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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
`
`17/435,551
`
`09/01/2021
`
`Yasuyuki Kusumoto
`
`P210763US00
`
`4054
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA22182
`
`APICELLA, KARIE O
`
`1725
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/08/2024
`
`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*
`1-7 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`5a) Of the above claim(s) _ is/are withdrawn from consideration.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) 1and4-7 is/are rejected.
`Claim(s) 2-3 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:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)C The specification is objected to by the Examiner.
`11) The drawing(s)filed on 01 September 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)() None ofthe:
`b)( Some**
`a) 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.
`3.1.) 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 09-01-21.
`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 20240305
`
`Application No.
`Applicant(s)
`17/435,551
`Kusumotoetal.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`KARIE O APICELLA
`1725
`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 01 September 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.
`
`

`

`Application/Control Number: 17/435,551
`Art Unit: 1725
`
`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
`
`underthe first inventor to file provisions of the AIA.
`
`2.
`
`Claims 1-7 are pending in this office action.
`
`Priority
`
`3.
`
`Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f),
`
`which papers have been placed of recordin the file.
`
`Information Disclosure Statement
`
`4.
`
`Information disclosure statement (IDS), submitted September 1, 2021, has been
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`received and considered by the examiner.
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`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
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`correction of the statutory basis (i.e., changing from AIA to pre-AlA) for the rejection will
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`not be considered a new ground ofrejection if the prior art relied upon, and the rationale
`
`supporting the rejection, would be the same undereither status.
`
`6.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basisfor all
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`obviousness rejections set forth in this Office action:
`
`

`

`Application/Control Number: 17/435,551
`Art Unit: 1725
`
`Page 3
`
`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 effectivefiling 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.
`
`7.
`
`The factual inquiries for establishing a background for determining obviousness
`
`under 35 U.S.C. 103 are summarized asfollows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences betweenthe prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence presentin the application indicating
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`obviousness or nonobviousness.
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`8.
`
`Claims 1, 4, 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Morisawaet al. (WO2018/123213) using Morisawaet al. (US 2019/0312262 A1)
`
`as an English translation, and in view of Ho et al. (KR 10-2014-0038676).
`
`With regard to Claim 1, Morisawaetal. disclose a non-aqueous electrolyte
`
`secondary battery, comprising: an electrode assembly including a positive electrode, a
`
`negative electrode, and a separator (paragraph 0013); and a non-aqueous electrolyte
`
`including a non-aqueous solvent, and an electrolyte salt dissolved in the non-aqueous
`
`solvent, wherein the non-aqueous electrolyte contains fluorine-containing chain
`
`carboxylic acid ester represented by Formula 1 described below, the fluorine-containing
`
`chain carboxylic acid ester is contained in an amountof 10 vol% or more with respectto
`
`a volumeof the non-aqueous electrolyte excluding the electrolyte salt, [Formula 1]
`
`RCOOCH2CFs whereRis an alkyl group having a carbon numberof 2 or
`
`less(paragraphs 0050-0056). Morisawaet al. disclose that the non-aqueous electrolyte
`
`

`

`Application/Control Number: 17/435,551
`Art Unit: 1725
`
`Page 4
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`preferably further includes a carboxylic acid fluoroalkyl ester, and wherein R3 of the
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`carboxylic acid fluoroalkyl ester is preferably a trifluoromethyl group, a 2,2,2-
`
`trifluoroethyl group, or the like, and wherein the 2,2,2-trifluoroethyl group can be derived
`
`from 2,2,2-trifluoroethanol (paragraph 0061). Morisawaetal. do not specifically
`
`disclose the non-aqueous electrolyte containing a trifluoroethanol, wherein the
`
`trifluoroethanol is contained in an amountof 0.1 to 2 mass%with respect to a mass of
`
`the fluorine-containing chain carboxylic acid ester.
`
`Ho et al. disclose in Examples 1-11, a non-aqueous electrolyte for a secondary
`
`battery in which 0.01 to 10 parts by weight of 2,2,2-trifluoroethanol based on 100 parts
`
`by weight of an organic solvent was addedto prepare the non-aqueous electrolyte (lines
`
`109-113 and lines 383-389). Before the effectivefiling date of the invention it would
`
`have been obvious to one having ordinary skill in the art to modify the non-aqueous
`
`electrolyte of Morisawaetal. to includeatrifluoroethanol, wherein the trifluoroethanol is
`
`contained in an amount of 0.1 to 2 mass%with respect to a massofthe fluorine-
`
`containing chain carboxylic acid ester, because Ho etal. teach that the addition of
`
`trifluoroethanol shows a greater reduction in resistance and excellent low-temperature
`
`discharge characteristics (lines 461-466).
`
`With regard to Claim 4, Morisawaet al. disclose wherein the non-aqueous
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`electrolyte contains 3,3,3-methyl fluoropropionate in an amount of 50% by massor
`
`more, more preferably 80% by mass or more (paragraph 0053), which meets the
`
`claimedlimitation of 10 to 90 vol% with respect to a volume of the non-aqueous
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`electrolyte excluding the electrolyte salt.
`
`

