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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
`
`16/450,050
`
`06/24/2019
`
`Naoya Morisawa
`
`P190606US00
`
`2652
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`CULLEN,SEAN P
`
`ART UNIT
`1725
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/15/2020
`
`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)
`
`

`

`
`
`Disposition of Claims*
`1-7 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`CC) Claim(s)
`is/are allowed.
`Claim(s) 1-7 is/are rejected.
`S)
`) O Claim(s)___is/are objected to.
`C) 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)M] The specification is objected to by the Examiner.
`11) The drawing(s) filed on 24 June 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:
`cc) None ofthe:
`b)LJ Some**
`a)Y) All
`1.4) 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
`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 20201209
`
`Application No.
`Applicant(s)
`16/450,050
`Morisawaetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`Sean P Cullen, Ph.D.
`1725
`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 24 June 2019.
`LC} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)(J 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\(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.
`
`

`

`Application/Control Number: 16/450,050
`Art Unit: 1725
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013,
`
`is being examined underthe
`
`first inventor to file provisions of the AIA.
`
`Status of Claims and Other Notes
`
`Claim(s) 1-7is/are pending.
`
`The paragraph numberscited in this Office Action in reference to the instant application
`
`2.
`
`3.
`
`are referring to the paragraph numbering of the PG-Pub ofthe instant application. See US
`
`2019/0312262 Al.
`
`4,
`
`Receipt is acknowledged ofcertified copies of papers required by 37 CFR 1.55.
`
`Priority
`
`Information Disclosure Statement
`
`5.
`
`The information disclosure statement (IDS) submitted on 10 July 2019 wasfiled before
`
`the mailing of a first Office Action on the merits. The submission complies with the provisions
`
`of 37 CFR 1.97. Accordingly,
`
`the information disclosure statement is being considered by the
`
`examiner.
`
`Drawings
`
`6.
`
`The drawings are objected to becausethe sole figure used in the application toillustrate
`
`the claimed invention is numbered. Where only a single view is used in an application to
`
`

`

`Application/Control Number: 16/450,050
`Art Unit: 1725
`
`Page 3
`
`illustrate the claimed invention,
`
`it must not be numbered and the abbreviation “FIG.” must not
`
`appear. See 37 CFR 1.84 (u)(1). Corrected drawing sheets in compliance with 37 CFR 1.121(d)
`
`are required in reply to the Office action to avoid abandonment of the application. Any amended
`
`replacement drawing sheet should include all of the figures appearing on the immediate prior
`
`version of the sheet, even if only one figure is being amended. The figure or figure number of an
`
`amended drawing should not be labeled as “amended.” Ifa drawing figure is to be canceled, the
`
`appropriate figure must be removed from the replacement sheet, and where necessary,the
`
`remaining figures must be renumbered and appropriate changes madeto the brief description of
`
`the several views of the drawings for consistency. Additional replacement sheets may be
`
`necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after
`
`the filing date of an application must be labeled in the top margin as either “Replacement Sheet”
`
`or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner,
`
`the applicant will be notified and informed of any required corrective action in the next Office
`
`action. The objection to the drawings will not be held in abeyance.
`
`Specification
`
`7.
`
`Thetitle of the invention is not descriptive. A new title is required that is clearly
`
`indicative of the invention to which the claims are directed.
`
`The following title is suggested: NONAQUEOUS ELECTROLYTE SECONDARY
`
`BATTERY HAVING POSITIVE ELECTRODE CONTAINING LITHIUM-NICKEL
`
`COMPOSITE OXIDE WITH PHOSPHATE SALT AND NONAQUEOUSELECTROLYTE
`
`CONTAINING TRIFLUOROPROPIONATEESTER.
`
`

