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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 2231371450
`
`15/859,856
`
`01/02/2018
`
`Takayuki Shirane
`
`P171418US00
`
`6853
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`
`8500 Leesburg Pike
`SUITE 7500
`
`GONZALEZ RAMOS, MAYLA
`
`1721
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/01/2019
`
`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):
`
`patentmai1@ whda.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0,7709 A0170” Summary
`
`Application No.
`15/859,856
`Examiner
`MAYLA GONZALEZ RAMOS
`
`Applicant(s)
`Shirane et al.
`Art Unit
`1721
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from 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, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 01/02/2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)D This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`3)[:] An election was made by the applicant in response to 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s) fl is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible 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 PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 01/02/2018 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:
`
`a). All
`
`b)D Some**
`
`C)D None of the:
`
`1.. Certified copies of the priority documents have been received.
`
`2.[:] Certified copies of the priority documents have been received in Application No.
`
`3:] Copies of the certified copies of the priority documents have been received in 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 DateW.
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190925
`
`

`

`Application/Control Number: 15/859,856
`Art Unit: 1721
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA 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.
`
`Claim(s) 1-4 are currently pending.
`
`Status of Claims
`
`Claim Rejections - 35 USC § 1 12
`
`3.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION—The specification shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`4.
`
`Claims 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
`
`second paragraph, as being indefinite for failing to particularly point out and
`
`distinctly claim the subject matter which the inventor or a joint inventor, or for
`
`pre-AIA the applicant regards as the invention.
`
`Regarding claim 1
`
`The limitation “in a case where a discharge cut-off voltage of the nonaqueous
`
`electrolyte secondary battery is in a range of 2.5 V to 3.0 V, a part of the non-opposing
`
`region adjacent to a boundary between the opposing region and the non-opposing
`
`region has an electric potential plateau in a range of -0.02 V to +0.02 V relative to a
`
`negative electrode potential in the opposing region” is unclear and therefore renders the
`
`

`

`Application/Control Number: 15/859,856
`Art Unit: 1721
`
`Page 3
`
`claim indefinite.
`
`It is unclear if the conditions following the recitation “in a case” ever
`
`occur. The recitation “in a case” corresponds to an event/condition that is a possibility
`
`but may not necessarily occur. Therefore, the meets and bounds of the claims cannot
`
`be determined. Appropriate correction and clarification is required.
`
`Regarding claim 2
`
`The limitation “in a case where a discharge cut-off voltage of the nonaqueous
`
`electrolyte secondary battery is in a range of 2.5 V to 3.0 V, the part of the non-
`
`opposing region adjacent to the boundary between the opposing region and the non-
`
`opposing region has an electric potential plateau at 0.37 V (vs. Li/Li+) or lower” is
`
`unclear and therefore renders the claim indefinite.
`
`It is unclear if the conditions
`
`following the recitation “in a case” ever occur. The recitation “in a case” corresponds to
`
`an event/condition that is a possibility but may not necessarily occur. Therefore, the
`
`meets and bounds of the claims cannot be determined. Appropriate correction and
`
`clarification is required.
`
`Regarding claim 3
`
`The limitation “in a case where a discharge cut-off voltage of the nonaqueous
`
`electrolyte secondary battery is in a range of 2.5 V to 3.0 V, a negative electrode
`
`potential in the part of the non-opposing region adjacent to the boundary is 0.37 V (vs.
`
`Li/Li+) or lower” is unclear and therefore renders the claim indefinite.
`
`It is unclear if the
`
`conditions following the recitation “in a case” ever occur. The recitation “in a case”
`
`corresponds to an event/condition that is a possibility but may not necessarily occur.
`
`Therefore, the meets and bounds of the claims cannot be determined. Appropriate
`
`correction and clarification is required.
`
`

