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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
`
`17/442,360
`
`09/23/2021
`
`Akira Kano
`
`P210849US00
`
`1067
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA22182
`
`WANG, EUGENIA
`
`1759
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/17/2024
`
`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 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`5a) Of the above claim(s) _ is/are withdrawn from consideration.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) 1-6 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:/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 23 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)Z 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
`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 20240306
`
`Application No.
`Applicant(s)
`171442, 360
`Kano etal.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`EUGENIA WANG
`1759
`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)C) Responsive to communication(s) filed on
`CA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon
`
`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.
`
`

`

`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`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
`
`underthefirst inventor to file provisions of the AIA.
`
`Priority
`
`2.
`
`Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
`
`Information Disclosure Statement
`
`3.
`
`The information disclosure statements filed September 23, 2021 and October30,
`
`2023 have beenplacedin the application file and the information referred to therein has
`
`been considered as to the merits.
`
`Drawings
`
`4.
`
`The drawings received September 23, 2021 are acceptable.
`
`Claim Rejections - 35 USC § 102
`
`5.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section madein this Office action:
`
`A person shall be entitled to a patent unless —
`
`(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, namesanother inventor and waseffectively filed before the
`effectivefiling date of the claimed invention.
`
`6.
`
`Claim(s) 1-2, 4, and 6 is/are rejected under 35 U.S.C. 102(a)(2) as being
`
`anticipated by US 2019/0198932 (Newhouseetal.).
`
`As to claim 1, Newhouse et al. teach a non-aqueous electrolyte secondary battery
`
`comprising:
`
`

`

`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 3
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`a positive electrode (first/positive electrode; cathode [102]), a negative electrode
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`(second/negative electrode; anode [106]), and a non-aqueous electrolyte with lithium-ion
`
`conductivity (fig. 1; para 0056, 0084-0092),
`
`wherein, on the negative electrode, a lithium metal is deposited by charging and
`
`the lithium metal is dissolved in the non-aqueous electrolyte by discharging (this is the
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`manner in which a lithium-metal battery operates; para 0086 indicates reversibility),
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`the non-aqueous electrolyte includes an electrolytic salt and a solvent (para 0042-
`
`0047, 0051-0052),
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`the solventincludesafirst ether compound represented by a general formula (1):
`
`R1-(OCH2CH2)n-OR2,
`
`where R1 and R2 are independently an alkyl group with a carbon numberof 1
`
`to
`
`5, and nrepresents 1
`
`to 3 (dimethoxyethane (DME) exemplified; para 0012, fig. 8) (note:
`
`fits claimed formula, as para 0033 of the instant application shows dimethoxyethanefits
`
`the claimed formula),
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`and a second ether compound having a fluorination rate of 60 % or more and
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`represented by a general formula (2): CaiHb1Fe1Od1(CF2OCH2)Ca2Hb2Fc20a2
`
`where a1 2 1, a220,b1 $2a1, b2 $2a2, c1=(2a1+1)-b1, c2=(2a2+1)-b2, (1,1,2,2,-
`
`tetrafluoroethyl 2,2,3,3-tetrafluoropropyl ether (TFE-TFPE) exemplified; para 0146,fig. 4,
`
`fig. 8 (middle section)) (note: fits claimed formula, as para 0036 of the instant application
`
`shows 1,1,2,2,-tetrafluoroethyl 2,2,3,3-tetrafluoropropyl ether fits the claimed formula)
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`and a proportion of atotal amountof the first ether compound and the second ether
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`compoundin the solvent is 80 volume%or more(asin figs. 4 and fig. 8 (middle section)
`
`it appears that the only solvents are DME and TFE-TFPE).
`
`

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`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 4
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`As to claim 2, Newhouse etal. teach wherein a volume ratio: V1/V2 of a volume
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`V1 of the first ether (DME) compound to a volume V2 of the second ether compound
`
`(TFE-TFPE)in the solventis 1/0.5 (=2) to 1/4 (=.25) (fig. 4 shows 50%of teach (1:1 ratio
`
`= 1; para 0074 confirms that the fig. appreciates 50% volume of each and specifically sets
`
`forth that the first solvent (second ether) should be present 245%,
`
`thus setting forth a
`
`55/45 ratio as the minimum desired (1.2) (numbersfall within claimed range)).
`
`As to claim 4, Newhouse et al.
`
`teach the electrolytic salt
`
`includes
`
`lithium
`
`bis(fluorosulfonyl)imide: LIFSI (fig. 8; para 0049-0052).
`
`As to claim 6, Newhouse et al.
`
`teach the electrolytic salt
`
`includes
`
`lithium
`
`difluoro(oxolate)borate: LiBF2(C20s) (fig. 4/para 0074 exemplifies using LIDFOB; para
`
`0049-0050
`
`and table
`
`1
`
`confirms
`
`the acronym,
`
`that LiIDFOB refers
`
`to
`
`lithium
`
`difluoro(oxolato)borate (see also para 0051-0052 for appreciated salt written out).
`
`Claim Rejections - 35 USC §103
`
`7.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`A patentfora 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 art are such that the claimed invention as a whole would have been
`obvious beforethe effectivefiling date of the claimedinvention 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.
`
`8.
`
`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 between theprior art and the claims atissue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
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`

