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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
`
`16/935,205
`
`07/22/2020
`
`MASAHISA FUJIMOTO
`
`083710-3094
`
`2856
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`MARTIN, ANGELA J
`
`1727
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/25/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`46/935,205
`FUJIMOTOetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ANGELA J MARTIN
`1727
`Yes
`
`
`
`-- The MAILING DATEof this 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 5/11/23.
`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*
`1-16 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) 1-16 is/are rejected.
`1) Claim(s)__is/are objectedto.
`Cj} Claim(s)
`are subjectto restriction and/or election requirement
`* 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)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)[VM. 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 beenreceived 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230819
`
`

`

`Application/Control Number: 16/935,205
`Art Unit: 1727
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined under the
`
`first inventor to file provisions of the AIA.
`
`Applicant has amended independent claim 1 and added new claims 13-16 (pending
`
`claims 1-16). However, the rejection is madefinal for the following reasons of record.
`
`Claim Rejections - 35 USC § 112
`
`1.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`(a) INGENERAL.—The specification shall contain a written description of the
`invention, and of the manner and process of making and usingit, in suchfull, clear, concise,
`and exact terms as to enable any person skilled in the art to whichit pertains, or with whichit
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor or joint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the
`manner and process of making and usingit, in suchfull, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with whichit is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
`
`2.
`
`Claim 1
`
`is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first
`
`paragraph, asfailing to comply with the written description requirement. The claim(s)
`
`contains subject matter which wasnot described in the specification in such a way as to
`
`reasonably conveyto one skilled in the relevant art that the inventor or a joint inventor,
`
`or for applications subject to pre-AlIA 35 U.S.C. 112, the inventor(s), at the time the
`
`application wasfiled, had possession of the claimed invention. In amended independent
`
`

`

`Application/Control Number: 16/935,205
`Art Unit: 1727
`
`Page 3
`
`claim 1, the amendment, “the cathode active material layer as a whole is in solid
`
`phase, the anode active material as a whole is in solid phase’the subject matter is
`
`not properly described in the application asfiled.
`
`3.
`
`Claim 1
`
`is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first
`
`paragraph, becausethe specification does not reasonably provide enablement for “as a
`
`whole is in solid phase”. The specification does not enable any person skilled in the art
`
`to whichit pertains, or with which it is most nearly connected, to make and use the
`
`invention commensurate in scope with these claims. The term “active material layer as
`
`a whole is in solid phase’is not recited nor described in the specification.
`
`4.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—The specification shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`5.
`
`Claim 1
`
`is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the
`
`subject matter which the inventor or a joint inventor (or for applications subject to pre-
`
`AIA 35 U.S.C. 112, the applicant), regards as the invention.
`
`6.
`
`The term “active material layer as a whole is in solid phase”in claim 1is a relative
`
`term which renders the claim indefinite. The term “as a whole is in solid phase’ is not
`
`defined by the claim, the specification does not provide a standard for ascertaining the
`
`requisite degree, and one of ordinary skill in the art would not be reasonably apprised of
`
`

`

`Application/Control Number: 16/935,205
`Art Unit: 1727
`
`Page 4
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`the scope of the invention. The term “as a whole is in solid phase”, has been rendered
`
`indefinite.
`
`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.
`
`Claim(s) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Chiang et al., US 2016/0056490.
`
`Regarding claim 1, Chiang etal., teaches a lithium secondary battery (0024),
`
`comprising:
`
`a cathode (abstract; 0009; 0028); an anode (abstract; 0009) including an anode current
`
`collector (0054) and an anode active material (0054); a separator disposed between the
`
`cathode and the anode (0041; 0054); and an electrolyte liquid (abstract; 0009) in
`
`contact with the cathode and the anode (0027), wherein the cathode includes a cathode
`
`current collector (0054) and a cathode active material layer (0089) disposed on the
`
`cathode current collector (0054); the anode includes a material capable of forming an
`
`alloy with lithium during charge (0045; 0085); the electrolyte liquid includes lithium ions
`
`(0056) and counter anions ofthe lithium ions (0082); the electrolyte liquid contains at
`
`least one selected from the group consisting of biphenyl (0125); the electrolyte includes
`
`

