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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
`
`17/154,022
`
`01/21/2021
`
`YUTA SUGIMOTO
`
`083710-3273
`
`7351
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`LEONARD, MICHELLE TURNER
`
`1724
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/14/2023
`
`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)
`
`

`

`
`
`Disposition of Claims*
`1-9 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} 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://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) The drawing(s) filed on 01/21/2021 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.
`3.4.) 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
`01/21/2021,02/08/2022,02/06/2023.
`
`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 20230808
`
`Application No.
`Applicant(s)
`17/154,022
`SUGIMOTOetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`Michelle T Leonard
`1724
`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 02/06/2023.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() 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: 17/154,022
`Art Unit: 1724
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 103
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102
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`and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
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`basis (i.e., changing from AIA to pre-AlA) for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same
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`under either status.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`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.
`
`The factual inquiries for establishing a background for determining obviousness under 35 U.S.C.
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`103 are summarized as follows:
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`1. Determining the scope and contentsofthe 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 presentin the application indicating obviousness or
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`nonobviousness.
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`This application currently namesjoint inventors. In considering patentability of the claims the
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`examiner presumesthat the subject matter of the various claims was commonly ownedas of the
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`

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`Application/Control Number: 17/154,022
`Art Unit: 1724
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`Page 3
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`effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised
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`of the obligation under 37 CFR 1.56 to point out the inventor and effectivefiling dates of each claim that
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`was not commonly ownedas of the effective filing date of the later invention in order for the examiner
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`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
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`against the later invention.
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`Claims 1-5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Endoetal
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`[JPO08222235A, dated August 30, 1996], hereinafter Endo, and in view of lwamoto
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`[US2017/0309964A1, dated October 26, 2017].
`
`RegardingClaim 1, Edno discloses a battery (Endo 0001) comprising: a positive electrode
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`current collector (Endo 0029); a positive electrode (Endo 0001); a first electrolyte layer (Endo 0001); a
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`second electrolyte layer (Endo 0001); a negative electrode (Endo 0001); and a negative electrode
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`current collector (Endo 0048, copper plate), wherein the positive electrode current collector, the
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`positive electrode, the first electrolyte layer, the second electrolyte layer, the negative electrode, and
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`the negative electrode current collector are disposed in this order (Endo, 0013, 0029, 0048), the first
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`electrolyte layer contains a first solid electrolyte material (Endo 0015), the second electrolyte layer
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`contains a second solid electrolyte material (Endo 0015), the second solid electrolyte material being
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`different from the first solid electrolyte material (Endo 0001), an oxidation potential of the first solid
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`electrolyte material is more noble than an oxidation potential of the second solid electrolyte material
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`(Endo 0015-0016 and throughout, Fig. 1, Endo disclosesthe first solid electrolyte has a wider reduction
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`potential windowin the noble direction).
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`Endo is silent to the first electrolyte layer covers the positive electrode and is in contact with the
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`positive electrode current collector, and/or thefirst electrolyte layer covers the second electrolyte layer
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`and is in contact with the negative electrode current collector. Iwamoto disclosesthe first electrolyte
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`

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`Application/Control Number: 17/154,022
`Art Unit: 1724
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`Page 4
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`layer (lwamotoFig. 20, 130) covers the positive electrode (IwamotoFig. 20, 100) and is in contact with
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`the positive electrode current collector (Iwamoto Fig. 20, 110) (Iwamoto 0038-0040, Fig 20 ), and/or the
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`first electrolyte layer (Iwamoto Fig. 20, 130) covers the second electrolyte layer (lwamotoFig. 20, 230)
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`(Iwamoto 0046) and is in contact with the negative electrode current collector. It would have been
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`obvious to one of ordinaryskill in the art to combine Endo’s disclosure of a solid electrolyte battery with
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`two different electrolyte layers and twodifferent oxidation potentials to provide for a battery with a
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`wide potential window to prevent decomposition of the solid electrolyte (Endo 0015) with lwamoto’s
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`disclosure of the first electrolyte layer covers the positive electrode and is in contact with the positive
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`electrode current collector to reduce the probability of contact between the positive and negative
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`electrode current collectors and reduce the opportunity for pinholes to overlap between the two
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`electrolyte layers (Iwamoto 0047-0049), both of which reducethe risk of short circuiting (Iwamoto 0047-
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`0049), with a reasonable expectation of success.
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`Regarding Claim 2, modified Edno discloses the battery according to claim 1, wherein the first
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`electrolyte layer (lwamoto Fig. 20, 130) is in contact with the positive electrode (IwamotoFig. 20, 100)
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`(Iwamoto 0038-0040,Fig. 20).
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`Regarding Claim 3, modified Edno discloses the battery according to claim 1, wherein the
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`second electrolyte layer (Iwamoto Fig. 20, 230) is in contact with the negative electrode (lwamoto Fig.
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`20, 200) and covers the negative electrode (Iwamoto 0041-0043,Fig. 20) .
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`Regarding Claim 4, modified Edno discloses the battery according to claim 1, wherein the first
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`electrolyte layer (Iwamoto Fig. 20, 130) is in contact with the second electrolyte layer (IwamotoFig. 20,
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`230) and covers the second electrolyte layer (lwamoto 0049, Fig. 20).
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`Regarding Claim 5, modified Edno discloses the battery according to claim 1, wherein the
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`second electrolyte layer (Iwamoto Fig. 20, 230) is in contact with the first electrolyte layer (IwamotoFig.
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`20, 130) and coversthe first electrolyte layer (Iwamoto 0049,Fig. 20).
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`

