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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
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`10/13/2021
`
`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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1.and 3-10 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1 and 3-10 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://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)
`
`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 20211001
`
`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
`
`1) Responsive to communication(s) filed on 07/15/2021.
`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.
`
`

`

`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 March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Claim Rejections - 35 USC § 102
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`2.
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`In the event the determination of the status of the application as subject to
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`AIA 35 U.S.C. 102 and 103 (or as subject to 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 ofrejection if the prior art relied upon, and the rationale
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`supporting the rejection, would be the same under either status.
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`3.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102
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`that form the 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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`(a)(1) the claimed invention was patented, described in a printed publication, or
`in public use, on sale, or otherwise available to the public before the effective
`filing date of the claimed invention.
`
`4.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`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.
`
`

`

`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page 3
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`5.
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`Claim(s) 1, 3, 5-7, and 9-10 are rejected under 35 U.S.C. 102(a)(1) as
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`anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US PGPub
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`2016/0204432 (Koshiba).
`
`With respect to claim 1, Koshiba teaches an electrolyte secondary battery
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`(electrochemical device) having a positive electrode, negative electrode, a
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`separator, and an electrolyte (electrolytic solution) (PP 0035). The positive
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`electrode has an active material such as polyaniline (PP 0076). The negative
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`electrode comprises a negative electrode active material (PP 0036). One of
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`ordinary skill in the art recognizes that lithium ion batteries work by storing and
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`releasing ions, which including doping and dedoping anions, and occluding and
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`releasing lithium ions at the electrodes. Koshiba teaches that the battery is aimed
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`at having a high storage/release potential (PP 0005). Koshiba fails to teach the
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`ratio of total amount (mol) of the anions to the total amount (mol) of monomer
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`units in the polyaniline (B/A). However, the instant specification shows that when
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`B/A is less than 0.7, the capacitance retention rate is about 97% or more (Table 1,
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`Fig. 3). Koshiba teaches that the battery has a capacity retention of about 90%to
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`98%, with examples 21 and 22 having 97% and 98%(Table 3). Therefore one of
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`ordinary skill in the art would expect B/A ratio of Koshiba to have significant
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`overlap with the B/A ratio of the instant application. Where the general conditions
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`of a 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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`With respect to claim 3, the electrolyte may belithium hexafluorophosphate
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`(PP 0047) which has LiPF6 anions.
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`

`

`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page 4
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`With respect to claims 5 and 6, the concentration of the anions in the
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`solution is 0.7 to 1.5mol/l (PP 0059). Koshiba fails to teach the concentration in
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`the charged and discharged state, however one of ordinary skill would expect the
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`concentration in the electrolyte to be lower in a charged state (when the anions are
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`on the electrode) and higher in a discharged state (when the anions are “free”),
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`which would reasonable fall within applicant’s claimed ranges.
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`Claim 7 is rejected as applied to claims 1 and 3 above.
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`Claims 9 and 10 are rejected as applied to claims 5 and 6 above.
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`6.
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`Claims 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over
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`2016/0204432 (Koshiba) as applied to claims 1 and 7 above, and further in view of
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`US PGPub 2015/0287989 (Hirose).
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`Koshiba teaches that the solvent may be a combination of carbonates (PP
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`0056) wherein one of the carbonates may include polypropylene carbonate (PP
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`0061). Koshiba fails to teach a combination of dimethyl carbonate and propylene
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`carbonate. Hirose teaches a non-aqueous solvent comprising a viscous solvent
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`such as propylene carbonate, and a non-viscous solvent such as dimethyl
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`carbonate. The combination of these two carbonates allows for better
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`performances such as dissociation of the electrolyte salt and ionic mobility (PP
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`0179).
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`It would have been obvious to one of ordinary skill in the art at the time of
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`filing to use a combination of propylene carbonate and dimethyl carbonate for the
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`electrolyte of Koshiba in order to allow for better dissociation of the electrolyte salt
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`and ionic mobility, as taught by Hirose.
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`

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`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`Page 5
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`7.
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`Applicant’s arguments with respect to claim(s) 1-4 have been considered but
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`are moot because the new ground of rejection does not rely on any reference
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`applied in the prior rejection of record for any teaching or matter specifically
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`challenged in the argument. The examiner notes that applicant's arguments as to
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`the unexpected nature of the capacitance retention rate are not persuasive as the
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`capacitance retention rate is also disclosed in the prior art and therefore an
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`expected result.
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`Conclusion
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`8.
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`Applicant's amendment necessitated the new ground(s) of rejection
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`presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See
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`MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set
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`forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire
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`THREE MONTHS from the mailing date of this action.
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`In the eventa first reply is
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`filed within TWO MONTHS of the mailing date of this final action and the advisory
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`action is not mailed until after the end of the THREE-MONTH shortened statutory
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`period, then the shortened statutory period will expire on the date the advisory
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`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be
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`calculated from the mailing date of the advisory action.
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`In no event, however,will
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`the statutory period for reply expire later than SIX MONTHS from the date of this
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`final action.
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`

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`Application/Control Number: 16/341,945
`Art Unit: 1724
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`Page 6
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`9.
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`Any inquiry concerning this communication or earlier communications from
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`the examiner should be directed to RACHEL L ZHANG whosetelephone number is
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`(571)272-9802. The examiner can normally be reached M-Th 8-2, alt. F 7-3.
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`Examiner interviews are available via telephone, in-person, and video
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`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
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`examiner’s supervisor, Miriam Stagg can be reached on 5712705256. The fax
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`phone number for the organization where this application or proceeding is assigned
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`is 571-273-8300.
`
`Information regarding the status of published or unpublished applications
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`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 ://www.uspto.gov/patents/apply/patent-center for more information about
`
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`
`in DOCX format. For additional questions, contact the Electronic Business Center
`
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`
`Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-
`
`272-1000.
`
`/R.L.Z/
`Examiner, Art Unit 1724
`
`

`

`Application/Control Number: 16/341,945
`Art Unit: 1724
`
`/SARAHA. SLIFKA/
`Primary Examiner, Art Unit 1759
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`Page 7
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