`

`Application/Control Number: 16/935,205
`Art Unit: 1727
`
`Page 5
`
`at least one selected from the group consisting of a cyclic ether (0126), a glyme (0126),
`
`and a sulfolane (0126) as the solvent thereof; and the anode active material is disposed
`
`away from the anode current collector (0054-0055; 0124).
`
`Chiang et al., does not teach ““the cathode active material layer as a whole is in solid
`
`phase, the anode active material as a whole is in solid phase’.
`
`However, Chiang et al., teaches “semi-solid” which refers to a material that is a mixture
`
`of liquid and solid phases... gel.” (0037-0038). Additionally, Chiang et al., teaches “the
`
`anode 150 can be a solid anode” (0054): however, although it does not recite a “solid
`
`cathode’, it does teach a “semi-solid cathode” (0089; 0109).
`
`One of ordinary skill would have been motivated to employ the cathode and anodeof
`
`Chiang et al., teaches the solid anode (0054) and a gel cathode, whichis a type of solid
`
`cathode (0037), because in “some embodiments, the electrode materials described
`
`herein can be a flowable semi-solid or condensedliquid composition. A flowable semi-
`
`solid electrode can include a suspension of an electrochemically active material (anodic
`
`or cathodic particles or particulates), and optionally an electronically conductive material
`
`(e.g., carbon) in a non-aqueous liquid electrolyte. Said another way, the active electrode
`
`particles and conductive particles are co-suspendedin an electrolyte to produce a semi-
`
`solid electrode.” (0032; 0080).
`
`Regarding claim 2, Chiang et al., teaches the cyclic ether (0126) includes at least one
`
`selected from the group consisting of 2- methyltetrahydrofuran (0126), tetrahydrofuran
`
`(0126), 1,3-dioxolane (0126), and 4-methyl-1,3-dioxolane (0126).
`
`Regarding claim 3, Chiang et al., teaches the glyme (0126) includes at least one
`
`selected from the group consisting of tetraglyme (0126).
`
`

`

`Application/Control Number: 16/935,205
`Art Unit: 1727
`
`Page 6
`
`Regarding claim 4, Chiang et al., teaches the sulfolane (0126) includes methylsulfolane
`
`(0126).
`
`Regarding claim 5, Chiang et al., teaches the anode active material includes Al (0045):
`
`a LiAl alloy is generated during the charge (0111); and a composition of the LiAl alloy is
`
`at least one selected from the group consisting of LiAI (0111).
`
`Regarding claim 6, Chiang et al., teaches the anode active material includes Zn (0111);
`
`a LiZn alloy is generated during the charge (0111); and a composition of the LiZn alloy
`
`is at least one selected from the group consisting of LiZn (0111).
`
`Regarding claim 7, Chiang et al., teaches the anode active material includes Si (0045;
`
`0111);
`
`a LiSi alloy is generated during the charge; and a composition of the LiSi alloy (0111) is
`
`at least one selected from the group consisting of Li132Si4 (0111), Li12Si7 (0111).
`
`Regarding claim 8, Chiang et al., teaches the anode active material includes Sn (0111);
`
`a LiSn alloy is generated during the charge (0111); and a composition of the LiSn alloy
`
`is at least one selected from the group consisting of Li22Sn5, Li7Sn2, Li13Sn5, Li5Sn2
`
`(0111).
`
`Regarding claim 9, Chiang et al., teaches the anode active material includes Ge (0111):
`
`a LiGe alloy is generated during the charge (0111); and a composition of the LiGe alloy
`
`is at least one selected from the group consisting of LiGe (0111).
`
`Regarding claim 10, Chiang et al., teaches the anode active material includes Cd
`
`(0097);
`
`a LiCd alloy is generated during the charge (0097); and a composition of the LiCd alloy
`
`is at least one selected from the group consisting of LiCd (0097).
`
`

`

`Application/Control Number: 16/935,205
`Art Unit: 1727
`
`Page 7
`
`Regarding claim 11, Chiang et al., teaches the anode active material includes Bi (0045);
`
`a LiBi alloy is generated during the charge; and a composition of the LiBi alloy is at least
`
`one selected from the group consisting of LiBi (0045).
`
`Regarding claim 12, Chiang et al., teaches the separator includes at least one selected
`
`from the group consisting of a solid electrolyte (abstract), a gel electrolyte (0037; 0088).
`
`Regarding claim 13, Chiang et al., teaches anode active material (anode 150)is
`
`separated from the current collector (negative current collector 120) by the electrolyte
`
`liquid (separator 130 infused with liquid electrolyte) (0056).
`
`Regarding claim 14, Chiang et al., teaches the electrolyte liquid contains at least one
`
`selected from the group consisting of triphenylene (0088).
`
`Regarding claim 15, Chiang et al., teaches in a charge state (0024),
`
`and a discharge state (0026; 0159).
`
`Chiang et al., does not teach a potential of the electrolyte liquid is lower than an
`
`equilibrium potential of the anode active material, and, the potential of the electrolyte
`
`liquid is higher than the equilibrium potential of the alloy of the anode active material
`
`with lithium.
`
`However, since the electrodes and electrolytes in Chiang et al., are the same asin the
`
`application, “[W]here the general conditions of a claim are disclosedin the prior art, it is
`
`not inventive to discover the optimum or workable ranges by routine experimentation.”
`
`See /n re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of
`
`an optimum value of a known result effective variable, without producing any new or
`
`unexpected results, is within the ambit of a person of ordinary skill in the art. See /n re
`
`Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
`
`

