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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
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`BUCHANAN,JACOB
`
`ART UNIT
`1725
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/21/2021
`
`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 and 9-16 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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 and 9-16 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C] 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)C The specification is objected to by the Examiner.
`11)M The drawing(s) filed on 11/12/2020 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)[M) 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
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.4% 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 11/12/2020,8/9/2021
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20211214
`
`Application No.
`Applicant(s)
`17/054,890
`Matsubaraetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`JACOB BUCHANAN
`1725
`Yes
`
`
`
`-- The MAILING DATEofthis 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)C) Responsive to communication(s) filed on
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)C) This action is FINAL. 2b)¥)This action is non-final.
`3)0) 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: 17/054,890
`Art Unit: 1725
`
`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.
`
`Claim Rejections - 35 USC § 103
`
`2.
`
`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-AlA 35 U.S.C. 102 and 103) is incorrect, any correction
`
`of the statutory basis for the rejection will not be considered a new ground of rejection if the
`
`prior art relied upon, and the rationale supporting the rejection, would be the same under
`
`either status.
`
`3.
`
`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 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
`effective filing date of the claimed invention to a person having ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`4.
`
`The factual inquiries for establishing a background for determining obviousness under
`
`35 U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 3
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`4. Considering objective evidence present in the application indicating obviousnessor
`
`nonobviousness.
`
`5.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was commonly
`
`ownedas ofthe effective filing 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
`
`effective filing dates of each claim that was not commonly owned as ofthe effective filing 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.
`
`6.
`
`Claims 1-4, 6, 9-13, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Kondo et al. (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
`
`([0063]), and a buffer solution comprising a weak acid ([0042]), wherein the weak acid includes
`
`at least one ofcitric acid, phthalic acid, a succinic acid, a maleic acid, among others ([0047]).
`
`Citric acid, phthalic acid, succinic acid, and maleic acid read on the claimed polycarboxylic acid
`
`having two or more 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, LiNO3, LiOH, LiCl, etc.
`
`(therefore, comprising a lithium ion, Li*) ([0063]), Kondo does not explicitly disclose the lithium
`
`salt comprising an imide anion.
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 4
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`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(C2Fs5SO2)(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 LiNOs3, 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 effectivefiling
`
`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.
`
`Regarding claim 2, modified Kondo discloses all of the claim limitations as set forth
`
`above. Kondo teaches phthalic acid, succinic acid, and maleic acid ([0047]), which meets the
`
`limitation of a dicarboxylic acid.
`
`Regarding claim 3, modified Kondo discloses all of the claim limitations as set forth
`
`above. Kondo teaches phthalic acid, succinic acid, and maleic acid ([0047]), which meets the
`
`limitation of the dicarboxylic acid represented by R(COOH)s, R represents a hydrocarbon group
`
`which may havea substituent, the hydrocarbon group may contain one or more selected from
`
`the group consisting of an oxygen atom, a nitrogen atom, a sulfur atom, a silicon atom, and a
`
`fluorine atom.
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 5
`
`Regarding claim 4, modified Kondo discloses all of the claim limitations as set forth
`
`above. Kondo teaches phthalic acid, succinic acid, and maleic acid ([0047]), which meets
`
`limitation of a chemical formula 1:
`
`
`
`
`
`Where R1 represents 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.
`
`Regarding claim 6, modified Kondo discloses all of the claim limitations as set forth
`
`above. Kondo teaches phthalic acid (R1 is arylene group, 6 carbons), succinic acid (R11 is
`
`alkanediyl group having 2 carbons), and maleic acid (R1 is alkenediyl having 2 carbons) ([0047]).
`
`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 polycarboxylic acid is 0.1% by
`
`mass or higher and 5.0% by massor lower based on a total amount of 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 massof 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
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 6
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`electrolyte solution. Further, it would have been obvious to use this amount(1.6%) of succinic
`
`acid in the total electrolyte solution in the combination because Kondo provides an example
`
`using this amount of succinic 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
`
`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 amountof electrolyte. In addition, the molar mass of LiTFSAis
`
`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 effective filing 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
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 7
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`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.
`
`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 ordinary skill 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 purposeof obtaining the benefits of the salt not decomposition and having a high potential
`
`window.
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 8
`
`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
`
`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 claim 15, modified Kondo discloses all of the claim limitations as set forth
`
`above. Kondo teaches succinic acid (R1 is ethylene group), and maleic acid (R11 is vinylene
`
`group) ([0047]).
