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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/442,154
`
`09/23/2021
`
`Yukiho Okuno
`
`P210866US00
`
`2328
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA22182
`
`KOROVINA, ANNA
`
`1729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/29/2024
`
`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)
`
`

`

`Application No.
`Applicant(s)
`171442, 154
`Okunoet al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`ANNA KOROVINA
`1729
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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)C) Responsive to communication(s) filed on
`CA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon
`
`2a)C) This action is FINAL. 2b)¥)This action is non-final.
`3) 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)() 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*
`) © Claim(s) ___ is/are pending in the application.
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`L} Claim(s)__ is/are allowed.
`Claim(s) 1-6 is/are rejected.
`)
`LC] Claim(s)__ is/are objectedto.
`LC) 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://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`Application Papers
`10)C) The specification is objected to by the Examiner.
`11) The drawing(s) filed on
`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)C) None ofthe:
`b)™) Some**
`a) All
`1.¥) Certified copies of the priority documents have been received.
`2..) Certified copies of the priority documents have been received 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240523
`
`

`

`Application/Control Number: 17/442,154
`Art Unit: 1729
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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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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`underthe first inventor to file provisions of the AIA.
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`Claim Rejections - 35 USC § 103
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`2.
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103)is incorrect, any
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`correction of the statutory basis (i.e., changing from AIA to pre-AlA) for the rejection will
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`not be considered a new ground ofrejection if the prior art relied upon, and the rationale
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`supporting the rejection, would be the same undereither status.
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`3.
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`The following is a quotation of 35 U.S.C. 103 which forms the basisfor all
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`obviousnessrejections set forth 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
`claimedinvention andthe prior art are such that the claimed invention as a whole would have
`been obvious beforethe effectivefiling 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.
`
`4.
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`The factual inquiries for establishing a background for determining obviousness
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`under 35 U.S.C. 103 are summarized asfollows:
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`1. Determining the scope and contentsof the 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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`

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`Application/Control Number: 17/442,154
`Art Unit: 1729
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`Page 3
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`4. Considering objective evidence presentin the application indicating
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`obviousness or nonobviousness.
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`5.
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`Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over
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`Shiraga et al. (US 2018/0323419), as evidenced by Matus etal., (US 2018/0069233), in
`
`view of Sonobeetal. (US 2015/0125746), and Maedaet al. (US 2019/0181494),
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`hereinafter Shiraga, Sonobe, and Maeda.
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`Regarding Claims 1-3, Shiraga teaches a non-aqueous electrolyte secondary
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`battery comprising: a positive electrode; a negative electrode; and a non-aqueous
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`electrolyte, [0036-0039]. The negative electrode includes a negative electrode material
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`mixture including a negative electrode active material including a silicon-containing
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`material(i.e., Si, SiO, [0021], [0043]) and a carbon material (i.e., graphite, [0034, 0044});
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`the silicon-containing material includes of a first composite material and a second
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`composite material, at least the first composite material (i.e., Si, SiO), the first
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`composite material includes a lithium ion conductive phase, and silicon particles
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`dispersedin the lithium ion conductive phase(see Fig. 3C), the lithium ion conductive
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`phaseincluding a silicate phase (upon chargeof Si/SiOalithium silicate will form, see
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`Fig. 3A-3C of Matus), the silicate phase including at least one selected from the group
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`consisting of alkali metal elements(i.e., Li).
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`Further, Shiraga suggests a massratio X of the first composite material (e.g., 6
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`mass %, Table 1, Ex. 7) to a total of the first composite material (e.g., 6 mass %) and
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`the second composite material (0 mass %) satisfies X is less than or equalto1(i.e.,
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`6/(6+0) = 1). Additionally, Shiraga suggests a massratio Y of a total of the first
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`

