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
`
`16/757,654
`
`04/20/2020
`
`Daisuke Ito
`
`P200364US00
`
`7992
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`BOFR, ANCA
`
`1722
`
`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)
`
`

`

`Office Action Summary
`
`Application No.
`16/757,654
`Examiner
`ANCA EOFF
`
`Applicant(s)
`Ito etal.
`Art Unit
`1722
`
`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) Responsive to communication(s) filed on 04/20/2020.
`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.
`
`Disposition of Claims*
`1-8 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) 1-8 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 04/20/2020 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
`1.2 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 06/23/2020,06/28/2021.
`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 20220304
`
`

`

`Application/Control Number: 16/757,654
`Art Unit: 1722
`
`Page 2
`
`DETAILED ACTION
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`2.
`
`3.
`
`Claims 1-8 are pending.
`
`The foreign priority application No.2018-035667 filed on February 28, 2018 in
`
`Japan has been received and it is acknowledged.
`
`Specification
`
`4.
`
`The following guidelinesillustrate the preferred layout for the specification of a
`
`utility application. These guidelines are suggested for the applicant’s use.
`
`Arrangement of the Specification
`
`Asprovided in 37 CFR 1.77(b), the specification of a utility application should
`
`include the following sections in order. Each of the lettered items should appearin
`
`upper case, without underlining or bold type, as a section heading. If no text follows the
`
`section heading, the phrase “Not Applicable” should follow the section heading:
`
`(a) TITLE OF THE INVENTION.
`
`(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
`
`(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR
`
`DEVELOPMENT.
`
`(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
`
`(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A
`
`READ-ONLY OPTICAL DISC OR ASA TEXT FILE VIA THE OFFICE ELECTRONIC
`
`FILING SYSTEM.
`
`

`

`Application/Control Number: 16/757,654
`Art Unit: 1722
`
`Page 3
`
`(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR
`
`A JOINT INVENTOR.
`
`(g) BACKGROUND OF THE INVENTION.
`
`(1) Field of the Invention.
`
`(2) Description of Related Art including information disclosed under 37 CFR 1.97
`
`and 1.98.
`
`(h) BRIEF SUMMARYOF THE INVENTION.
`
`(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
`
`(j) DETAILED DESCRIPTION OF THE INVENTION.
`
`(k) CLAIM OR CLAIMS (commencing on a separate sheet).
`
`(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
`
`(m) SEQUENCELISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A
`
`“SequenceListing’ is required on paper if the application discloses a nucleotide or
`
`amino acid sequenceas defined in 37 CFR 1.821(a) and if the required “Sequence
`
`Listing” is not submitted as an electronic document either on read-only optical disc or as
`
`a textfile via the Office electronic filing system.)
`
`The specification of the instant application needs to be amended to recite under
`
`the heading (b) CROSS-REFERENCE TO RELATED APPLICATIONS that the
`
`application is a National Stage entry under 37 USC 371 of the International Application
`
`No.PCT/JP2019/004323 filed on February 07, 2019 which claims benefit of the priority
`
`application No.2018-035667 filed on February 28, 2018 in Japan.
`
`

`

`Application/Control Number: 16/757,654
`Art Unit: 1722
`
`Page 4
`
`Double Patenting
`
`5.
`
`The nonstatutory double patenting rejection is based on a judicially created
`
`doctrine groundedin public policy (a policy reflected in the statute) so as to prevent the
`
`unjustified or improper timewise extension of the “right to exclude” granted by a patent
`
`and to prevent possible harassment by multiple 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); In re Goodman, 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 438, 164 USPQ 619
`
`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timelyfiled 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 etseq.for
`
`applications not subject to examination under the first inventor to file provisions of the
`
`AlA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
`
`

`

`Application/Control Number: 16/757,654
`Art Unit: 1722
`
`Page 5
`
`The USPTOInternet 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 the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
`
`PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may
`
`befilled 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/eT D-info-l.jsp.
`
`6.
`
`Claims 1 and 3-8 are provisionally rejected on the ground of nonstatutory double
`
`patenting as being unpatentable over claims 1-8 of copending Application No.
`
`16/640,216 (US 2020/0365878) in view of Odani et al. (US 2011/0183218).
`
`The copending Application No. 16/640,216 claims a negative electrode
`
`comprising a negative electrode current collector and a negative electrode mixture layer
`
`formed on the negative electrode current collector, the negative electrode mixture layer
`
`including:
`
`a first layer formed on the negative electrode current collector and including a
`
`negative electrode active material andafirst binding agent, the negative electrode
`
`active material including a carbon material A, a Si-containing compound, andafirst
`
`binding agent including polyacrylic acid or a salt thereof; and
`
`a second layer formed on the first layer and including a negative electrode active
`
`material and a second binding agent, the negative electrode active material includes a
`
`carbon material B having a tap density higher than a tap density of the carbon material
`
`A; wherein
`
`

