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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
`
`16/634,998
`
`01/29/2020
`
`Manabu Takijiri
`
`P200092US00
`
`7392
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`MCDERMOTT, HELEN M
`
`1727
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/18/2022
`
`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)
`
`

`

`
`
`Disposition of Claims*
`1-3 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-3 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)() The specification is objected to by the Examiner.
`11) The drawing(s) filed on 01/29/2020 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
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) 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
`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)
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`Office Action Summary
`
`Part of Paper No./Mail Date 20220312
`
`Application No.
`Applicant(s)
`16/634,998
`Takijiri et al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`HELEN M MCDERMOTT
`1727
`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 01/29/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`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: 16/634,998
`Art Unit: 1727
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`2.
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction
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`of the statutory basis for the rejection will not be considered a new ground of rejection if the
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`prior art relied upon, and the rationale supporting the rejection, would be the same under
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`either status.
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`3.
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`Receipt is acknowledgedof certified copies of papers required by 37 CFR 1.55.
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`Priority
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`Information Disclosure Statement
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`4.
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`The information disclosure statement (IDS) submitted on 02/19/2020is in compliance
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`with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statementis being
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`considered by the examiner.
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`5.
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`The drawings were received on 01/29/2020. These drawings are acceptable.
`
`Drawings
`
`

`

`Application/Control Number: 16/634,998
`Art Unit: 1727
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`Page 3
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`Specification
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`6.
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`The lengthy specification has not been checked to the extent necessary to determine
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`the presence ofall possible minor errors. Applicant’s cooperation is requested in correcting any
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`errors of which applicant may become awarein the specification.
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`Claim Rejections - 35 USC § 103
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`7.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`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 ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
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`8.
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`The factual inquiries for establishing a background for determining obviousness under
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`35 U.S.C. 103 are summarized as follows:
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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 obviousnessor
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`nonobviousness.
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`9.
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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was commonly
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`ownedas ofthe effective filing date of the claimed invention(s) absent any evidence to the
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`

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`Application/Control Number: 16/634,998
`Art Unit: 1727
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`Page 4
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`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly owned as of the effective filing date
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`of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
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`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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`10.
`
`Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over US
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`2015/0221943 A1 (Nishioka) in view of US 2008/0213670 A1 (Okada).
`
`Regarding claim 1, Nishioka discloses a non-aqueous electrolyte secondary battery 10
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`comprising a positive electrode 12, a negative electrode 13, and a non-aqueous electrolyte
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`[0013], wherein the non-aqueous electrolyte includes a non-aqueous solvent including a
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`fluorine-containing cyclic carbonate [0034], the positive electrode includes a positive electrode
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`active material including complex oxide particles, including Ni, Co and Li [0022] and including at
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`least either of Mn and Al [0023], wherein a ratio of Ni to a total number of moles of metallic
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`elements exceptLi is 50 mol% or more (the ratio of Ni is in the range of 0.3<x<1.0,i.e. greater
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`than or equal to 30 mol% and less than 100 mol%, for example 0.5, i.e. 50 mol%,in
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`LiNio.sCoo.2Mo.302) [0022], and the complex oxide particles have a compressive strength of 250
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`MPa or more(preferably 300 MPa or more and 500 MPaor less) [0027].
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`Nishioka does not teach that the complex oxide particles are unaggregated particles.
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`Okada however teaches that by using a positive electrode active material in dispersed state as
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`primary particles, the secondary particles with grain boundary are not present, and therefore
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`even though the primary particles are expanded and contracted during charge and discharge
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`cycles, electrically non-conductive primary particles will not be generated, and thus, decline in
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`battery capacity involved with charge and discharge cycles is minimized [0028]. Thereforeit
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`