`

`Application/Control Number: 15/859,856
`Art Unit: 1721
`
`Regarding claim 4
`
`Page 4
`
`The limitation “in a case where a discharge cut-off voltage of the nonaqueous
`
`electrolyte secondary battery is in a range of 2.5 V to 3.0 V, a negative electrode
`
`potential in the part of the non-opposing region adjacent to the boundary is 0.37 V (vs.
`
`Li/Li+) or lower” is unclear and therefore renders the claim indefinite.
`
`It is unclear if the
`
`conditions following the recitation “in a case” ever occur. The recitation “in a case”
`
`corresponds to an event/condition that is a possibility but may not necessarily occur.
`
`Therefore, the meets and bounds of the claims cannot be determined. Appropriate
`
`correction and clarification is required.
`
`Claim Rejections - 35 USC § 102
`
`5.
`
`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 made in this Office action:
`
`A person shall 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 effective filing date of the claimed
`invention.
`
`6.
`
`Claim(s) 1-4 is/are rejected under 35 U.S.C. 102a1 as being anticipated by
`
`WO 2013/088540, Takahata et al. with US 20150030931 used as an English
`
`language equivalent.
`
`Regarding claim 1
`
`Takahata teaches a nonaqueous electrolyte secondary battery [Abstract, Figs. 1
`
`and 4, paragraph 0127] comprising:
`
`a positive electrode (30) [Figs. 1 and 4, paragraph 0130],
`
`

`

`Application/Control Number: 15/859,856
`Art Unit: 1721
`
`Page 5
`
`a negative electrode (50) [Figs. 1-4, paragraphs 0052, 0058 and 0146],
`
`a separator (70) disposed between the positive electrode (30) and the negative
`
`electrode (50), and a nonaqueous electrolyte [Figs. 1-4, paragraphs 0148 and 0158-
`
`0159L
`
`wherein the negative electrode (50) includes an opposing region (see width b1)
`
`opposes the positive electrode (30) with the separator (70) disposed therebetween [Fig.
`
`4 and paragraph 0148] and a non-opposing region (corresponding to the region
`
`between widths a1 and b1 , where the width b1 of negative electrode, 50, is larger than
`
`width a1 of the positive electrode, 30) that does not oppose the positive electrode (30)
`
`but opposes the separator (70) [Fig. 4 and paragraph 0148].
`
`With regards to the limitation “in a case where a discharge cut-off voltage of the
`
`nonaqueous electrolyte secondary battery is in a range of 2.5 V to 3.0 V, a part of the
`
`non-opposing region adjacent to a boundary between the opposing region and the non-
`
`opposing region has an electric potential plateau in a range of -0.02 V to +0.02 V
`
`relative to a negative electrode potential in the opposing region”, because the structure
`
`of the prior art is the same as the one claimed, the claimed properties or functions are
`
`presumed to be inherent.
`
`It has been held that when the structure recited in the reference is substantially
`
`identical to that of the claims, claimed properties or functions are presumed to be
`
`inherent (see MPEP § 2112.01). “When the PTO shows a sound basis for believing that
`
`the products of the applicant and the prior art are the same, the applicant has the
`
`burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d
`
`1655, 1658 (Fed. Cir. 1990).
`
`

`

`Application/Control Number: 15/859,856
`Art Unit: 1721
`
`Page 6
`
`Further, examiner notes that the materials by which the positive electrode, the
`
`negative electrode, the separator and the electrolyte described in paragraphs 0038,
`
`00460047 and 0050-0054 of the instant specification are the same as those described
`
`in the prior art for said layers e.g., natural/synthetic graphite negative electrode, LiCoO2
`
`positive electrode, polypropylene separator, and an electrolyte containing a solvent and
`
`a lithium salt [see paragraphs 0050, 0058, 0066, 0075, 0132, 0139-0141, 0148, and
`
`0158-0159].
`
`The court has held that products of identical chemical composition can not 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. In re Spada, 911
`
`F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
`
`Regarding claim 2
`
`With regards to the limitation “in a case where a discharge cut-off voltage of the
`
`nonaqueous electrolyte secondary battery is in a range of 2.5 V to 3.0 V, the part of the
`
`non-opposing region adjacent to the boundary between the opposing region and the
`
`non-opposing region has an electric potential plateau at 0.37 V (vs. Li/Li+) or lower”,
`
`because the structure of the prior art is the same as the one claimed, the claimed
`
`properties or functions are presumed to be inherent.
`
`It has been held that when the structure recited in the reference is substantially
`
`identical to that of the claims, claimed properties or functions are presumed to be
`
`inherent (see MPEP § 2112.01). “When the PTO shows a sound basis for believing that
`
`the products of the applicant and the prior art are the same, the applicant has the
`
`

