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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
`
`17/705,446
`
`03/28/2022
`
`HONAMI SAKO
`
`083710-3644
`
`5862
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`
`CANTELMO, GREGG
`
`1725
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/04/2024
`
`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*
`1-8 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`5a) Of the above claim(s) _ is/are withdrawn from consideration.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) 1-8 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)2 The specification is objected to by the Examiner.
`11) The drawing(s)filed on 3/28/2022 is/are: a)f¥) 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
`3/28/2022,10/6/2022.
`
`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 20240827
`
`Application No.
`Applicant(s)
`17/705,446
`SAKOet al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`GREGG CANTELMO
`1725
`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: 17/705,446
`Art Unit: 1725
`
`Page 2
`
`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined
`
`underthe first inventor to file provisions of the AIA.
`
`Priority
`
`1.
`
`Receipt is acknowledgedof certified copies of papers required by 37 CFR 1.55.
`
`Information Disclosure Statement
`
`2.
`
`The information disclosure statements filed March 28, 2022; October 6, 2022
`
`have been placedin the application file and the information referred to therein has been
`
`considered as to the merits.
`
`With respectto foreign language references with no translation of the document:
`
`“If no translation is submitted, the examiner will consider the information in view of the
`
`concise explanation and insofarasit is understoodon its face, e.g., drawings, chemical
`
`formulas, English language abstracts, in the same mannerthat non-English language
`
`information in Office searchfiles is considered by examiner in conducting searches.”
`
`See MPEP §609.04(a)(II) (D) and 37 CFR 1.98(a)(3)(ii).
`
`Drawings
`
`3.
`
`The drawings received March 28, 2022 are acceptable for examination purposes.
`
`4.
`
`The specification received March 28, 2022 has been reviewed for examination
`
`Specification
`
`purposes.
`
`Claim Rejections - 35 USC § 102
`
`

`

`Application/Control Number: 17/705,446
`Art Unit: 1725
`
`Page 3
`
`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-AIA 35 U.S.C. 102 and 103)is incorrect, any
`
`correction of the statutory basis (i.e., changing from AIA to pre-AlA) for the rejection will
`
`not be considered a new ground ofrejection if the prior art relied upon, and the rationale
`
`supporting the rejection, would be the same undereither status.
`
`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 personshall be entitled to a patent unless —
`
`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale, or otherwise available to the public before the effectivefiling date of the claimed
`invention.
`
`5.
`
`Claims 1, 2 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated
`
`by Baiet al. (CN107768717A).
`
`Asto claim 1, Bai discloses of a solid electrolyte usedin lithium ion batteries
`
`(para. [0004]), which would include:
`
`a positive electrode;
`
`a negative electrode; and
`
`an electrolyte disposed between the positive electrode and the negative
`
`electrode.
`
`The electrolyte includes a polymeric electrolyte, the polymeric electrolyte is
`
`composed of a polymer and a lithium salt of a fluorosulfonyl-group-containing
`
`compound, and the polymeris a polymer of a vinylene carbonate species (paras.
`
`[0011], [0036]) and the lithium salt of a fluorosulfonyl-group-containing compound
`
`includeslithium bis(fluorosulfonyl)imide (paras. [0012], [0036]).
`
`

`

`Application/Control Number: 17/705,446
`Art Unit: 1725
`
`Page 4
`
`Asto claim 2, in Example 4, the compound species formula for polyvinylene
`
`carbonate has the same compoundstructure as in claim 2 (para. [0036]).
`
`Asto claim 4, in Example 4, the polymeris polyvinylene carbonate (para.
`
`[0036]).
`
`6.
`
`Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cao
`
`et al. (CN110676433A).
`
`As to claim 1, Cao discloses of a solid electrolyte used in lithium ion batteries
`
`(para. [0027]), which would include:
`
`a positive electrode;
`
`a negative electrode; and
`
`an electrolyte disposed between the positive electrode and the negative
`
`electrode.
`
`The electrolyte includes a polymeric electrolyte, the polymeric electrolyte is
`
`composed of a polymer and a lithium salt of a fluorosulfonyl-group-containing
`
`compound, and the polymeris a polymer of a vinylene carbonate species (paras.
`
`[0017], [0052]) and the lithium salt of a fluorosulfonyl-group-containing compound
`
`includes both lithium bis(trifluoromethylsulfonyl)imide and lithium
`
`bis(fluorosulfonyl)imide (paras. [0017], [0052]).
`
`Cao teaches of a limited numberof suitable lithium salts including both LiTFSI
`
`and LIFSI and the guidance of the overall disclosure of the teachings of Cao sufficiently
`
`lead one of ordinary skill in the art to substitute the lithium salts for one anotherin the
`
`context of the claimed invention for obtaining a polymerelectrolyte comprising PVCA
`
`

`

`Application/Control Number: 17/705,446
`Art Unit: 1725
`
`Page 5
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`and thelithium salt. Therefore, substitution of LITFSI with LiIFSI in the example of para.
`
`[0052] is sufficiently anticipated by the teachings of the reference.
`
`Asto claim 2, in the example of para. [0052], the compound species formula
`
`for polyvinylene carbonate has the same compoundstructure as in claim 2.
`
`Asto claim 3, in the example of para. [0052], the polymeris only vinylene
`
`carbonate and therefore a polymer madeof vinylene carbonate in a single repeating
`
`unit, understood to be a homopolymer.
`
`Asto claim 4,in the example of para. [0052], the polymeris polyvinylene
`
`carbonate.
`
`7.
`
`Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cui et
`
`al. (CN107732297A).
`
`As to claim 1, Cui discloses of a solid electrolyte used in lithium ion batteries
`
`(para. [0041]), which would include:
`
`a positive electrode;
`
`a negative electrode; and
`
`an electrolyte disposed between the positive electrode and the negative
`
`electrode.
`
`The electrolyte includes a polymeric electrolyte, the polymeric electrolyte is
`
`composed of a polymer and a lithium salt of a fluorosulfonyl-group-containing
`
`compound, and the polymeris a polymer of a vinylene carbonate species (para. [0066])
`
`and thelithium salt of a fluorosulfonyl-group-containing compoundincludeslithium
`
`bis(fluorosulfonyl)imide (LiIFSI, para. [0066]).
`
`

