www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/614,352
`
`11/25/2021
`
`HIDEO SAKATA
`
`083710-3702
`
`3458
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr
`Suite 500
`McLean, VA 22102
`
`USYATINSKY, ALEXANDER
`
`1727
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/22/2024
`
`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):
`USPTOmail @rimonlaw.com
`
`eofficeaction @appcoll.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`5a) Of the above claim(s) _ is/are withdrawn from consideration.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) 1-7 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) The drawing(s) filed on 11/25/2021 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)L) None ofthe:
`b)L) Some**
`a)Y) 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. |
`3.2.) 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 11/25/2021,
`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 20240517
`
`Application No.
`Applicant(s)
`171614,352
`SAKATAet al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`ALEXANDER USYATINSKY
`1727
`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 11/25/2021.
`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: 17/614,352
`Art Unit: 1727
`
`Page 2
`
`DETAILED ACTION
`
`1.
`
`The present application, filed on or after March 16, 2013,
`
`is being examined
`
`underthefirst inventor to file provisions of the AIA.
`
`Priority
`
`2.
`
`Acknowledgement has been madeof applicant’s claim for priority under 35 USC
`
`119 (a-d). The certified copy has been filed on 11/25/2021.
`
`Information Disclosure Statement
`
`3.
`
`The Information Disclosure Statement (IDS) filed 11/25/2021 has been placed in
`
`the application file and the information referred to therein has been considered.
`
`Drawings
`
`4.
`
`The drawings received 11/25/2021 are acceptable for examination purposes.
`
`Claim Rejections - 35 USC § 102
`
`5.
`
`The following is a quotation of the appropriate paragraphs of pre-AlA 35 U.S.C.
`
`102 that form the basis forthe rejections under this section madein this Office action:
`
`A person shall be entitled to a patent unless —
`
`(bo) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on salein this country, more than one year prior to the date of application
`for patentin the United States.
`
`6.
`
`Claims 1 rejected under pre-AlA 35 U.S.C. 102(a)(1) as being anticipated by of
`
`WO 2017090231 to Nomoto (Nomoto, US 2018/0261403 is used as English
`
`language equivalent).
`
`7.
`
`Regarding claims 1 and 3, Nomoto discloses an electrochemical device
`
`(Abstract) comprising: a positive electrode including a positive electrode active material;
`
`a negative electrode including a negative electrode active material; and an electrolytic
`
`

`

`Application/Control Number: 17/614,352
`Art Unit: 1727
`
`Page 3
`
`solution, wherein: the positive electrode active material contains a conductive polymer
`
`(Abstract, para 57), the conductive polymeris configured to be doped and dedoped with
`
`anions (Abstract, para 57,58), the electrolytic solution containsafirst salt of a lithium
`
`ion andafirst anion (Li(NFSOz)2, para 36) and a secondsalt of a lithium ion anda
`
`second anion (LiPFe ,re claim 3), and thefirst anion is a bis(sulfonyl)imide anion
`
`containing fluorine (para 36). Please note Nomoto discloseslithium compounds may be
`
`used alone, or may be used in combination of two or more of these lithium compounds
`
`(para 23).
`
`8.
`
`9.
`
`Regarding claim 2, Nomoto discloses Li(NFSOz)2 para 36).
`
`Regarding claim 6, Nomoto discloses a polyaniline (para 23).
`
`Claim Rejections - 35 USC § 103
`
`A patent fora 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 suchthat the claimed invention as a whole would have
`been obvious beforethe effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall notbe
`negated by the manner in whichthe invention was made.
`
`10.
`
`This application currently namesjoint inventors.
`
`In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was
`
`commonly ownedasof the effective filing date of the claimed invention(s) absent any
`
`evidenceto 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
`
`ownedas 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.
`
`

