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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
`
`17/274,856
`
`03/10/2021
`
`Takuya Sadakane
`
`P210199US00
`
`4561
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA22182
`
`LL AIQUN
`
`1766
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/10/2024
`
`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)
`
`

`

`Office Action Summary
`
`Application No.
`171274,856
`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 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 12/21/2023.
`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*
`1-13 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) 1-13 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)7) 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)C All
`1.1.) 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)
`
`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 20240104
`
`

`

`Application/Control Number: 17/274,856
`Art Unit: 1766
`
`Page 2
`
`DETAILED ACTION
`
`Claims 1-13 are pending as amended 21 December2023.
`
`The text of those sections of Title 35, U.S. Code not includedin this action can be found in a
`
`1.
`
`2.
`
`prior Office action.
`
`3.
`
`Applicant’s amendmentsto the claims and the remarks/arguments have been entered and fully
`
`considered.
`
`Response to Amendment and Arguments
`
`4.
`
`Applicant’s amendment distinguishes from US2012/0141889A1 (Lee). The rejection of claims 1,
`
`2 and 4-6 over Lee has been withdrawn.
`
`5.
`
`Applicant’s amendment doesnotdistinguish from US Patent 5731106 (Tsutsumi) or
`
`US2012/0212186 A1 (Fujii).
`
`6.
`
`Applicant’s argumentsin light of the amendmenthas been fully considered.
`
`With respect to Tsutsumi, Applicant’s argumentsare not persuasive. Applicant argues that
`
`Tsutsumi fails to teach the claimed molar ratio mi/mm as amended. The examiner disagrees. Tustsumi
`
`exemplifies a positive electrode containing 30 mg LiMn3Q¢ (col5, line 5-20), which is equivalent to
`
`about 0.11 mmol of lithium and 0.33 mmol of Manganese calculated by the examiner based on the
`
`formular mass of about 268 of LiMn3O,, and a negative electrode oflithium having a thickness of 70 um
`
`and a diameter of 15 mm (col. 5, line 5-20),
`
`i.e., about 0.000123 cm? oflithium or 0.066mg oflithium
`
`calculated by the examiner based ona lithium metal density of about 0.534g/cm?, which is equivalent
`
`to about 0.0095 mmol oflithium, thus the total molar amountoflithium is about 0.119 mmol (i.e.,
`
`0.11+0.095), the total molar amount of Mn is about 0.33 mmol, therefore the molar ratio mu/mm is
`
`0.119/0.33,i.e., 0.36, which meets the claimed range of 1.1 or less.
`
`With respect to Fujii, Applicant’s arguments are not persuasive.
`
`In response to applicant's
`
`argument that the referencesfail to show certain features of the invention,it is noted that the features
`
`

`

`Application/Control Number: 17/274,856
`Art Unit: 1766
`
`Page 3
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`upon whichapplicantrelies (i.e., a lithium metal battery) are not recited in the rejected claim(s).
`
`Although the claims are interpreted in light of the specification, limitations from the specification are
`
`not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
`
`Claim Rejections - 35 USC § 112
`
`7.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—The specification 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-AlA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`8.
`
`Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second paragraph,
`
`as being indefinite for failing to particularly point out and distinctly claim the subject matter which the
`
`inventor or a joint inventor (or for applications subject to pre-AlA 35 U.S.C. 112, the applicant), regards
`
`as the invention.
`
`Claim 1 recites the limitation "the positive electrode active material ". There is insufficient
`
`antecedent basis for this limitation in the claim.
`
`Claim 8 recites “ the anion” in line 1. There is insufficient antecedent basis for this limitation in
`
`the claim.
`
`Claim Rejections - 35 USC § 102
`
`2.
`
`Claims 1, 2, 4 and 7 stand, and new claims 12-13 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as
`
`being anticipated by Tsutsumi as evidenced by Zhang.
`
`Regarding claims 1, 2 and 12-13, Tsutsumi teachesa lithium secondary battery comprises a
`
`positive electrode, a negative electrode disposed on a collector that faces the positive electrode(Figure
`
`