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`Application/Control Number: 16/634,998
`Art Unit: 1727
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`Page 5
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`would have been obvious to one of ordinaryskill in the art to use the positive active material of
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`Nishioka in a dispersed state as unaggregated primary particles, as in Okada, becauseit could
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`minimize decline in battery capacity involved with charge and discharge cycles.
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`Regarding claim 2, although Nishioka does not specify the content of the fluorine-
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`containing cyclic carbonate, generally, differences in concentration or temperature will not
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`support the patentability of subject matter encompassed by the prior art unless thereis
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`evidence indicating such concentration or temperatureis critical. "[W]here the general
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`conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or
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`workable ranges by routine experimentation." /n re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235
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`(CCPA 1955); Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. See MPEP 2144.05.
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`Regarding claim 3, although Nishioka does not specifically teach that the ratio of Ni to
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`the total number of moles of the metallic elements except Li is 80 mol% or more and 95 mol%
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`or less in the complex oxide particles, the claimed range nevertheless would have been obvious
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`to one of ordinaryskill in the art becauseit lies inside Nishioka’s disclosed range of 30 mol% or
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`more and less than 100 mol%, and because Nishioka suggests that higher ratios of Ni are
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`preferable in terms of cost saving and attaining higher capacity [0022]. In the case where the
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`claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of
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`obviousness exists. See MPEP 2144.05.
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`Double Patenting
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`11.
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`The nonstatutory double patenting rejection is based on a judicially created doctrine
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`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
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`

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`Application/Control Number: 16/634,998
`Art Unit: 1727
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`improper timewise extension of the “right to exclude” granted by a patent and to prevent
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`possible harassment by multiple assignees. A nonstatutory double patenting rejection is
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`appropriate where the conflicting claims are not identical, but at least one examined
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`application claim is not patentably distinct from the reference claim(s) because the examined
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`application claim is either anticipated by, or would have been obvious over, the reference
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`claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman,
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`11 F.3d 1046, 29 USPQ2d 2010(Fed. Cir. 1993); 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
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`438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be
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`used to overcome an actual or provisional rejection based on nonstatutory double patenting
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`provided the reference application or patent either is shown to be commonly owned with the
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`examined application, or claims an invention made as a result of activities undertaken within
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`the scope of a joint research agreement. See MPEP § 717.02 for applications subject to
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`examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159.
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`See MPEP § 2146 etseq. for applications not subject to examination under the first inventor to
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`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 filing date of the application in which
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`the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or
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`PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may befilled out completely
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`

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`Application/Control Number: 16/634,998
`Art Unit: 1727
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`Page 7
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`online using web-screens. An eTerminal Disclaimer that meetsall requirements is auto-
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`processed and approved immediately upon submission. For more information about eTerminal
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`Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
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`12.
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`Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as
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`being unpatentable over claims 1-8 of copending Application No. 16/763700 (reference
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`application). Although the claims at issue are not identical, they are not patentably distinct
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`from each other becauseall of the limitations of the instant claims are either claimed in the
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`reference application or are obvious over limitations claimed in the reference application. In
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`particular, reference claim 1 recites composite oxide particles having the same composition as
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`claimed exceptfor an overlapping range of Ni ratio, reference claim 2 recites the particles in a
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`non-aggregated state having the claimed compressive strength, and reference claim 7 recites
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`the claimed fluorine-containing cyclic carbonate with an overlapping range of content by
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`volume.
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`This is a provisional nonstatutory double patenting rejection because the patentably
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`indistinct claims have not in fact been patented.
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`Conclusion
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`13.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to HELEN M MCDERMOTT whosetelephone number is (571)270-
`
`7138. The examiner can normally be reached Monday - Friday, 11am - 7pm.
`
`Examiner interviews are available via telephone,in-person, and video conferencing
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`using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is
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`

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`Application/Control Number: 16/634,998
`Art Unit: 1727
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`Page 8
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`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, Barbara Gilliam can be reached on 571-272-1330. The fax phone number for the
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`organization wherethis 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 Patent Center,visit:
`
`https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for
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`more information about Patent Center and https://www.uspto.gov/patents/docx for
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`information about filing in DOCX format. For additional questions, contact the Electronic
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`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.
`
`/HMM/
`
`/BARBARA L GILLIAM/
`Supervisory Patent Examiner, Art Unit 1727
`
`