`

`Application/Control Number: 16/757,654
`Art Unit: 1722
`
`Page 6
`
`a massofthe first layer relative to a mess of the negative electrode mixture layer
`
`is 5}0mass%or greater and less than 90 mass%, and a massif the second layer relative
`
`to the mass of the negative electrode mixture layer is greater than 10 mass% and 50
`
`mass%or less, and a packing density of the second layer is lower than a packing
`
`density ofthe first layer (claim 1).
`
`The copending Application No. 16/640,216 further claims a nonaqueous
`
`electrolyte secondary battery comprising the negative electrode, a positive electrode,
`
`and a nonaqueous electrolyte (claim 7).
`
`The copending Application No. 16/640,216 further claims that the nonaqueous
`
`electrolyte comprises fluoroethylene carbonate (claim 8), which is a nonaqueous
`
`solvent, but fails to claim that the nonaqueous electrolyte comprises an electrolyte salt
`
`including LiFSI.
`
`However, Odani et al. teach that batteries wherein the electrolyte comprises FEC
`
`(fluoroethylene carbonate) and LiFSI have long operating time of the current shut-off
`
`valve and high capacity retention rate at low and high temperatures (par.0210).
`
`Therefore, it would have been obvious to one of ordinary skill in the art before the
`
`filing date of the claimed invention to use LiIFSI in combination with FEC (fluoroethylene
`
`carbonate) in the nonaqueous electrolyte of the copending Application No. 16/640,216,
`
`in order to improve the properties of the battery.
`
`The nonaqueous electrolyte secondary battery in claims 7 and 8 of the
`
`copending Application No. 16/640,216 modified by Odani et al. is equivalent to the
`
`nonaqueous electrolyte secondary battery in claim 1 of the instant application.
`
`

`

`Application/Control Number: 16/757,654
`Art Unit: 1722
`
`Page 7
`
`The copending Application No. 16/640,216 further claims that the carbon material
`
`B has a BET specific surface area higher than a BET specific surface area of the carbon
`
`material A (claim 2), same asin claim 3 of the instant application.
`
`The copending Application No. 16/640,216 further claims that a BET specific
`
`surface area of the carbon material A is 0.9m?/g-4.5m?/g, and a BET specific surface of
`
`the carbon material B is 4.0m?/g-8.0m?/g (claim 3), same asin claim 4 of the instant
`
`application.
`
`The copending Application No. 16/640,216 further claims that the tap density of
`
`the carbon material A is 0.85 g/cm? to 1.00 g/cm? (claim 4), same asin claim 5 of the
`
`instant application.
`
`The copending Application No. 16/640,216 further claims that the tap density of
`
`the carbon material B is 1.00 g/cm? to 1.25 g/cm? (claim 5), same asin claim 6 of the
`
`instant application.
`
`The copending Application No. 16/640,216 further claims that a packing density
`
`of the negative electrode mixture layer is greater than or equal to 1.65 g/cm® (claim 6),
`
`same as in claim 7 of the instant application.
`
`The copending Application No. 16/640,216 further claims that the nonaqueous
`
`electrolyte comprises fluoroethylene carbonate in an amount greater than or equalto
`
`15mass%(claim 8), same asin claim 8 of the instant application.
`
`This is a provisional nonstatutory double patenting rejection.
`
`

`

`Application/Control Number: 16/757,654
`Art Unit: 1722
`
`Page 8
`
`Claim Rejections - 35 USC § 103
`
`7.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections setforth in this Office action:
`
`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 skill in the art to which the claimed invention pertains. Patentability shall not be
`negated by the manner in which the invention was made.
`
`8.
`
`Claims 1, 2, and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable
`
`overIto et al. (WO 2018/179817, with citations from the English equivalent US
`
`2021/0104750) in view of Odani et al. (US 2011/0183218).
`
`With regard to claims 1, 5, and 6, Ito et al. teach a negative electrode comprising:
`
`-a first layer deposited on the current collector, wherein the first layer is made
`
`from a slurry comprising 89 parts of graphite A having a tap density of 0.92g/cm%,8
`
`parts of carbon-coated SiOx (x=0.94), 1 part by mass PAAlithium salt, 1 part by mass
`
`CMC sodium salt, 1 part by mass SBR, and an appropriate amountof water to form a
`
`mixture;
`
`-a second layer formed on the first layer formed from a slurry containing 97.5
`
`parts by mass of graphite B having a tap density of 1.14 g/cm®, 1.5 parts of CMC
`
`sodium salt, 1 part by mass SBR, and an appropriate amountof water (Example 2 in
`
`par.0049, par.0044-0048).
`
`PAAlithium salt is a lithium salt of polyacrylic acid (PAA).
`
`Graphite A having a tap density of 0.92g/cm° in the first layer of the negative
`
`electrode ofIto et al. is equivalent to the “carbon material A” in claim 1 and meets the
`
`limitations of claim 5.
`
`