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`Application/Control Number: 17/442,154
`Art Unit: 1729
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`Page 4
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`composite material (6 mass %) and the second composite material(i.e., 0 mass %) toa
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`total of the first composite material (6 mass %), the second composite material (0 mass
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`%), and the carbon material (94 mass %) satisfies Y is greater than or equal to 0.06
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`(i.e., (6+ 0)/ (6+ 0+ 94 = 0.06)). Finally, Shiraga suggests the valuesof X (i.e., 1) and
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`Y (i.e., 0.06) satisfy relational expressions (1) and (2):
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`JOOY ~ 32.2N5 + SSATIN' | SS. SGTN+ UR LGN! ~ GO2TSX ~ 35980 <0,
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`(i.e., 100*(0.06)-32.2*(1%5)+65.479*(1"4)-55.832*(1%3)+18.116*(1"2)-6.9275*(1)-3.5356
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`= - 8.9001) and
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`1OOY = LUSSESexpel F2BON) <6
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`(100*(0.06) — 2.1551 * exp(1.3289(1)) = - 2.13957).
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`Regarding Claims 1, and 4, Shiraga does not mention the use of a carbon
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`nanotubein the negative electrode; however, Sonobe suggests negative electrode
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`slurries comprising Si/C composite active materials utilize carbon nanotubes as an
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`electrical conductivity imparting material; the amountof the electrical conductivity
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`imparting material is 0.001 to 0.1 parts by mass to improve electrical conductivity
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`between electrode active materials, and the discharge load characteristics can be
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`improved, see (0086-0098, 0100-0101, 0110-0111, 0195-0196]. It would be obvious to
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`one having ordinary skill in the art Shiraga includes carbon nanotubesto improve
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`electrical conductivity between electrode active materials, and the discharge load
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`characteristics can be improved. Sonobe suggests the amountof carbon nanotubeis
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`0.001 mass %to 0.1 mass %with respect to a whole of the negative electrode mixture
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`(see [0111 and 0196]), which overlaps with that claimed(i.e., 0.1 mass % to 0.5 mass
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`%) or is close. In the case where the claimed ranges "overlap or lie inside ranges
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`

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`Application/Control Number: 17/442,154
`Art Unit: 1729
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`Page 5
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`disclosed bythe prior art" a prima facie case of obviousnessexists. In re Wertheim, 541
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`F.2d 257, 191 USPQ 90 (CCPA 1976). Similarly, a prima facie case of obviousness
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`exists where the claimed ranges or amounts do not overlap with the prior art but are
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`merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227
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`USPQ 773, 779 (Fed. Cir. 1985) (Court held as propera rejection of a claim directed to
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`an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1%iron, balance titanium"
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`as obvious over a referencedisclosing alloys of 0.75%nickel, 0.25% molybdenum,
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`balance titanium and 0.94%nickel, 0.31% molybdenum, balancetitanium. "The
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`proportions are so close that prima facie one skilled in the art would have expected
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`them to have the same properties."). See MPEP 2144.05, I.
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`Regarding Claims 1 and 5-6, Shiraga suggestslithium salt combinations
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`including lithium hexafluorophosphate and an imide (e.g., LIN(CFsSOz)2), but does not
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`suggests the non-aqueous electrolyte includeslithium hexafluorophosphate andlithium
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`bis(fluorosulfonyl)imide (LFSI). However, Maeda discloses a battery whose negative
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`electrode active material is a Si/SiO/C composite, [0012]. Further, the electrolyte
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`includeslithium salts including both lithium hexafluorophosphate andlithium
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`bis(fluorsulfonyl)imide, [0076-0078]; specifically, the combination of the twosalts(i.e.,
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`LFSI, LiPFs) enhances charge rate characteristics and prevents the corrosion of
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`aluminum. The effect is achieved when the concentration of LFSI is 0.1 M to 1.0 M and
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`LiPF6 is 0.3 M or more, [0077], and the total salt concentration is 0.5 M to 2 M to
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`achieve sufficient ion conductivity and ion mobility, [0078]. The concentration suggested
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`by Maeda(i.e., LFSI is 0.1 M to 1.0 M) overlaps with that claimed (i.e., 0.2 M or more,
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`and 0.2 M to 0.4 M) It would be obvious to one having ordinary skill in the art the lithium
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`

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`Application/Control Number: 17/442,154
`Art Unit: 1729
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`Page 6
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`salt of Shiraga includes LiPFs and LFSI, where LFSI is between 0.1 M to 1.0 M, to
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`enhance charge rate characteristics and prevent the corrosion of aluminum, as
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`suggested by Maeda. See MPEP 2144.05, I.
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`Conclusion
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`6.
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`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ANNA KOROVINA whosetelephone numberis
`
`(571)272-9835. The examiner can normally be reached M-Th 7am - 6 pm.
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`supervisor, Ula Ruddock can be reached on 5712721481. The fax phone numberfor
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`the organization wherethis application or proceeding is assigned is 571-273-8300.
`
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`

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`Application/Control Number: 17/442,154
`Art Unit: 1729
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`Page 7
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`
`/ANNA KOROVINA/
`Examiner, Art Unit 1729
`
`/ULA C RUDDOCK/
`Supervisory Patent Examiner, Art Unit 1729
`
`