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
`
`17/024,313
`
`09/17/2020
`
`Ryuichi NATSUI
`
`083710-3106
`
`7937
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`WEINER, LAURA S
`
`1727
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/03/2023
`
`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)
`
`

`

`Office Action Summary
`
`Application No.
`17/024 ,313
`Examiner
`Laura Weiner
`
`Applicant(s)
`NATSUI etal.
`Art Unit
`1727
`
`AIA (FITF) Status
`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 1-9-2023.
`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.and 3-9 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) 1and3-9 is/are rejected.
`1) Claim(s)__is/are objectedto.
`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)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)1) 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)C 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 20230122
`
`

`

`Application/Control Number: 17/024,313
`Art Unit: 1727
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Response to Arguments
`
`2.
`
`Applicant's argumentsfiled 1-9-2023 have been fully considered but they are not
`
`persuasive.
`
`The rejection of claims 1 and 3-9 remain rejected on the ground of nonstatutory
`
`double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 10,811,671
`
`because not terminal disclaimer wasfiled.
`
`3.
`
`Applicant’s arguments with respect to claim(s) 1 and 3-9 have been considered
`
`but are moot because the new ground of rejection does not rely on any reference
`
`applied in the prior rejection of record for any teaching or matter specifically challenged
`
`in the argument.
`
`Election/Restrictions
`
`4.
`
`Applicant’s election of a positive electrode active material comprising
`
`LixAyMezOaFb where A=Na and Me=Mhn in the reply filed on 7-25-2022 is
`
`acknowledged. Because applicant did not distinctly and specifically point out the
`
`supposederrorsin the restriction requirement, the election has been treated as an
`
`election without traverse (MPEP § 818.01 (a)).
`
`

`

`Application/Control Number: 17/024,313
`Art Unit: 1727
`
`Page 3
`
`Claim Objections
`
`5.
`
`Claim 4 is objected to because of the following informalities: Claim 4 should cite
`
`“selected from the group consisting of Mn and Co”. Appropriate correction is required.
`
`Claim Rejections - 35 USC § 103
`
`6.
`
`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.
`
`7.
`
`Claim(s) 1 and 3-9 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Chen etal. (EP 2 921 455) or Chen et al. (US 2017/0005332) in view of Rolff et al. (US
`
`2016/0372747).
`
`Chen etal. (‘455) teaches in column 3, that the compound can comprise Li-
`
`x)NawMO-y2)Fu+y) where M is a transition metal. Chen et al. teaches that in on
`
`alternative the metal is V, Cr, W, Mo, etc. Chen et al. (‘455) teaches in column 7,
`
`Example 2, a lithium battery comprising a positive electrode comprising Li1.9Nao.1VO2F;
`
`lithium as the counter electrode and an electrolyte comprising lithium bis(oxalato)borate
`
`in EC:DMC.
`
`When Chen etal. teaches the same positive electrode active material,
`
`LixAyMeOaFb where x =1.9; y= 0.1; Me is a transition metal, a=2 and b= 1, then
`
`

`

`Application/Control Number: 17/024,313
`Art Unit: 1727
`
`Page 4
`
`inherently the same positive active material having a crystal structure belonging to a
`
`space group FM-3M mustalso be obtained.
`
`In addition, the presently claimed property of a positive active material having a
`
`crystal structure belonging to a space group FM-3M would have obviously have been
`
`present once the Chen etal. product is provided.
`
`/n re Best, 195 USPQ 433 (CCPA
`
`1977).
`
`Chen et al. discloses the claimed invention exceptfor specifically teaching that
`
`that Me can at least one or two or more elements specifically claimed in claim 1.
`
`Rolff et al. teaches on page2, a battery comprising Li2-nNanMyMn1-yO3-zFz
`
`whereM is a transition metal preferably Co, Ni, etc.
`
`It would have been obvious to one having ordinary skill in the art before the
`
`effective filing date of the claimed invention to use a transition metal comprising Co or
`
`Ni instead of the transition metals taught be Chen et al. because thesetransition metals
`
`can be usedin the positive electrode active material as explained above and one would
`
`expect therefore that these transition materials would function in a similar way and give
`
`similar results.
`
`8.
`
`Claim(s) 1, 3 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Chen et al. (EP 2 921 455) or Chen et al. (US 2017/0005332) in view of Sun etal.
`
`(US 2013/0266868).
`
`Chen etal. (‘455) teaches in column 3, that the compound can comprise Li-
`
`x)NawMO-y2)Fu+y) where M is a transition metal. Chen et al. teaches that in on
`
`alternative the metal is V, Cr, W, Mo, etc. Chen et al. (‘455) teaches in column 7,
`
`

