www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/495,587
`
`09/19/2019
`
`Masahiro Shiraga
`
`P190910US00
`
`1733
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`KOROVINA, ANNA
`
`ART UNIT
`1729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/24/2021
`
`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):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`16/495 587
`Shiraga et al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ANNA KOROVINA
`1729
`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 10 February 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.
`
`Disposition of Claims*
`1-4 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) 1-4 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)0) The drawing(s) filedon__ is/are: a)(J 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)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.2 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 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 20210318
`
`

`

`Application/Control Number: 16/495,587
`Art Unit: 1729
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Response to Amendment
`
`2.
`
`Applicant amended claim 1 and cancelled claim 5. Claims 1-4 are pending and
`
`considered in the present Office action.
`
`3.
`
`Due to the cancellation of claim 5, the 103 rejection thereof is withdrawn.
`
`4.
`
`Claim 5 wasrejected under 103. Applicant incorporated the features of claim 5
`
`into independent claim 1 and added newfeatures therein, thereby changing the scope
`
`of claim 1 and dependent claims 2-4. Thus, the 102 rejections of claims 1-4 are
`
`withdrawn in view of this amendment.
`
`5.
`
`Upon further consideration of claims 1-4, a new ground of rejection is
`
`necessitated by amendment.
`
`Responseto Arguments
`
`6.
`
`Applicant details the beneficial effects the specific content of anhydride and imide
`
`has on the claimedlithium nickel composite oxide, i.e., large capacity and suppression
`
`

`

`Application/Control Number: 16/495,587
`Art Unit: 1729
`
`Page 3
`
`of decreased capacity recovery rate, see e.g., pages 6-7 of the remarks dated 10
`
`February 2021.
`
`7.
`
`Applicant states all of the working examples of Kim and Odani are directed to
`
`lithium cobalt oxide; as such Applicant argues the prior art lacks a teaching for the
`
`lithium nickel oxide recitation, see e.g., page 8.
`
`8.
`
`Applicant further argues the prior art is silent to the aforementionedeffects that
`
`could result from the combination of the claimed lithium nickel composite oxide and
`
`specific amounts of anhydride and imide, page 8. Thus, applicant appears to suggest
`
`there is a lack of motivation for combining the claimed positive electrode active material
`
`(specifically, lithium nickel composite oxide) with the claimed amounts of anhydride and
`
`imide.
`
`9.
`
`Applicant’s arguments are not persuasivefor the following reasons.
`
`10.
`
`"The use of patents as references is notlimited to what the patentees describe
`
`as their own inventions or to the problems with which they are concerned. Theyare part
`
`of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-
`
`33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006,
`
`1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all thatit
`
`would have reasonably suggested to one having ordinary skill the art, including
`
`nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10
`
`

`

`Application/Control Number: 16/495,587
`Art Unit: 1729
`
`Page 4
`
`USPQe2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith
`
`Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005).
`
`See MPEP 2123, I.
`
`11.|Disclosed examples and preferred embodiments do not constitute a teaching
`
`away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442,
`
`169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become
`
`patentable simply because it has been described as somewhatinferior to some other
`
`productfor the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132
`
`(Fed. Cir. 1994). Furthermore, "[t]ne prior art’s mere disclosure of more than one
`
`alternative does not constitute a teaching away from any of these alternatives because
`
`such disclosure does notcriticize, discredit, or otherwise discourage the solution
`
`claimed..." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
`
`See MPEP 2123, Il.
`
`12.
`
`The examiner recognizes that obviousness may be established by combining or
`
`modifying the teachings of the prior art to produce the claimed invention where there is
`
`some teaching, suggestion, or motivation to do so found either in the references
`
`themselves or in the knowledge generally available to one of ordinary skill in the art.
`
`See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d
`
`347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550
`
`U.S. 398, 82 USPQ2d 1385 (2007). The reason or motivation to modify the reference
`
`may often suggest what the inventor has done, but for a different purpose or to solve a
`
`