`

`Application/Control Number: 17/614,352
`Art Unit: 1727
`
`Page 4
`
`11.
`
`Regarding claim 4, Nomoto discloses that a concentration of lithium salts,
`
`which can be used single or in combination is in the range from 0.2 mol/L to 4mol/L
`
`(Nomoto para 36). In the case where the claimed ranges “overlap or lie inside ranges
`
`disclosed by the prior art” a case of obviousness exists MPEP 2144.05.It would have
`
`been obvious to oneorordinary skill in the art before the effectivefiling date of the
`
`claimedinvention to optimize a total concentration of first and second anions based on
`
`range disclosed by Nomoto in order to produce long-life electrochemical device.
`
`
`
`12.|Regarding claim 5, , Nomoto discloses that a concentration oflithium salts,
`
`which can be used single or in combination is in the range from 0.2 mol/L to 4mol/L
`
`(Nomoto para 36). In the case where the claimed ranges “overlap or lie inside ranges
`
`disclosed by the prior art” a case of obviousness exists MPEP 2144.05.
`
`It would have
`
`been obvious to oneorordinary skill in the art before the effectivefiling date of the
`
`claimed invention to optimize aconcentration of the first anion based on range
`
`disclosed by Nomoto in order to produce long-life electrochemical device.
`
`13.
`
`Regarding claim 7, modified Kobayakawadiscloses a process of dedoping of
`
`the polyaniline ( Nomoto, para 56, 57), including a step of washing (para 57). Modified
`
`Kobayakawa does not expressly disclose wherein SO4°- is contained in the
`
`electrochemical device at a massratio of less than or equal to 1000 ppm with respect to
`
`a mass of the conductive polymer, howeverit would have been obvious to one or
`
`ordinary skill in the art before the effectivefiling date of the claimed invention to
`
`minimize the amount of SO4?in order to achieve maximum doping with first anion in
`
`following step.
`
`

`

`Application/Control Number: 17/614,352
`Art Unit: 1727
`
`Page 5
`
`14.
`
`Alternatively, Claim 1-7 are rejected under 35 U.S.C. 103 as obvious over
`
`US 2013/0252096 to Kobayakawa (Kobayakawa) in view of WO 2017090231 to
`
`Nomoto (US 2018/0261403 is used as English language equivalent).
`
`15. Regarding claims 1 and 3, Kobayakawadiscloses an electrochemical device
`
`(Title) comprising: a positive electrode including a positive electrode active material; a
`
`negative electrode including a negative electrode active material; and an electrolytic
`
`solution (claim 1), wherein: the positive electrode active material contains a conductive
`
`polymer(claims 1, 5)
`
`the conductive polymeris configured to be doped (claim 3) and
`
`dedoped (implicitly) with anions, the electrolytic solution contains (a) a first salt of a
`
`lithium ion and a first and,anion such as LiIN(SOzC2Fs)z2 or LIN(SO2CFs)2; a second
`
`salt of a lithium ion (claim 5) and a second anion (LIPFe, para 43 re claim 3). Regarding
`
`“the limitation: configured to be... dedoped” since conductive polymer of Kobayakawa
`
`is substantially similar to that of the instant Application and doped with the same anionit
`
`is inherently configured to be dedoped (Products of identical chemical composition
`
`cannot have mutually exclusive properties, and thus, the claimed property (i.e., the
`
`specific output energy density),
`
`is necessarily present in the prior art material. The
`
`courts haveheld that “[p]roducts of identical chemical composition cannot have mutually
`
`exclusive properties.” A chemical composition and its properties are inseparable.
`
`Therefore,if the prior art teaches the identical chemical structure, the properties
`
`applicant discloses and/or claims are necessarily present.
`
`/n re Spada, 911 F.2d 705,
`
`709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112). Kobayakawa does
`
`not expressly disclose wherein thefirst anion is a bis(sulfonyl)imide anion containing
`
`fluorine.
`
`

