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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
`
`17/415,062
`
`06/17/2021
`
`Chisaki Fujitomo
`
`P210539US00
`
`8053
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA22182
`
`EOFE, ANCA
`
`1722
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/01/2024
`
`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.
`17/415,062
`Examiner
`ANCA EOFF
`
`Applicant(s)
`Fujitomo etal.
`Art Unit
`1722
`
`AIA (FITF) Status
`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 06/17/2021.
`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*
`1-7 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.
`(] 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) The drawing(s) filed on 06/17/2021 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:
`_—_c)L) None ofthe:
`b)L) Some**
`a)Y) All
`1.) 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 06/17/2021.
`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 20240123
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 2
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`DETAILED ACTION
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`1.
`
`The present application, filed on or after March 16, 2013,
`
`is being examined
`
`underthefirst inventor to file provisions of the AIA.
`
`2.
`
`3.
`
`Claims 1-7 are pending.
`
`The foreign priority document No. 2018-246658, filed on December 28, 2018 in
`
`Japan has been received andit is acknowledged.
`
`Drawings
`
`4.
`
`The drawings are objected to because a single view used in an application to
`
`Hlustraie the claimed invention must not be numbered and the abbreviation "FlG." must
`
`not appear. 37 C.F. 1.84 (u) Numbering of views).
`
`Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in
`
`reply to the Office action to avoid abandonment of the application. Any amended
`
`replacement drawing sheet should include all of the figures appearing on the immediate
`
`prior version of the sheet, evenif only one figure is being amended. Thefigure or figure
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`number of an amended drawing should not be labeled as “amended.” If a drawing figure
`
`is to be canceled, the appropriate figure must be removed from the replacement sheet,
`
`and where necessary, the remaining figures must be renumbered and appropriate
`
`changes madeto the brief description of the several viewsof the drawings for
`
`consistency. Additional replacement sheets may be necessary to show the renumbering
`
`of the remaining figures. Each drawing sheet submitted after thefiling date of an
`
`application must be labeled in the top margin as either “Replacement Sheet” or “New
`
`Sheet” pursuant to 37 CFR 1.121(d).
`
`If the changes are not accepted by the examiner,
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 3
`
`the applicant will be notified and informed of any required corrective action in the next
`
`Office action. The objection to the drawings will not be held in abeyance.
`
`Specification
`
`5.
`
`The following guidelines illustrate the preferred layout for the specification of a
`
`utility application. These guidelines are suggested for the applicant’s use.
`
`Arrangementof the Specification
`
`As provided in 37 CFR 1.77(b), the specification of a utility application should
`
`include the following sections in order. Each of the lettered items should appearin
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`upper case, without underlining or bold type, as a section heading.
`
`If no text follows the
`
`section heading, the phrase “Not Applicable” should follow the section heading:
`
`(a) TITLE OF THE INVENTION.
`
`(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
`
`(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR
`
`DEVELOPMENT.
`
`(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
`
`(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A
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`READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT
`
`ELECTRONIC SYSTEM.
`
`(f) STATEMENT REGARDING PRIOR DISCLOSURESBY THE INVENTOR OR
`
`A JOINT INVENTOR.
`
`(g) BACKGROUND OF THE INVENTION.
`
`(1) Field of the Invention.
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 4
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`(2) Description of Related Art including information disclosed under 37 CFR 1.97
`
`and 1.98.
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`(h) BRIEF SUMMARYOF THE INVENTION.
`
`(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
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`(j) DETAILED DESCRIPTION OF THE INVENTION.
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`(k) CLAIM OR CLAIMS (commencing on a separate sheet).
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`(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
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`(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A
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`“Sequence Listing’ is required on paperif the application discloses a nucleotide or
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`amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence
`
`Listing” is not submitted as an electronic document either on read-only optical disc or as
`
`a textfile via the patent electronic system.
`
`The specification of the instant application should be amended to include under
`
`the heading (b) CROSS-REFERENCE TO RELATED APPLICATIONS that the instant
`
`application is a National Stagefiling under 37 C.F.R. 371 of the International application
`
`No.PCT/JP2019/048581 filed on December 11, 2019, which claims benefit of the
`
`foreign priority application No. 2018-246658, filed on December 28, 2018 in Japan.
`
`6.
`
`The disclosure is objected to because ofthe following informalities:
`
`In par.0009, [FiG.1] should be corrected to read [The FIGURE].
`
`In par.0084, “FIG.1” should be corrected to read “The FIGURE’.
`
`Appropriate correction is required.
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 5
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`Claim Rejections - 35 USC § 103
`
`7.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis forall
`
`obviousness rejections set forth in this Office action:
`
`Apatent fora claimed invention may notbe obtained, notwithstanding thatthe claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior artare suchthat the claimed invention as a whole would have
`been obvious beforethe effective filing date of the claimed inventionto a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall notbe
`negated by the manner in whichthe invention was made.