`

`Application/Control Number: 16/495,587
`Art Unit: 1729
`
`Page 5
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`different problem. It is not necessary that the prior art suggest the combination to
`
`achieve the same advantageor result discovered by applicant. See, e.g., In re Kahn,
`
`441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), MPEP 2144, IV. The fact
`
`that applicant has recognized another advantage (suppression of decreased capacity
`
`recovery rate) which would flow naturally from following the suggestion of the prior art
`
`cannot be the basis for patentability when the differences would otherwise be obvious.
`
`See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
`
`13.
`
`In this case, the working samples of Kim (and Odani) are exemplified by lithium
`
`cobalt oxide (as pointed out by the applicant); however, their broader disclosures also
`
`consider a lithium nickel composite oxide as the positive electrode active material, as
`
`claimed.
`
`Kim teaches the positive electrode active material comprises lithium nickel
`
`composite oxide, wherein the content of the lithium nickel composite oxide in the active
`
`material is 80 % mass or more(i.¢., 92% is exemplified, but varies based on the content
`
`of binder and conductive agent, see e.g., paras. [0049]-[0051], and [0069]), and the
`
`ratio of nickel to the total number of moles of metal elements excluding lithium of 80
`
`mol% or more (see e.g., paras. [0045]-[0047]). Thus, Kim satisfies the limitations
`
`imposed on the positive electrode active material.
`
`Kim also teaches an electrolyte comprising both the claimed anhydride and
`
`imide. The claimed amount of anhydride is suggested by Kim; however, the amount of
`
`the imide is not disclosed, see e.g., rejection of claim 5 on page6of the lastoffice
`
`action.
`
`

`

`Application/Control Number: 16/495,587
`Art Unit: 1729
`
`Page 6
`
`Odani considers positive electrode active materials including thoseof lithium
`
`nickel composite oxide, i.e., LiNio.sCoo.202, see e.g., para. [0099]-[0100], thereby
`
`satisfying positive electrode active material comprises lithium nickel composite oxide,
`
`wherein the content of the lithium nickel composite oxide in the active material is 80 %
`
`mass or more(i.e., 91% is exemplified, see e.g., paras. [0183]), and the ratio of nickel to
`
`the total number of moles of metal elements excluding lithium of 80 mol% or more.
`
`Odani teaches LiNio.sCoo.2O2 is able to produce high voltage and excellent energy
`
`density, see e.g., para. [0100]. Hence, out of the positive electrode active materials
`
`considered by Kim and Odani the claimedlithium nickel complex oxide would be
`
`obvious to one of ordinary skill in the art because it produces high voltage and excellent
`
`energy density.
`
`Moreover, Odani teachesbatteries including electrolytes comprising imide salts
`
`in the claimed amountfor improved battery performance with respect to operating time
`
`of the current shut off valve, and discharge capacity retention at high and low
`
`temperature cycling, see e.g., pages 6-8 of the Office action. Thus, the prior art provides
`
`motivation for the claimed amount of imide salt, but for a different purpose or to solve a
`
`different problem than in the claimed invention. However, as noted above, it is not
`
`necessarythat the prior art suggest the combination to achieve the same
`
`advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977,
`
`987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), MPEP 2144, IV.
`
`In view of the fact that both Kim and Odani consider lithium nickel composite
`
`oxides, and specifically Odani discloses the imide content, while also considering lithium
`
`nickel composite oxides, further supports Kim would look to the imide content of Odani
`
`

`

`Application/Control Number: 16/495,587
`Art Unit: 1729
`
`Page 7
`
`when using lithium nickel composite oxides. For the reasons detailed above, Applicant’s
`
`arguments are not persuasive and the claims are rejected in view of the prior art of
`
`record.
`
`Claim Rejections - 35 USC § 103
`
`14.
`
`The text of those sections of Title 35, U.S. Code not included in this action can
`
`be found in a prior Office action.
`
`15.
`
`Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et
`
`al. (US 2007/0042267), as evidenced by Targray data sheet NPL and FEC properties
`
`sheet NPL, further in view of Odani et al. (US 2011/0183218), hereinafter Kim, Targray
`
`NPL, FEC NPL, and Odani (all references are of record).
`
`Note: Targray NPL and FEC NPL are usedto show Kim discloses the content of
`
`the fluorine-containing cyclic carbonate (e.g., fluoroethylene carbonate (FEC)) is within
`
`the claimed range. Specifically, the Targray NPL teachesthe density of the solventof
`
`Kim (an inherent property), while the FEC NPL teachesthe density of FEC (also an
`
`inherent property). These densities are used to convert the content of FEC from a
`
`weight basis (as taught by Kim) to a volume basis, as claimed.
`
`Regarding Claims 1-3, Kim teaches a non-aqueous electrolyte secondary
`
`battery (see e.g., abstract) comprising: a positive electrode; a negative electrode (e.g.,
`
`graphite); and a non-aqueous electrolyte (e.g., second embodiment), wherein the non-
`
`aqueous electrolyte contains: a non-aqueous solvent containing a fluorine-containing
`
`cyclic carbonate (e.g., fluoroethylene carbonate (FEC)); a cyclic carboxylic anhydride
`
`

