`

`Application/Control Number: 16/498,205
`Art Unit: 1761
`
`
`
`Page 6
`
`
`
`
`forms of graphite generally, and Hirose,
`the use of several
`
`which is direct to the same negative electrode utility,
`
`teaches
`
`
`the preferred selection of natural graphite.
`
`The nonstat
`
`tutory double patenting rejection is based ona
`
`judicially creat
`
`re
`
`
`flected in the sta
`
`tute)
`
`
`so as to prevent the unjustii
`
`fied or
`
`
`
`
`
`
` ted doctrine grounded in public policy (a policy
`
`
`
`le harassment ct by multiple
`
`
`
` ication claim is not patentably
`
`
`improper timewise ext
`
`
`tension of the “right to exclude” granted by
`
`a patent and to prevent possib
`
`assignees. A nonstatutory doub
`
`
`appropriate where the conflic
`ting cl
`aims are not identical, but
`
`le patenting rejection is
`
`one examined appl
`
`
`from the ret
`
` Ference claim(s)
`
`because the examined
`
`at least
`
`distinc
`
`applicat
`
`ion claim is either anticipated by,
`
`or would have been
`
`obvious over,
`
`the rel
`
` ference claim(s). See, e.g.,
`
`In re Berg, 140
`
`F. 3d 1428,
`
`F.3d 1046,
`
`
`
`46 USPQ2d 1226
`
`29 USPQ2d 2010
`
`(Fed. Cir. 1998);
`
`(Fed. Cir. 1993);
`
`
`
`In re Goodman,
`
`11
`
`In re Longi, 759
`
`F.2d 887,
`
`225 USPQ 645
`
`(Fed. Cir. 1985);
`
`In re Van Ornum, 686
`
`F.2d 937,
`
`214 USPQ 761
`
`(CCPA 1982);
`
`In re Vogel, 422 F.2d 438,
`
`164 USPQ 619
`
`(CCPA 1970);
`
`In re Thorington, 418 F.2d 528, 163
`
`USPQ 644
`
`(CCPA 1969).
`
`
`
`A timely f
`led terminal disclaimer in compliance with 37
`
`CFR 1.321(c) or
`
`provisional rejection based on nonsta
`
` 1.321(d) may be used to overcome an actual or
` tutory double patenting
`
`
`
`provided the ret ference application or patent either is shown to
`
`

`

`Applicat
`
`ion/Control Number:
`1761
`Art Unit:
`
`16/498,205
`
`Page 7
`
`be commonly owned with the examined application,
`
`or claims an
`
`
`invention made as a result of
`
`activities undertaken within the
`
`a joint research agreement.
`
`
`See MPEP § 717.02
`
` for
`
`applications subject to examination under the
`
` first
`
`inventor to
`
`
`
`file provisions of
`
`the
`
`
`
`A IA as explained in MPEP § 2159.
`
`See MPEP
`
`§ 2146 et seq.
`
`
`for
`ications not subject to examination under
`app]
`
`scope of
`
`
`
`
`
`first inven
`
`the
`
`COL
`
`CO
`
`
`file provisions of
`
`
`the AIA. A terminal
`
`disclaimer must be
`
`signed in compliance with 37 CFR 1.321(b).
`
`The USPTO
`
`
`Internet website contains terminal disclaimer
`
`
`forms which may be used.
`
`Please visit
`
`
`www.uspto.gov/patent/patents-forms.
`
`The
`
`
`
`application in which the
`
`
`
`
`form is filed determines what
`
`form
`
`
`
`
`
` filing date of
`the
`
`(e.g.,
`
`
`PTO/SB/25,
`
`
`PTO/SB/26,
`
`
`PTO/AIA/25, or PTO/AIA/26) should
`
`be used. A web-based eTerminal
`
` Disclaimer may be filled out
`
`
`
`completely onl
`
`line using web-screens. An eTerminal
`
` Disclaimer
`
`that meets all
`
`requirements is auto-processed and approved
`
`
`
`immediately upon submission.
`
`
`For more information about
`
`eTerminal
`
`
`Disclaimers,
`
` refer to
`
`
`
`
`
`
` o-I
`www.uspto.gov/patents/process/file/efs/guidance/eTD-inf
`
`-JSp.
`
`The nonstat
`
`tutory double patenting rejection is based ona
`
`judicially creat
`
`ted doctrine grounded in public policy
`
`(a policy
`
`re
`
`
`
`ce)
`
`
`so as to prevent the unjustified or
`
`
`
`flected in the sta Cu tension of the “right
`
`improper timewise ext
`
`
`
`to exclude” granted by
`
`
`
`a patent and to prevent possible harassment by multiple
`
`