`

`Application/Control Number: 17/614,352
`Art Unit: 1727
`
`Page 6
`
`16.|Nomoto teaches an electrochemical device (Abstract), comprising a positive
`
`electrode and a negative electrode, wherein the positive electrode contains a
`
`conductive polymer (Abstract), wherein the conductive polymeris polyaniline (para 23)
`
`doped with anion (para 57) and an electrolyte solution containing lithium salts such as
`
`LiIN(SOzC2Fs)2 or LIN(SO2CF3)2 or Li(NFSO2)2 and LiPFe. (para 36). Nomoto also
`
`teacheslithium compounds may be used alone, or may be used in combination of two
`
`or more of theselithium compounds (para 36). Therefore, the use combination of
`
`Li(NFSOz)2 or LIN(SOz2CFs3)2 in combination LiPFe (secondlithium salt) in the battery
`
`with the positive electrode comprising polyaniline is disclosed by Nomoto. Oneskilled
`
`in the art would easily conclude that Li(NFSOz)2 and LiN(SO2CFs3)2 can be used in
`
`combination or mutually replaceable.
`
`It would have been obvious to one or ordinary skill
`
`in the art before the effective filing date of the claimed invention to modify the electrolyte
`
`solution Kobayakawa by adding Li(NFSO2)2 or replacing LiN(SO2CFs)2 with
`
`Li(NFSO2)2 (first lithium salt) as taught by Nomoto because The simple substitution of
`
`one known elementfor anotheris likely to be obvious when predictable results such as
`
`long-life electrochemical device are achieved. See KSRInternational Co. v. Teleflex
`
`Inc., 550 U.S. __,_, 82 USPQ2d 1385, 1395 — 97 (2007) (see MPEP § 2143, B.).
`
`17.
`
`Regarding claim 2, modified Kobayakawadiscloses Li(NFSOz)2 (Nomoto, para
`
`36).
`
`18.|Regarding claim 4, modified Kobayakawadiscloses that a concentration of
`
`lithium salts, which can be used single or in combination is in the range from 0.2 mol/L
`
`to 4mol/L (Nomoto para 36). In the case where the claimed ranges “overlap orlie inside
`
`ranges disclosed by the prior art” a case of obviousness exists MPEP 2144.05.It would
`
`

`

`Application/Control Number: 17/614,352
`Art Unit: 1727
`
`Page 7
`
`have been obvious to oneor ordinary skill in the art before the effective filing date of the
`
`claimedinvention to optimize a total concentration of first and second anions based on
`
`range disclosed by Nomoto in order to produce long-life electrochemical device.
`
`19.
`
`Regarding claim 5, modified Kobayakawa discloses that a concentration of
`
`lithium salts, which can be used single or in combination is in the range from 0.2 mol/L
`
`to 4mol/L (Nomoto para 36). In the case where the claimed ranges “overlap orlie inside
`
`ranges disclosed by the prior art” a case of obviousness exists MPEP 2144.05.
`
`It would
`
`have been obvious to oneor ordinary skill in the art before the effective filing date of the
`
`claimedinvention to optimize aconcentration of the first anion based on range
`
`disclosed by Nomoto in order to produce long-life electrochemical device.
`
`20.
`
`Regarding claim 6, modified Kobayakawa discloses a polyaniline (Kobayakawa,
`
`para 57).
`
`21.
`
`Regarding claim 7, modified Kobayakawa discloses a process of dedoping of
`
`the polyaniline ( Nomoto, para 56, 57), including a step of washing (para 57). Modified
`
`Kobayakawa does not expressly disclose wherein SO4- is contained in the
`
`electrochemical device at a massratio of less than or equal to 1000 ppm with respect to
`
`a mass of the conductive polymer, howeverit would have been obvious to one or
`
`ordinary skill in the art before the effectivefiling date of the claimed invention to
`
`minimize the amount of SO4?in order to achieve maximum doping with first anion in
`
`following step.
`
`Conclusion
`
`

`

`Application/Control Number: 17/614,352
`Art Unit: 1727
`
`Page 8
`
`1.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ALEXANDER USYATINSKY whose telephone number
`
`is (571)270-7703. The examiner can normally be reached IFP.
`
`Examinerinterviews 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 AutomatedInterview Request
`
`(AIR) at http:/Avwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Barbara Gilliam can be reached on 5712721330. 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
`
`obtained from Patent Center. Unpublished application information in Patent Centeris
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: httos://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-
`
`center for more information about Patent Center and
`
`https://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
`
`additional questions, contact the Electronic Business Center (EBC) at 866-217-9197
`
`(toll-free).
`
`If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/Alexander Usyatinsky/
`Primary Examiner, Art Unit 1727
`
`