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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
`
`07/31/2024
`
`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)
`
`

`

`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) Responsive to communication(s)filed on 16 July 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.
`
`Disposition of Claims*
`1-2,4-5 and 7 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`CL] Claim(s)__is/are allowed.
`Claim(s) 1-2,4-5 and 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)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 20240724
`
`

`

`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013,
`
`is being examined under
`
`the first inventor to file provisions of the AIA.
`
`2.
`
`In response to the amendmentreceived July 16, 2024:
`
`Response to Amendment
`
`a.
`
`Claims 3 and 6 have been canceled as per Applicant's request. Claim 7
`
`have been added. Claims 1, 2, 4-5, and 7 are pending.
`
`b.
`
`The core of the previous prior art rejection is maintained with slight changes
`
`madein light of the amendment. All changes to the rejection are necessitated by
`
`the amendment. Thus the action isfinal.
`
`Claim Rejections - 35 USC § 103
`
`3.
`
`The text of those sections of Title 35, U.S. Code not included in this action can
`
`be found in a prior Office action.
`
`4.
`
`Claim(s) 1, 2, and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable
`
`over US 2019/0198932 (Newhouseetal.) in view of US 2018/0251681 (Zhang et al.), as
`
`evidenced by the MSDS sheets for dimethoxyethane (DME) (by SigmaAldrich) and
`
`tetrafluoroethyl 2,2,3,3-tetrafluoropropyl ether (TFE-TFPE) (by SynQuest Laboratories).
`
`As to claim 1, Newhouse et al. teach a non-aqueous electrolyte secondary battery
`
`comprising:
`
`a positive electrode (first/positive electrode; cathode [102]), a negative electrode
`
`(second/negative electrode; anode [106]), and a non-aqueous electrolyte with lithium-ion
`
`conductivity (fig. 1; para 0056, 0084-0092),
`
`

`

`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 3
`
`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
`
`manner in which a lithium-metal battery operates; para 0086 indicates reversibility),
`
`the non-aqueous electrolyte includes an electrolytic salt and a solvent (para 0042-
`
`0047, 0051-0052),
`
`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),
`
`and a second ether compound having a fluorination rate of 60 % or more and
`
`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)
`
`and a proportion of atotal amountof the first ether compound and the second ether
`
`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),
`
`the electrolytic salt
`
`includes
`
`lithium difluoro(oxolate)borate: LIBF2(C2O4)
`
`(fig.
`
`4/para 0074 exemplifies using LiIDFOB; para 0049-0050 and table 1 confirms the
`
`acronym, that LIDFOB refersto lithium difluoro(oxolato)borate (see also para 0051-0052
`
`

`

`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 4
`
`for appreciated salt written out); the lithium salt is added in an amountof less than 10 wt%
`
`(para 0051). This wt%of lithium difluoro(oxolate)borate LiBF2(C2O«4) (LIDFOB) overlaps
`
`the claimed concentration (0.1 mol/L or less), as a concentration of 0.833 mol/L or less is
`
`within Newhouseet al.’s teaching. See the sample calculation below; basis of 10 wt%
`
`LiDFOB and a solvent of DME and TFE-TFPE at a 50:50 ratio taken (Supported by para
`
`0041 and 0051). (Note: The density values of DME and TFE-TFPE wereretrieved from
`
`the MSDSsheets, cited as evidentiary references.)
`
`DME density: 0.867 g/mL
`
`TFE-TFPE density = 1.533 g/mL
`
`For a 50:50 mixture of DME:TFE-TFPE, the density is 1.20 g/mL (average of 0.867
`
`g/mL and 1.533 g/mL)
`
`Weight of a 1L solution: 1L x 1.2 g/mL x 1000 mI/L = 1,200 g solution
`
`Amount of LIDFOB at 10 wt% = 1,200 g x 0.10 = 120 g LiIDFOB
`
`Max concentration of LIDFOB in a 1 L solution:
`
`(120 g LiDFOB/L soln) x (mol
`
`LiDFOB/144 g LiDFOB) = 0.833 mol/L
`
`“In the case where the claimed ranges “overlap or lie inside ranges disclosed by the
`
`prior art” a prima facie case of obviousness exists.
`
`/n re Wertheim, 541 F.2d 257, 191
`
`USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir.
`
`1990)” See MPEP §2144.05(1).
`
`Newhouseet al. 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.
`
`