`

`Application/Control Number: 16/498,205
`Art Unit: 1761
`
`
`
`Page 8
`
`assignees. A nonstatutory double patenting rejection is
`
`
`appropriate where the conflicting claims are not identical, but
`
`at least one examined application claim is not patentably
`
`
`
`distinct from the reference claim(s)
`
`
`
`because the examined
`
`
`
`
`
`
`
`
`application claim is either anticipated by, or would have been
`
`obvious over,
`
`
`the reference claim(s). See, e.g.,
`
`In re Berg, 140
`
`F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998);
`
`F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993);
`
`
`
`In re Goodman,
`
`11
`
`In re Longi, 759
`
`
`
`F.2d 887, 225 USPQ 645 (Fed. Cir. 1985);
`
`In re Van Ornum, 686
`
`F.2d 937, 214 USPQ 761 (CCPA 1982);
`
`In re Vogel, 422 F.2d 438,
`
`164 USPQ 619 (CCPA 1970);
`
`In re Thorington, 418 F.2d 528, 163
`
`USPQ 644 (CCPA 1969).
`
`
`
`A timely filed terminal disclaimer in compliance with 37
`
`
`
`CFR 1.321 (c) or 1.321(d) may be used to overcome an actual or
`
`provisional rejection based on nonstatutory double patenting
`
`
`provided the reference application or patent either is shown to
`
`be commonly owned with the examined application, or claims an
`
`
`invention made as a result of activities undertaken within the
`
`
`
`
`
`
`
`
`
`scope of a joint research agreement. See MPEP § 717.02 for
`
`
`applications subject to examination under the first inventor to
`
`
`
`file provisions of
`
`
`
` the AIA as explained in MPEP § 2159. See MPEP
`
`
`
`§ 2146 et seq.
`
`for applications not subject to examination under
`
`
`
`
`
`
`
`the first inventor to file provisions of the AIA. A terminal
`
`disclaimer must be signed in compliance with 37 CFR 1.321(b).
`
`
`
`

`

`Application/Control Number: 16/498,205
`Art Unit: 1761
`
`
`
`Page 9
`
`The USPTO
`
` Internet website contains terminal disclaimer
`
`
`forms which may be used. Please visit
`
`
`
`
`www.uspto.gov/patent/patents-forms. The filing date of
`the
`
`
`
`
`which the form is filed determines what
`
`form
`
`
`
`
`
`
`application in
`
`
`
`
`(e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should
`
`
`be used. A web-based eTerminal Disclaimer may be filled out
`
`
`
`
`completely online using web-screens. An eTerminal Disclaimer
`
`that meets all requirements is auto-processed and approved
`
`
`
`
`immediately upon submission. For more information about
`
`
`
`eTerminal Disclaimers, refer to
`
`
`
`
`
`
`www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
`
`Claims 1-10 rejected on the ground of nonstatutory double
`
`
`
`
`
`
`
`
`
`
`
`patenting as being unpatentable over claims 1-13 of U.S. Patent
`
`No. 10,312,516
`
`
`in view of Hirose et al US 2015/0287989 Al.
`
`As stated
`
`in the rejection above, US
`
`‘516 discloses
`
`negative electrode material comprising lithium silicate
`
`Li2xSi0(2+x) and metal particles (Fe 0.01-20 mass%)
`
`
`The issued claims differ from the instant claims in failing
`
`(claims
`
`1,
`
`4).
`
`
`to specify the
`
`addition of natural graphite to the negative-
`
`electrode composition.
`
`Hirose is
`
`cited as evidence that it would have been obvious
`
`to the skilled
`
`
`negative electrode compositions of US
`
`‘516.
`
`The reference
`
`
`clearly teaches that the addition of natural graphite (in an
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` artisan to add natural graphite material to the
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`Application/Control Number: 16/498,205
`Art Unit: 1761
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`Page 10
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`amount of 30-80mass% total carbon)
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`(0064)
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`to negative electrode
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`materials which include lithium silicate (0050) helps reduce
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`stress due to expansion and shrinkage thereby enabling
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`inhibition of breakage and improving cycle performance (0065).
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`the examiner submits that the use of natural
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`Accordingly,
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`graphite would have been an obvious selection as US
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`‘516 teaches
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`forms of graphite generally, and Hirose,
`the use of several
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`teaches
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`which is direct to the same negative electrode utility,
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`the preferred selection of natural graphite.
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`In view of
`the foregoing,
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`the above claims have failed to
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`patentably distinguish over the applied art.
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`The remaining references listed on forms 892 and 1449 have been
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`reviewed by the examiner and are considered to be cumulative to or
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`less material
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`than the prior art
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`references relied upon in the
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`rejection above.
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`Any inquiry concerning this communication or earlier
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`communications from the examiner should be directed to MARK T
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`KOPEC whose telephone number is (571)272-1319.
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`The examiner can
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`normally be reached on Monday-Friday 9:00a-5:00p EST.
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` Examiner interviews are available via telephone,
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`in-person,
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`and video conferencing using a USPTO supplied web-based
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`
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`collaboration tool. To schedule an interview, applicant is
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`encouraged to use the USPTO Automated Interview Request
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`http://www.uspto.gov/interviewpractice.
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`
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`(AIR) at
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`

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` crct
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`Application/Control Number: 16/498,205
`Art Unit: 1761
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` attempts to reach the examiner by telephone are
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`Page 11
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`unsuccessful,
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`the examiner’s supervisor,
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`James Seidleck can be
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`reached on 5712721078.
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`
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`The fax phone number for the
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`organization where this application or proceeding is assigned is
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`571-273-8300.
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`
`
`
`Information regarding the status of an application may be
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`
`obtained from the Patent Application Information Retrieval
`
`
`
`(PAIR)
`system. Status information for published applications
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`
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`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 access to the Private PAIR system, contact the
`
`
`
`
`
`
`Electronic Business Center
`(EBC) at 866-217-9197 (toll-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.
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`/MARK KOPEC/
`Primary Examiner, Art Unit
`1761
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`MK
`
`September 11, 2021
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