`

`Application/Control Number: 17/274,856
`Art Unit: 1766
`
`Page 4
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`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 the non-aqueous electrolyte solution comprises an aromatic heterocyclic compound (col.2, line
`
`3-6), which meets the claimed organic compound.
`
`Tsutsumi exemplified the aromatic heterocyclic compound as quinoxline (col.3,line 16-20 and
`
`Table 2), which has a redox potential of about 2.6 to 3.1 V vs.Li/Li* as evidenced by Zhang(Fig. 5), which
`
`meets the claimed redox potential.
`
`Tsutsumi teachesthat lithium deposits on the negative electrode during charge and dissolves
`
`into the electrolyte solution during discharge (col. 1, line 28-55).
`
`Tustsumi further exemplifies a positive electrode containing 30 mg of LiMn3zO¢ as a positive
`
`electrode active substance(col5, line 5-20), which meets the claimed composite oxide and is equivalent
`
`to about 0.11 mmol of lithium and 0.33 mmol of Manganese calculated by the examiner based on the
`
`formular mass of about 268 of LiMn3O,, and a negative electrode oflithium having a thickness of 70 um
`
`and a diameter of 15 mm (col. 5, line 5-20),
`
`i.e., about 0.000123 cm? oflithium or 0.066mg oflithium
`
`calculated by the examiner based ona lithium metal density of about 0.534g/cm?, which is equivalent
`
`to about 0.0095 mmol oflithium, thus the total molar amountoflithium is about 0.119 mmol (i.e.,
`
`0.11+0.095), the total molar amount of Mn is about 0.33 mmol, therefore the molar ratio mu/mm is
`
`0.119/0.33,i.e., 0.36, which meets the claimed range of 1.1 or less.
`
`Regarding claim 4, Tsutsumi teaches that the aromatic heterocyclic compound is present in an
`
`amount of 0.1 to 2 wt.% (col. 3, line 31-32).
`
`Regarding claim 7, Tsutsumi teaches that the negative electrode formed on a collector of copper
`
`(col. 4,line 30-32 and Fig. 1).
`
`

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`Application/Control Number: 17/274,856
`Art Unit: 1766
`
`Page 5
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`5.
`
`Claims 1-3 and 5-7 stand, and new claims 8-13 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as
`
`being anticipated by Fujii.
`
`Regarding claims 1-3 and 12-13, 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 the electrolyte comprises an oxidizable agent such as benzoquinone,
`
`bis(ethylenedithio)tetrathiafulvalene ([0029]), which meets the claimed organic compound thus
`
`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
`
`and the lithium ions desorbed during discharging ([0013], [0015], [0033] and [0090)).
`
`Fujii teaches that the positive electrode active material includes a lithium containing-transition
`
`metal oxide such as LiMnQ, ([0032]) and the negative electrode is carbon materials ([0033]), thus the
`
`the molar ratio mi/mw is about 1, which meets the claimed range of 1.1 or less.
`
`Regarding claims 5-6 and 10, Fujii teaches that the electrolyte solution mayinclude lithium
`
`bis(oxalate)borate ([0026] and [0029]).
`
`Regarding claim 7, Fujii teaches that the negative electrode current collector is made of a
`
`copper foil ([0058]).
`
`Regarding claims 8, 9 and 11, Fujii teaches that the electrolyte may further comprise supporting
`
`salt such as LiPFg ([0036]), thus the presence of PF¢.
`
`Claim Rejections - 35 USC § 103
`
`6.
`
`Claim 4 stands rejected under 35 U.S.C. 103 as being unpatentable over Fujii.
`
`The teachingsof Fujii are set forth above.
`
`

`

`Application/Control Number: 17/274,856
`Art Unit: 1766
`
`Page 6
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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
`
`the molecular weight of benzoquinone of about 108, which encompassesthe claimed range.
`
`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
`
`facie case of obviousnessexists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP
`
`2144.05.1.
`
`Generally, differences in ranges will not support the patentability of subject matter
`
`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).
`
`Conclusion
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`7.
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
`
`action. Accordingly, THIS ACTION IS 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).
`
`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.
`
`In the eventa 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 pursuantto 37 CFR 1.136(a) will be calculated from the mailing
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`date of the advisory action.
`
`In no event, however, will the statutory period for reply expire later than
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`SIX MONTHS from the date of this final action.
`
`

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`Application/Control Number: 17/274,856
`Art Unit: 1766
`
`Page 7
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`8.
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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
`
`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
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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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`questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like
`
`assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or
`
`571-272-1000.
`
`/AIQUN LI/
`Ph.D., Primary Examiner, Art Unit 1766
`
`