www.uspto.gov
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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
`
`Kazuhirolida
`
`P190989US00
`
`3885
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`AMPONSAH, OSETK
`
`1729
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`05/26/2022
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`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.
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`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*
`1-11 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-11 is/are rejected.
`(1 Claim(s)__is/are objectedto.
`C} Claim(s)
`are subjectto restriction and/or election requirement
`* 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)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 02/17/2022.
`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 20220521
`
`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 28 February 2022.
`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: 16/580,194
`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.
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`Response to Amendment
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`Upon consideration, the previous rejection of record was withdrawn in light of new
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`amendments. However new rejection is applied to the amended claims. All changes made in
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`the rejection are necessitated by the amendment.
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`Response to Arguments
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`Applicant’s arguments with respect to claim(s) 1-11 have been considered but are moot
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`because the new ground of rejection does not rely on any reference appliedin the prior
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`rejection of record for any teaching or matter specifically challenged in the argument.
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`Information Disclosure Statement
`
`The information disclosure statement (IDS) submitted on 02-17-2022 isin compliance
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`with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being
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`considered by the examiner.
`
`

`

`Application/Control Number: 16/580,194
`Art Unit: 1729
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`Page 3
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`Double Patenting
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`The nonstatutory double patenting rejection is based on a judicially created doctrine
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`grounded in public policy (a policy reflected inthe statute) so as to preventthe unjustified or
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`impropertimewise extension of the “right to exclude” granted by a patent and to prevent
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`possible harassment by multiple assignees. Anonstatutory double patenting rejectionis
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`appropriate where the conflicting claims are not identical, but at least one examined
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`application claim is not patentably distinct from the reference claim(s) because the examined
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`application claim is either anticipated by, or would have been obvious over, the reference
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`claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998);
`
`In re Goodman,
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`11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed.
`
`Cir. 1985); fn re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d
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`438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimerin compliance with 37 CFR 1.321(c) or 1.321(d) may be
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`usedto overcome an actual or provisional rejection based on nonstatutory double patenting
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`provided the reference application or patent eitheris shown to be commonly owned withthe
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`examined application, orclaims an invention made as a result of activities undertaken within
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`the scope of a joint research agreement. See MPEP § 717.02 for applications subject to
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`examination under the first inventorto file provisions of the AIA as explainedin MPEP § 2159.
`
`See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to
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`file provisions of the AIA. A terminal disclaimer must be signedin compliance with 37 CFR
`
`1.321(b).
`
`

`

`Application/Control Number: 16/580,194
`Art Unit: 1729
`
`Page 4
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`The USPTO Internet website contains terminal disclaimerforms which may be used.
`
`Please visit www.uspto.gov/patent/patents-forms. The filing date of the applicationin which
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`the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or
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`PTO/AIA/26) should be used. A web-based eTerminal Disclaimer maybe filled out completely
`
`online using web-screens. An eTerminal Disclaimerthat meetsall requirements is auto-
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`processed and approvedimmediately upon submission. For more information about eTerminal
`
`Disclaimers, referto www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
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`Claims 1-11 are rejected on the ground of nonstatutory double patentingas being
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`unpatentable overclaims 1-6 of U.S. Patent No. 11,201,355. Althoughthe claims at issue are
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`not identical, they are not patentably distinct from each other because both are directeda non-
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`aqueous electrolyte secondary battery comprising an electrolyte that includes a fluorinated
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`chain carboxylate ester and an organic chlorine compound.
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`Conclusion
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicantis
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`reminded of the extension of time policy as set forth in37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is setto expire THREE MONTHS
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`from the mailing date of this action.
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`In the eventa firstreply is filed within TWO MONTHS of
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`the mailing date of this final action and the advisory action is not mailed until afterthe end of
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`the THREE-MONTH shortened statutory period, thenthe shortened statutory period will expire
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`on the date the advisory action is mailed, and any extension fee pursuantto 37 CFR 1.136(a)
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`

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`Application/Control Number: 16/580,194
`Art Unit: 1729
`
`Page 5
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`will be calculated from the mailing date of the advisory action.
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`In no event, however, will the
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`statutory period for reply expire laterthan SIX MONTHS from the date of this final action.
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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
`
`http://www.uspto.gov/interviewpractice.
`
`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
`
`organization wherethis application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`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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`
`Customer Service Representative, call 800-786-9199 (INUSA OR CANADA) or 571-272-1000.
`
`

`

`Application/Control Number: 16/580,194
`Art Unit: 1729
`
`/OSEI K AMPONSAH/
`Primary Examiner, Art Unit 1729
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`Page 6
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