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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
`
`05/09/2024
`
`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)
`
`

`

`
`
`Disposition of Claims*
`) 1-6 and8is/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`5a) Of the above claim(s) _ is/are withdrawn from consideration.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) 1-6and8is/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 04/30/2024 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)
`
`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 20240503
`
`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 04/30/2024.
`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.
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 2
`
`DETAILED ACTION
`
`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 1-6 and 8 are pending. Claim 7 has been canceled.
`
`The foreign priority document No. 2018-246658, filed on December28, 2018 in
`
`Japan has been received andit is acknowledged.
`
`Claim Rejections - 35 USC § 103
`
`4.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis forall
`
`obviousness rejections set forth in this Office action:
`
`A patent 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 such that the claimed invention as a whole would have
`been obvious beforethe effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall notbe
`negated by the mannerin whichthe invention was made.
`
`5.
`
`Claims 1-6 and 8 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) andin
`
`further view of Kim (US 2012/0258357).
`
`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).
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 3
`
`The lithium silicate phase (11) may be preferably composed mainly of LizSiOs
`
`and LieSizOs (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
`
`(13) ranges preferable 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.
`
`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 comprises a liquid 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 theelectrolyte.
`
`Yamaguchiet al. further teach that a sultone, such as propenesultone, is added
`
`to the electrolyte to suppress the swelling of the 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
`
`Minami et al., in order to suppress the swelling of the battery.
`
`The amount of sultone is within the ranges in claims 1 and 2.
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 4
`
`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).
`
`Minami et al, teach that the non-aqueous electrolyte contains LiPFe dissolved in
`
`a solvent mixture of ethylene carbonate (EC), dimethyl carbonate (DMC), and methyl
`
`ethyl carbonate (EMC) (par.0061).
`
`Minami et al. and Yamaguchietal. fail to teach that the non-aqueous electrolyte
`
`comprises LiIN(SO2F)2 in combination with LiPFe.
`
`Kim teaches an electrolyte including a non-aqueous electrolyte,a first lithium salt
`
`and a secondlithium salt which is LIN(SO2F)2 (LiFSI). Thefirst salt may be
`
`LiPFe(abstract, par.0010, par.00013).
`
`Kim further teaches that the ion conductivity of an electrolyte comprising LiPFe
`
`and LiFSI dissolved in a solvent mixture of ethylene carbonate, ethyl methyl carbonate
`
`and dimethyl carbonate (Examples 5 and 6 in par.0071-0072). Table 2 in par.0078
`
`showsclearly that the electrolytes comprising the combination of LiPFs and LiIFSI have
`
`higher ion conductivity that an electrolyte comprising only LiPFe.
`
`Kim teaches that when LiFSI was used for an electrolyte,
`
`ion mobility increases
`
`at low temperature, which may be also understood as the ion conductivity improving.
`
`Since the improvementin ion conductivity decreases the cell internal resistance, an
`
`output improvement effect may be expected (par.0069).
`
`Therefore, it would have been obvious to one of ordinary skill in the art before the
`
`filing date of the claimed invention to use LiFSI in combination with LiPFe in the non-
`
`aqueous electrolyte of Minami modified by Yamaguchi,
`
`in order to increase the ion
`
`mobility in the electrolyte and improve the output of the battery.
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 5
`
`Therefore, the non-aqueous electrolyte secondary battery of Minami modified by
`
`Yamaguchi and Kim is equivalent to the non-aqueous electrolyte secondary battery in
`
`claims 1, 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.
`
`With regard to claim 4, LizSiOs is a silicate phase of formula LizzSiO2+z, wherein
`
`z=1.
`
`With regard to claim 8, Kim teachesthat the electrolyte may comprise 0.7M LiPFe
`
`and 0.3MLIiFSI (Example 6 in par.0072 and Table 2 in par.0078).
`
`The amounts of LiPFe and LiFSI are within the claimed ranges.
`
`Response to Arguments
`
`6.
`
`Applicant's arguments filed on April 30, 2024 have been fully considered but they
`
`are not persuasive.
`
`The examiner would like to note that:
`
`-the objection to the drawings is withdrawn afterthefiling of the replacement
`
`drawings;
`
`-the objection to the specification is withdrawnafter the applicant's amendments
`
`to the specification;
`
`-the rejection of claims 1-7 under 35 U.S.C. 103 as being unpatentable over
`
`Minami et al. (US 2017/0309950) in view of Yamaguchiet al. (US 2009/0111020) is
`
`withdrawn after the applicant’s amendmentto claim 1.
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 6
`
`However, new grounds ofrejection for claims 1-6 and 8 are shown in paragraphs
`
`4 and 5 above.
