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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/975,469
`
`08/25/2020
`
`Yuanlong ZHONG
`
`P200783US00
`
`1385
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA22182
`
`MCCONNELL, WYATT P
`
`1727
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/09/2024
`
`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)
`
`

`

`Application No.
`Applicant(s)
`16/975,469
`ZHONG et al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`WYATT P MCCONNELL
`1727
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 10/18/2023.
`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) 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)(2) 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*
`1-2 and 4-12 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) 1-2,4-8 and 10-11 is/are rejected.
`Claim(s) 9and12 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:/Awww.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) filedon__ is/are: a)C) 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)LJ None ofthe:
`b)LJ Some**
`a)D) All
`1.) Certified copies of the priority documents have been received.
`2.1 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)
`
`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)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240206
`
`

`

`Application/Control Number: 16/975,469
`Art Unit: 1727
`
`Page 2
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`Notice of Pre-AlA orAIA Status
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`The presentapplication,filed on or after March 16, 2013, is being examined under the first
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`inventorto file provisions of the AIA.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`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 forthin 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.
`
`The factual inquiries for establishing a background for determining obviousness under 35 U.S.C.
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`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 obviousness or
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`nonobviousness.
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`Claim(s)1, 2, 4-8, 10, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S.
`
`Patent Application Publication No. 2017/0200976 to Nakazawa(“Nakazawa”). Regarding claims 1, 2, and
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`4-8, Nakazawadiscloses electrolytes forlithium ion secondary batteries and batteries including same.
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`Nakazawaat Title. The batteries include positive electrode, negative electrode, and nonaqueous
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`electrolyte. Id. at Abstract. Regarding the positive electrode,it includes a positive electrode active
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`material which in some embodimentsis a composite lithium nickel/manganese oxide, LIMO2, where M
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`is Mn and Ni, with a Mn/Ni ratio ranging from 0.1 (corresponding to 91% nickel) and 5 (corresponding to
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`

`

`Application/Control Number: 16/975,469
`Art Unit: 1727
`
`Page 3
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`17% nickel). Id. at paragraph [0489] Regarding the non-aqueous electrolyte, Nakazawadiscloses that at
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`least one additive be provided in the electrolyte solution. Id. at paragraph [0061]. Among the suggested
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`additives taught are cyclic carbonates, isocyanuric acid skeleton compounds, and acid anhydride
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`compounds. Id. These are all suggested additives because they are taught to be able to react with the
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`primary compound contained in the electrolyte to form a protective composite on the electrode surface.
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`Id. at paragraphs [0064] and [0065]. Regarding cyclic carbonates, fluorine-containing cyclocarbonates
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`are listed as most preferred and is suggested to be included in an amount ranging from 0.001 to 10%.Id.
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`at paragraph [0081]. Regarding the isocyanuric acid skeleton compound, included amongst preferred
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`examples are various triallylisocyanurates. Id. at page 53, right column, middle cluster of compounds.
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`These are taught to be included in an amount ranging from 0.001 to 10%.Id. at paragraph [0129].
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`Finally, regarding the acid anhydride, succinic anhydride is among the most preferable, and is taught to
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`be included in an amount ranging from 0.001-10%.Id. at paragraph [0164] and [0166].
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`Accordingly, although Nakazawa does not expressly disclose a battery having all three of
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`these compoundsincluded in the same battery, because Nakazawadiscloses that each of these
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`additives are beneficial for the same purpose, and that one or more of them may be provided ina
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`battery system, the person of ordinary skill in the art at the time of invention would have considered
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`including one of the preferred fluorine-containing cyclocarbonates, one of the suggested
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`triallylisocyanurate compounds, and the preferred succinic anhydride to be an obvious way to improve
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`battery performance through formation of a composite on electrode surfaces based on Nakazawa’s
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`teachings that each of these compoundsis useful for the same purpose, and that more than one
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`additive can be providedin its electrolyte. The amounts disclosed in Nakazawa also overlap with the
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`recited amounts at least at the end ranges, thereby rendering those amounts obvious.
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`

`

`Application/Control Number: 16/975,469
`Art Unit: 1727
`
`Page 4
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`Further regarding claims 10 and 11, the Office notes that while the electrolyte is now defined
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`using the closed “consisting essentially of’ language, the claim isstill incredibly open with regards to
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`what may be included in the electrolyte since the definition of the non-aqueous solvent remains open.
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`The various compounds and additives included in the electrolyte solution of Nakazawa in addition to the
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`electrolyte salt, are considered to be part of the non-aqueoussolvent, since claim 9 considers such
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`additives to be included its definition of non-aqueous solvent.
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`Allowable Subject Matter
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`Claims 9 and 12 are objected to as being dependent upon a rejected base claim, but would be
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`allowable if rewrittenin independent form including all of the limitations of the base claim and any
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`intervening claims. The lower limit of the claimed amount in claims 9 and 12 is twice the upper limit
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`disclosed in Nakazawa. Thus, it cannot be said that Nakazawa would fairly lead the person of ordinary
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`skillin the art at the time of invention to the combination of all elements recited in those claims.
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`Response to Arguments
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`Applicant's argumentsfiled October 18, 2024, have been fully considered but they are not
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`persuasive. The argumentsare addressed in the rejection above — namely, the recited amountin the
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`independentclaimsstill overlaps with the disclosed range since both include 10%, thereby rendering the
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`claimed range obvious. Moreover, the broad definition of non-aqueous solution, which is open and
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`includes additives, means that the narrowing of claims 10 and 11 is insufficient to overcome the
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`rejection of record.
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`Conclusion
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`Applicant's amendment necessitated the new ground(s) of rejection presentedin this Office
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`action. Accordingly, THIS ACTIONIS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
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`extension of time policy as set forth in 37 CFR 1.136(a).
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`

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`Application/Control Number: 16/975,469
`Art Unit: 1727
`
`Page5S
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`A shortenedstatutory period for reply to this final action is set to expire THREE MONTHS from
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`the mailing date of this action.
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`In the event a first reply is filed within TWO MONTHS ofthe mailing date
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`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the advisory
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`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
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`date of the advisory action.
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`In no event, however, will the statutory period for reply expire later than
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`SIX MONTHS from the date ofthis final action.
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`Anyinquiry concerning this communication or earlier communications from the examiner
`
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`
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`

`Application/Control Number: 16/975,469
`Art Unit: 1727
`
`Page 6
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`assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or
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`
`/WYATT P MCCONNELL/
`Primary Examiner, Art Unit 1727
`
`