`

`Application/Control Number: 16/450,050
`Art Unit: 1725
`
`Page 4
`
`8.
`
`The disclosure is objected to because of the following informalities:
`
`Paragraphs [0012] and [0073] describe the sole figure used in the application to illustrate
`
`the claimed invention is referred to as Fig. 1. Where only a single view is used in an application
`
`to illustrate the claimed invention,
`
`it must not be numbered and the abbreviation “FIG.” must not
`
`appear. See 37 CFR 1.84 (u)(1). The sole figure used in the application to illustrate the claimed
`
`invention should not be referred to as Fig. 1 in paragraphs [0012] and [0073].
`
`Appropriate correction is required.
`
`Claim Rejections - 35 USC § 112
`
`9.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—Thespecification shall conclude with one or more claims particularly pointing
`out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the
`invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`Thespecification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`10.
`
`Claim(s) 1—7 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
`
`matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C.
`
`112, the applicant), regards as the invention.
`
`Claim 1 recites the limitations
`
`"Li,N;.,M1,O>2 (in the formula, 0.9<x<1.1, 0<y<0.7,
`
`and M1 is at least one element selected from the group consisting of Co, Mn, Fe, Ti, Al, Mg, Ca,
`
`He
`Sr, Zn, Y, Yb, Nb, Cr, V, Zr, Mo, W, Cu, In, Sn, and As)," " F3C——C —C—_O—R1 (2)
`Woot
`
`(in the formula, R1 is a C,.3 alkyl group),"
`
`"the specific surface area S (m7/g),” and "the average
`
`

`

`Application/Control Number: 16/450,050
`Art Unit: 1725
`
`Page 5
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`particle diameter D (um)." It is unclear whether the limitation(s) within the parentheses are part
`
`of the claimed invention. See MPEP§ 2173.05(d).
`
`Claim 1 recites the limitation "the ratio" in line 21. There is insufficient antecedentbasis
`
`for this limitation in the claim.
`
`Claim 1 recites the limitation "the specific surface area" in line 21. Thereis insufficient
`
`antecedent basis for this limitation in the claim.
`
`Claim 1 recites the limitation "the average particle diameter" in line 22. Thereis
`
`insufficient antecedent basis for this limitation in the claim.
`
`Claim 2 is directly dependent from claim 1 and includes all the limitations of claim 1.
`
`Therefore, claim 2 is also indefinite for failing to particularly point out and distinctly claim the
`
`subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA
`
`35 U.S.C. 112, the applicant), regards as the invention.
`
`Claim 3 recites the limitation "the ratio" in line 2. There is insufficient antecedent basis
`
`for this limitation in the claim.
`
`Claim 4 recites the limitation "the ratio" in line 2. There is insufficient antecedent basis
`
`for this limitation in the claim.
`
`Claim 5 recites the limitation "R2——~C——O——R3(3) (in the formula, R2 represents
`
`a C,.3 alkyl group, and R3 represents a fluorinated C,.3 alkyl group)." It is unclear whether the
`
`limitation(s) within the parentheses are part of the claimed invention. See MPEP § 2173.05(d).
`
`Claim 6 is directly dependent from claim 1 and includes all the limitations of claim 1.
`
`Therefore, claim 6 is also indefinite for failing to particularly point out and distinctly claim the
`
`

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`Application/Control Number: 16/450,050
`Art Unit: 1725
`
`Page 6
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`subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA
`
`35 U.S.C. 112, the applicant), regards as the invention.
`
`Claim 7 recites the limitation "the amount oflithium eluted in water" in line 2. There is
`
`insufficient antecedent basis for this limitation in the claim.
`
`Claim Rejections - 35 USC § 103
`
`11.
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejections set forth in this Office action:
`
`A patent fora 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 theclaimed invention as a whole would have been obviousbefore 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.
`
`12.
`
`The factual inquiries for establishing a background for determining obviousness under 35
`
`U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims atissue.
`
`3. Resolving the level of ordinary skill
`
`in the pertinent art.
`
`4, Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`13.
`
`This application currently names jomt inventors. In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was commonly
`
`ownedasof the effective filing date of the claimed invention(s) absent any evidence to the
`
`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
`
`effective filing dates of eachclaim that was not commonly owned as ofthe effectivefiling date
`
`

