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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
`
`17/160,930
`
`01/28/2021
`
`TATSUYA OSHIMA
`
`083710-3279
`
`3877
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`LYNCH,VICTORIA HOM
`
`1724
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/07/2023
`
`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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-12 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-7 and 9-12 is/are rejected.
`Claim(s) 8 is/are objectedto.
`1) Claim(s
`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:/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)M The drawing(s)filed on 1/28/21 is/are: a) accepted or b)C) 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)() None ofthe:
`b)( Some**
`a) All
`1.4] 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`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 20230828
`
`Application No.
`Applicant(s)
`47/160,930
`OSHIMA etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`VICTORIA H LYNCH
`1724
`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 1/28/21.
`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)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: 17/160,930
`Art Unit: 1724
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined underthe
`
`first inventorto file provisions of the AJA.
`
`Claim Rejections - 35 USC § 112
`
`2.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—Thespecification shall conclude with one or more claims particularly pointing
`out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the
`invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specification shall conclude with one or more claimsparticularly pointing out and distinctly
`claiming the subject matter which the applicant regardsas his invention.
`
`3.
`
`Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
`
`paragraph,as being indefinite for failing to particularly point out and distinctly claim the subject
`
`matter which the inventoror a joint inventor (or for applications subject to pre-AIA 35 U.S.C.
`
`112, the applicant), regards as the invention. The limitation “containing the solid electrolyte
`
`material in the negative electrode material according to claim 1”in lines 3-4 is not clear. The
`
`solid electrolyte material in the negative electrode material in claim 1 is a reduced form. From
`
`instant specification (paragraph [0132] US 2021/0151791) “Production can be performed by
`
`applying a constant currentto the resulting cell so as to reduce the halide solid electrolyte
`
`material of the working electrode” which suggests the solid electrolyte materialis in a “non-
`
`reduced form” prior to applying a constant current.
`
`Claim Rejections - 35 USC § 102
`
`4.
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
`
`102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
`
`statutory basis (1.e., changing from AIAto pre-AIA)for the rejection will not be considered a
`
`

`

`Application/Control Number: 17/160,930
`Art Unit: 1724
`
`Page 3
`
`new ground ofrejection if the prior art relied upon, and the rationale supporting the rejection,
`
`would be the same undereitherstatus.
`
`5.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
`
`basis for the rejections under this section madein this Office action:
`
`A personshall be entitled to a patent unless —
`
`(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 effective filing date of the claimed invention.
`
`6.
`
`Claim(s) 1, 4, 5, 10, and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated
`
`by Takadaet al. (US 6,428,935) as cited in IDS dated 1/28/21.
`
`Regarding claim 1, Takada discloses a negative electrode material comprising a reduced
`
`form of a solid electrolyte material (Liz2FeCl4 as a negative electrode active material in a lithium
`
`secondary battery with charging and discharging properties in Example 14), wherein the solid
`
`electrolyte material is denoted by Formula (1) below, LigMpXy
`
`Formula (1) herein, in
`
`Formula (1), each of a, B, and y is a value greater than 0, M represents at least one element
`
`selected from the group consisting of metal elements except Li and semimetals, and
`
`X represents at least one element selected from the group consisting of F, Cl, Br, and I
`
`(Li2-2p Met+p X4, Meis at least one transition metal element selected from the group consisting
`
`of Ti, V, Cr, Mn, Fe, Co, Ni and Cu, X is at least one halogen element selected from the group
`
`consisting of F, Cl, Br and I, and O=p30.5, Col. 3, line 62 to Col. 4, line 22). The Examiner
`
`notes that the claim term “reduced form” appears to be product-by-process language. Even
`
`though prodect-by-process claims are limited by and defined by the process, determination of
`
`patentability is based on the productitself.
`
`Regarding claim 4, Takadadisclosesall of the claim limitations as set forth above.
`
`Takada further discloses the solid electrolyte material satisfies the relationship represented by
`
`

