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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
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`16/639,377
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`02/14/2020
`
`Yuji Tani
`
`P200163US00
`
`1043
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`MCDERMOTT, HELEN M
`
`1727
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`04/01/2022
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`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
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`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-9 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-9 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 02/14/2020 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)
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`1)
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`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
`U.S. Patent and Trademark Office
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`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
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`4)
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mail Date 20220325
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`Application No.
`Applicant(s)
`16/639 377
`Tani etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`HELEN M MCDERMOTT
`1727
`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
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`1) Responsive to communication(s) filed on 02/14/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`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.
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`

`

`Application/Control Number: 16/639,377
`Art Unit: 1727
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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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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`2.
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to 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.
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`3.
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`Receipt is acknowledgedof certified copies of papers required by 37 CFR 1.55.
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`Priority
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`Information Disclosure Statement
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`4.
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`The information disclosure statement (IDS) submitted on 02/14/2020is in compliance
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`with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statementis being
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`considered by the examiner.
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`5.
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`The drawings were received on 02/14/2020. These drawingsare acceptable.
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`Drawings
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`

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`Application/Control Number: 16/639,377
`Art Unit: 1727
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`Page 3
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`Claim Rejections - 35 USC § 102
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`6.
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`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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`A person shall be entitled to a patent unless —
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale,
`or otherwise available to the public before the effectivefiling date of the claimed invention.
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`7.
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`Claims 1-3 and 5-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US
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`2010/0015514 A1 (Miyagi).
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`Regarding claims 1, 2 and 6-9, Miyagi discloses a non-aqueous electrolyte secondary
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`battery (lithium secondary battery), comprising a positive electrode, a separator, a negative
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`electrode facing the positive electrode with the separator interposed between the positive
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`electrode and the negative electrode, and an electrolytic solution (nonaqueous electrolyte)
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`containing a solvent (nonaqueous solvent) and an electrolyte (lithium salt) [0007], the positive
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`electrode including a positive electrode material (active material) [0096] containing a lithium-
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`nickel composite oxide represented by LiaNipbM1-»O2, where M representsat least one selected
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`from the group consisting of Na, Mg,Sc, Y, Mn, Fe, Co, Ni, Cu, Zn, Al, Cr, Pb, Sb and B, 0.95 <a<
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`1.2, and 0.8 <b <1 (e.g., LINiO2, LiNio.gsCoo.10Alo.0sO2) [0099]-[0100], the electrolytic solution
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`containing an ester compoundC of an alcohol compound A and a carboxylic acid compound B
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`(chain carboxylic acid ester, e.g., methyl acetate) [1103], [1117], [1127], and containing at least
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`one of the alcohol compoundA (e.g., monohydric alcohol such as methyl alcohol) [1212],
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`[1222] and the carboxylic acid compound B (acetic acid) [1129] in an amount of 15 ppm or
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`more,relative to a mass of the electrolytic solution [1230], [1147].
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`

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`Application/Control Number: 16/639,377
`Art Unit: 1727
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`Page 4
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`Regarding claim 3, Miyagi further discloses that the alcohol compound A is contained in
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`an amountof 15 to 1000 ppm, relative to the massof the electrolytic solution (preferably 15
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`ppm or higher and 100 ppm or lower) [1230].
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`Regarding claim 5, Miyagi further discloses that the ester compound C (chain ester such
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`as methyl acetate) is contained in an amountof 1 to 80%,relative to a volume of the
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`electrolytic solution (5% or higher and 50% or lower) [1127].
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`Claim Rejections - 35 USC § 103
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`8.
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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 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 ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
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`9.
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`The factual inquiries for establishing a background for determining obviousness under
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`35 U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousnessor
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`nonobviousness.
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`10.
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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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`

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`Application/Control Number: 16/639,377
`Art Unit: 1727
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`Page 5
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`ownedas ofthe effective filing date of the claimed invention(s) absent any evidence to the
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`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly owned as of the effective filing date
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`of the later invention in order for the examiner to 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 later invention.
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`11.
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`Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0015514
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`A1 (Miyagi), as applied to claims 1-3 and 5-9 above.
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`Miyagi discloses the non-aqueous electrolyte secondary battery of claim 1, as shown
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`above, and further discloses that the carboxylic acid compound B (acetic acid) is contained in an
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`amountof 10 ppm or higher (0.001% by massor higher) in terms of total content thereof based
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`on the whole nonaqueous electrolyte, and preferably 3% by mass or lower [1146]-[1147].
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`Miyagi does notexplicitly teach the claimed range of 15 to 1000 ppm, however the claimed
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`range nevertheless would have been obvious to one of ordinaryskill in the art becauseit lies
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`inside the range disclosed by Miyagi. See MPEP 2124.05. In the case wherethe claimed ranges
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`“overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousnessexists.
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`In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Generally, differences in
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`concentration or temperature will not support the patentability of subject matter encompassed
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`by the prior art unless there is evidence indicating such concentration or temperatureis critical.
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`"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to
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`discover the optimum or workable ranges by routine experimentation." /n re Aller, 220 F.2d
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`454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at
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`1382 ("The normal desire of scientists or artisans to improve upon whatis already generally
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`Application/Control Number: 16/639,377
`Art Unit: 1727
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`Page 6
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`known provides the motivation to determine whereina disclosed set of percentage rangesis
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`the optimum combination of percentages.").
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`Conclusion
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`12.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to HELEN M MCDERMOTT whosetelephone number is (571)270-
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`7138. The examiner can normally be reached Monday - Friday, 11am - 7pm.
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`Examiner interviews are available via telephone,in-person, and video conferencing
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`using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is
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`encouraged to use the USPTO Automated Interview Request(AIR) at
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`http://www.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, Barbara Gilliam can be reached on 571-272-1330. The fax phone number for the
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`organization wherethis application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of published or unpublished applications may be
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`obtained from Patent Center. Unpublished application information in Patent Center is available
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`Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
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`

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`Application/Control Number: 16/639,377
`Art Unit: 1727
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`Page 7
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`/HMM/
`
`/BARBARA L GILLIAM/
`Supervisory Patent Examiner, Art Unit 1727
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`