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`Application/Control Number: 16/450,050
`Art Unit: 1725
`
`Page 7
`
`of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
`
`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
`
`14.
`
`Claim(s) 1—4 and6 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Takyiri etal. (WO 2016/103657 A1, see English language equivalent, US 2017/0317380 A1;
`
`hereinafter Takiiri) in view of Abe etal. (US 2015/0311563 A1, hereinafter Abe).
`
`Regarding claims 1 and 3, Takijiri discloses a nonaqueouselectrolyte secondary battery
`
`(10, [0012]) comprising:
`
`e
`
`apositive electrode (11) containing a positive electrode mixture (see positive
`
`e
`
`e
`
`electrode mixed material layer, [0018]);
`
`anegative electrode (12, [0012]); and
`
`anonaqueous electrolyte containing a nonaqueous solvent and a lithium salt
`
`dissolved in the nonaqueous solvent (Fig. 1, [0038]),
`
`e wherein the positive electrode mixture contains a positive electrode active
`
`material (see lithium transition metal oxide, [0021]) and a phosphate salt (see
`
`lithium phosphate, [0022]);
`
`e
`
`the positive electrode active material contains a lithtum-nickel composite oxide
`
`represented by formula (1): Li,Nij.yM1,O2 (see lithium transition metal oxide,
`
`[0021])
`
`e wherein 0.9 <x <1.1,0<y <0.7 (see lithium transition metal oxide, [0021]), and
`
`e
`
`M1 is atleast one element selected from the group consisting of Co, Mn, Fe, Ti,
`
`Al, Mg, Ca, Sr, Zn, Y, Yb, Nb, Cr, V, Zr, Mo, W, Cu, In, Sn, and As (see lithium
`
`transition metal oxide, [0021]); and
`
`

`

`Application/Control Number: 16/450,050
`Art Unit: 1725
`
`Page 8
`
`e
`
`the nonaqueous solvent contains a trifluoropropionate ester represented by
`
`O
`
`|
`He
`formula (2); F8¢——© —~C——O—R1_ (2) (see 3,3,3-trifluoropropionic acid
`
`methyl ester, [0039])
`
`e wherein R1 is aC;.3 alkyl group (see 3,3,3-trifluoropropionic acid methyl ester,
`
`[0039]).
`
`Takyiri does not explicitly disclose:
`
`e
`
`aratio S/D of aspecific surface area S (m7/g) to the average particle diameter D
`
`(um) of the phosphate salt is 5 or more; and
`
`e wherein the ratio of the phosphate salt in the positive electrode mixture is 0.01%
`
`to 10% by mass.
`
`Abediscloses a positive electrode mixture containing a phosphate salt (see morganic
`
`phosphate compound, [0039]), wherein a ratio S/D of a specific surface area S (m7/g) to the
`
`average particle diameter D (um) of the phosphate salt is 5 or more (see LiPOx, [0078]); and
`
`wherein the ratio of the phosphate salt in the positive electrode mixture is 0.01% to 10% by mass
`
`(see inorganic phosphate compound content, [0043]) to reduce the deterioration of the positive
`
`electrode (see inorganic phosphate compound, [0039]). Takyiri and Abe are analogous art
`
`because they are directed to nonaqueous electrolyte secondary batteries. Therefore, it would have
`
`been obvious to one of ordinary skill
`
`in the art at the effective filing date of the invention to
`
`make the phosphate salt of Takiyiri with the ratio S/D andratio of phosphate salt in positive
`
`electrode mixture of Abe in order to reduce the deterioration of the positive electrode.
`
`Regarding claim 2, modified Takiiri discloses all claim limitations set forth above and
`
`further discloses a nonaqueouselectrolyte secondary battery:
`
`