`

`Application/Control Number: 17/024,313
`Art Unit: 1727
`
`Page 5
`
`Example 2, a lithium battery comprising a positive electrode comprising Li1.9Nao.1VO2F;
`
`lithium as the counter electrode and an electrolyte comprising lithium bis(oxalato)borate
`
`in EC:DMC.
`
`When Chen etal. teaches the same positive electrode active material,
`
`LixAyMeOaFb where x =1.9; y= 0.1; Me is a transition metal, a=2 and b= 1, then
`
`inherently the same positive active material having a crystal structure belonging to a
`
`space group FM-3M mustalso be obtained.
`
`In addition, the presently claimed property of a positive active material having a
`
`crystal structure belonging to a space group FM-3M would have obviously have been
`
`present once the Chen etal. product is provided.
`
`/n re Best, 195 USPQ 433 (CCPA
`
`1977).
`
`Chen et al. discloses the claimed invention exceptfor specifically teaching that
`
`that Me is a transition metal element such as V, Ti, Cu, Fe, Zn, Nb, Mo instead of
`
`V or Mo which has been removed.
`
`Sun et al. (US 2013/0266868) teaches on page 1, [0021-0027], a lithium battery
`
`comprising a positive active material comprising a compound having a layered structure
`
`represented by Chemical Formula 1, Lit+x[NaaCobMcMnad]1-xOz2Fy whereMis a transition
`
`metal element such asV,Ti, Cu, Fe, Zn, Nb, Mo, etc.
`
`-0.05 <x < 0.25; 0 <y < 0.05; 0.2
`
`<a<0.9;0<b<0.5;0<c<0.05;0.1 <d<0.9 and at+b+c+d=1.
`
`It would have been obvious to one having ordinary skill in the art before the
`
`effective filing date of the claimed invention to use a transition metal comprising Ti, Cu,
`
`Fe, Zn or Nb instead of the transition metal V because Sun et al. teaches that these
`
`transition metals can be used in the positive electrode active material as explained
`
`

`

`Application/Control Number: 17/024,313
`Art Unit: 1727
`
`Page 6
`
`above and one would expect therefore that these transition materials would function in a
`
`similar way and give similar results.
`
`Double Patenting
`
`9.
`
`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 actualor 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
`
`

`

`Application/Control Number: 17/024,313
`Art Unit: 1727
`
`Page 7
`
`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).
`
`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
`
`moreinformation about eTerminal Disclaimers, refer to
`
`www.uspto.gov/patents/process/file/efs/guidance/eT D-info-l.jsp.
`
`10.
`
`Claims 1 and 3-9 are rejected on the ground of nonstatutory double patenting as
`
`being unpatentable over claims 1-7 of U.S. Patent No. 10,811,671. Although the claims
`
`at issue are notidentical, they are not patentably distinct from each other because U.S.
`
`Patent No. 10,811,671 claims in claim 1, instant claims 1-2 and 4 and claims in claim 2
`
`instant claim 3. U.S. Patent No. 10,811,671 claims in claims 3-7, the exact same instant
`
`claims 5-9.
`
`Conclusion
`
`11.
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR 1.136(a).
`
`

`

`Application/Control Number: 17/024,313
`Art Unit: 1727
`
`Page 8
`
`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 date of this final action.
`
`12.—Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Laura Weiner whose telephone number is (571)272-
`
`1294. The examiner can normally be reached 9 am-5 pm EST M-F.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avww.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
`
`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-
`
`

`

`Application/Control Number: 17/024,313
`Art Unit: 1727
`
`center for more information about Patent Center and
`
`Page 9
`
`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.
`
`/LAURA S. WEINER/
`Primary Examiner
`Art Unit 1727
`
`/Laura Weiner/
`Primary Examiner, Art Unit 1727
`
`