`

`Application/Control Number: 16/935,205
`Art Unit: 1727
`
`Page 8
`
`In addition, A prima facie case of obviousness may be made when chemical
`
`compounds havevery close structural similarities and similar utilities. “An obviousness
`
`rejection based on similarity in chemical structure and function entails the motivation of
`
`one skilled in the art to make a claimed compound, in the expectation that compounds
`
`similar in structure will have similar properties.” /n rePayne, 606 F.2d 303, 313,
`
`203 USPQ 245, 254 (CCPA 1979)
`
`Regarding claim 16, Chiang et al., teaches the anodeactive material is solidified with a
`
`binder including polyvinylidene fluoride (PVDF) (0052), polyethylene (0112; 0124).
`
`Responseto Arguments
`
`9.
`
`Applicant's argumentsfiled 5/11/2023 have been fully considered but they are
`
`not persuasive. The Applicant argues that Chiang etal., fails to teach the feature “the
`
`cathode active material layer as a whole is in solid phase, the anode active material as
`
`a whole is in solid phase” of claim 1.”
`
`However, Chiang et al., teaches “semi-solid” which refers to a material that is a mixture
`
`of liquid and solid phases... gel.” (0037-0038). Additionally, Chiang et al., teaches “the
`
`anode 150 can be a solid anode” (0054); however, although it does notrecite a “solid
`
`cathode’, it does teach a “semi-solid cathode” (0089; 0109).
`
`One of ordinary skill would have been motivated to employ the cathode and anodeof
`
`Chiang et al., teaches the solid anode (0054) and a gel cathode, whichis a type of solid
`
`cathode (0037), because in “some embodiments, the electrode materials described
`
`herein can be a flowable semi-solid or condensedliquid composition. A flowable semi-
`
`solid electrode can include a suspension of an electrochemically active material (anodic
`
`

`

`Application/Control Number: 16/935,205
`Art Unit: 1727
`
`Page 9
`
`or cathodic particles or particulates), and optionally an electronically conductive material
`
`(e.g., carbon) in a non-aqueous liquid electrolyte. Said another way, the active electrode
`
`particles and conductive particles are co-suspendedin an electrolyte to produce a semi-
`
`solid electrode.” (0032; 0080).
`
`Additionally, because the specification does not reasonably provide enablementfor “as
`
`a whole is in solid phase”. The specification does not enable any person skilled in the
`
`art to whichit pertains, or with which it is most nearly connected, to make and use the
`
`invention commensurate in scope with these claims. The term “active material layer as
`
`a whole is in solid phase’ is not recited nor described in the specification.
`
`Conclusion
`
`10.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`A shortenedstatutory period for reply to this final action is set to expire THREE
`
`
`
`MONTHS from the mailing date of this action. In the eventafirst reply is filed within
`
`TWO MONTHS ofthe mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory 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 the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the mailing date ofthis final action.
`
`

`

`Application/Control Number: 16/935,205
`Art Unit: 1727
`
`Page 10
`
`11.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ANGELA J MARTIN whosetelephone number is
`
`(571)272-1288. The examiner can normally be reached 7am-4pm.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
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`
`(AIR) at http:/Awww.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 organization where this 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
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`available to registered users. To file and manage patent submissions in Patent Center,
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`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
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`
`ANGELA J. MARTIN
`Examiner
`
`Art Unit 1727
`
`/ANGELA J MARTIN/
`Examiner, Art Unit 1727
`
`

`

`Application/Control Number: 16/935,205
`Art Unit: 1727
`
`/BARBARAL GILLIAM/
`Supervisory Patent Examiner, Art Unit 1727
`
`Page 11
`
`