`
`On page 8 of the Remarks the applicant argues that the Examples in Table 1 of
`
`the specification show that the combinedlithium salts improve at least cycle capacity
`
`retention when combined with the sultone compoundin the electrolyte.
`
`The examiner would like to note that Examples 7 and 8 in Table 1 show batteries
`
`wherein the electrolyte comprise LiPFe, LIFSI, and propene sultone. These batteries
`
`haveinitial capacity, cycle capacity retention ration (%) and amount of gas generated
`
`during battery storage similar to the batteries in Examples 1 and 6 which do not
`
`comprise LiFSI in the electrolyte. Therefore, the Examples 7 and 8 do not show that the
`
`combination of LiPFe, LIFSI, and propene sultone improve the characteristics of the
`
`batteries.
`
`On pages 8-9 of the Remarks the applicant argues that the film derived from the
`
`sultone compound has excellent durability and flexibility. As such, the degradation of the
`
`cycle characteristics and the gas generation in association with the decomposition of
`
`the non-aqueous solvent can be suppressed. The applicant argues that Minami etal.
`
`and Yamaguchi et al. do not disclose or suggest the effects obtained by the interactions
`
`between the sultone compound and the composite material comprising a silicate and
`
`silicon.
`
`However, the examiner would like to note that Yamaguchi et al. (US
`
`2009/0111020) teach that a sultone, such as propene sultone, may be added to an
`
`electrolyte to improve the cycle characteristics and the swelling of the battery
`
`(par.0095).
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 7
`
`Therefore, one of ordinary skill would be motivated to include propene sultonein
`
`the electrolyte of the Minami et al.,
`
`in order to improve cycle characteristics and reduce
`
`swelling.
`
`The reason or motivation to medity the reference may atten suggest what the inventor nas done, but
`
`fora diferent ourpose orig solve a different problem, His not necessary inhaling
`
`
`
`
`rlorart suggqestihe
`
`
`
`
`boant. See. e.g., inre Kahn, 441 F3d
`
`$77,987, 78 USPOQ2d 1328, 1436 (Fed. Cir. 2606) (molivation quesiion arises inthe contextal the general
`
`problem confronting the invertor ratherthan the specific problem solved by the invention): Cross Med, Prods.,
`
`inc. v. Medironic Sofamor Danek, inc, 424 F.3d 1293, 1323,75 USPOed 1662, 1685 (Fed. Cir, 2005) (One of
`
`ordinary skillin the an need notsee the identical problem adoressec in a prior art reference to be motivated to
`
`apply its teachings.”}; in re Lintner, 458 F.2d 1013, 173 USPO 560 (COPA 1972)(discussed below); inre
`
`Dillon, 818 F.2d 888, 16 USPQed 1897 (Fed. Gir. 1999), cert. denied, 500 US. 904 (4981) (MPEP 2144.1V.
`
`RATIONALE DIFFERENT FROM APPLICANT’S IS PERMISSIBLE)
`
`The examiner would like to note that the newly cited art Kim et al. (EP 2 887 441
`
`A1) teach that an electrolyte additive, such as propene sultone, improves output
`
`characteristics as high and low temperature and may prevent a swelling phenomenon
`
`by suppressing the decomposition of PFeon the surface of the cathode (par.0015). This
`
`showsthatit is known in the art to use propene sultone as electrolyte additive,
`
`On page 10 of the Remarksthe applicant argues that Minami et al. teach that the
`
`battery has improved cycle characteristics by dispersing a metal compound in the
`
`lithium silicate phase. Therefore, there is no motivation to add the sultone compound of
`
`Yamaguchi in order to improve the cycle characteristics.
`
`The examiner would like to note that Yamaguchi et al. (US 2009/0111020) teach
`
`that a sultone, such as propene sultone, may be addedto anelectrolyte to improve the
`
`swelling of the battery (par.0095).
`
`It is well-known in the art that reducing the swelling of a battery is essential.
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 8
`
`Therefore, one of ordinary skill would be motivated to include propenesultonein
`
`the electrolyte of the Minami et al.,
`
`in order to reduce the swelling of the battery.
`
`The examiner would like to note that Examples 7 and 8 in Table 1 of the
`
`specification are the only two exampleswithin the scope in claim 1. These examples
`
`show batteries wherein the anode comprises graphite, andlithium silicate LSX having
`
`60 mass%Si particles dispersed therein, and an electrolyte including LiPFe, LiFSI, and
`
`1 mass% of propene sultone (PRS).
`
`LSX in Examples 7 and 8 is represented by the formula LizSi2Os (see par.0093).
`
`However, claim 1 recites “a composite material including a silicate phase and
`
`silicon particles dispersed in the silicate phase, the silicate phase includes at least one
`
`of an alkali metal and an alkaline earth metal, a content of the silicon particles in the
`
`composite material is 40 mass%-80mass%’. The specification of the instant application
`
`teaches that the silicate phase is represented by the formula: LizzSiOz+z, wherein z is
`
`more than 0 and less than 2 (par.0050).
