www.uspto.gov
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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
`
`15/772,701
`
`05/01/2018
`
`Masanori Sugimori
`
`P180309US00
`
`9157
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`DINH, BACH T
`
`ART UNIT
`1726
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`04/17/2020
`
`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)
`
`

`

`Office Action Summary
`
`Application No.
`15/772 ,701
`Examiner
`BACH T DINH
`
`Applicant(s)
`Sugimoriet al.
`Art Unit
`1726
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEofthis 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 03/20/2020.
`LC} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)l¥) This action is FINAL.
`2b) (J 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\(Z 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*
`7-12 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) 7-12 is/are rejected.
`OO Claim(s)__is/are objectedto.
`CC) 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) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ 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)0) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)X None ofthe:
`b)L) Some**
`a)L) All
`1... Certified copies of the priority documents have been received.
`2.1.) 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 received in 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) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20200413
`
`

`

`Application/Control Number: 15/772,701
`Art Unit: 1726
`
`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 under the first
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`inventor to file provisions of the AIA.
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`Summary
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`2.
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`3.
`
`This is the response to the communication filed on 03/20/2020.
`
`Claims 7-12 remain pending in the application.
`
`4.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`Claim Rejections - 35 USC § 112
`
`(a) IN GENERAL.—The specification shall contain a written description of the invention, and
`of the manner and process of making and using it, 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
`makeand 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-AlA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the manner and
`process of making and using it, in such full, 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.
`
`5.
`
`Claims 7-12 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first paragraph,as failing
`
`to comply with the written description requirement. The claim(s) contains subject matter which was not
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`described in the specification in such a way as to reasonably convey to one skilled in the relevant art
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`that the inventor or a joint inventor, or for pre-AlA the inventor(s), at the time the application was filed,
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`had possession of the claimed invention. The limitation “a second lithium transition metal oxide in
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`which Co accounts for 60 mole percent or more and Co accounts for 20 mole percent or less to more
`
`

`

`Application/Control Number: 15/772,701
`Art Unit: 1726
`
`Page 3
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`than 0 mole percent” is new matter not supported by the originally filed disclosure. The originally filed
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`disclosure does not support a second lithium transition metal oxide that has Co that could satisfy both of
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`the claimed ranges.
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`6.
`
`Claims 7-12 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first paragraph, as failing
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`to comply with the enablement requirement. The claim(s) contains subject matter which was not
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`described in the specification in such a way as to enable oneskilled in the art to which it pertains, or
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`with which it is most nearly connected, to make and/or use the invention. Claims 7-12 are not enabled
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`because claim 7 requires a second lithium transition metal oxide in which Co accountsfor two ranges of
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`mole percentages that do not overlap one another. One is 60 mole percent or more and one is 20 mole
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`percentor less to more than 0 mole percent. This is physically impossible to achieve even if one of
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`ordinaryskill in the art is required to perform undue experimentation.
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`Response to Arguments
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`7.
`
`Applicant’s arguments with respect to claims 7-12 have been considered but are moot because
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`the arguments do not apply to any of the reasons being used in the current rejection.
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`Conclusion
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`8.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
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`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
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`extension of time policy as set forth in 37 CFR 1.136(a).
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`A shortenedstatutory period for reply to this final action is set to expire THREE MONTHS from
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`the mailing date of this action.
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`In the eventa first reply is filed within TWO MONTHS ofthe mailing date
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`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the advisory
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`

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`Application/Control Number: 15/772,701
`Art Unit: 1726
`
`Page 4
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`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
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`date of the advisory action.
`
`In no event, however, will the statutory period for reply expire later than
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`SIX MONTHS from the date of this final action.
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`9.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to BACH T DINH whosetelephone numberis (571)270-5118. The examiner can
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`normally be reached on Mon-Friday 8:00 - 4:30 EST.
`
`Examiner interviewsare 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://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Keith Hendricks can be reached on (571)-272-1401. The fax phone numberfor the organization where
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`this application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent Application
`
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`
`

`

`Application/Control Number: 15/772,701
`Art Unit: 1726
`
`/BACH T DINH/
`Primary Examiner, Art Unit 1726
`04/13/2020
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`Page 5
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