`

`Application/Control Number: 16/757,654
`Art Unit: 1722
`
`Page 9
`
`Graphite B having a tap density of 1.14 g/cm*in the second layer of the negative
`
`electrode ofIto et al. meets the limitations of claim 1 for “carbon material B having a tap
`
`density higher than a tap density of the carbon material A”, and meetsthe limitations of
`
`claim 6.
`
`lto et al. further that the lower/first layer of the negative electrode mixture layer is
`
`50-90 mass%of the mass of the negative electrode mixture layer, and the massof the
`
`upper/second layer is 10-50 mass%of the mass of the negative electrode mixture layer
`
`(abstract).
`
`The components of the negative electrode in Example 2 ofIto et al. are the same
`
`as in the negative electrode in the sole Example in par.0051 -0052 of the specification of
`
`the instant application. The specification further shows that the second layer of the
`
`negative electrode has a lower packing density than the first layer (par.0052).
`
`Absenta record to the contrary, it would be expected that the second layer of the
`
`negative electrode in Example 2 ofIto et al. has a lower packing density than the first
`
`layer of the negative electrode.
`
`“(fine discovery of a previously unappreciated properiy of a priar art cornposilion. or of a scientific
`
`explanation for the pricr art's functioning, does nol render ihe oid camposiicn oalentahly newto the
`
`discoverer.” Atlas Fowder Co. v (REGO inc., 190 F.3d 1042, 1947, 51 USPOQ2d 1943, 1947 (Fad. Cir, 1999).
`
`Thus the claiming of a new use, new function or unknown oroperty which is inherently present in the prior art
`
`does not necessarily rnake the claim patentable. fn re Best 552 Fed i2b2, 1254, 195 USPQ 439, 493 (COPA
`
`4977). (MPEP 2112.1. SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY
`
`OF A NEW PROPERTY)
`
`lto et al. further teach a cell comprising a positive electrode, the negative
`
`electrode, and a nonaqueous electrolytic solution comprising LiPFse, ethylene carbonate
`
`

`

`Application/Control Number: 16/757,654
`Art Unit: 1722
`
`Page 10
`
`(EC) and ethyl methyl carbonate (EMC) (par.0044-0049). The cell is a nonaqueous
`
`electrolyte secondary battery (par.0011).
`
`Ethylene carbonate (EC) and ethyl methyl carbonate (EMC) meetthe limitations
`
`of claim 1 for “nonaqueous solvent”.
`
`LiPFeis an electrolyte salt.
`
`However,lto et al. fail to teach that the electrolyte salt includes LiFSI.
`
`Odani et al. teach a nonaqueous electrolyte comprising FEC (fluoroethylene
`
`carbonate) and LiFSI in addition to LiPFe and non-aqueous solvents (Tables 1-3 in
`
`par.0209).
`
`Odani et al. teach that the batteries comprising both FEC and LiFSI in the
`
`nonaqueous electrolyte have a long operating time of the current shut-off valve, high
`
`capacity retention at low temperature and high temperature (par.0210).
`
`Therefore, it would have been obvious to one of ordinary skill in the art before the
`
`filing date of the claimed invention to include FEC and LiFSI in the nonaqueous
`
`electrolytic solution of Example 2 of Ito et al, in order to improve the battery properties.
`
`The nonaqueous electrolyte secondary battery of Ito modified by Odani is
`
`equivalent to the nonaqueous electrolyte secondary battery in claims 1, 5, and 6 of the
`
`instant application.
`
`With regard to claim 2, Odani et al. teach that the electrolyte may comprise LiFSI
`
`in an amount of 0.3 mol/l and LiPFe in an amount of 0.8 mol/l (see the examples in
`
`Tables 1 and 2 in par.0209). This is equivalent to LiFSI in amount of about 27mol%of
`
`the electrolyte salt. The amount is within the claimed range.
`
`

`

`Application/Control Number: 16/757,654
`Art Unit: 1722
`
`Page 11
`
`With regard to claim 7, the components of the negative electrode in Example 2 of
`
`lto et al. are the same as in the negative electrode in the sole Example in par.0051-
`
`0052 of the specification of the instant application. The specification further shows that
`
`the negative electrode layer has a packing density of 1.65g/cm® (par.0052).
`
`Absenta record to the contrary, it would be expected that the negative electrode
`
`layer comprising the first and second layer in Examples2 of Ito et al. has a packing
`
`density of 1.65g/cem? (MPEP 2112.1. SOMETHING WHICH IS OLD DOES NOT
`
`BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY).
`
`With regard to claim 8, Odani et al. teach the FEC maybeincludedin the
`
`electrolyte in an amount of up to 50vol% based on the nonaqueous solvent (par.0046-
`
`0047). This range overlaps the claimed range.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ANCA EOFF whosetelephone number is (571)272-
`
`9810. The examiner can normally be reached Mon-Fri 10am-6:30pm.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Cynthia H. Kelly can be reached on 571-272-1526. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 16/757,654
`Art Unit: 1722
`
`Page 12
`
`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:/Awww.uspto.gov/patents/apply/patent-
`
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`
`https:/Awww.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
`
`additional questions, contact the Electronic 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.
`
`/ANCA EOFF/
`Primary Examiner, Art Unit 1722
`
`