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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
`
`16/981,502
`
`09/16/2020
`
`Tomohisa Okazaki
`
`P200859US00
`
`4869
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`MARTIN, ANGELA J
`
`1727
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`10/24/2023
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`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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*
`1-2 and 4-10 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj] Claim(s)
`is/are allowed.
`Claim(s) 1-2 and 4-10 is/are rejected.
`1) Claim(s)__is/are objectedto.
`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://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)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)[VM. 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) All
`1.{¥] Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived 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)
`
`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)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20231007
`
`Application No.
`Applicant(s)
`16/981 ,502
`Okazakietal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ANGELA J MARTIN
`1727
`Yes
`
`
`
`-- The MAILING DATEof this 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 6/28/2023.
`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)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: 16/981 ,502
`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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`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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`The Applicant has amended claim 1 and canceled claim 3; and added newclaims 7-10.
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`The pending claims are claims 1, 2, 4-10. The rejection is madefinal for the following
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`reasons of record.
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`Claim Rejections - 35 USC § 102
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`1.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`2.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section madein 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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`3.
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`Claim(s) 1, 2, 4-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated
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`by Shizuka et al., JP 2002367674.
`
`Regarding claim 1, Shizukaet al., teachesa lithium secondary battery (0002)
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`having a positive electrode (0004; 0010), a separator (electrolyte; 0010), a negative
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`electrode (0010) facing the positive electrode with the separator (0041; 0029; glass
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`

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`Application/Control Number: 16/981 ,502
`Art Unit: 1727
`
`Page 3
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`filter) interposed between the negative electrode and the positive electrode (0156), and
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`an electrolyte (0010), wherein
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`metallic lithium deposits on the negative electrode during charge (0029), the electrolyte
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`comprising:
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`an oxalate salt containing an oxalate complex as an anion (0046), andalithium
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`ion as a cation (0046); and a dicarboxylic acid diester compound (0046-0048; Fig. 1)
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`where R1 represents a single bond having 1 to 3 carbon atoms (0016), Ra and Rb are
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`hydrocarbon groups having 1 to 4 carbon atoms, and dicarboxylic acid constituting
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`dicarboxylic acid diester compound is oxalic acid, malonic acid (0046-0048); the
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`dicarboxylic acid diester compound (diethyl oxalate; dimethyl malonate; 0047) being
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`contained in an amount of 2 mass%in the electrolyte (0047).
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`Regarding claim 2, Shizuka et al., teaches oxalate salt in amount of 2% by
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`weight (0022; 0047).
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`Regarding claim 4, Shizuka et al., teaches wherein the oxalate salt includes
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`lithium difluorooxalate borate (0033).
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`Regarding claim 5, Shizuka et al., teaches wherein the negative electrode
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`includes a negative electrode current collector (0039), and the negative electrode
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`current collector includes a metal material that does not react with metallic lithium
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`(copper) (0039).
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`Regarding claim 6, Shizuka et al., teaches the metal material is copper or a
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`copper alloy (0039).
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`

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`Application/Control Number: 16/981 ,502
`Art Unit: 1727
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`Page 4
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`Regarding claim 7, Shizuka et al., teaches dicarboxylic acid (0046-0048)
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`constituting dicarboxylic acid diester compound (0046-0048) is malonic acid (0046-
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`0048).
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`Regarding claim 8, Shizuka et al., teaches metallic lithium is configured to
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`deposit on negative electrode during charge to form lithium metal layer (0029).
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`Thus, the claims are anticipated.
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`Claim Rejections - 35 USC § 103
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`4.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth 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 effectivefiling 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.
`
`5.
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`Claim(s) 9, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over
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`Shizuka et al., JP 2002367674.
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`Regarding claim 9, Shizuka et al., does not teach negative electrode is
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`configured to have no lithium metal that can be substantially discharged.
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`However, A prima facie case of obvigusness may be made when chemical cornmpoaunds
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`have very close structural similanties and similar ullities. “An obviausriess refection
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`based on similarity in chemical structure and function entails the motivation af one
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`skied in the artic make 4 claimed compound, in the expectation that compounds
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`similar in structure will have similar properties.” in re Payne, 606 F.2d 303, 313,
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`

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`Application/Control Number: 16/981 ,502
`Art Unit: 1727
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`Page 5
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`203 USPO 245, 254 (COPA 1979). See in re Papesch, 315 F.2d 381, 137 USPQ 43
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`(COPA 1963).
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`Furthermore, a claim containing a "recitation with respect to the manner in which a
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`claimed apparatus is intended to be employed does notdifferentiate the claimed
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`apparatus from a prior art apparatus"if the prior art apparatus teaches all the structural
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`limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter.
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`1987.)
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`Regarding claim 10, Shizuka et al., teaches the negative electrode active
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`material layer is formed by attaching a foil of lithium metal on a current collector, or
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`electrodeposition or vapor deposition of lithium metal on the current collector, is a
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`product-by-process. “Elven though product-by-process claims are limited by and
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`defined by ihe process, determination of patentability is based on the praduct liself. The
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`patentability of a oroduct does rio depend on iis method of production. if the product in
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`the product-by-process claim is the same as or cbvicus from a product of ihe priorart,
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`the clairn is unpatentable even though the prior product was made by a different
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`process.” In re Thorpe, 777 F.2d 695, 698, 227 USPO 964, 966 (Fed. Cir, 1965).
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`Conclusion
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`6.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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`CFR 1.136(a).
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`

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`Application/Control Number: 16/981 ,502
`Art Unit: 1727
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`Page 6
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`A shortenedstatutory period for reply to this final action is set to expire THREE
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`
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`MONTHS from the mailing date of this action. In the eventafirst reply is filed within
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`TWO MONTHS ofthe mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTHshortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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`7.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to ANGELA J MARTIN whosetelephone number is
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`(571)272-1288. The examiner can normally be reached 7am-4pm.
`
`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:/Awww.uspto.gov/interviewpractice.
`
`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
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`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 Center is
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
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`

`

`Application/Control Number: 16/981 ,502
`Art Unit: 1727
`
`center for more information about Patent Center and
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`
`ANGELAJ. MARTIN
`Examiner
`
`Art Unit 1727
`
`/ANGELA J MARTIN/
`Examiner, Art Unit 1727
`
`/Maria Laios/
`Primary Examiner, Art Unit 1727
`
`