`

`Application/Control Number: 15/859,856
`Art Unit: 1721
`
`Page 7
`
`burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d
`
`1655, 1658 (Fed. Cir. 1990).
`
`Further, examiner notes that the materials by which the positive electrode, the
`
`negative electrode, the separator and the electrolyte described in paragraphs 0038,
`
`00460047 and 0050-0054 of the instant specification are the same as those described
`
`in the prior art for said layers e.g., natural/synthetic graphite negative electrode, LiCoO2
`
`positive electrode, polypropylene separator, and an electrolyte containing a solvent and
`
`a lithium salt [see paragraphs 0050, 0058, 0066, 0075, 0132, 0139-0141, 0148, and
`
`0158-0159].
`
`The court has held that products of identical chemical composition can not 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. In re Spada, 911
`
`F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
`
`Regarding claim 3
`
`With regards to the limitation “in a case where a discharge cut-off voltage of the
`
`nonaqueous electrolyte secondary battery is in a range of 2.5 V to 3.0 V, a negative
`
`electrode potential in the part of the non-opposing region adjacent to the boundary is
`
`0.37 V (vs. Li/Li.+) or lower”, because the structure of the prior art is the same as the
`
`one claimed, the claimed properties or functions are presumed to be inherent.
`
`It has been held that when the structure recited in the reference is substantially
`
`identical to that of the claims, claimed properties or functions are presumed to be
`I
`inherent (see MPEP § 2112.01). ‘When the PTO shows a sound basis for believing that
`
`

`

`Application/Control Number: 15/859,856
`Art Unit: 1721
`
`Page 8
`
`the products of the applicant and the prior art are the same, the applicant has the
`
`burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQZd
`
`1655, 1658 (Fed. Cir. 1990).
`
`Further, examiner notes that the materials by which the positive electrode, the
`
`negative electrode, the separator and the electrolyte described in paragraphs 0038,
`
`00460047 and 0050-0054 of the instant specification are the same as those described
`
`in the prior art for said layers e.g., natural/synthetic graphite negative electrode, LiCoO2
`
`positive electrode, polypropylene separator, and an electrolyte containing a solvent and
`
`a lithium salt [see paragraphs 0050, 0058, 0066, 0075, 0132, 0139-0141, 0148, and
`
`0158-0159].
`
`The court has held that products of identical chemical composition can not 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. In re Spada, 911
`
`F.2d 705, 709, 15 USPQZd 1655, 1658 (Fed. Cir. 1990)
`
`Regarding claim 4
`
`With regards to the limitation “in a case where a discharge cut-off voltage of the
`
`nonaqueous electrolyte secondary battery is in a range of 2.5 V to 3.0 V, a negative
`
`electrode potential in the part of the non-opposing region adjacent to the boundary is
`
`0.37 V (vs. Li/Li.+) or lower”, because the structure of the prior art is the same as the
`
`one claimed, the claimed properties or functions are presumed to be inherent.
`
`It has been held that when the structure recited in the reference is substantially
`
`identical to that of the claims, claimed properties or functions are presumed to be
`
`

`

`Application/Control Number: 15/859,856
`Art Unit: 1721
`
`Page 9
`
`inherent (see MPEP § 2112.01). “When the PTO shows a sound basis for believing that
`
`the products of the applicant and the prior art are the same, the applicant has the
`
`burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d
`
`1655, 1658 (Fed. Cir. 1990).
`
`Further, examiner notes that the materials by which the positive electrode, the
`
`negative electrode, the separator and the electrolyte described in paragraphs 0038,
`
`00460047 and 0050-0054 of the instant specification are the same as those described
`
`in the prior art for said layers e.g., natural/synthetic graphite negative electrode, LiCoO2
`
`positive electrode, polypropylene separator, and an electrolyte containing a solvent and
`
`a lithium salt [see paragraphs 0050, 0058, 0066, 0075, 0132, 0139-0141, 0148, and
`
`0158-0159].
`
`The court has held that products of identical chemical composition can not 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. In re Spada, 911
`
`F.2d 705, 709, 15 USPQZd 1655, 1658 (Fed. Cir. 1990)
`
`Conclusion
`
`7.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to MAYLA GONZALEZ RAMOS whose telephone number
`
`is (571)272-5054. The examiner can normally be reached on Monday - Thursday, 9:00-
`
`5:00 - EST.
`
`

`

`Application/Control Number: 15/859,856
`Art Unit: 1721
`
`Page 10
`
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`
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`
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`
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`
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`
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`
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`
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`
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`
`/MAYLA GONZALEZ RAMOS/
`
`Primary Examiner, Art Unit 1721
`
`