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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
`
`16/341,945
`
`04/15/2019
`
`HIROKI HAYASHI
`
`083710-2615
`
`7432
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`ZHANG, RACHEL L
`
`1724
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
`
`04/16/2021
`
`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):
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`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-4 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-4 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://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) The drawing(s) filed on 04/15/2019 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
`1.2 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 04/15/2019.
`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 20210401
`
`Application No.
`Applicant(s)
`16/341,945
`HAYASHI et al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`RACHEL L ZHANG
`1724
`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
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`1) Responsive to communication(s) filed on 04/15/2019.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`2a)L) 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: 16/341,945
`Art Unit: 1724
`
`Page 2
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March16, 2013, is being examined
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`under the firstinventor to file provisions of the AIA.
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`Information Disclosure Statement
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`2.
`
`The information disclosure statement (IDS) submitted on 04/15/2019 was
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`filed on the mailing date of the application. The submission is in compliance with
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`the provisions of 37 CFR 1.97. Accordingly, the information disclosure statementis
`
`being considered by the examiner.
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`Claim Objections
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`3,
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`Claim 2 is objected to because of the following informalities:
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`line 3 of the
`
`claim states “basic skeleton of polyaniline, polypyrrole, polythiophene.” The
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`sentence is missing the proper conjunction. The examiner has interpreted the
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`claim as “basic skeleton of polyaniline, polypyrrole, or polythiophene.” Appropriate
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`correction is required.
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`Examiner's Note
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`4.
`
`Although the ISR in PC T/JP2017/038617 contains an X reference, the
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`reference cited does not specifically disclose a ratio of total mol of anions to the
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`total mol of monomer units in the conductive polymer (B/A), and therefore the
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`reference is not relied upon herein ina 102 rejection.
`
`

`

`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page 3
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`Claim Rejections - 35 USC§ 103
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`5.
`
`In the eventthe determination of the status of the applicationas subject to
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`AIA 35U.S.C. 102 and 103 (or as subjectto pre-AIA 35 U.S.C. 102 and 103) is
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`incorrect, any correction of the statutory basis for the rejection will not be
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`considered a new ground of rejectionif the prior artrelied upon, and the rationale
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`supporting the rejection, would be the same under either status.
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`6.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections setforth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding thatthe
`claimed invention is notidentically 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 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.
`
`7.
`
`Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over US
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`PG Pub 2013/0095392 (Shin).
`
`Regarding claims 1-4, Shin an electrochemical double layer capacitor (an
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`electrochemical device) comprising a positive electrode, a negative electrode, a
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`separator and an electrolyte (PP 0300). The electrolyte comprises a saltand an
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`anion, wherein the anion may be ClO4, BFsor PFe [claim 3] and the salt may bea
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`lithium based salt (which would contain lithium ions) (PP 0302). The electrolyte
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`may comprise one or more solvents such as propylene carbonate and dimethyl
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`carbonate [claim 4] (PP 0303) which would form a solution with the anions and
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`salts. One of ordinaryskill in the art would immediately recognize a combination of
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`

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`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page 4
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`any two solvents, suchas the combination of propylene carbonate and dimethyl
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`carbonate. A reference disclosure can read ona claim even if the reference does
`
`not describe "the limitations arranged or combined as in the claim, if a person of
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`skillin the art, reading the reference, would ‘at once envisage’ the claimed
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`arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780
`
`F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting Inre
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`Petering, 301 F.2d 676, 681(CCPA 1962)). The electrode may comprise an active
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`material suchas polyaniline, polypyrrole, or polythiophene (PP 0305) whichare the
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`conductive polymersof the instant claims [claim 2].
`
`Shin fails to teach the ration B/A wherein A is a total amount (mol) of
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`monomerunits in the conductive polymer included in the positive electrode, and B
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`represents a total amount (mol) of anions included in the device. Shin teaches that
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`the compositions are provided such that the battery exhibits thermodynamic
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`stability and desired ionic conductivity (PP 0009). The battery further results in
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`improved capacity retention (PP 0355, Fig. 41).
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`It would have been obvious to one
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`of ordinary skillin the art to find the optimal amount of polymer and anions to
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`achieve the desired properties, including capacity retention, which would
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`reasonably fall within applicant’s claimed range, which also improves capacity
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`retention (instant specification, PP 0010, Fig. 3). Where the general conditions of a
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`claim are disclose in the prior art, it is not inventive to discover the optimum or
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`workable ranges by routine experimentation, In re Aller 220 F.2d 454, 456, 105
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`USPQ 233, 235 (CCPA 1955), see MPEP 2144.05, II.
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`

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`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page5
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`Conclusion
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`8.
`
`Any inquiry concerning this communication or earlier communications from
`
`the examiner should be directed to RACHEL L ZHANG whosetelephone number is
`
`(571)272-9802. The examiner cannormally be reached on M-Th 8-2, alt. F 7-3.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaborationtool. 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, Miriam Stagg can be reached on 5712705256. The fax
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`phone number for the organization wherethis application or proceeding is assigned
`
`is 571-273-8300.
`
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`
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`

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`Application/Control Number: 16/341,945
`ArtUnit: 1724
`
`Page 6
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`/R.L.Z/
`Examiner, Art Unit 1724
`
`/MIRIAM STAGG/
`Supervisory Patent Examiner, Art Unit 1724
`
`