`

`Application/Control Number: 17/705,446
`Art Unit: 1725
`
`Page 6
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`Asto claim 2, in the example of para. [0066], the compound species formula
`
`for polyvinylene carbonate has the same compoundstructure as in claim 2.
`
`Asto claim 3, in the example of para. [0066], the polymeris only vinylene
`
`carbonate and therefore a polymer madeof vinylene carbonate in a single repeating
`
`unit, understood to be a homopolymer.
`
`Asto claim 4,in the example of para. [0066], the polymeris polyvinylene
`
`carbonate.
`
`Claim Rejections - 35 USC § 103
`
`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-AIA 35 U.S.C. 102 and 103)is incorrect, any
`
`correction of the statutory basis (i.e., changing from AIA to pre-AlA) for the rejection will
`
`not be considered a new ground ofrejection if the prior art relied upon, and the rationale
`
`supporting the rejection, would be the same undereither status.
`
`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 effectivefiling date of the claimed invention 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.
`
`The factual inquiries for establishing a background for determining obviousness
`
`under 35 U.S.C. 103 are summarized asfollows:
`
`1. Determining the scope and contentsof the prior art.
`
`2. Ascertaining the differences betweenthe prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`

`

`Application/Control Number: 17/705,446
`Art Unit: 1725
`
`Page 7
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`4. Considering objective evidence presentin the application indicating
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`obviousness or nonobviousness.
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`8.
`
`Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Baiet
`
`al. (CN107768717A), Cao et al. (CN110676433A), or Cui et al. (CN107732297A) as
`
`applied to each of Bai, Cao, and Cui with respect to claim 1 above, and further in view
`
`of Katayamaetal. (JP 2013062038A).
`
`Neither Bai, Cao nor Cui teach of the polymeric electrolyte further including a
`
`nonaqueoussolvent in an amount of 40 mass %orless (claim 5), the solvent including
`
`at least one of certain cyclic carbonates, chain carbonates and sulfolanes (claims 6-7),
`
`particularly ethylene carbonate (claim 8).
`
`Katayama recognized the benefit of adding a non-aqueoussolventto a solid
`
`polymerelectrolyte in an amount of 50 mass %orless, preferably 5 mass % or more
`
`(para. [0043], claims 5-8) to improve the lithium ion conductivity of the polymersolid
`
`electrolyte. The teachings of 50 mass %orless and 5 mass %or moresufficiently
`
`overlaps with the instant range of 40 mass %orless, with specific values of 5 mass %
`
`and 10 mass %(noted preferably and more preferable lowerlimits, being explicitly
`
`recognized by Katayama). Generally, differences in rangeswill not support the
`
`
`patentability of subject matter encompassedbythe prior art unless there is evidence
`
`indicating such rangesis critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA
`
`1980). Inre Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Inre
`
`Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
`
`In the case where the
`
`claimed ranges “overlap orlie inside ranges disclosed by the prior art” a prima facie
`
`

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`Application/Control Number: 17/705,446
`Art Unit: 1725
`
`Page 8
`
`case of obviousnessexists.
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`In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);
`
`In re Woodruff, 919, F.2d 1575, 16 USPQ 2d 1934 (Fed. Cir. 1990).
`
`The non-aqueous solvent materials of Katayama are selected from similar cyclic
`
`and linear carbonates (para. [0044], claims 6-8) with various examples specifically
`
`employing ethylene carbonate (claim 8), a highly conventional cyclic carbonate known
`
`in the battery art.
`
`Therefore it would have been obvious to oneof ordinary skill in the art at the
`
`time the claimed invention was made to modify the solid polymerelectrolyte of Bai, Cao
`
`or Cui to further include a non-aqueoussolvent, particularly linear and chain carbonates
`
`including ethylene carbonate, in an amount of 50 mass%orless as taught by Katayama
`
`since it would have provided the predictable benefit of imparting improved lithium ion
`
`conductivity to the polymerelectrolyte of Bai, Cao or Cui. The selection of a known
`
`material based on its suitability for its intended use supported a prima facie obviousness
`
`determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ
`
`297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). MPEP §
`
`2144.07. See also KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S.
`
`2007).
`
`Conclusion
`
`9.
`
`The prior art madeof record and not relied upon is considered pertinent to
`
`applicant's disclosure. U.S. Patent Application Publication No. 2022/0344712 discloses
`
`in-situ polymerization of VC and various lithium salts. Chen NPL discloses PVC based
`
`polymer electrolytes.
`
`

`

`Application/Control Number: 17/705,446
`Art Unit: 1725
`
`Page 9
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`10.=Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to GREGG CANTELMO whosetelephone numberis
`
`(571)272-1283. The examiner can normally be reached Mon-Thurs 7am to 5pm.
`
`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:/Avwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, Basia Ridley can be reached on (571) 272-1453. The fax phone numberfor
`
`the organization wherethis 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: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
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`
`/GREGG CANTELMO/
`Primary Examiner, Art Unit 1725
`
`