`
`Claim 1 also recites that the non-aqueous electrolyte comprises 2 mass%orless
`
`of asultone, and the specification teaches that a sultone may be represented by the
`
`formulas (1) or (2):
`
`Re
`
`0
`
`/
`
`\
`0
`
`RSL
`Rie al
`
`RS Aly
`
`()
`
`, wherein R'-R® may be hydrogen atom, a halogen
`
`atom, a hydrocarbon atom, a hydroxyl group, an amino group, an ester group, and n=1-
`
`3 (par.0021-0025):
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 9
`
`6
`
`coona
`
`2
`
`formula (1) (par.0028-0029).
`
`, wherein R' and R4-R®, and n are the same asin
`
`LizSi2Os in Examples 7 and8is a silicate LizzSiOz+zwherein z=0.5, and propene
`
`sultone (PRS) is a sultone of formula (2) wherein R‘! and R*-R® are hydrogen atoms and
`
`n=1.
`
`Therefore, the evidence in Examples 7-8 is not commensurate in scope with
`
`claim 1 and does not show unexpected superior results of the claimed invention.
`
`Whetherthe unexpected results are the result of unexpectectly improved results or a properly not
`
`fauahtby the prior ari, the “ebiective avidence of nancbviousnesa musibe commensurate in scope with the
`
`claims which the evidence is offereci io support” in other words, ihe showing of unexpected resulis mustbe
`
`reviewed to see if the results occur over the entire claimed range. inre Clarmerns, 622 F.2d 1029, 1036, 206
`
`USPQ 289, 246 (OCPA 1980) (Claims were directed to a process for removing carrosion al "elavated
`
`temperatures” using a certain ion exchange resin (with the exception of claim 8 which recited a tem peraiure in
`
`excess of 1000). Appellanidemonstraied unexpected resulis via comparative tests with the orior artion
`
`exchange resin at 116C and 139GC. The court affirmedihe rejection of claims 1-7 and 9-10 because the term
`
`“elevaied tam peralures” encompassed temperalures as low as 60C where the orierari ion exchange resin was
`
`known to perform well The rejection of claim 4, cirected to a temperature in excess of 1GGC, was reverse).
`
`See also it re Peterson, 315 F.3d 1325, 1328-31, 65 USPOQe2d 1379, 1362-85 (Fed. Clr 2003} idaia showing
`
`improved alloy strength with the adctition of 2%rhenium did notevicience unexpected results forthe entins
`
`claimedrange of about 1-3%rhenium); fnre Grasseili, 713 Fed 731,741,218 USPO7&3, 777 (Fed. Cir, 1983
`
`(Claims were directed to cartain catalysts containing an alkall metal. Evidence preseried to rebutan
`
`obviousness rejection compared calalyais containing sodium withtne priarari. The courtheid this evidence
`
`insufficientio rebutthe prima facie case because expenments limited lo sodium were notcom mansurate in
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 10
`
`scope with the claims.) (MPEP 716.02 (23 Unexpected Results Commensurate in Scope With Claimad
`
`Invention),
`
`Conclusion
`
`7.
`
`The prior art made of record and notrelied upon is considered pertinent to
`
`applicant's disclosure:
`
`Kim et al. (EP 2 887 441 A1) teach a non-aqueous electrolyte solution including a
`
`non-aqueous solvent, an imide-basedlithium salt, and 1,3-propene sultone (PRS) as
`
`electrolyte solution additive (par.0010). The imide-based salt may be LIN(SO2F)2N
`
`(LiIFSI), and the lithium salt may further comprise LiPFe (par.0011 and Example 1
`
`in
`
`par.0037). Kim et al. teach that the electrolyte solution additive may improve output
`
`characteristics at high and low temperatures and may prevent a swelling phenomenon
`
`by suppressing the decomposition of PFeon the surface of the cathode (par.0013).
`
`Since the LiFSI and LiPFe are combined, the reduction of the output of the battery due
`
`to low mobility oflithium ions caused by high viscosity of LiPFs at low temperature may
`
`be improved by adding LiFSI that may maintain low viscosity even at low temperature
`
`(par.0019).
`
`8.
`
`Applicant's amendment necessitated the new groundsof rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`

`

`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 11
`
`mailed until after the end of the THREE-MONTHshortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`Inno event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the date of this final action.
`
`Anyinquiry concerning this communication or earlier communications from the
`
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`Application/Control Number: 17/415,062
`Art Unit: 1722
`
`Page 12
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`/ANCA EOFF/
`Primary Examiner, Art Unit 1722
`
`