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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
`
`17/274,856
`
`03/10/2021
`
`Takuya Sadakane
`
`P210199US00
`
`4561
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`HU, AIQUN
`
`1766
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/26/2023
`
`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):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`17/274 ,856
`Examiner
`AIQUN LI
`
`Applicant(s)
`Sadakane, Takuya
`Art Unit
`AIA (FITF) Status
`1766
`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)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) 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\() 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*
`1-7 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) 1-7 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C} 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)C2 The specification is objected to by the Examiner.
`11)C) 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) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`cc) None ofthe:
`b)J Some**
`a)) All
`1.1) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have beenreceived in Application No.
`3.4 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 4/21/2021,12/07/2021,3/8/2023.
`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 20230913
`
`

`

`Application/Control Number: 17/274,856
`Art Unit: 1766
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
`
`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 102
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`2.
`
`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-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
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`basis (i.e., changing from AIA to pre-AlA) for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same
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`under either status.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis
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`for the rejections under this section made in this Office action:
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`A person shall 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 effectivefiling date of the claimed invention.
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an application
`for patent published or deemed published under section 122(b), in which the patent or application, as
`the case may be, names another inventor and was effectively filed before the effective filing date of
`the claimed invention.
`
`3.
`
`Claims 1, 2, 4 and 7 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US
`
`Patent 5731106 (Tsutsumi) , which is listed in Applicant’s information disclosure statement, as
`
`evidenced by US2014/0370405A1 (Zhang).
`
`Regarding claims 1 and 2, Tsutsumi teachesa lithium secondary battery comprisesa positive
`
`electrode, a negative electrode disposed on a collector that faces the positive electrode(Figure 1 and
`
`col.5, line 6-20), and a non-aqueous electrolyte solution (col.2, line 5-11 and col.5, line 55-60), wherein
`
`

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`Application/Control Number: 17/274,856
`Art Unit: 1766
`
`Page 3
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`the non-aqueous electrolyte solution comprises an aromatic heterocyclic compound (col.2,line 3-6),
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`which meets the claimed organic compound.
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`Tsutsumi exemplified the aromatic heterocyclic compound as quinoxline (col.3,line 16-20 and
`
`Table 2), which has a redox potential of about 2 to 3.5 V vs.Li/Li* as evidenced by Zhang(Fig. 3 and 5),
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`which meets the claimed redox potential.
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`Tsutsumi teachesthat lithium deposits on the negative electrode during charge and dissolves
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`into the electrolyte solution during discharge (col. 1, line 28-55).
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`Regarding claim 4, Tsutsumi teaches that the aromatic heterocyclic compound is present in an
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`amount of 0.1 to 2 wt.% (col. 3, line 31-32).
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`Regarding claim 7, Tsutsumi teachesthat the negative electrode formed on a collector of copper
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`(col. 4,line 30-32 and Fig. 1).
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`4.
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`Claims 1, 2 and 4-6 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by
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`US2012/0141889A1 (Lee), whichis listed in Applicant’s information disclosure statement, as evidenced
`
`by US Patent 6387571 (Lain).
`
`Regarding claims 1 and 2, Lee teaches a lithium secondary battery comprises a positive
`
`electrode, a negative electrode having a current collector that faces the positive electrode (Fig. 1, [0078]
`
`and [0079]), and an organic electrolyte including a metal -ligand complex having a redox potential of
`
`about 2 v to 5 v with respect to the lithium metal ([0015] and [0023]), and exemplified as ferrocene
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`([0083]), which is known to have a redox potential of 3.05 to 3.38v relative to lithium as evidenced by
`
`Lain (col.1, line 33-35), which meets the claimed range.
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`Lee teachesthat lithium oxide is reduced to lithium metal on negative electrode during charging
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`and oxidized during discharging thereby dissolved in the organic electrolyte ([0016]-[0017], [0022] and
`
`[0025]).
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`

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`Application/Control Number: 17/274,856
`Art Unit: 1766
`
`Page 4
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`Regarding claim 4, Lee exemplifies 5 mM ferrocene in an organic electrolyte ([0083]), whichis
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`equivalent to about 0.1 wt% calculated by the examiner based on a molar mass of 186.4 of ferrocene,
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`which meets the claimed amount.
`
`Regarding claims 5 and 6, Lee further teaches that the organic electrolyte may include lithium
`
`bis(oxolato)borate ([0058)).
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`5.
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`Claims 1-3 and 5-7 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by
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`US2012/0212186 A1 (Fujii), which is listed in Applicant’s information disclosure statement.
`
`Regarding claims 1-3, Fujii teaches a lithium secondary battery comprises a positive electrode, a
`
`negative electrode having a negative electrode current collector facing the positive electrode ([0023],
`
`[0025],[(0061] and Fig. 1), and a non-aqueous electrolyte solution ([0034],[0035] and [0059]), wherein
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`the electrolyte comprises an oxidizable agent such as benzoquinone,
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`bis(ethylenedithio)tetrathiafulvalene ([0029]), which meets the claimed organic compound thus
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`inherently the redox potential as evidenced by the instant disclosure (instant disclosure [0018], [0024]
`
`and [0034]) .
`
`Fujii further teaches that the lithium is introduced into the negative electrode during charging
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`and the lithium ions desorbed during discharging ([0013], [0015], [0033] and [0090)).
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`Regarding claims 5-6, Fujii teaches that the electrolyte solution may include lithium
`
`bis(oxalate)borate ([0029]).
`
`Regarding claim 7, Fujii teaches that the negative electrode current collector is made of a
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`copper foil ([0058]).
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`Claim Rejections - 35 USC § 103
`
`

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`Application/Control Number: 17/274,856
`Art Unit: 1766
`
`Page 5
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`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:
`
`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
`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.
`
`103 are summarized as follows:
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`1. Determining the scope and contentsofthe 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 presentin the application indicating obviousness or
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`nonobviousness.
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`6.
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`Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Fujii.
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`The teachingsof Fujii are set forth above.
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`Regarding claim 4, Fujii teaches that the oxidizable agent is present in the range of 0.05M to
`
`1.0M ([0027]), which is equivalent to 0.5 wt.% to about 10 wt.% calculated by the examiner based on
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`the molecular weight of benzoquinone of about 108, which encompassesthe claimed range.
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`One ofordinaryskill in the art at the time the invention was made would have found it obvious
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`to include the oxidizable agent/organic compound at the instantly claimed range since it has been held
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`that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima
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`facie case of obviousnessexists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP
`
`2144.05.1.
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`

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`Application/Control Number: 17/274,856
`Art Unit: 1766
`
`Page 6
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`Generally, differences in ranges will not support the patentability of subject matter
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`encompassed bythe prior art unless there is evidence indicating such rangesis critical. See MPEP
`
`2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ
`
`233, 235 (CCPA 1955) and /n re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
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`Conclusion
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`7.
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`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to AIQUN LI whose telephone number is (571)270-7736. The examiner can normally
`
`be reached Monday-Friday 9:00 am -4:00 pm.
`
`Examiner interviewsare 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://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Randy Gulakowski can be reached on 571-2721302. The fax phone number for the organization where
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`this application or proceedingis 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
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`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
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`https://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For additional
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`
`571-272-1000.
`
`

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`Application/Control Number: 17/274,856
`Art Unit: 1766
`
`Page 7
`
`/AIQUN LI/
`Ph.D., Primary Examiner, Art Unit 1766
`
`