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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONF {MATION NO.
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`12/757,108
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`04/09/2010
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`Hizuru Koshina
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`PESL—115US
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`1994
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`EXAMINER
`RATNERPRESTIA —
`0mm” —
`7590
`52473
`PO. BOX 980
`BARCENA, CARLOS
`VALLEY FORGE, PA 19482-0980
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`PAPER NUMBER
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`ART UNIT
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`1731
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`MAIL DATE
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`07/12/2012
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL—90A (Rev. 04/07)
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`Office Action Summary
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`Application No.
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`Applicant(s)
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` 12/757,108 KOSHINA, HIZURU
`Examiner
`Art Unit
`CARLOS BARCENA
`1731
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from 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) MONTHS from the mailing date of this communication.
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`- 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, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1)IZI Responsive to communication(s) filed on 26 June 2012.
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`2a)|:l This action is FINAL.
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`2b)IXI This action is non-final.
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`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)|Zl CIaim(s) 1-20is/are pending in the application.
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`5a) Of the above claim(s) 15-20 is/are withdrawn from consideration.
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`6)I:l CIaim(s) _ is/are allowed.
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`7)|Xl Claim(s)_1-14is/are rejected.
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`8)I:l CIaim(s) _ is/are objected to.
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`9)I:I CIaim(s) _ are subject to restriction and/or election requirement.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
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`11)|Xl The drawing(s) filed on 09 AQI’i/ 2010 is/are: a)|:| accepted or b)EI 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).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`12)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`13)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)|:| AII
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`b)|:l Some * c)I:I None of:
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`1.I:I Certified copies of the priority documents have been received.
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`2.|:l Certified copies of the priority documents have been received in Application No. _
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`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) IZI Notice of References Cited (PTO-892)
`2) I] Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) IZI Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| Date _.
`U.S. Patent and Trademark Office
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`4) I] Interview Summary (PTO-413)
`Paper N0(S )/Mai| Date. _
`5)I:I NOTICQ 0f Informal Patent Application
`6)I:I Other:—
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`PTOL-326 (Rev. 03-11)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20120702
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`Application/Control Number: 12/757,108
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`Page 2
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`Art Unit: 1731
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`DETAILED ACTION
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`Election/Restrictions
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`1.
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`Applicant’s election without traverse of Group 1 (claims 1— 14) in the reply filed on
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`06/26/2012 is acknowledged.
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`Drawings
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`2.
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`The drawings are objected to because of the text box in Figure 3. In all the other figures,
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`addition information is contained in the text box in the figure. Figure 3 contains a text box found
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`in the upper right comer, but is empty. Applicant is asked to check if this omission of text or
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`additional information is correct. Corrected drawing sheets in compliance with 37 CFR 1.121(d)
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`are required in reply to the Office action to avoid abandonment of the application. Any amended
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`replacement drawing sheet should include all of the figures appearing on the immediate prior
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`version of the sheet, even if only one figure is being amended. The figure or figure number of an
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`amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the
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`appropriate figure must be removed from the replacement sheet, and where necessary, the
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`remaining figures must be renumbered and appropriate changes made to the brief description of
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`the several views of the drawings for consistency. Additional replacement sheets may be
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`necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after
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`the filing date of an application must be labeled in the top margin as either “Replacement Sheet”
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`or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner,
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`the applicant will be notified and informed of any required corrective action in the next Office
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`action. The objection to the drawings will not be held in abeyance.
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`Application/Control Number: 12/757,108
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`Page 3
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`Art Unit: 1731
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`Claim Rejections - 35 USC § 102
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`3.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless ,
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or
`on sale in this country, more than one year prior to the date of application for patent in the United States.
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`4.
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`Claims 1-5, 7, 8, and 10-13 are rejected under 35 U.S.C. 102(b) as being anticipated
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`by Omanda et al. (J. Electrochem. Soc. 2004, 151(6), A922-A929).
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`Regarding claims 1, 4, 7, and 8, Omanda discloses a protective SiOx coating for positive
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`(cathode) electrodes in lithium batteries comprising:
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`0 metallic lithium as the negative electrode (p. A923, Electrochemical tests);
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`0
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`positive electrode comprising aluminum substrate (current collector), an active cathode
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`material comprising a lithium transition metal complex oxide (e. g. LiNngCOOQOZ) coated
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`0
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`0
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`on the current collector (p. A923, Electrochemical tests);
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`SiOx, (X < 2) (abstract); and
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`an electrolyte comprising at least one lithium salt (e. g. LiPF6) and at least one solvent
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`(e. g. ethylene carbonate/diethyl carbonate) (p. A923, Electrochemical tests).