`

`Application/Control Number: 16/495,587
`Art Unit: 1729
`
`Page 8
`
`wherein the cyclic carboxylic anhydride contains at least one of diglycolic anhydride;
`
`and an imide lithium salt having sulfonyl groups contains lithium
`
`bis(trifluoromethanesulfonyl)imide and/or lithium bis(pentafluoroethanesulfonyl)imide,
`
`see e.g., Examples 1A-7a, paras. [0032]-[0037], [0045]-[0048], [0055]-[[0057], [0099]-
`
`[0107], claims 25, 29, 30, 39, 40. The positive electrode includes a positive electrode
`
`active material that contains a lithium nickel composite oxide (e.g., LixNi1-yCoyO2-zXz, x is
`
`between 0.9 to 1.1, y is between 0 to 0.5, and z is 0 to 0.5), wherein the content of the
`
`positive electrode active material is 80 mass%or more, (i.e., 92% is exemplified, but
`
`varies based on the content of binder and conductive agent, see e.g., paras. [0049]-
`
`[0051], and [0069]), and the ratio of nickel to the total number of moles of metal
`
`elements excluding lithium of 80 mol% or more (see e.g., paras. [(0045]-[0047]). Thus,
`
`Kim satisfies the limitations imposed on the positive electrode. Moreover, Odani teaches
`
`LiNio.sCoo.202 is able to produce high voltage and excellent energy density, see e.g.,
`
`para. [0100]. Hence, it would be obvious to one having ordinary skill in the art Kim
`
`would utilize lithium nickel complex oxides, as claimed, because they produces high
`
`voltage and excellent energy density.
`
`Further regarding claim 1, Kim discloses the diglycolic anhydride is presentin
`
`the electrolyte from 0.1 mass%to 1.5 mass%, see e.g., 0.5 wt % in Example 2a and 1
`
`wt % in Example 5a.
`
`Kim allows for the salt in the electrolyte to include one, or a mixture of at least
`
`two, selected from the group of LiPFe and an imide, wherein the concentration of the
`
`salt is in a range from 0.6M to 2.0 M. Kim does not break down the amount of each salt
`
`

`

`Application/Control Number: 16/495,587
`Art Unit: 1729
`
`Page 9
`
`within this concentration range. Thus, Kim does not disclose the imide is present in the
`
`amount of 0.1 mass % to 1.5 mass %.
`
`Odani discloses an electrolyte comprising carbonates(i.e., EC, EMC, DMC, FEC,
`
`see e.g., paras. [0036]-[0052]), with various salts, or salt mixtures, see e.g., paras.
`
`[0067]-[0086], and tables (e.g., 1-3). A table is presented below to summarize the
`
`results usedin this rejection.
`
`cext6[20]5||5|[105|oo|48|0|
`
`—__{écLoweewe}recfurstfers[us||op-Timeth)|De AR WetowT|DCRR OW)HighT
`oo[af||sfoos[ros[[a|
`reczt2[20]55[>|-5o0s[10s|[ann|e|a
`c&x23[2of||s|[aa]|46|2|es
`cera[20]5||5|ar{]||3||ts
`cext3[20]5|[5|[a1||4%|2|we
`
`Example 2-9 and 2-12, including two salts (LIFSI (lithium bis(fluorosulfonyl)imide) and
`
`LiPFs), offer advantages in performance over Comparative Examples 2-3 and 2-4 which
`
`only includea single salt, i.e., LiPFe or LiFSI, respectively. Specifically, the operating
`
`time of the current shut-off value (h) is much greater for Examples 2-9 and 2-12, 827 h
`
`and 831 h, respectively, than Comparative Example 2-3 and Comparative Example 2-4,
`
`476 h and 391 h, respectively. Moreover, the discharge capacity retention rate (%) at
`
`both low and high temperature cycling for Examples 2-9 and 2-12, including both LiPFe
`
`and LiFSI, is greater than Comparative Examples 2-3 and 2-4. Improvementsin the
`
`operating time of the current shut off value and discharge capacity retention rate at high
`
`temperature cycling is observed notonly with LiIFSI, as described above, but also for
`
`lithium bis(trifluoromethanesulfonyl)imide (LITFSI). That is, Comparative Example 1-6
`
`