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`Application/Control Number: 17/154,022
`Art Unit: 1724
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`Page 5
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`Regarding Claim 9, Endo modified by lwamotodiscloses the battery according to claim 1,
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`wherein the second solid electrolyte material is a sulfide solid electrolyte (Iwamoto 0086 with 0079).
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`(Iwamoto discloses a sulfide solid electrolyte may be used for the positive electrode-side electrolyte in
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`0079 and in 0086 discloses anysolid electrolytes disclosed for the positive electrode-side electrolyte
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`may be usedfor the negative electrode-side solid electrolyte, which corresponds to the second
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`electrolyte layer.)
`
`Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Endo [JP08222235A,
`
`dated August 30, 1996], hereinafter Endo, and in view of Iwamoto [US2017/0309964A1, dated
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`October 26, 2017], as applied to Claim 1, and further in view of Bohnsacketal. [Journal of Inorganic
`
`and General Chemistry 623, 1997, 1352-1356, dated March 16, 1997], hereinafter Bohnsack.
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`Regarding Claim 6, Endo and Iwamotodisclose the battery according to claim 1 but are silent to
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`the first solid electrolyte material contains Li, M, and X, where M is at least one selected from the group
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`consisting of metalloid elements and metal elements other than Li, and X is at least one selected from
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`the group consisting of F, Cl, Br, and |. Bohnsack discloses solid electrolyte material contains Li, M, and X,
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`where M is at least one selected from the group consisting of metalloid elements and metal elements
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`other than Li, and X is at least one selected from the group consisting of F, Cl, Br, and | (Bohnsack
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`abstract). (Bohnsack discloses Liz MBrg where M= metals Samarium through Lutetium and Yttrium
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`[abstract]. Bohnsack discloses these compositions havelithium ion conductivity and mobility [Bohnsack
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`1354-1355], which therefore makes them electrolytes). It would have been obvious to one of ordinary
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`skill in the art to combine Endo’s disclosed battery with two different electrolyte layers and two
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`different reduction potentials and lwamoto’s second electrolyte layer covering the negative electrode
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`and in contact with the negative current collector with the solid electrolyte material disclosed by
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`Bohnsackfor a solid electrolyte battery with lithium ion conductivity and mobility (Bohnsack 1354-1355)
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`

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`Application/Control Number: 17/154,022
`Art Unit: 1724
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`Page 6
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`and reduced risk of short circuiting (Iwamoto 0047-0049) and electrolyte decomposition (Endo 0015),
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`with a reasonable expectation of success.
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`Regarding Claim 7, Endo modified by lwamoto and Bohnsack discloses the battery according to
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`claim 6, wherein the first solid electrolyte material is represented by a composition formula of LicMeXy,
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`where a, (8, and y are each a value greater than zero (Bohnsack abstract and throughout). (Bohnsack
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`discloses multiple compounds withlithium ion conductivity and mobility (Bohnsack 1354-1355) such as
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`LisSmBre, LizEuBre, LisGdBre, LisTbBre, LisDyBre, and LizsYBreé with the formula LigMgX, where a, &, and y
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`are each a value greater than zero.)
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`Regarding Claim 8, Edno modified by lwamoto and Bohnsack discloses the battery according to
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`claim 6, wherein M includesyttrium (Bohnsack 1355 and throughout). (Bohnsack discloses Li3YBrg.).
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`Double Patenting
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`Claims 1-8 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as
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`that of Claims 1-8 of copending Application No. 17/154,022 (reference application). This is a
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`provisional statutory double patenting rejection since the claims directed to the sameinvention have
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`notin fact been patented.
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`A rejection based on double patenting of the “same invention” type finds its support in the
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`language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process...
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`may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context,
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`means an invention drawnto identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894);
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`In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330
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`(CCPA 1957).
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`A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or
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`

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`Application/Control Number: 17/154,022
`Art Unit: 1724
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`Page 7
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`amendingthe claims that are directed to the same invention so they are no longer coextensive in scope.
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`The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C.
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`101.
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`Claim 1 in the instant application is not patentably distinct from Claim 1 combined with Claim 3
`
`in 17/151,722. (Oxidation potential and reduction potential are related concepts and are evaluated with
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`respect to the claimed electrolyte layers. If the oxidation potential of the first solid electrolyte layer is
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`more noble than that of the second electrolyte layer, as in the instant application, the reduction
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`potential of the second solid electrolyte layer would be more noble than the first electrolyte layer, as in
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`17/151,722.)
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`Claim 2 in the instant application is not patentably distinct from Claim 3 in 17/151,722.
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`Claim 3 in the instant application is not patentably distinct from Claim 2 in 17/151,722.
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`Claim 4 in the instant application is not patentably distinct from Claim 5 in 17/151,722.
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`Claim 5 in the instant application is not patentably distinct from Claim 4 in 17/151,722.
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`Claim 6 in the instant application is not patentably distinct from Claim 6 in 17/151,722.
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`Claim 7 in the instant application is not patentably distinct from Claim 7 in 17/151,722.
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`Claim 8 in the instant application is not patentably distinct from Claim 8 in 17/151,722.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to Michelle T Leonard whose telephone number is (571)270-1681. The examiner can
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`normally be reached Mon-Fri 8-5 EST.
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`

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`Application/Control Number: 17/154,022
`Art Unit: 1724
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`Page 8
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`application or proceedingis assigned is 571-273-8300.
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`
`/MICHELLE T LEONARD/
`Examiner, Art Unit 1724
`/BRIAN R OHARA/
`Examiner, Art Unit 1724
`
`