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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
`
`16/981,502
`
`09/16/2020
`
`Tomohisa Okazaki
`
`P200859US00
`
`4869
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA22182
`
`MARTIN, ANGELA J
`
`1727
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/20/2024
`
`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)
`16/981 ,502
`Okazakiet al.
`
`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 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 3/6/2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)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*
`1-2,4-7 and 9-11 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`CL] Claim(s)__is/are allowed.
`Claim(s) 1-2,4-7 and 9-11 is/are rejected.
`(] Claim(s)__ 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://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)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)[¥) 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.
`2.2) 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 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)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`4)
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`
`Paper No(s)/Mail Date5/30/24(2/1/24.
`U.S. Patent and Trademark Office
`
`3)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240614
`
`

`

`Application/Control Number: 16/981 ,502
`Art Unit: 1727
`
`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 underthe
`
`first inventor to file provisions of the AIA.
`
`The Applicant has amended independent claim 1; canceled claim 8; added new
`
`dependent claim 11. The pending claims are claims 1, 2, 4-7, 9-11.
`
`Claim Rejections - 35 USC § 103
`
`1.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basisfor all
`
`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
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`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
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`invention pertains. Patentability shall not be negated by the manner in which the invention was made.
`
`2.
`
`Claim(s) 1, 2, 4-7, 9, 10, 11 is/are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Shizukaetal., JP 2002367674, in view of Schmitz et al., US
`
`2017/0040649, andin further view of Shiozaki et al., EP 1391950.
`
`Regarding claim 1, Shizuka et al., teaches a lithium secondary battery (0002) having a
`
`positive electrode (0004; 0010), a separator (electrolyte; 0010), a negative electrode
`
`(0010) facing the positive electrode with the separator (0041; 0029; glassfilter)
`
`

`

`Application/Control Number: 16/981 ,502
`Art Unit: 1727
`
`Page 3
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`interposed between the negative electrode and the positive electrode (0156), and an
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`electrolyte (0010).
`
`Shizuka does not teach wherein metallic lithium deposits on the negative electrode
`
`during charge.
`
`Shiozaki teaches metallic lithium configured to deposit negative electrode during charge
`
`so as to formalithium metal layer (0170; 0172; 0178).
`
`Additionally, the electrolyte comprising:
`
`a salt (0046), andalithium ion as a cation (0046); and a dicarboxylic acid diester
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`compound (0046-0048; Fig. 1) where R1 represents a single bond having 1 to 3 carbon
`
`atoms (0016), Ra and Rb are hydrocarbon groups having 1 to 4 carbon atoms, and
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`dicarboxylic acid constituting dicarboxylic acid diester compound, malonic acid (0046-
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`0048); the dicarboxylic acid diester compound (diethyl oxalate; dimethyl malonate;
`
`0047) being contained in an amountof 2 mass%in the electrolyte (0047).
`
`Shizukaet al., does not teach an oxalate salt.
`
`Schmitz et al., teacheslithium difluorooxalato borate (0116; 0124).
`
`Thus, it would have been obvious to one ofordinary skill in the art to insert the
`
`teachings of Schmitz into Shizuka becausethe borate salt of Schmitz teaches:
`
`“A compound added as additive may have more than one effect in the electrolyte
`
`composition and the device comprising the electrolyte composition. E.g. lithium oxalate
`
`borate may be added as additive enhancing the SEI formation but may also be added
`
`as conducting salt.” (0124).
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`

`

`Application/Control Number: 16/981 ,502
`Art Unit: 1727
`
`Page 4
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`Regarding claim 2, Shizuka et al., does not teach oxalate salt in amount of 0.1 mass%
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`or more and 20 mass%or lessin the electrolyte.
`
`Schmitz et al., teaches oxalate salt in amount of 0.1 mass% or more and 20 mass%or
`
`less in the electrolyte (0091; 0099; 0120; 0124-0125).
`
`Thus, it would have been obvious to one of ordinary skill in the art to insert the
`
`teachings of Schmitz into Shizuka becausethe borate salt of Schmitz teaches:
`
`“A compound added as additive may have more than one effect in the electrolyte
`
`composition and the device comprising the electrolyte composition. E.g. lithium oxalate
`
`borate may be added as additive enhancing the SEI formation but may also be added
`
`as conducting salt.” (0124).
`
`Regarding claim 4, Shizuka et al., does not teach wherein the oxalate salt includes
`
`lithium difluorooxalate borate.
`
`Schmitz et al., teacheslithium difluorooxalato borate (0116; 0124).
`
`Thus, it would have been obvious to one of ordinary skill in the art to insert the
`
`teachings of Schmitz into Shizuka becausethe borate salt of Schmitz teaches:
`
`“A compound addedas additive may have morethan one effectin the electrolyte
`
`composition and the device comprising the electrolyte composition. E.g. lithium oxalate
`
`borate may be added as additive enhancing the SEI formation but may also be added
`
`as conducting salt.” (0124).
`
`