`

`Application/Control Number: 17/435,551
`Art Unit: 1725
`
`Page 5
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`With regard to Claim 5, Morisawa etal. do not specifically disclose wherein the
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`non-aqueous electrolyte contains the fluorine-containing chain carboxylic acid esterin
`
`an amountgreater than an amountof the methyl fluoropropionate. The specific amount
`
`of the fluorine-containing chain carboxylic acid ester and the amountof the methyl
`
`fluoropropionate in the non-aqueous electrolyte is not considered to confer patentability
`
`to the claims. As the non-aqueouselectrolyte, stability & cost of manufacturing are
`
`variables that can be modified, among others, by adjusting said the fluorine-containing
`
`chain carboxylic acid ester and the amountof the methyl fluoropropionate in the non-
`
`aqueous electrolyte, with the stability and manufacturing cost both increasing as the
`
`amountof the fluorine-containing chain carboxylic acid ester and the amountof the
`
`methyl fluoropropionate in the non-aqueouselectrolyte is increased, the precise amount
`
`of the fluorine-containing chain carboxylic acid ester and the amountof the methyl
`
`fluoropropionate in the non-aqueous electrolyte would have been considered a result
`
`effective variable by one having ordinaryskill in the art at the time the invention was
`
`made. Accordingly, one of ordinary skill in the art at the time the invention was made
`
`would have optimized, by routine experimentation, the amountof the fluorine-containing
`
`chain carboxylic acid ester and the amountof the methyl fluoropropionate in the non-
`
`aqueous electrolyte of Morisawaet al. to obtain the desired balance between the
`
`stability & cost of manufacturing (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA
`
`1980)), since it has been held that where the general conditions of the claim are
`
`disclosed in the prior art, discovering the optimum or workable rangesinvolves only
`
`routine skill in the art. (In re Aller, 105 USPQ 223).
`
`

`

`Application/Control Number: 17/435,551
`Art Unit: 1725
`
`Page 6
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`With regard to Claim 7, Ho et al. disclose wherein the trifluoroethanol is
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`contained in an amountof 0.01 to 10 parts by weight of 2,2,2-trifluoroethanol based on
`
`100 parts by weight of an organic solvent(lines 109-113 and lines 383-389), which
`
`meets the claimedlimitation of 0.1 to 0.5 mass%with respect to a massofthe fluorine-
`
`containing chain carboxylic acid ester. Before the effectivefiling date of the invention it
`
`would have been obvious to one having ordinary skill in the art to modify the non-
`
`aqueous electrolyte of Morisawaet al. to include a trifluoroethanol in an amountof 0.1
`
`to 0.5 mass%with respect to a massof the fluorine-containing chain carboxylic acid
`
`ester, because Ho etal. teach that the addition of trifluoroethanol showsa greater
`
`reduction in resistance and excellent low-temperature discharge characteristics (lines
`
`461-466).
`
`
`
`9. Claim6is rejected under 35 U.S.C. 103 as being unpatentable over Morisawa et
`
`al. (WO2018/123213) using Morisawaet al. (US 2019/0312262 A1) as an English
`
`translation, and Hoet al. (KR 10-2014-0038676), as applied to Claims 1, 4, 5 and 7
`
`above, andin further view of Ishikawa et al. (US 2018/0205087 A1).
`
`With regard to Claim 6, Morisawaet al. and Ho et al. disclose the non-aqueous
`
`electrolyte secondary battery in paragraph 8 above, but do not specifically disclose
`
`wherein the non-aqueous electrolyte further contains fluoroethylene carbonate, and the
`
`non-aqueous electrolyte contains the fluorine-containing chain carboxylic acid esterin
`
`an amountgreater than a total content of the fluoroethylene carbonate and the methyl
`
`fluoropropionate.
`
`