`

`Application/Control Number: 16/495,587
`Art Unit: 1729
`
`Page 10
`
`includes two salts, LiPFe and LiTFSI, and achieves higher operating times of the current
`
`shutoff valve (i.e., 498 h) compared to Comparative Example 1-3 (476 h), which only
`
`has LiFPe as the salt, and Comparative Example 2-4 (391 h), which only has LiFSI as
`
`the salt. The same can besaid for the high temperature cycling discharge capacity
`
`retention rate. The high temperature cycling discharge capacity retention rate for
`
`Comparative Example 1-6 (i.e., 72%), which includes LiPF¢ and LiTFSI, is greater than
`
`the Comparative Example 1-3 (66 %), which only has LiFPe as the salt, and
`
`Comparative Example 2-4 (15 %), which only has LiFSI as the salt.
`
`It would be obvious to one having ordinary skill in the art to include twosalts(i.e.,
`
`LiPFeé and LiFSI, or LiPFe and LiFSI) in the battery electrolyte of Kim to achieve
`
`improved battery performance with respect to the operating time of the current shut off
`
`valve, and discharge capacity retention at high and low temperature cycling.
`
`The salt mixture disclosed by Odani includes 1.05 M LiPFe and 0.05 M LiFSI (or
`
`LiTFSI), see e.g., Example 2-12 (or Comparative Example 1-6). The density of the
`
`solvent (sol.) and the molecular weight of the salt (i.e., LIFSI (or LITFSI)) can be used to
`
`calculate the wt %of the salt (i.e, LiFSI (or LiTFSI)) from the concentration of the salt
`
`(i.e., LIFSI (or LITFSI)) disclosed by Odani. The examiner assumesthe density of the
`
`solvent (sol.) is between 1.2 g/mL to 1.4 g/mL based on data in the Targray NPL and
`
`FEC NPL. Specifically, examiner assumes the density of carbonate based solvent
`
`including FEC is about 1.3 g/mL, which is between the density of FEC free carbonate
`
`based solvents (~1.2 g/mL, Targray NPL) and pure FEC solvent (~1.45 g/mL, FEC
`
`NPL). A concentration of 0.05 M LiFSI (or LiTFSI), as taught by Odani, can be
`
`

`

`Application/Control Number: 16/495,587
`Art Unit: 1729
`
`Page 11
`
`converted to a weight basis using the density of the solvent (sol.) and the molecular
`
`weight of LIFSI (or LiTFSI) as follows.
`
`187.07 g LiFSI
`mL sol.
`1L sol.
`0.05 mol LiFST
`Ke ————_*§ —_ +t. —___ = 0.007195
`1L sol.
`1000 mL sol.
`1.3 g sol.
`mol LiFSI
`
`g LiFSI
`
`g sol.
`
`.
`g LiFSI
`0.007195 ———— « 100% = 0.7195 or ~0.7 LiFSI wt %
`g solvent
`
`g LiTFSI
`287.09 g LiTFSI
`mL sol.
`1L sol.
`0.05 mol LiTFSI
`Ke ——_ ¢ —_ +.—__ = 0,01104 —__—
`1L sol.
`1000 mL sol.
`1.3 g sol.
`mol LiTFSI
`g sol.
`
`.
`g LiTFSI
`0.01104 ———— «100% =1.104 or ~1.1 LiTFSI wt %
`g solvent
`
`The modification of Kim (as evidenced by Targray NPL and FEC NPL)with Odani
`
`teaches the claimed content of the imide salt is between 0.1 wt % to 1.5 wt %(e.g., ~0.7
`
`wt %LiFSI, or ~1.1 wt % LiTFSI) as demonstrated by the above calculations. Any
`
`change in the density of the solvent (e.g., 1.4 g/mL instead of 1.3 g/mL) would still result
`
`in LiFSI (or LiTFSI) wt %values within the claimed range, or close to the claimed range.
`
`In the case wherethe claimed ranges "overlapor lie inside ranges disclosed bythe prior
`
`art" a prima facie case of obviousnessexists. In re Wertheim, 541 F.2d 257, 191 USPQ
`
`90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
`
`Similarly, a prima facie case of obviousness exists where the claimed rangesor
`
`amounts do not overlap with the prior art but are merely close. Titanium Metals Corp.of
`
`America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) The
`
`

