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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
`
`16/639,384
`
`02/14/2020
`
`Satoshi Nishitani
`
`P200164US00
`
`7469
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`USYATINSKY, ALEXANDER
`
`1727
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`04/13/2022
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`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):
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`patentmail @ whda.com
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`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-9 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-9 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 02/14/2020 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 02/14/2020.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
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`4)
`
`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mail Date 20220408
`
`Application No.
`Applicant(s)
`16/639 384
`Nishitani et al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ALEXANDER USYATINSKY
`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
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`1) Responsive to communication(s) filed on 02/27/2020.
`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: 16/639,384
`Art Unit: 1727
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`Page 2
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`DETAILED ACTION
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Priority
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`2.
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`Acknowledgement has been made of applicant’s claim for priority under 35 USC
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`119 (a-d). The certified copy has been filed on 02/14/2020.
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`Information Disclosure Statement
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`3.
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`The Information Disclosure Statements (IDS)filed 02/14/2020 have been placed
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`in the application file and the information referred to therein has been considered.
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`Drawings
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`The drawings received 02/14/2020 are acceptable for examination purposes.
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`Claim Rejections - 35 USC § 103
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`4.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousnessrejections setforth 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 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.
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`5.
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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
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`commonly ownedasof the effective filing date of the claimed invention(s) absent any
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`evidenceto the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`point out the inventor and effectivefiling dates of each claim that was not commonly
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`ownedasofthe effectivefiling date of the later invention for the examiner to consider
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`

`

`Application/Control Number: 16/639,384
`Art Unit: 1727
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`Page 3
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`the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art
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`against the later invention.
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`6.
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`Claims 1-9, are rejected under 35 U.S.C. 103 as being unpatentable over
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`WO 2016/035290 to Minami (Minami, US 2017/0214041 is used as US published
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`equivalent) in view of US 20100015514 to Miyagi (Miyagi)
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`7.
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`Regarding claim 1, 5,6,7 and 8, Minami discloses a non-aqueous electrolyte
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`secondarybattery (Title), comprising a positive electrode, a separator. a negative
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`electrode facing the positive electrode with the separator interposed between the
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`positive electrode and the negative electrode (para 21), and anelectrolytic solution
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`(para 45) including a solvent and an electrolyte (para 45), the negative electrode
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`including a negative electrode material containing a lithium silicate phase (para 45) and
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`silicon particles dispersed in the lithium silicate phase (para 28). In addition, Minami
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`discloses that a content of the silicon particles in a range 20%to 80%relative to a total
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`massof the lithium silicate phase and the silicon particles the silicon particles being
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`contained in the negative electrode material, i.e. encompassed claimed content of 30
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`mass%or more. Specifically, Minami discloses the content of Si particles as 50% by
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`massrelative to a total mass ofthe lithium silicate phase and the silicon particles (para
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`52). Itis noted that a specific example in the prior art which is within a claimed range
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`anticipates the range. See MPEP 2131.03. in addition, Minami teachesthat the
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`electrolyte solvent can comprise chain carboxylates as methyl acetate or propyl acetate
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`but does not expressly discloses the electrolytic solution containing an ester compound
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`C of an alcohol compound A and a carboxylic acid compound B, and containing at least
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`

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`Application/Control Number: 16/639,384
`Art Unit: 1727
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`Page 4
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`one of the alcohol compound A and the carboxylic acid compound B in an amount of 15
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`ppm or more, relative to a massof the electrolytic solution.
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`8.
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`Miyagi teaches a non-aqueous electrolyte secondary battery (Title), comprising a
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`positive electrode, a separator. a negative electrode facing the positive electrode with
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`the separator interoosed between the positive electrode and the negative electrode
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`(para 21), and an electrolytic solution (Abstract) including a solvent and an electrolyte
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`(para 35). Miyagi also teaches that the electrolytic solution containing an ester
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`compound C of an alcohol compound A and a carboxylic acid compoundB(chain
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`carboxylic acid ester, e.g., methyl acetate reclaims 5,6,7 and 8) (para 1103), ( para
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`1117,1127), and containing at least one of the alcohol compoundA (e.g., monohydric
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`alcohol such as methyl alcohol) (para 1212, 1222 and the carboxylic acid compound B
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`(acetic acid) (para1129) in an amount of 15 ppm or more, relative to a mass of the
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`electrolytic solution ( para 1230, 1147). Miyagi also teaches that the negative electrode
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`active material comprises carbon and Si, and as such substantially like the negative
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`electrode active material of Minami. Miyagi also teaches that the battery employing said
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`electrolyte has a high capacity, long life, and high output. Therefore, It would have been
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`obvious to one or ordinary skill in the art before the effective filing date of the
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`claimed invention to modify the battery of Minami with the electrolyte solvent comprising
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`meth acetate acetic acid in amount of 15 ppm or more as taught by Miyagi because the
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`use of a known technique to improve similar devices (methods or products) in the same
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`wayis likely to be obvious and would provide the battery having high capacity long life,
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`and high output. See KSA International Co. v. Teleflex Inc.,550 U.S. __,__, 82
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`USPQ2d 1385, 1395 — 97 (2007) (see MPEP § 2143, C.).
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`

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`Application/Control Number: 16/639,384
`Art Unit: 1727
`
`Page 5
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`
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`9. Regarding claim 2, modified Minami discloses that the alcohol compoundAis
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`contained in an amount of 15 to 1000 ppm, relative to the massof the electrolytic
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`solution (Miyagi, para1230, preferably 15 ppm or higher and 100 ppm or lower).
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`Regarding claim 3, modified Minami discloses the invention as discussed above as
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`applied to claim 1, including a presence of methyl acetate in the amount of 15 ppm or
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`more and incorporate therein. Modified Minami does not expressly disclose the content
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`of the carboxylic acid (methyl acetate) in a range from 15 ppm to 1000 ppm relative to
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`the mass ofthe electrolytic solution. However, modified Minami teaches the content of
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`the carboxylic acid in the range 15 ppm or more (Miyagi, para Miyagi). In the case
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`where the claimed ranges “overlap or lie inside ranges disclosed bythe prior art” a case
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`of obviousness exists where the claimed ranges and prior art ranges do not overlap but
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`are close enough that one skilled in the art would have expected them to have the same
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`properties. MPEP 2144.05. It would have been obvious to one having ordinary skill in
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`the art at the time the invention wasfiled to optimize the amount of monocarboxylic
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`(acetic) acid based on Miyagi disclosure, since it has been held that where the general
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`conditions of a claim are disclosed in the prior art, discovering the optimum or workable
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`rangesinvolvesonly routine skill in the art.
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`/n re Aller, 105 USPQ 233(MPEP 2144.05
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`(II-A)).
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`10.
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`Regarding claim 4, modified Minami discloses that the ester compound C (chain
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`ester such as methyl acetate) is contained in an amount of 1 to 80%, relative to a
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`volume of the electrolytic solution (Miyagi, paral127, 5% or higher and 50%or lower).
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`11.
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`Regarding claim 9, Minami discloses LizSiOs (para 34, 52).
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`

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`Application/Control Number: 16/639,384
`Art Unit: 1727
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`Page 6
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`Conclusion
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`12.—Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to ALEXANDER USYATINSKYwhosetelephone number
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`is (571)270-7703. The examiner can normally be reached IFP.
`
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`
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`supervisor, Barbara Gilliam can be reached on 5712721330. The fax phone number for
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`the organization where this application or proceeding is assigned is 571-273-8300.
`
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`
`/Alexander Usyatinsky/
`Primary Examiner, Art Unit 1727
`
`