`

`Application/Control Number: 17/160,930
`Art Unit: 1724
`
`Page 4
`
`a+mB=y herein m represents the valence of M above (Li2FeCly in Example 14 satisfies 2 + 2*1 =
`
`4).
`
`Regarding claim 5, Takadadisclosesall of the claim limitations as set forth above.
`
`Takada further discloses M contains at least one element selected from the group consisting of
`
`transition metal elements(Col. 4, lines 18-21).
`
`Regarding claim 10, Takada disclosesall of the claim limitationsas set forth above.
`
`Takada discloses a battery comprising: a negative electrode containing a negative electrode
`
`material according to claim 1; a positive electrode; and an electrolyte layer disposed between the
`
`negative electrode and the positive electrode(Example 14).
`
`Regarding claim 12, Takada disclosesall of the claim limitationsas set forth above.
`
`Takada further discloses a method for producing a battery comprising: producing a multilayer
`
`body in which a positive electrode, a solid electrolyte layer containing the solid electrolyte
`
`material in the negative electrode material according to claim 1, and a negative electrode
`
`collector are arranged in this order and in which the solid electrolyte layer is in contact with the
`
`negative electrode collector; and applying a current to the multilayer body(Example 14).
`
`Claim Rejections - 35 USC § 103
`
`7.
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejectionsset forth in this Office action:
`
`A patent for a claimed invention maynotbe obtained, notwithstanding that the claimed inventionis 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 obviousbefore 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 mannerin which the invention was made.
`
`The factual inquiries for establishing a background for determining obviousness under 35
`
`U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contents ofthe priorart.
`
`

`

`Application/Control Number: 17/160,930
`Art Unit: 1724
`
`Page 5
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`2. Ascertaining the differences betweenthe prior art and the claimsat issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`8.
`
`This application currently namesjoint inventors. In considering patentability of the
`
`claims the examiner presumesthat the subject matter of the various claims was commonly
`
`owned asofthe effective filing date of the claimed invention(s) absent any evidenceto the
`
`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
`
`effective filing dates of each claim that was not commonly ownedasofthe effective filing date
`
`of the later invention in order for the examinerto consider the applicability of 35 U.S.C.
`
`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
`
`9.
`
`Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takadaetal.
`
`(US 6,428,935) as cited in IDS dated 1/28/21 as applied to claim | above.
`
`Regarding claim 2, Takadadisclosesall of the claim limitations as set forth above.
`
`Takada discloses the negative electrode comprisesa lithium-containing halide having a spinel
`
`structure or spinel analogous structure (abstract). Takada discloses the lithium-containing halide
`
`having a spinel structure or a spinel analogous structure which allows excellent diffusion of
`
`lithium ionsis preferable, and particularly preferable is a halide of tetragonal structure in which
`
`the movingrate of a lithium ion is high(Col.3, lines 10-15) but does not explicitly disclose
`
`a peak top is present at the value of the diffraction angle 28 within the range of greater than or
`
`equal to 8a andless than or equal to @b in an X-ray diffraction pattern of the reduced form
`
`obtained by X-ray diffraction measurement in which the Cu—Karayis used as a radiation
`
`source, 9b is a value of the diffraction angle 20 of the peak top of a peak reflecting the (220) face
`
`

`

`Application/Control Number: 17/160,930
`Art Unit: 1724
`
`Page 6
`
`of LiX composed of Li and X, and @ais a value of the diffraction angle 20 of the peak top of a
`
`peak derived from the solid electrolyte material and is a value closest to 8b.
`
`It would have been obvious to one of ordinary skill in the art to modify the negative
`
`electrode material of Takada with a peak top is present at the value of the diffraction angle 20
`
`within the range of greater than or equal to 9a and less than or equal to 6b in an X-ray diffraction
`
`pattern of the reduced form obtained by X-ray diffraction measurement in which the Cu—Karay
`
`is used as a radiation source, 9b is a value ofthe diffraction angle 20 of the peak top of a peak
`
`reflecting the (220) face of LiX composed of Li and X, and 0a is a value ofthe diffraction angle
`
`28 of the peak top of a peak derived from the solid electrolyte material and is a value closest to
`
`8b as obvious to try choosing from a finite numberofidentified, predictable solutions, with a
`
`reasonable expectation of success. See MPEP 2143.
`
`10.
`
`Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takadaetal.
`
`(US 6,428,935) as cited in IDS dated 1/28/21 as applied to claim 1 above, in view of Asano et
`
`al. (WO 2018/025582A1) as cited in IDS dated 1/28/21 with citations from equivalent US
`
`2019/0088995.
`
`Regarding claim 3, Takadadisclosesall of the claim limitations as set forth above.
`
`Takada when otherlithium-containing halides having a spinel structure or a spinel analogous
`
`structure are used, excellent lithium secondary batteries can be constituted likewise (Col. 12,
`
`lines 45-48) but does not explicitly disclose the solid electrolyte material satisfies
`
`1.5<a<4.5, 0.5<B<1.5, and y=6.
`
`Asano teachesthe negative electrode 203 includes negative electrode active material
`
`particles 205 and solid electrolyte particles 100 ({0212], Fig. 1). Asano teaches
`
`the solid
`
`electrolyte material satisfies
`
`