`

`Application/Control Number: 17/435,551
`Art Unit: 1725
`
`Page 7
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`Ishikawa et al. disclose a non-aqueous electrolyte solution for a secondary
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`battery in whichalithium salt is dissolved in the non-aqueous solvent and wherein the
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`non-aqueous solvent maycontain at least one fluorine solvent selected from the group
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`consisting of fluoroethylene carbonate and methyl fluoropropionate, as well as others
`
`(paragraphs 0161 and 0169-0171). Before the effective filing date of the invention it
`
`would have been obvious to one having ordinary skill in the art to modify the non-
`
`aqueous electrolyte of Morisawaet al. and Ho etal. to include fluoroethylene carbonate,
`
`because Ishikawaet al. teach that the addition of fluoroethylene carbonate allowsfor
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`higher oxidation resistance and results in the battery operating stably even if charged at
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`a high voltage (paragraphs 0172-0173).
`
`Morisawaet al., Ho et al. and Ishikawaet al. do not specifically disclose wherein
`
`the non-aqueous electrolyte contains the fluorine-containing chain carboxylic acid ester
`
`in an amountgreater than a total contentof the fluoroethylene carbonate and the methyl
`
`fluoropropionate. The specific amount of the fluorine-containing chain carboxylic acid
`
`ester, methyl fluoropropionate and fluoroethylene carbonate in the non-aqueous
`
`electrolyte is not considered to confer patentability to the claims. As the non-aqueous
`
`electrolyte, stability & cost of manufacturing are variables that can be modified, among
`
`others, by adjusting said fluorine-containing chain carboxylic acid ester, methyl
`
`fluoropropionate and fluoroethylene carbonate in the non-aqueous electrolyte, with the
`
`stability and manufacturing cost both increasing as the amountof the fluorine-containing
`
`chain carboxylic acid ester, methyl fluoropropionate and fluoroethylene carbonatein the
`
`non-aqueous electrolyte is increased, the precise amountof the fluorine-containing
`
`chain carboxylic acid ester methyl fluoropropionate and fluoroethylene carbonatein the
`
`

`

`Application/Control Number: 17/435,551
`Art Unit: 1725
`
`Page 8
`
`non-aqueous electrolyte would have been considereda result effective variable by one
`
`having ordinary skill in the art at the time the invention was made. Accordingly, one of
`
`ordinary skill in the art at the time the invention was made would have optimized, by
`
`routine experimentation, the amountof the fluorine-containing chain carboxylic acid
`
`ester, methyl fluoropropionate and fluoroethylene carbonate in the non-aqueous
`
`electrolyte of Morisawaet al., Ho et al. and Ishikawaet al. to obtain the desired balance
`
`betweenthe stability & cost of manufacturing (In re Boesch, 617 F.2d. 272, 205 USPQ
`
`215 (CCPA 1980)), since it has been held that where the general conditions of the claim
`
`are disclosed in the prior art, discovering the optimum or workable rangesinvolves only
`
`routine skill in the art. (In re Aller, 105 USPQ 223).
`
`Allowable Subject Matter
`
`10.
`
`Claims 2-3 are objected to as being dependent upon a rejected baseclaim, but
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`would be allowableif rewritten in independent form including all of the limitations of the
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`base claim and any intervening claims.
`
`11.
`
`The following is a statement of reasons for the indication of allowable subject
`
`matter:
`
`the closest prior art, Morisawa et al. (WO2018/123213) using Morisawaetal.
`
`(US 2019/0312262 A1) as an English translation, and Ho et al. (KR 10-2014-0038676),
`
`do not teach or fairly suggest the non-aqueous electrolyte secondary battery wherein in
`
`the Formula 1, R is a fluoroalkyl group having a carbon numberof 2 or less; and
`
`wherein the fluorine-containing chain carboxylic acid ester comprises at least one of
`
`difluoroacetic acid -2, 2, 2-trifluoroethyl, 2, 2, 2-trifluoropropionic acid -2, 2, 2-
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`trifluoroethyl, or acetic acid -2, 2, 2-trifluoroethyl.
`
`

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`Application/Control Number: 17/435,551
`Art Unit: 1725
`
`Page 9
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`12.—Any inquiry concerning this communication or earlier communications from the
`
`Conclusion
`
`examiner should be directed to KARIE O APICELLA whosetelephone numberis
`
`(571)272-8614. The examiner can normally be reached Mondaythru Friday; 8:00AM to
`
`5:00PM EST.
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`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, Basia Ridley can be reached on 571-272-1453. The fax phone numberfor
`
`the organization wherethis application or proceeding is assigned is 571-273-8300.
`
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`

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`Application/Control Number: 17/435,551
`Art Unit: 1725
`
`Page 10
`
`/KARIE O'NEILL APICELLA/
`Primary Examiner, Art Unit 1725
`
`