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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
`
`16/771,394
`
`06/10/2020
`
`Yuki Tokuda
`
`P200521US00
`
`5718
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`DOUYETTE, KENNETH J
`
`1725
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/04/2022
`
`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.
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`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)
`16/771,394
`Tokuda etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`KENNETH J DOUYETTE
`1725
`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 2 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)C) Responsive to communication(s) filed on
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)C) This action is FINAL. 2b)¥)This action is non-final.
`3)0) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on__; the restriction requirement and election have been incorporatedinto this action.
`4\() 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*
`____ is/are pending in the application.
`) © Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`L) Claim(s)__ is/are allowed.
`OD Claim(s
`s)___ is/are rejected.
`( Claim(s)
`is/are objected to.
`Claim(s) 1-13 are subject to 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)C) The specification is objected to by the Examiner.
`11)€2) The drawing(s) filed on
`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)C2) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)C) None ofthe:
`b)™) Some**
`a) All
`1.02 Certified copies of the priority documents have been received.
`2..) 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 received in 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 20220426
`
`

`

`Application/Control Number: 16/771 ,394
`Art Unit: 1725
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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,
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`is being examined
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`under the first inventor to file provisions of the AIA.
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`2.
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`REQUIREMENT FOR UNITY OF INVENTION
`
`Election/Restriction
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`As provided in 37 CFR 1.475(a), a national stage application shall relate to one
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`invention only or to a group of inventions so linked as to form a single general inventive
`
`concept(“requirement of unity of invention’). Where a group of inventions is claimed in
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`a national stage application, the requirement of unity of invention shall be fulfilled only
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`whenthere is a technical relationship among those inventions involving one or more of
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`the same or corresponding special technical features. The expression “special technical
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`features” shall mean those technical features that define a contribution which each of
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`the claimed inventions, considered as a whole, makes over the prior art.
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`The determination whether a group of inventions is so linked as to form a single
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`general inventive concept shall be made without regard to whether the inventions are
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`claimed in separate claims or as alternatives within a single claim. See 37 CFR
`
`1.475(e).
`
`WhenClaims Are Directed to Multiple Categories of Inventions:
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`

`

`Application/Control Number: 16/771 ,394
`Art Unit: 1725
`
`Page 3
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`As provided in 37 CFR 1.475 (b), a national stage application containing claims
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`to different categories of invention will be considered to have unity of invention if the
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`claims are drawn only to one of the following combinations of categories:
`
`(1) A product and a process specially adapted for the manufacture of said
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`product; or
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`(2) A product and a process of use of said product; or
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`(3) A product, a process specially adapted for the manufacture of the said
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`product, and a use of the said product; or
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`(4) A process and an apparatus or means specifically designed for carrying out
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`the said process; or
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`(5) A product, a process specially adapted for the manufacture of the said
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`product, and an apparatus or meansspecifically designed for carrying out
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`the said process.
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`Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
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`3.
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`Restriction is required under 35 U.S.C. 121 and 372.
`
`This application contains the following inventions or groups of inventions which
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`are not so linked as to form a single general inventive concept under PCT Rule 13.1.
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`In accordance with 37 CFR 1.499, applicant is required,
`
`in reply to this action, to
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`elect a single invention to which the claims must be restricted.
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`Group I, claim(s) 1-7, drawn to a first battery.
`
`Group Il, claim(s) 8-13, drawn to a secondbattery.
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`

`

`Application/Control Number: 16/771 ,394
`Art Unit: 1725
`
`Page 4
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`4.
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`The groups of inventions listed above do not relate to a single general inventive
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`concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or
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`corresponding special technical features for the following reasons:
`
`Groups| andIl lack unity of invention because the groups do not share the same
`
`or corresponding technical feature. Group | includes a feature of different massesof
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`negative active materials in different regions of the negative electrode, a feature which
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`is not shared with Group Il. As such, Groups | andIl lack unity of invention.
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`Groups | and Il lack unity of invention because even though the inventions of
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`these groups require the technical feature of a secondary battery including multiple
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`electrodes with leads as set forth in the claims of each group, this technical feature is
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`not a special technical feature as it does not make a contribution over the prior art in
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`view of Fukui et al. (JP 2011/204660). As stated in the English Translation of the
`
`Written Opinion of the International Search Authority dated 4/8/2020, the
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`aforementioned battery features are shared between Groups| and Il, and are known via
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`Fukui et al. (JP 2011/204660). As such, these features are not special technical
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`features making a contribution over the prior art and therefore Groups | and Il lack unity
`
`of invention.
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`5.
`
`Applicant is reminded that upon the cancellation of claims to a non-elected
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`invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one
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`or more of the currently named inventors is no longer an inventor of at least one claim
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`remaining in the application. A request to correct inventorship under 37 CFR 1.48(a)
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`

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`Application/Control Number: 16/771 ,394
`Art Unit: 1725
`
`Page 5
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`must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that
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`identifies each inventor by his or her legal name and by the processing fee required
`
`under 37 CFR 1.17(i).
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to KENNETH J DOUYETTE whosetelephone numberis
`
`(571)270-1212. The examiner can normally be reached Monday - Friday 8A - 4P EST.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/AWwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Basia Ridley can be reached on 571-272-1453. The fax phone number for
`
`the organization where this 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
`
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`
`If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/KENNETH J DOUYETTE/
`Primary Examiner, Art Unit 1725
`
`