`

`Application/Control Number: 16/450,050
`Art Unit: 1725
`
`Page 9
`
`e wherein the phosphate salt is lithtum phosphate (seelithium phosphate, [0022]).
`
`Regarding claim 4, modified Takiiri discloses all claim limitations set forth above and
`
`further discloses a nonaqueous electrolyte secondary battery:
`
`e wherein the ratio of the trifluoropropionate ester in the nonaqueous solvent is 10%
`
`by volume or more (see content, [0039]).
`
`Regarding claim 6, modified Takiiri discloses all claim limitations set forth above and
`
`further discloses a nonaqueous electrolyte secondary battery:
`
`e wherein the nonaqueous electrolyte contains lithium bis(fluorosulfonyl)amide
`
`(see electrolyte salt, [0044]).
`
`15.
`
`Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takiiri (WO
`
`2016/103657 A1, see English language equivalent, US 2017/0317380 A1) in view of Abe (US
`
`2015/0311563 A1) as applied to claim(s) 1 above, and further in view of Katou et al (WO
`
`2016/088837 A1, hereinafter Katou).
`
`Regarding claim 5, modified Takijiri discloses all claim limitations set forth above, but
`
`does not explicitly disclose a nonaqueouselectrolyte secondary battery:
`
`e wherein the nonaqueous electrolyte further contains acarboxylic acid fluoroalky1
`
`O
`
`ester represented by formula (3) R2-—~C———~O——R3(3),
`
`e wherein R2 represents a C,.3 alkyl group, and
`
`e R3 represents a fluorinated C;.3 alkyl group.
`
`

`

`Application/Control Number: 16/450,050
`Art Unit: 1725
`
`Page 10
`
`Katou discloses a nonaqueouselectrolyte containing a carboxylic acid fluoroalkyl ester
`
`oO
`
`represented by formula (3) R2——C——O——R3(3), wherein R2 represents a C,.3 alkyl group,
`
`and R3 represents a fluorinated C;-3 alkyl group to increase the withstand voltage (see 2,2,2-
`
`trifluoroethyl acetate, [0110]). Takijiri and Katou are analogous art because they are directed to
`
`nonaqueouselectrolyte secondary batteries. Therefore, it would have been obvious to one of
`
`ordinary skill in the art at the effective filing date of the invention to make the nonaqueous
`
`electrolyte of modified Takiyiri with the carboxylic acid fluoroalkyl ester as taught by Katou in
`
`order to increase the withstand voltage.
`
`16.
`
`Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takiiri (WO
`
`2016/103657 A1, see English language equivalent, US 2017/0317380 A1) in view of Abe (US
`
`2015/0311563 A1) as applied to claim(s) 1 above, and further in view of Furuichi et al. (JP
`
`2016/207635 A; see English language equivalent, US 2018/0123118 A1; hereinafter Furuichi).
`
`Regarding claim 7, modified Takiiri discloses all claim limitations set forth above, but
`
`does not explicitly disclose a nonaqueous electrolyte secondary battery:
`
`e wherein the amount oflithium eluted in water is 0.01% to 0.2% by mass of the
`
`positive electrode mixture whenthe positive electrode mixture is dispersed in
`
`pure water.
`
`Furuichi discloses a positive electrode mixture comprising an amountoflithtum eluted in
`
`wateris 0.01% to 0.2% by mass of the positive electrode mixture when the positive electrode
`
`mixture is dispersed in pure water (see excess lithium,
`
`[0164]) to suppress gas generation in the
`
`positive electrode mixture (see excess lithium,
`
`[0062]). Takiiri and Furuichi are analogous art
`
`

`

`Application/Control Number: 16/450,050
`Art Unit: 1725
`
`Page 11
`
`because they are directed to nonaqueous electrolyte secondary batteries. Therefore, it would have
`
`been obvious to one of ordinary skill
`
`in the art at the effective filing date of the invention to
`
`modify the positive electrode mixture to elute the amount of lithium as taught by Furuichi in
`
`order to suppress gas generation in the positive electrode mixture.
`
`Conclusion
`
`17.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Sean P Cullen, Ph.D. whose telephone numberis (571)270-1251.
`
`The examiner cannormally be reached on Monday to Thursday 6:00 am to 4:00 pm CT,Friday
`
`6:00 am to 12:00 pm CT.
`
`Examiner interviews are 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, Basia A Ridley can be reached on (571)272-1453. The fax phone numberfor the
`
`organization wherethis application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
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`

`

`Application/Control Number: 16/450,050
`Art Unit: 1725
`
`Page 12
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`free). If you would like assistance from a USPTO Customer Service Representative or access to
`
`the automated information system, call 800-786-9199 (IN USA OR CANADA)or 571-272-
`
`1000.
`
`/Sean P Cullen, Ph.D./
`Primary Examiner, Art Unit 1725
`
`