`

`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 5
`
`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
`
`0145). Lowering the lower the concentration (dilution)
`
`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).
`
`

`

`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 6
`
`As to claim 2, Newhouse etal. teach wherein a volume ratio: V1/V2 of a volume
`
`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).
`
`5.
`
`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%.
`
`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
`
`

`

`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 7
`
`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).
`
`6.
`
`Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US
`
`2019/0198932 (Newhouseetal.) in view of US 2018/0251681 (Zhanget al.).
`
`As to claim 7, Newhouseet al. teach a non-aqueous electrolyte secondary battery
`
`comprising:
`
`a positive electrode (first/positive electrode; cathode [102]), a negative electrode
`
`(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
`
`manner in which a lithium-metal battery operates; para 0086 indicates reversibility),
`
`the non-aqueous electrolyte includes an electrolytic salt and a solvent (para 0042-
`
`0047, 0051-0052),
`
`the solvent includes a first ether compound represented by a general formula (1):
`
`R1-(OCH2CH2)n-OR2,
`
`

`

`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 8
`
`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),
`
`and a second ether compound having a fluorination rate of 60 % or more and
`
`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)
`
`and a proportion of atotal amountof the first ether compound and the second ether
`
`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),
`
`a high concentration of electrolyte salt in the non-aqueous electrolyte solution (fig.
`
`4 showsatleast 4.8 M; generally 5-10 M, para 0052), and
`
`a volume ratio V1
`
`of
`
`the first ether compound (DME; called a second
`
`solvent/coordinating solvent in Newhouseet al.; see para 0012) to a volume V2of the
`
`second ether compound (TFE-TFPE; calledafirst solvent in Newhouse et al.; see para
`
`0012, 0042) in the solvent is such that the first solvent (V2) is equal to or less than the
`
`volume of the second solvent (V1) (mapped to the claim language the amount of Vi =
`
`V2, thus yielding a V1/V2 of 1 or more).
`
`Therefore, Newhouseet al. do not teach (a) aconcentration of the electrolytic salt
`
`in the non-aqueous electrolyte is from 0.8 mol/L to 3 mol/L, or (b) a volume ratio of V1/V2
`
`

`

`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 9
`
`of a volume V1 of the first ether compound to a volume V2 of the second ether compound
`
`int the solvent is 0.5 or more and less than 1.
`
`With respect
`
`to (a): 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 0145). Lowering
`
`the lower
`
`the
`
`concentration
`
`(dilution)
`
`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 madeto 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 involvesonly 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.
`
`In 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
`
`

`

`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 10
`
`Hoeschele, 406 F.2d 1403,
`
`160 USPQ 809 (CCPA 1969).
`
`Also,
`
`see MPEP
`
`§2144.05(I1)(B).
`
`With respect to (b), as set Newhouse appreciates a volume ratio of 1. A value of 1
`
`is seen to be close to the claimed “less than 1”(i.e. 1, appreciated by the prior art is close
`
`to, for non-limiting example 0.9999, which is within the prior art); thus obviousness is met.
`
`It has been held that whenthe difference between a claimed invention and theprior art is
`
`the range or value of a particular variable,
`
`then a prima facie rejection is properly
`
`established when the difference in the range or value is minor. Titanium Metals Corp.of
`
`Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally,
`
`differences in ranges will not support the patentability of subject matter encompassed by
`
`the prior art unless there is evidence indicating such rangesiscritical. 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). Claims
`
`that differ from the prior art only byslightly different (non-overlapping) ranges are prima
`
`facie obvious without a showing that the claimed range achieves unexpected results
`
`relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)) Also see
`
`MPEP §2144.05(I).
`
`Response to Arguments
`
`7.
`
`Applicant's arguments filed July 16, 2024 have beenfully considered but they are
`
`not persuasive.
`
`Applicant agues that Zhang, relied upon to render obvious the molarity oflithium
`
`salt, does not teach LIFOB.
`
`