`

`Application/Control Number: 17/160,930
`Art Unit: 1724
`
`Page 7
`
`1.5<a<4.5, 0.5<B<1.5, and y=6 (Formula (1) Liga,¥2e%s5 where O<2<2 is satisfied: and X
`
`represents Ci or Brin claim 1}. Asano teaches the solid clectrolyte material can achieve an all-
`
`solid battery that does not generate bydragen sulfide and has excellent charge and discharge
`
`characterishics({O34 1p).
`
`It would have been obvious to one of ordinary skill in the art to modify the negative
`
`electrode material of Takada with the solid electrolyte material satisfies
`
`1.5<a<4.5, 0.5<B<1.5, and y=6 as taught by Asanoin order to provide excellent charge and
`
`discharge characteristics.
`
`11.
`
`Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takadaet al.
`
`(US 6,428,935) as cited in IDS dated 1/28/21 as applied to claims 1 and 5 above, in view of
`
`Asanoet al. (WO 2018/025582A1) as cited in IDS dated 1/28/21 with citations from equivalent
`
`US 2019/0088995.
`
`Regarding claim 6, Takadadisclosesall of the claim limitations as set forth above.
`
`Takada discloses M contains transition metals (Col. 4, lines 18-21) but does not disclose M
`
`contains at least one element selected from the group consisting of yttrium and zirconium.
`
`Asano teachesthe negative electrode 203 includes negative electrode active material
`
`particles 205 and solid electrolyte particles 100 ({0212], Fig. 1). Asano teaches M containsat
`
`least one element selected from the group consisting of yttrium and zirconium (Forrrula (1): Lie.
`
`32¥2%6 Where 04242 1s satisfied: and XA represents Clor Brin claim 1). Asano teaches the sohd
`
`electrolyte material can achieve an all-solid battery that docs not generate hydrogen sulfide and
`
`has excellent charge and discharge characteristics(@O34 1).
`
`It would have been obvious to one of ordinary skill in the art to modify the negative
`
`electrode material of Takada with M containsat least one element selected from the group
`
`

`

`Application/Control Number: 17/160,930
`Art Unit: 1724
`
`Page 8
`
`consisting of yttrium as taught by Asano in order to provide excellent charge and discharge
`
`characteristics.
`
`Regarding claim 7, modified Takadadiscloses all of the claim limitations as set forth
`
`above. Modified Takada discloses M contains yttrium, and the solid electrolyte material is
`
`denoted by Formula (2) below, LisMelpYcX6
`
`Formula (2) herein, in Formula (2) above,
`
`a, b, and c satisfies atm1b+3c=6 and c>0, Mel represents at least one elementselected from the
`
`group consisting of metal elements except Li and Y and semimetals, and m1 represents the
`
`valence of Mel above (when b = 0 in Formula (2), see Asano claim 1).
`
`12.
`
`Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takadaetal.
`
`(US 6,428,935) as cited in IDS dated 1/28/21 as applied to claim 1 above, in view of Nakamura
`
`et al. (US 2011/0300444) as cited in IDS dated 1/28/21.
`
`Regarding claim 9, Takadadisclosesall of the claim limitations as set forth above.
`
`Takada does not explicitly disclose the negative electrode material according to claim 1,
`
`comprising the reduced form alone.
`
`Nakamura teaches the anodehas, on an anode current collector, an anode active material
`
`layer including LixSiF, (1SxS2 and 5SyS6)as an anodeactive material(abstract). Nakamura
`
`teaches the negative electrode material comprising the reduced form alone(negative electrode
`
`active substance is deposited by a gas phase methodto produce a negative electrode active
`
`substance layer [0058], [0112]). Nakamura teaches an anodefor a lithium ion secondarybattery
`
`capable of improving the cycle characteristics while being high capacity, a lithium ion secondary
`
`battery using the same([0011]).
`
`It would have been obvious to one of ordinary skill in the art to modify the negative
`
`electrode material of Takada with the negative electrode material comprising the reduced form
`
`