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`Regarding claim 2, Omanda discloses the SiOX is deposited on the surface of the active
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`cathode material (abstract).
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`Regarding claim 3, Omanda discloses the SiOx—coated active cathode material is coated
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`on the current collector (p. A923, Electrochemical tests).
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`Regarding claim 5, Omanda discloses LiCoOz (p. A922, 1St col., line 3—5).
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`Application/Control Number: 12/757,108
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`Page 4
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`Art Unit: 1731
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`Regarding claims 10 and 13, the positive electrode comprising SiOX is expected to
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`generate less heat relative to a positive electrode without such a coating (or is up to 50% less)
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`because products of identical chemical composition cannot have mutually exclusive properties.
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`A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the
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`identical chemical structure, the properties applicant discloses and/or claims are necessarily
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`present. See MPEP 2112.01 I—II.
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`Regarding claim 11, Omanda discloses all the recited limitations for instant claim as
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`rejected in claims 1 and 10 above.
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`Regarding claim 12, Omanda discloses the coating is 3—5 nm thick (abstract), which lies
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`within Applicant's claimed range of less than about 100 nm.
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`Claim Rejections - 35 USC § 103
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`5.
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`The following is a quotation of 35 USC. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
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`6.
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`The factual inquiries set forth in Graham v. John Deere C0., 383 US. l, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness under 35
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`USC. 103(a) are summarized as follows:
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`:PWNE
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`Determining the scope and contents of the prior art.
`Ascertaining the differences between the prior art and the claims at issue.
`Resolving the level of ordinary skill in the pertinent art.
`Considering objective evidence present in the application indicating obviousness
`or nonobviousness.
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`Application/Control Number: 12/757,108
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`Page 5
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`Art Unit: 1731
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`7.
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`Claims 6, 9, and 14 are rejected under 35 U.S.C. 103(3) as being unpatentable over
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`Omanda et al. (J. Electrochem. Soc. 2004, 151(6), A922-A929) in View of Idota et al. (US
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`5,686,203).
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`Regarding claim 6, Omanda teaches the negative electrode is metallic lithium.
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`Omanda does not teach the negative electrode comprises graphite and/or lithium alloy
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`comprising Si, Sn, Al, Pb, Bi, In, Ag, Pt, and Ti.
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`Idota, directed to an non—aqueous battery comprising positive electrode active material
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`and oxides (e.g. SiOz; col. 12, lines 52—65), teaches the negative electrode is elemental lithium
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`and lithium alloys (6. g. Li—Al) and carbonaceous compounds (col. 18, lines 14—16).
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`It would have been obvious to one of ordinary skill in the art at the time of invention to
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`substitute a lithium alloy for elemental lithium in a negative electrode because the prior art
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`recognizes both as materials used for the same purpose. These types of materials normally
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`associated with the negative electrode are well known in the art and are understood by those of
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`ordinary skill in this art.
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`Regarding claim 9, Omanda teaches a mixture of ethylene carbonate and diethyl
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`carbonate.
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`Omanda does not teach the mixture is ethylene carbonate and ethyl methyl carbonate.
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`Idota teaches the solvents may be selected from ethylene carbonate and methylethyl
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`carbonate and used alone or in combination (col. 14, lines 17—30).
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`It would have been obvious to one of ordinary skill in the art at the time of invention to
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`substitute a one solvent for another because the prior art recognizes these materials used for the
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`Application/Control Number: 12/757,108
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`Page 6
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`Art Unit: 1731
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`same purpose. These types of materials normally associated with the electrolyte are well known
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`in the art and are understood by those of ordinary skill in this art.
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`Regarding claim 14, the combination of Omanda and Idota recite all limitations for
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`instant claim as rejected in claims 1, 4, 6, and 10 above.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to CARLOS BARCENA whose telephone number is (571)270—
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`5780. The examiner can normally be reached on Monday through Thursday 8AM — 5PM EST.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Roy King can be reached on (571) 272—1244. The fax phone number for the
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`organization where this application or proceeding is assigned is 571—273—8300.
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
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`/Carlos Barcena/
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`Examiner, Art Unit 1731
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`