`

`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 11
`
`Examiner submits that Zhang is only relied upon to provide a teaching regarding
`
`a concentration of salts, specifically why one of ordinary skill
`
`in the art would recognize
`
`salt concentrations as result effective variables. As Zhang is not relied upon to teach the
`
`specific salts (primary reference Newhouse provides such features), the argumentis not
`
`commensurate in scope with the rejection. Thus, the argument is not persuasive, and
`
`the rejection of record is maintained.
`
`Applicant argues that Nehouse is silent regarding the ratio between LiFSI and
`
`LiIFOB, and concludes that a concentration of lithium difluoro(oxalate)borate: LIBF2(C2O0a4)
`
`at a concentration of 0.1 mol/L or less is not taught, and no rationale prompting one of
`
`ordinary skill
`
`in the art to achieve the missing aspectis present.
`
`Examiner respectfully disagrees. A weight amount of the lithium salt is provided;
`
`specifically para 0051 sets forth lithium difluoro(oxolato)borate as a salt and states that
`
`the salt
`
`is added in an amount of less than 10 wt%(para 0051). This wt%oflithium
`
`difluoro(oxolate)borate LIBF2(C2O4) (LIDFOB) overlaps the claimed concentration (0.1
`
`mol/L or less), as a concentration of 0.833 mol/L or less is within Newhouse et al.’s
`
`teaching. The sample calculation from the rejection is reiterated below for clarity’s sake:
`
`Basis of 10 wt% LiDFOB and a solvent of DME and TFE-TFPE at a 50:50 ratio taken
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`(supported by para 0041 and 0051 of Newhouse).
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`DME density: 0.867 g/mL
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`TFE-TFPE density = 1.533 g/mL
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`For a 50:50 mixture of DME:TFE-TFPE, the density is 1.20 g/mL (average of 0.867
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`g/mL and 1.533 g/mL)
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`Weight of a 1L solution: 1L x 1.2 g/mL x 1000 mI/L = 1,200 g solution
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`

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`Application/Control Number: 17/442,360
`Art Unit: 1759
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`Page 12
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`Amount of LIDFOB at 10 wt% = 1,200 g x 0.10 = 120 g LiIDFOB
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`Max concentration of LIDFOB in a 1 L solution:
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`(120 g LiDFOB/L soln) x (mol
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`LiDFOB/144 g LiDFOB) = 0.833 mol/L
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`Accordingly, as the prior art overlaps the claimed concentration, obviousness s
`
`achieved. “In the case where the claimed ranges “overlap or lie inside ranges disclosed
`
`by the prior art” a prima facie case of obviousness exists.
`
`In re Wertheim, 541 F.2d 257,
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`191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.
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`Cir. 1990)” See MPEP §2144.05(I). No further rationale is necessary in light of the
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`teaching of Newhouse. Thus, the argumentis not persuasive, and the rejection of
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`record is maintained.
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`Applicant argues that a small amount of LiFOB results in an improved capacity
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`retention rate citing example 4 in table 1 of the disclosure.
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`Examiner respectfully disagrees that any unexpected results have been shown.
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`MPEP 716.02(b) sets forth that Applicant has the burden of explaining the data. No
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`explanation has been offered. For non-limiting example - How is the result of example 4
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`unexpected better
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`than that of example 1, when the difference in the capacity-
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`maintenance ratio results in less than 1% difference? MPEP 716.02(d) requires that the
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`unexpected results are commensurate in scope with the claimed invention, wherein
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`MPEP 716.02(d)(II)
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`requires demonstrating criticality of a claimed range (showing
`
`sufficient tests both inside and outside the claimed range). As only one example LiFOB
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`within the range is provided, MPEP 716.02(d)(Il)
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`is not met. MPEP 716.02€
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`requires
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`comparison with the closest prior art. No comparison has been provided. Thus,
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`the
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`argumentis not persuasive, and the rejection of record is maintained. Examiner suggests
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`

