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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
`
`16/580, 194
`
`09/24/2019
`
`Kazuhiro lida
`
`P190989US00
`
`3885
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`AMPONSAH,OSEI
`
`ART UNIT
`1729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`10/28/2021
`
`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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`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-10 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-10 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 09/24/2019 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
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) 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 11/04/2019.
`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 20211023
`
`Application No.
`Applicant(s)
`16/580, 194
`lida etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`OSEI K AMPONSAH
`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 24 September 2019.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`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: 16/580,194
`Art Unit: 1729
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application,filedonor after March 16, 2013,
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`is being examined underthe
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`first inventor to file provisions of the AIA.
`
`Receiptis acknowledged of certified copies of papers required by 37 CFR 1.55.
`
`Priority
`
`Information Disclosure Statement
`
`The information disclosure statement (IDS) submitted on 11-04-2019 isin compliance
`
`with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being
`
`considered by the examiner.
`
`Claim Rejections - 35 USC § 102
`
`In the eventthe determination of the status of the application as subject to AIA35
`
`U.S.C. 102 and 103 (or as subjectto pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction
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`of the statutory basis for the rejection will not be considered a new ground of rejection if the
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`prior art relied upon, and the rationale supporting the rejection, would be the same under
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`either status.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form
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`the basis for the rejections under this section made in this Office action:
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`

`

`Application/Control Number: 16/580,194
`Art Unit: 1729
`
`A personshall be entitled to a patent unless —
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`Page 3
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`(a)}(1} the claimed invention was patented, describedina printed publication, or in public use, onsale,
`or otherwise available to the public before the effective filing date of the claimed invention.
`
`Claims 1-7 and 9-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP
`
`2015-069704 hereinafter Onozaki [cited in IDS filed 11-04-2019].
`
`Regarding Claim1, Onozakiteaches a nonaqueous electrolyticsolution comprising: a
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`lithium salt and a nonaqueous solvent (paragraphs 7-13) , wherein the nonaqueous solvent
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`comprisesa fluorinated chain carboxylate ester, a dicarbonyl compound having two carbonyl
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`groupsin the molecule, and an organic chlorine compound (see Table 2, Example 13).
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`Regarding Claim 2, Onozaki teaches that the dicarbonyl compound has a chain
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`molecular structure (paragraphs 61-63).
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`Regarding Claims 3 and 4, Onozaki teaches that the fluorinated chain carboxylate ester
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`comprises methyl 3,3,3-trifluoropropionate and 2,2,2-trifluoroethyl acetate (paragraphs 32-38).
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`Regarding Claim 5, Onozaki teaches that the content of the dicarbonyl compound in the
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`nonaqueous electrolyte is 0.01 to 20 mass % (paragraph 86).
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`Regarding Claim 6, Onozakiteaches that the content of the fluorinated chain
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`carboxylate ester inthe nonaqueous solvent is not less than 30 vol % and not more than 90 vol
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`% (paragraph 83).
`
`Regarding Claim 7, Onozakiteaches that the lithium salt comprises a combination of
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`LiPF. (paragraphs 80-81).
`
`Regarding Claims 9 and 10, Onozaki teaches a secondary battery comprising: the
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`nonaqueous electrolyte described above, a positive electrode, anda negative electrode,
`
`

`

`Application/Control Number: 16/580,194
`Art Unit: 1729
`
`Page 4
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`wherein the positive electrode includes a Ni-containing lithium transition metal oxide
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`(paragraphs 113-114).
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`A patent fora claimed invention may not be obtained, notwithstanding that the claimed inventionis
`notidentically disclosed as set forth ins ection 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 ofthe claimed invention to a person having ordinary skillinthe art to which the
`claimed invention pertains. Pa tentability s hall not be negated by the mannerin which the invention
`was made.
`
`The factual inquiries for establishing a background for determining obviousness under
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`35 U.S.C. 103 are summarized as follows:
`
`1.
`
`2.
`
`3.
`
`4.
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`Determining the scope and contentsof the prior art.
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`Ascertaining the differences between the priorart and the claims at issue.
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`Resolving the level of ordinary skillinthe pertinent art.
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`Considering objective evidence present inthe application indicating obviousness
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`or nonobviousness.
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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was commonly
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`ownedas of the effectivefiling date of the claimed invention(s) absent any evide nce to the
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`contrary. Applicantis advised of the obligation under 37 CFR 1.56 to point out the inventorand
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`effective filing dates of each claimthat was not commonly ownedas of the effectivefiling date
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`

`

`Application/Control Number: 16/580,194
`Art Unit: 1729
`
`Page 5
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`of the later inventionin order for the examinerto consider the applicability of 35 U.S.C.
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`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the laterinvention.
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`Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2015-069704
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`hereinafter Onozaki in view of U.S. Pre-Grant Publication 2003/0165733 hereinafter
`
`Takehara.
`
`Regarding Claim 8, Onozaki does not disclose the specific dicarbonyl compound as
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`claimed, however, Takehara teaches a nonaqueous electrolyticsolution that comprises an
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`additive such as succinic anhydride (paragraph 82). Therefore, it would have been obvious to
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`one of ordinary skillin the art to include succinic anhydride in the electrolyticsolution before
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`the effective filing date of the claimed invention because Takehara discloses that such
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`modification can form a coating film on electrode surfaces to inhibit solvent decomposition on
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`the electrodes (paragraph 81).
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examinershould be directed to OSEI K AMPONSAH whosetelephone numberis (571)270-3446.
`
`The examinercan normally be reached Monday - Friday, 8:00 am - 5:00 pm EST.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing
`
`using a USPTO supplied web-based collaboration tool. To schedule an interview,applicantis
`
`encouraged to use the USPTO Automated Interview Request(AIR) at
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`http://www.uspto.gov/interviewpractice.
`
`

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`Application/Control Number: 16/580,194
`Art Unit: 1729
`
`Page 6
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Ula C Ruddock can be reached on (571)272-1481. The fax phone number for the
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`organization wherethis application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
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`obtained from Patent Center. Unpublished application information in Patent Centeris 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
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`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO
`
`Customer Service Representative, call 800-786-9199 (INUSA OR CANADA) or 571-272-1000.
`
`/OSEI K AMPONSAH/
`Primary Examiner, Art Unit 1729
`
`