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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
`
`16/638,376
`
`02/11/2020
`
`Hiroki Watanabe
`
`P200120US00
`
`1910
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`WILLS, MONIQUE M
`
`ART UNIT
`1722
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`01/13/2022
`
`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*
`1-4 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-4 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 2/11/20 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)
`
`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 20220110
`
`Application No.
`Applicant(s)
`16/638 376
`Watanabeetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`MONIQUE M WILLS
`1722
`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 2/11/20.
`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: 16/638,376
`Art Unit: 1722
`
`DETAILED ACTION
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`Page 2
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`Notice of Pre-AlA or AIA Status
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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.
`
`Foreign Priority Documents
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`The Japaneseforeign priority document(s) 2017-230619, submitted under 35
`
`U.S.C. § 119 (a)-(d), was/were been received on February 11, 2020 and placed of
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`record in the file.
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`Information Disclosure Statement
`
`The information disclosure statements filed February 19, 2020 & January 15,
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`2021 has/have been received and complies with the provisions of 37 CFR 1.97, 1.98
`
`and MPEP § 609. Accordingly, the information disclosure statement(s) is/are being
`
`considered by the examiner, and aninitial copied is attached herewith.
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`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousnessrejections setforth in this Office action:
`
`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: 16/638,376
`Art Unit: 1722
`
`Page 3
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`Claims 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu et
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`al. U.S. Pat. 9,831,523 in view Lee et al. U.S. Pub. 2018/0102512.
`
`With respect to claim 1, Yu teaches a non-aqueous electrolyie secondary battery
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`non-aqueous electrolyte for secondary battery; col. 3, lines 30-40), cornprising: an
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`electrode body in which a plurality of pasilive electrodes and a plurality of negative
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`electrodes are aliernately stacked with a separator interposed therebetween (cathodes
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`and anodes with separator in between: cal 6, ines 35-403): and a non-aqueous
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`electrolytic solution containing a non-aqueous solvent (non-aqueous elecirolyte solution
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`cCOMOBISeS an organic solvent; col. 6, lines 55-60}, and the non-aqueous electrolytic
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`solution cortains 10 to 40% by volume of a fucroethylene carbonate (3 to 306%
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`Hucroethylene carbonate; col. 6, ines 5-10). With respect to claim 2, the negalive
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`electrode contains as a negative electrode active material, al least one selected fram
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`the group consisting of a metal which forms an alloy with ithium, an alloy containing the
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`metal, and an oxide containing ihe metal Gittium oxide coating; col. 1, ines 50-
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`55}. With respect to claim 3, the chain carboxyiais esteris ethyl propionate (col. 7,
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`lines 20-25), With respect fo claim 4, the non-aqueous solvent further contains al least
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`one selected from the group consisting of ethylene carbonate, ethyl methyl carbonate,
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`and dimethyl carbonate (DMC, col. 7, lines 1-5).
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`Yu does not expressly disclose that the electrode body has & ar more layers of
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`pairs of the positive elecirocie and the negative electrode (claim 1}; the non-aqueous
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`electrolytic solution contains, at 25°C (elaim 1); and 15 to 40% by volume of a chain
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`carboxviaie ester having 5 ar fess carbon atoms, relalive to the total volume of the nan-
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`aqueous solvent (claim 4).
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`

`

`Application/Control Number: 16/638,376
`Art Unit: 1722
`
`Page 4
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`However, Lee teaches thal iLis well known in the art io employ non-aqueous
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`electroiyle secondary batteries with & layers of pairs of negalive anc positive electrodes.
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`ose below.
`
`sue
`
`
`roan|!
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`“805 Seaton
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`Yu and Lee are analogous art from the same field of endeavor, namely
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`fabricating non-aqueous electrolyte secondarycell.
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`Therefore, it would have been obvious to one of ordinary skill in the art before the
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`effective filing date of the claimed invention to employ the 8 pairs of positive and
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`negative electrode layers as suggested by Lee, in the electrochemical cell of Yu, as
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`duplication of essential working parts of a device is prima facie obvious. See i
`
`re Harza, 274 F2d 669, 124 USPO 378 (COPA 1960).
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`With respect to the non-aqueous slectrolytic solution contains, at 25°C (claim 4):
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`Yu teaches operating the battery at 60°C (Exarnple 1), it would have been obvious to
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`employ the temperature of 25°C for the cell of Yu in view cf Lee, as "where the general
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`conditions of a claim are disclosedin the prior art, it is not inventive to discover the
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`optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454,
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`456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known
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`

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`Application/Control Number: 16/638,376
`Art Unit: 1722
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`Page 5
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`result effective variable, without producing any new or unexpected results, is within the
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`ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA
`
`1980) (see MPEP § 2144.05, II.).
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`With respect to 15 to 40%by volume of a chain carboxviate ester having 5 ar
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`less carbon atoms, relative to the total volume of the non-aqueous solvent (claim 1}, it
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`would have been obvious as Yun teaches 3 to 30% fluroethyelene carbonate: (cal. &,
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`ines 5-10), and a balance of ethyl promionate (col. 7, ines 20-25), in the electrolyte of
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`Yur in view of Lee, as "where the general conditions of a claim are disclosed in the prior
`
`art, it is not inventive to discover the optimum or workable ranges by routine
`
`experimentation." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA
`
`1955). The discovery of an optimum value of a known result effective variable, without
`
`producing any new or unexpected results, is within the ambit of a person of ordinary skill
`
`in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
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`

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`Application/Control Number: 16/638,376
`Art Unit: 1722
`
`Page 6
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`examiner should be directed to MONIQUE M WILLS whosetelephone number is
`(571)272-1309. The Examiner can normally be reached on Monday-Friday from
`8:30am to 5:00 pm.
`
`If attempts to reach the examiner by telephone are unsuccessful, the Examiner's
`supervisor, Cynthia Kelly, may be reached at 571-272-1526. The fax phone number for
`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 system, see http://portal.uspto.gov/external/portal.
`Should you have questions on accessto the Private PAIR system, contact the
`Electronic Business Center (EBC) at 866-217-9197(toll-free).
`
`/Monique M Wills/
`Examiner, Art Unit 1722
`
`/CYNTHIA H KELLY/
`Supervisory Patent Examiner, Art Unit 1722
`
`