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`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/054,890
`
`11/12/2020
`
`Kenji Matsubara
`
`P201052US00
`
`7211
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`BUCHANAN, JACOB
`
`1725
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/25/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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*
`1,9-14 and 16 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 1,9-14 and 16 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* 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) 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)1) 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... Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived 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)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220711
`
`Application No.
`Applicant(s)
`17/054 ,890
`Matsubaraetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`JACOB BUCHANAN
`1725
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of 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 4/21/2022.
`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)02 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)\0) 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: 17/054,890
`Art Unit: 1725
`
`Page 2
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`DETAILED ACTION
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`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.
`
`This office action addresses pending claims 1, 9-14 and 16. Claims 2-8 and 15 were
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`cancelled, and claims 1, 9, 14, and 16 were amended in the responsefiled 4/21/2022.
`
`Response to Arguments
`
`2.
`
`Applicant’s arguments, see page 6-8,filed 4/21/2022, with respect to the rejection(s) of
`
`claim(s) 5 under 35 USC 103 have been fully considered and are persuasive. Therefore, the
`
`rejection has been withdrawn. However, upon further consideration, a new ground(s) of
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`rejection is made in view of a different interpretation of the previously applied references of
`
`Kondo etal. (US 2010/0136427) in view Kawai et al. (US 2017/0373351).
`
`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.
`
`Claims 1, 9-14 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Kondo etal. (US 2010/0136427) in view Kawai et al. (US 2017/0373351).
`
`Regarding claims 1 and 13, Kondo discloses a water based lithium secondary battery
`
`(abstract) with an electrolyte solution comprising a water based solvent ([0030]), a lithium salt
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 3
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`([0063]), and a buffer solution comprising a weak acid ([0042]), wherein the weak acid includes
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`at least one of phthalic acid, a succinic acid, a maleic acid, among others ([0047]). Phthalic acid,
`
`succinic acid, and maleic acid read on the claimed dicarboxylic acid having two carboxylic acid
`
`groups. Kondo additionally discloses the battery comprises a positive electrode 2 and a negative
`
`electrode 3 ([0092], Fig 1).
`
`While Kondo teaches the lithium salt used may be, for example, LiINO3, LiOH, LiCl, etc.
`
`(therefore, comprising a lithium ion, Li*) ([0063]), Kondo does not explicitly disclose the lithium
`
`salt comprising an imide anion.
`
`Kawai discloses an aqueous electrolytic solution constituting an aqueous power storage
`
`device (abstract). The aqueous solution compriseslithium salts including
`
`bis(trifluoromethanesulphonyl)amide (TFSA; [N(CF3SO2)2]), bis(perfluoroethanesulfonyl)amide
`
`(BETA; [N(C2F5SO2)2]), or (perfluoroethanesulfonyl) (trifluoromethanesulphonyl)amide
`
`(N(C2F5SO2)(CF3SO2)]) ([0076]). The Examiner notes that while Kawai states the salt is an amide,
`
`the salt has the formula and structure of an imide, and therefore meets the claim limitation.
`
`Also, the amides of Kawai have the same structure and composition as the claimed imides (see
`
`instant specification at [(0035]). The salt can be used with other salts, including LiNOs, LiCl, and
`
`others ([0082]), and thereby suggests combining the amide/imide salt to other salts.
`
`It would have been obvious to one of ordinaryskill in the art before the effective filing
`
`date of the claimed invention to combine the lithium amine/imide salt of Kawai with the lithium
`
`salt of Kondo for the purpose of ionic conductivity within an aqueous battery, and because
`
`Kawai teaches that the salts can be combined.
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 4
`
`While Kondo teaches the electrolyte including phthalic acid, succinic acid, and/or maleic
`
`acid ([0047]), modified Kondo does not explicitly disclose wherein the dicarboxylic acid is
`
`represented by formula 2:
`
`PEE ewaranatin BY
`{Farms 2)
`
`BEES,
`RO
`
`sy
`Ws
`URS.