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`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 5
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`4. Considering
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`objective
`
`evidence present
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`in
`
`the
`
`application
`
`indicating
`
`obviousness or nonobviousness.
`
`9.
`
`This application currently namesjoint inventors.
`
`In considering patentability of the
`
`claims the examiner presumes that
`
`the subject matter of
`
`the various claims was
`
`commonly owned as of the effectivefiling date of the claimed invention(s) absent any
`
`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
`
`point out the inventor and effectivefiling dates of each claim that was not commonly
`
`owned as of the effectivefiling date of the later invention in order for the examiner to
`
`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
`
`prior art against the later invention.
`
`10.
`
` Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Newhouseet al., as applied to claim 1 above, in view of US 2018/0251681 (Zhang etal.).
`
`As to claim 3, Newhouseetal. teach of high concentration solutions (fig. 4 shows
`
`at least 4.8 M; generally 5-10 M, para 0052).
`
`Therefore, Newhouseet al. do not teach a concentration of the electrolytic salt in
`
`the non-aqueous electrolyte is from 0.8 mol/L to 3 mol/L.
`
`However, Zhang et al. teach of the concept of super concentrated electrolytes,
`
`which are at least 3 M, but may be up to 20 M (para 0145). Zhang sets forth that the
`
`concentration of salt within the electrolyte is a result effective variable. Specifically, the
`
`higher
`
`the concentration,
`
`the less free, unassociated solvents are present, which
`
`facilitates formation of a stabilized SEI layer and increases cycling stability; however
`
`disadvantages of super concentrated electrolytes (higher molarity) includes flammability,
`
`high material cost, high viscosity, and poor wetting of the separator and cathode (para
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`

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`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 6
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`0145). Lowering the lower the concentration (dilution)
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`resolves disadvantages of high
`
`concentrations but hinders SEI stabilization and decreases cycling stability (para 0145).
`
`It would have been obvious to one having ordinary skill in the art at the time the invention
`
`was made to optimize the concertation of the electrolytic salt (from 0.8-3 mol/L — to
`
`achieve desired effects of having a stabilized SEI layer and increasing cycling, while also
`
`balancing flammability, material cost, viscosity, and cathode/separator wetting), since it
`
`has been held that discovering an optimum value of a result effective variable involves
`
`only routine skill in the art.
`
`/n re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
`
`It
`
`has been held that discovering that general conditions of a claim are disclosed in the prior
`
`art, discovering the optimum or workable ranges involves only routine skill in the art.
`
`/n
`
`re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability
`
`of subject matter encompassed by the prior art unless there is evidence indicating such
`
`rangesis critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
`
`In re Aller,
`
`220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
`
`In re Hoeschele, 406 F.2d 1403,
`
`160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
`
`11.
`
`Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Newhouseet al., as applied to claim 1 and claim 4 above, in view of WO 2018/079585
`
`(Maeda et al.) (US 2019/0280300 is relied upon as the English translation of the WO
`
`document, as both correspond to the same PCT).
`
`As to claim 5, Newhouse et al. appreciates a mixture of LiPFe
`
`(lithium
`
`hexafluorophosphate) and (in conjunction with LIFSI (LIN(CF3SO2)2) (para 0051), wherein
`
`lithium hexafluorophosphate is in an amount of less than 10 wt%.
`
`

`

`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 7
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`Newhouse does not express molar concentration comparisons, and thus does not
`
`teach a ratio: M1/M2 of a molar concentration M1 of LiFSI to a molar concentration M2 of
`
`LiPFe in the non-aqueous electrolyte is from 1/0.5 (=2) to 1/9 (=.11).
`
`However, Maeda et al. teach using an electrolyte salt mixture of LIFSI and LiPFe
`
`ina 1:1 ratio (para 0117). The combination of having an electrolyte salt mixture of LiFSI
`
`and LiPFe ina 1:1 ratio (as taught by Maeda et al. and applied to Newhouseetal., which
`
`does not disclose a molarratio) would yield the predictable result of providing an operable
`
`electrolyte. Therefore it would have been obvious to one having ordinary skill in the art at
`
`the time the claimed invention was made (as applicable to pre-AlA applications) or
`
`effectively filed (as applicable to AIA applications) to combine an electrolyte salt mixture
`
`of LiIFSI and LiPFe in a 1:1 ratio (as taught by Maedaet al. and applied to Newhouse et
`
`al., which does not disclose a molarratio), as the combination would yield the predictable
`
`result of providing an operable electrolyte.
`
`“When considering obviousness
`
`of a
`
`combination of known elements, the operative question is thus "whether the improvement
`
`is more than the predictable use of prior art elements according to their established
`
`functions." /d. at__, 82 USPQ2d at 1396.” See MPEP §2141(I).
`
`Conclusion
`
`12.—Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to EUGENIA WANG whosetelephone numberis (571)272-
`
`4942. The examiner can normally be reached a flex schedule, generally Monday-
`
`Thursday 5:30 -7:30(AM) and 9:00-4:30 ET.
`
`Examiner
`
`interviews
`
`are
`
`available
`
`via
`
`telephone,
`
`in-person,
`
`and_
`
`video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`

`

`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 8
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR)
`
`at http:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful,
`
`the examiner’s
`
`supervisor, Duane Smith can be reached on 571-272-1166. The fax phone numberfor
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
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`CANADA)or 571-272-1000.
`
`/EUGENIA WANG/
`Primary Examiner, Art Unit 1759
`
`