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`Application/Control Number: 16/495,587
`Art Unit: 1729
`
`Page 12
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`proportions are so close that prima facie one skilled in the art would have expected
`
`them to have the same properties. MPEP 2144.05.
`
`Regarding Claim 4, Kim teachesthe contentof the fluoroethylene carbonate
`
`(FEC) is 0.1 wt % to 10 wt % based on the weightof the organic solvent, see e.g., para.
`
`[0126]. The content of FEC on a volume basis can be can be calculated from the weight
`
`basis using the density of FEC and the density of the solvent. The solvent is a 1:1:1
`
`ratio of EC:DMC:EMC (see e.g., para. [0101]), which has a density of about 1.22 g/mL;
`
`the density of FEC is 1.45 g/mL. See the Targray NPL and the FEC NPL. The sample
`
`calculation below utilizes the mass of FEC in example 2a (10 wt%).
`
`10g FEC
`100 g solvent
`
`« 1.22 g solvent
`mL solvent
`
`
`ML FEC
`145 g FEC
`
`*100% =84% vol FEC
`
`As evident from the above calculation, Kim teaches the content of the FEC is between 5
`
`vol % to 50 vol. %, see e.g., Examples 2a and 5a.
`
`It should be noted that although the examples of Kim do not specifically
`
`exemplify an imide salt, Kim clearly namesthe claimed imide salt species(i.e., LITFSI)
`
`in the disclosure, thereby anticipates the claim no matter how many other species are
`
`named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990), MPEP 2131.02
`
`Il. Further, a reference disclosure can anticipate a claim even if the reference does not
`
`describe "the limitations arranged or combined asin the claim, if a person of skill in the
`
`art, reading the reference, would ‘at once envisage’ the claimed arrangement or
`
`combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114
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`USPQe2d 1250, 1254 (Fed. Cir. 2015) (quoting /n re Petering, 301 F.2d 676, 681(CCPA
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`

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`Application/Control Number: 16/495,587
`Art Unit: 1729
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`Page 13
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`1962)). MPEP 2131.02, Ill. When a claimed compound is not specifically named in a
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`reference, but insteadit is necessary to select portions of teachings within the reference
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`and combine them, e.g., select various substituents fromalist of alternatives given for
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`placement at specific sites on a generic chemical formula to arrive at a specific
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`composition, anticipation can only be found if the classes of substituents are sufficiently
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`limited or well delineated. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). If
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`one of ordinary skill in the art is able to "at once envisage" the specific compound within
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`the generic chemical formula, the compoundis anticipated. One of ordinary skill in the
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`art must be able to draw the structural formula or write the name of each of the
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`compounds included in the generic formula before any of the compounds canbe "at
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`once envisaged." One maylook to the preferred embodiments to determine which
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`compoundscanbeanticipated. /n re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA
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`1962). In this case, Kim demonstrates LiPFeas the salt in the electrolyte of the
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`examples; however, the specification clearly names 14 other salt species, including the
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`claimed imide salt, which can be used singly instead of LiPFse. The limited number of
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`salt compounds ensures the reference sufficiently describes the claimed imide salt
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`compound, and the claimed imide salt species can be “at once envisaged’ within the
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`electrolyte, thereby anticipating the claims.
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`Conclusion
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`16.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
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`

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`Application/Control Number: 16/495,587
`Art Unit: 1729
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`Page 14
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`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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`CFR 1.136(a).
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`A shortenedstatutory period for reply to this final action is set to expire THREE
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`
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`MONTHS from the mailing date of this action. In the eventafirst replyis filed within
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`TWO MONTHS ofthe mailing date ofthis final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortenedstatutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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`17.—Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to ANNA KOROVINA whosetelephone number is
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`(571)272-9835. The examiner can normally be reached on M-Th 7am - 6 pm.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at http:/Avww.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Ula Ruddock can be reached on 5712721481. The fax phone number for
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`the 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
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`

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`Application/Control Number: 16/495,587
`Art Unit: 1729
`
`Page 15
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see https://ppair-
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`my.uspto.gov/pair/PrivatePair. Should you have questions on accessto the Private
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`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197(toll-free).
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`If you would like assistance from a USPTO Customer Service Representative or access
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`272-1000.
`
`/ANNA KOROVINA/
`Examiner, Art Unit 1729
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`/ULA C RUDDOCK/
`Supervisory Patent Examiner, Art Unit 1729
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`