`
`~,
`
`Wherein R2 and R3 each independently represent any of a divalent saturated or
`
`unsaturated aliphatic group, a divalent aromatic group and a combination thereof, and the
`
`aliphatic group or the aromatic group may have a substituent.
`
`Kawai further teaches other componentsincluding characteristic improvement additives
`
`for improving cycle characteristics and capacity retention characteristics after storage at a high
`
`temperature ([0086]). Such additives include carboxylic anhydrides such as succinic anhydride,
`
`maleic anhydride, diglycolic anhydride ([0086]). As the anhydrides are in an aqueous solution
`
`(abstract), the anhydride will react with the water and yield carboxylic acids. That is, the above
`
`anhydrides react in water into succinic acid, maleic acid, and diglycolic acid (meets the
`
`limitation).
`
`As such,it would have been obvious to one of ordinaryskill in the art before the
`
`effective filing date of the claimed invention to replace the succinic acid or maleic acid in the
`
`electrolyte of Kondo with diglycolic acid (reacted from diglycolic anhydride as taught by Kawai)
`
`because these carboxylic acids are acids, are known to function in aqueous conditions, and are
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 5
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`known to improve cycle characteristics and capacity retention characteristics after storage at a
`
`high temperature.
`
`Regarding claim 9, modified Kondo discloses all of the claim limitations as set forth
`
`above. With regards to the limitation of “wherein a content of the dicarboxylic acid is 0.1% by
`
`mass or higher and 5.0% by massor lower based on a total amountof the electrolyte solution”,
`
`consider the following. In an example, Kondo teaches an electrolyte solution having 0.2M
`
`succinic acid and 6M LiNO3 (battery No. E3). Molar masses: succinic acid is 118.1 g/mol, LiNO3 is
`
`68.946 g/mol. Which means for 1L of solution, there is 23.62 g succinic acid (0.2*118.1) and
`
`413.7 g LiNO3 (6*68.946), and 1000 g of water. Which means there is 1.6% by mass of succinic
`
`acid in total electrolyte solution (23.62/(23.92+413.7+1000)), and thereby within the claimed
`
`range of 0.1% by mass or higher and 5.0% by massor lower based on a total amount of the
`
`electrolyte solution. Further, it would have been obvious to use this amount (1.6%) of a
`
`dicarboxylic acid (including the diglycolic acid as taught by Kawai) in the total electrolyte
`
`solution in the combination because Kondo provides an example using this amountof succinic
`
`acid which is also a dicarboxylic acid.
`
`Regarding claim 10, modified Kondo discloses all of the claim limitations as set forth
`
`above. However, Kondo does notexplicitly disclose wherein a content of the water is 8% by
`
`mass or higher and 50% by massor lower based on a total amountof the electrolyte solution.
`
`Kawai further teaches that the electrolyte solution contains water as a solvent and has a
`
`composition in which an amountof the solvent is not greater than 4 mol with respect to 1 mole
`
`of an alkali metal salt (abstract). Kawai teaches that when the amountof alkali metal salt and
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 6
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`the solvent are within this range, decomposition of alkali metal salt does not occur, and the
`
`electrolyte solution has a potential window exceeding the potential window (stable potential
`
`range) of pure water and preferably has a potential range of not less than 2V ([0080]). Kawai
`
`provides examples using LiTFSA (the lithium imide) in amounts of 5.25 mol/L ([0046]-[0050]).
`
`Kawai further teaches mixing with other solvents ([0064]), adding overcharge inhibitors in the
`
`range of 0.01-5 mass% ([0085]), and characteristics improvementadditives in the range of 0.01
`
`to 5 mass% ([0086]). That is, with additives alone, Kawai suggests the possibility of over 10
`
`mass% of additives in the total amount of electrolyte. In addition, the molar mass of LiTFSA is
`
`much greater than that of LiNO3 (287.1 g/mol vs. 68.9 g/mol).