`

`Application/Control Number: 17/160,930
`Art Unit: 1724
`
`Page 9
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`alone as taught by Nakamurain orderto provide a lithium ion secondary battery capable of
`
`improving the cycle characteristics while being high capacity.
`
`13.
`
`Claim(s) 11 is/are reyected under 35 U.S.C. 103 as being unpatentable over Takadaetal.
`
`(US 6,428,935) as cited in IDS dated 1/28/21 as applied to claims 1 and 10 above,in view of
`
`Nakamuraet al. (US 2011/0300444) as cited in IDS dated 1/28/21.
`
`Regarding claim 11, Takada disclosesall of the claim limitationsas set forth above.
`
`Takada doesnot explicitly disclose the negative electrode is composedofthe negative electrode
`
`material alone.
`
`Nakamura teaches the anodehas, on an anode current collector, an anode active material
`
`layer including LixSiF, (1SxS2 and 5SyS6)as an anodeactive material(abstract). Nakamura
`
`teaches the negative electrode material is composed of the negative electrode material alone
`
`(negative electrode active substance is deposited by a gas phase methodto produce a negative
`
`electrode active substance layer [0058]). Nakamura teaches an anodefor a lithium ion secondary
`
`battery capable of improving the cycle characteristics while being high capacity, a lithium ion
`
`secondary battery using the same((0011)).
`
`It would have been obvious to one of ordinary skill in the art to modify the negative
`
`electrode material of Takada with the negative electrode is composed of the negative electrode
`
`material alone as taught by Nakamurain order to provide a lithium ion secondary battery capable
`
`of improving the cycle characteristics while being high capacity.
`
`

`

`Application/Control Number: 17/160,930
`Art Unit: 1724
`
`Page 10
`
`Allowable Subject Matter
`
`14.
`
`Claim 8 is objected to as being dependent upona rejected base claim, but would be
`
`allowable if rewritten in independentform includingall of the limitations of the base claim and
`
`any intervening claims.
`
`In particular, the allowable limitation is M contains zirconium,and the solid electrolyte
`
`material is denoted by Formula (3) below,
`
`LiqMe2eZ1rpX6
`
`Formula (3) herein, in Formula (3) above, d, e, and f satisfies
`
`d+mze+3f=6 and f>0, Me2 represents at least one element selected from the group consisting of
`
`metal elements except Li, Y, and Zr and semimetals, and m2 represents the valence of Me2
`
`above.
`
`In the instant invention, in the case in which the halide solid electrolyte material satisfies
`
`Formula (3) above, the negative electrode material according to the first embodiment can
`
`occlude and release Li by exploiting the change in valence of Zr so as to further improvethe
`
`cycle characteristics of the battery({0057] US 2021/0151791).
`
`Takada et al. (US 6,428,935) and Asano et al. (WO 2018/025582A1) do not disclose,
`
`teach or render obvious M contains zirconium, and the solid electrolyte material is denoted by
`
`Formula (3) below, LigqMe2e¢ZrrX6
`
`Formula (3) herein, in Formula (3) above,d, e, and f
`
`satisfies d+m2e+3f=6 and f>0, Me2 represents at least one element selected from the group
`
`consisting of metal elements except Li, Y, and Zr and semimetals, and m2 represents the valence
`
`of Me2 above.
`
`Conclusion
`
`

`

`Application/Control Number: 17/160,930
`Art Unit: 1724
`
`Page 11
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to VICTORIA HOM LYNCHwhosetelephone numberis
`
`(571)272-0489. The examiner can normally be reached 7:30 AM - 4:30 PM EST M-F.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicantis
`
`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Miriam Stagg can be reached on 571-270-5256. The fax phone numberfor the
`
`organization wherethis 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://www.uspto.gov/patents/apply/patent-center for more
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`
`/VICTORIA H LYNCH/
`Primary Examiner, Art Unit 1724
`
`