`

`Application/Control Number: 16/981 ,502
`Art Unit: 1727
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`Page 5
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`Regarding claim 5, Shizuka et al., teaches wherein the negative electrode includes a
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`negative electrode current collector (0039), and the negative electrode current collector
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`includes a metal material that does not react with metallic lithium (copper) (0039).
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`Regarding claim 6, Shizuka et al., teaches the metal material is copper or a copperalloy
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`(0039).
`
`Regarding claim 7, Shizuka et al., teaches dicarboxylic acid (0046-0048) constituting
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`dicarboxylic acid diester compound (0046-0048) is malonic acid (0046-0048).
`
`Regarding claim 8, Shizuka et al., teaches metallic lithium is configured to deposit on
`
`negative electrode during chargeto form lithium metal layer (0029).
`
`Regarding claim 9, Shizuka et al., does not teach negative electrode is configured to
`
`have no lithium metal that can be substantially discharged.
`
`However, A prima facie case of obviousness may be made when chemical compounds
`
`have very close structural similarities and similar utilities. "An obviousnessrejection
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`based on similarity in chemical structure and function entails the motivation of one
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`skilled in the art to make a 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, 203
`
`USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA
`
`1963).
`
`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
`
`apparatus from a prior art apparatus"if the prior art apparatus teachesall the structural
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`

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`Application/Control Number: 16/981 ,502
`Art Unit: 1727
`
`Page 6
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`limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter.
`
`1987.)
`
`Regarding claim 10, Shizuka et al., teaches the negative electrode active material layer
`
`is formed by attachingafoil of lithium metal on a current collector, or electrodeposition
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`or vapor deposition oflithium metal on the current collector, is a product-by-process.
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`"[E]ven though product-by-processclaims are limited by and defined by the process,
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`determination of patentability is based on the productitself. The patentability of a
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`product does not depend on its method of production. If the product in the product-by-
`
`processclaim is the same asor obvious from a productof the prior art, the claim is
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`unpatentable even though the prior product was madebya different process." In re
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`Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
`
`Regarding claim 11, Shizuka et al., teaches the negative electrode (0010) in a charged
`
`state (0029).
`
`Shizuka doesnotteach the lithium metal layer including an amount of metallic lithium
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`that has deposited on the negative electrode during charge, and that is configured to be
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`discharged during discharge, and the negative electrodeis free of the amountof
`
`metallic lithium in a fully discharged state.
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`Shiozaki teaches metallic lithium configured to deposit negative electrode during charge
`
`so as to formalithium metal layer (0170; 0172; 0178). Although Shiozaki does not
`
`recite that it
`
`is configured to be discharged during discharge, and the negative
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`electrodeis free of the amount of metallic lithium in a fully discharged state, because
`
`Shiozaki teaches the charging, it would also have the discharging, in orderfor the
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`battery to fully operate.
`
`

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`Application/Control Number: 16/981 ,502
`Art Unit: 1727
`
`Page 7
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`Responseto Arguments
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`3.Applicant’s argumentsfiled 6/3/2024 have been fully considered but they are not
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`persuasive. Applicant argues “Shizuka overall appears to indicate that the battery
`
`contemplated is a lithium ion battery wherelithium deposition on the negative electrode
`
`is not designed to take place during charge.” However, a new reference, Shiozakiet al.,
`
`EP 1391950, teaches metallic lithium configured to deposit negative electrode during
`
`charge so as to form a lithium metal layer (0170; 0172; 0178).
`
`Conclusion
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`1.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ANGELA J MARTIN whosetelephone numberis
`
`(571)272-1288. The examiner can normally be reached 7am-4pm.
`
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`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
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`
`(AIR) at http:/Avwww.uspto.gov/interviewpractice.
`
`

`

`Application/Control Number: 16/981 ,502
`Art Unit: 1727
`
`Page 8
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
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`
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`
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`
`ANGELA J. MARTIN
`Examiner
`
`Art Unit 1727
`
`/ANGELA J MARTIN/
`Examiner, Art Unit 1727
`
`