`
`Therefore, considering all this information in totality, it would have been obvious to one
`
`of ordinary skill in the art before the effectivefiling date of the claimed invention to use the
`
`LiTFSA at an amountof 5.25 mol/L (within the suggested range of Kawai) of Kawai as the
`
`electrolyte in Kondo for the purpose of obtaining the benefits of the salt not decomposition and
`
`having a high potential window. Therefore, in the example E3, replacing the electrolyte and
`
`electrolyte amount with LiTFSA (287.08 g/mol, 5.25M), the amount of water by massis about
`
`40% (1000/(1000+23.62+(287.08*5.25))), which is within the claimed amount of 8-50% by
`
`mass. In addition, Kawai further teaches adding additives to the electrolyte (10 mass%),
`
`potentially further reducing the total relative amount of water in the electrolyte, further
`
`rendering obvious the claim limitation.
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 7
`
`Regarding claim 11, modified Kondo discloses all of the claim limitations as set forth
`
`above. However, Kondo does not explicitly disclose wherein a content ratio of the water to the
`
`lithium salt in the electrolyte solution is 4:1 or lower by molar ratio.
`
`Kawai further teaches that the electrolyte solution contains water as a solvent and has a
`
`composition in which an amountof the solvent is not greater than 4 mol with respect to 1 mole
`
`of an alkali metal salt (abstract). Kawai teaches that when the amountof alkali metal salt and
`
`the solvent are within this range, decomposition of alkali metal salt does not occur, and the
`
`electrolyte solution has a potential window exceeding the potential window (stable potential
`
`range) of pure water and preferably has a potential range of not less than 2V ([0080]). Kawai
`
`provides examples using LiTFSA (the lithium imide) in amounts of 5.25 mol/L ([0046]-[0050]).
`
`As such, it would have been obvious to one of ordinaryskill in the art before the
`
`effective filing date of the claimed invention to use the ratio of 4:1 or lower by molar ratio of
`
`water to lithium salt, as suggested by Kawai, as the ratio of water to lithium salt in Kondo for
`
`the purpose of obtaining the benefits of the salt not decomposition and having a high potential
`
`window.
`
`Regarding claim 12, modified Kondo discloses all of the claim limitations as set forth
`
`above. However, Kondo does not explicitly disclose the electrolyte further comprising at least
`
`one of a fluorophosphates salt, a carboxylic anhydride, an alkaline earth metal salt, and a sulfur
`
`compound.
`
`Kawai further teaches that the electrolyte solution containing other components
`
`([0083]). Kawai suggests adding characteristics improvement additives in the range of 0.01 to 5
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 8
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`mass%, and said additives include carboxylic anhydrides, and sulfur-containing compounds
`
`([0086)).
`
`It would have been obvious to one of ordinaryskill in the art before the effectivefiling
`
`date of the claimed invention to combine the carboxylic anhydrides and/or sulfur-containing
`
`compounds of Kawai with the electrolyte of modified Kondo for the purpose of improving cycle
`
`characteristics and capacity retention characteristics after storage at a high temperature
`
`([0086)).
`
`Regarding claims 14 and 16, modified Kondo discloses all of the claim limitations as set
`
`forth above. Kawai teaches diglycolic anhydride ([0086]) which decomposes into diglycolic acid
`
`in water, which has the following structural formula:
`
`MHoo0seJ
`
`As such,the diglycolic acid meets the limitations of claim 14 (wherein R2 and R3 each
`
`independently represent an alkanediyl group having 1 carbon) and claim 15 (wherein R2 and R3
`
`represents a methylene group [-CH2-].
`
`Conclusion
`
`5.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to JACOB BUCHANAN whosetelephone number is (571)270-1186.
`
`The examiner can normally be reached M-F 8:00-5:00 PM (ET).
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 9
`
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`
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`
`/JACOB BUCHANAN/
`Examiner, Art Unit 1725
`
`/JONATHAN CREPEAU/
`Primary Examiner, Art Unit 1725
`
`