`
`7.
`
`Claims 5, 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), as applied to claim 3
`
`above, and further in view of Takahata (US 2012/0141884).
`
`Regarding claim 5, modified Kondo discloses all of the claim limitations as set forth
`
`above. While Kondo teaches the electrolyte including phthalic acid, succinic acid, and/or maleic
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 9
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`acid ([0047]), modified Kondo does not explicitly disclose wherein the dicarboxylic acid is
`
`represented by formula 2:
`
` {Pana
`
`
`
`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.
`
`Takahata discloses a nonaqueous electrolyte lithium ion battery having excellent high-
`
`temperature characteristics (abstract). The electrolyte contains not only a lithium salt, but at
`
`least one type of dicarboxylic acid (abstract). Preferred examples of dicarboxylic acids to be
`
`used include oxalic acid, malonic acid, maleic acid, succinic acid, citraconic acid, glutaric acid,
`
`diglycolic acid (meets the limitation), cyclohexane dicarboxylic acid, phenyl succinic acid, and 2-
`
`phenyl glutaric acid ({0026]). Takahata teaches these additives provide excellent high
`
`temperature storage characteristics ([0013)).
`
`While Takahata teaches a nonaqueous electrolyte instead of an aqueous electrolyte,
`
`consider the following. Takahata states:
`
`[0010] In a battery using an electrolyte solution with a composition containing additives
`
`A and B,an effect of improved high-temperature storage characteristics can be stably obtained
`
`regardless of the water content inside the battery. This is because unlike an acid anhydride, a
`
`dicarboxylic acid does not react with water and decompose. Therefore, an electrolyte solution
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 10
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`with this kind of composition enables the concentration ratio between additives A and B to be
`
`remain fixed even if water should enter the battery during the assembly process, etc., so
`
`excellent high-temperature storage characteristics can be stably realized.
`
`That is, Takahata explains to one having ordinaryskill in the art that these dicarboxylic
`
`acids also work in aqueous conditions, like that as claimed or like that of Kondo or Kawai, and
`
`therefore reasonably suggests that all of those dicarboxylic acids are compatible in water based
`
`electrolytes. Even further, Takahata teaches lithium salts including Li(CF3SO2)2N (the claimed
`
`imide anion, and the electrolyte of Kawai) ({0023]), the positive electrode including any
`
`material capable of absorbing/desorbing lithium including lithium-containing composite oxides,
`
`olivine lithium phosphate including LiFePO, ([0038]-[0039]) (overlapping with composite oxides
`
`and olivine LiFfePO, of Kondo at [0070]-[0073]), and a negative electrode active material
`
`including carbon materials ([0050]) (overlapping with the graphite and carbons of Kawai
`
`[0090]). Therefore, there is substantial overlap within the positive active materials, negative
`
`active materials, and electrolyte salts of Takahata (nonaqueous electrolyte), and Kondo and
`
`Kawai (both aqueous electrolytes). Because of this substantial overlap, the teachings of
`
`Takahata regarding electrolyte additives can be applied to aqueous electrolytes (like that of
`
`Kondo and/or Kawai) because the active materials are the same or similar, and function in
`
`either nonaqueous or aqueous conditions, and Takahata teaches the carboxylic acids function
`
`in aqueous conditions.
`
`As such, it would have been obvious to one of ordinary skill 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 (as suggested by Takahata) because these carboxylic
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 11
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`acids are acids, are known to function in aqueous conditions, and are known to provide
`
`excellent high temperature storage characteristics in lithium batteries.
`
`Regarding claims 14 and 16, modified Kondo discloses all of the claim limitations as set
`
`forth above. Takahata teaches diglycolic acid ([0026]), which has the following structural
`
`formula:
`
`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
`
`8.
`
`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).
`
`Examiner interviews are available via telephone,in-person, and video conferencing
`
`using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is
`
`encouraged to use the USPTO Automated Interview Request(AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Basia Ridley can be reached on 571-272-1453. The fax phone number for the
`
`organization wherethis application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 17/054,890
`Art Unit: 1725
`
`Page 12
`
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`
`/JACOB BUCHANAN/
`Examiner, Art Unit 1725
`
`/JONATHAN CREPEAU/
`Primary Examiner, Art Unit 1725
`
`