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`Application/Control Number: 17/442,360
`Art Unit: 1759
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`Page 13
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`that Applicant review MPEP 716.02 in full to see the burden that must be met to show
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`unexpected results.
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`Applicant argues that the dependent claims are distinct from the prior art of record
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`for the same reason as the independentclaim.
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`Examiner respectfully disagrees. The rejection with respect to the independent
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`claim has been maintained, and thus the rejections
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`to the dependent claims are
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`maintained as well.
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`With respect to the arguments regarding the 103 rejections, Applicant argues that
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`the prior art used to render obvious the rejected claims (Maeda) do not cure the
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`deficiencies of the rejection applied to the independent claim (Newhosue, now in view of
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`Zhang). Applicant does not argue how the combination is not proper. Therefore, the
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`Examiner maintains
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`the obviousness
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`rejections and upholds
`
`the rejection to the
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`independent claim, as above.
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`Applicant argues that new claim 7 requires V1/V2 to be 0.5 or more and less than
`
`1.0 (V1<V2), while Newhouse teaches V12V2.
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`Examiner submits that V1=V2 (supported by Newhouse;
`
`for example see para
`
`0012 and claim 17) is close to V1<V2 such that obviousness is achieved. Specifically, a
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`value of 1
`
`is seen to be close to the claimed “less than 1”(i.e. 1, appreciated by the prior
`
`art
`
`is close to,
`
`for non-limiting example 0.9999, which is within the prior art);
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`thus
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`obviousness is met.
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`It has been held that when the difference between a claimed
`
`invention and the prior art is the range or value of a particular variable, then a prima facie
`
`rejection is properly established when the difference in the range or value is minor.
`
`Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed.
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`

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`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 14
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`Cir. 1985). Generally, differences in ranges will not support the patentability of subject
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`matter encompassed bythe prior art unless there is evidence indicating such ranges is
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`critical.
`
`In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
`
`In re Aller, 220 F.2d
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`454, 456, 105 USPQ 233, 235 (CCPA 1955).
`
`In re Hoeschele, 406 F.2d 1403, 160 USPQ
`
`809 (CCPA 1969). Claims that differ from the prior art only byslightly different (non-
`
`overlapping) ranges are prima facie obvious without a showing that the claimed range
`
`achieves unexpected results relative to the prior art.
`
`(In re Woodruff, 16 USPQ2d
`
`1935,1937 (Fed. Cir. 1990)) Also see MPEP §2144.05(I).
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`Conclusion
`
`8.
`
`THIS ACTION IS MADE FINAL. 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 eventafirst reply is filed within TWO
`
`MONTHS of the mailing date of this final action and the advisory action is not 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.
`
`In no event, however, will
`
`the statutory period for reply expire later than SIX
`
`MONTHS from the mailing date of this final action.
`
`9.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to EUGENIA WANG whosetelephone numberis (571)272-
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`

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`Application/Control Number: 17/442,360
`Art Unit: 1759
`
`Page 15
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`4942. The examiner can normally be reached a flex schedule, generally Monday-
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`If attempts to reach the examiner by telephone are unsuccessful,
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`the examiner's
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`supervisor, Duane Smith can be reached on 571-272-1166. The fax phone numberfor
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`the organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of published or unpublished applications may be
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`obtained from Patent Center. Unpublished application information in Patent Center is
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`visit: httos://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/pate nt-
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`
`/EUGENIA WANG/
`Primary Examiner, Art Unit 1759
`
`