`
`8.
`
`Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Minami
`
`et al. (US 2017/0309950) in view of Yamaguchiet al. (US 2009/0111020).
`
`With regard to claims 1, 2,5, and 6, Minami et al. teach a non-aqueous
`
`electrolyte secondary battery comprising a negative electrode, a positive electrode, and
`
`a non-aqueous electrolyte (par.0018). The negative electrode comprises negative
`
`electrode active material particles (13) includingalithium silicate phase (11) andsilicon
`
`particles (12) dispersed in thelithium silicate phase (par.0011, par.0027, fig.1).
`
`Thelithium silicate phase (11) may be preferably composed mainly of LizSiOs
`
`and LizSizOs (par.0031), which meet the limitation of claim 1 for “a silicate phase
`
`including an alkali metal’.
`
`Minami et al. further teach that the content of silicon particles (12) in the particle
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`(13) ranges preferabie from 35% by mass to 75% by mass (par.0034). This range
`
`overlaps the ranges in claims 1 and 5 of the instant application.
`
`Minami et al. teach that the non-aqueous electrolyte contains a non-aqueous
`
`solvent and an electrolyte salt dissolved in the non-aqueous solvent (par.0050), butfail
`
`to teach that the non-aqueous electrolyte comprises a sultone compound.
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 6
`
`Yamaguchi et al. teach a secondary battery comprising a negative electrode
`
`whichincludes a negative electrode active material, such as Si, and a coating of an
`
`oxoacid salt, such aslithium silicate, on at least a part of a surface of the negative
`
`electrode active material (abstract, par.0011, par.0058-0059, par.0062).
`
`The secondary battery comprisesaliquid electrolyte including a non-aqueous
`
`solvent and an electrolyte salt dissolved in the non-aqueous solvent (par.0084).
`
`Example 2-11 in Table 2, par.0195, par.0197, par.0190 show that 1wt%of
`
`propene sultone (PRS) may be addedto the electrolyte.
`
`Yamaguchiet al. further teach that a sultone, such as propene sultone,
`
`is added
`
`to the electrolyte to improve the cycle characteristics and suppress the swelling of the
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`secondary battery (par.0096).
`
`Therefore, it would have been obvious to one of ordinary skill in the art before the
`
`filing date of the claimed invention to include 1wt% propene sultone in the electrolyte of
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`Minami et al., in order to improve the cycle characteristics and suppress the swelling of
`
`the battery.
`
`The amount of sultone is within the ranges in claims 1 and 2.
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`Propene sultone (PRS) meets the limitations of claim 6 for “1,3-propene sultone”,
`
`as evidenced by par.0134 of Ihara et al. (US 2008/0090154).
`
`Therefore, the non-aqueous electrolyte secondary battery of Minami modified by
`
`Yamaguchi is equivalent to the non-aqueous electrolyte secondary battery in claims 1,
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`2, 5, and 6 of the instant application.
`
`With regard to claim 3, LizSiOsis a silicate phase is an oxide phase containing
`
`lithium, silicon, and oxygen, and the atomic ratio O/Si in the silicate phase is 3.
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 7
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`With regard to claim 4, LizSiOsis a silicate phase of formula LizzSiO2+z, wherein
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`z=1.
`
`With regard to claim 7, Minami et al, teach that the non-aqueous electrolyte
`
`contains a non-aqueous solvent and an electrolyte salt dissolved in the non-aqueous
`
`solvent (par.0050). LiPFe is the preferred electrolyte salt in terms of ionic conductivity
`
`and electrochemical stability (par.0054).
`
`Conclusion
`
`9.
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`The prior art made of record and notrelied upon is considered pertinent to
`
`applicant's disclosure:
`
`Sato et al. (WO 2024/004520, with attached machinetranslation) teach a
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`negative electrode material for a secondary battery including composite particles (11)
`
`including a silicate phase (12) and silicon particles (13) dispersed in the silicate phase
`
`(12)(par.0093, fig.1). The silicate phase preferably includes atleast lithium silicate
`
`(par.0029).
`
`The secondary battery may comprise an electrolyte with 1wt% 1-propene-1,3-
`
`sultone (Example 7, par.0152).
`
`However, this reference is not available as prior art in this application.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ANCA EOFF whosetelephone numberis (571)272-
`
`9810. The examiner can normally be reached Mon-Fri 10am-6:30pm.
`
`Examinerinterviews are available via telephone,
`
`in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 8
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`interview, applicant is encouraged to use the USPTO AutomatedInterview Request
`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Cynthia H. Kelly can be reached on 571-272-1526. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
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`
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`
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`
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`
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`
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`
`/ANCA EOFF/
`Primary Examiner, Art Unit 1722
`
`