UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/859,856
`
`01/02/2018
`
`Takayuki Shirane
`
`P171418US00
`
`6853
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`
`TYSONS, VA 22182
`
`GONZALEZ RAMOS MAYLA
`
`1721
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/03/2020
`
`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)
`
`

`

`017/09 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 07/16/2020.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)[:] 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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s) His/are pending in the application.
`
`5a) Of the above Claim(s)
`
`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(ss)
`
`is/are allowed.
`
`Claim(ss) 1_—4 is/are rejected.
`
`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. 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)|:l The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 01/02/2018 is/are: a). accepted or b)(j 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)C] Some**
`
`c)C] None of the:
`
`1.. Certified copies of the priority documents have been received.
`
`2C] Certified copies of the priority documents have been received in Application No.
`
`3D 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)
`
`2) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] 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 20200830
`
`

`

`Application/Control Number: 15/859,856
`Art Unit: 1721
`
`Page 2
`
`DETAILED ACTION
`
`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.
`
`Status of Claims
`
`2.
`
`3.
`
`Claim(s) 1-4 are currently pending.
`
`Claim(s) 1 has been amended.
`
`Continued Examination Under 37 CFR 1. 1 14
`
`4.
`
`A request for continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
`
`application is eligible for continued examination under 37 CFR 1.114, and the fee set
`
`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
`
`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
`
`07/16/2020 has been entered.
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`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
`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.
`
`

`

`Application/Control Number: 15/859,856
`Art Unit: 1721
`
`Page 3
`
`5.
`
`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.
`
`4. Considering objective evidence present in the application indicating
`
`obviousness or nonobviousness.
`
`6.
`
`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 owned as of the 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 of the 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.
`
`7.
`
`Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable by
`
`US 2017/0256822, Onoda.
`
`Regarding claim 1
`
`Onoda teaches a nonaqueous electrolyte secondary battery [Abstract, Figs. 2—3,
`
`paragraph 009] comprising:
`
`a positive electrode (10) [Figs. 1-3, paragraph 0059-0061],
`
`a negative electrode (20) [Figs. 1-3, paragraph 0059-0061],
`
`

`

`Application/Control Number: 15/859,856
`Art Unit: 1721
`
`Page 4
`
`a separator (40) disposed between the positive electrode (10) and the negative
`
`electrode (20), and a nonaqueous electrolyte (60) [Figs. 1-3, paragraphs 0056 and
`
`0059-0064],
`
`wherein the negative electrode (20) includes an opposing region (see facing
`
`potions 24a, 24b and 24c) that opposes the positive electrode (10) with the separator
`
`(40) disposed therebetween [Fig. 3 and paragraphs 0061 -0062] and a non-opposing
`
`region (see non facing portions 24n) that does not oppose the positive electrode (10)
`
`but opposes the separator (40) [Fig. 3, paragraphs 0061 and 0063],
`
`wherein a part of the non-opposing region (24n) adjacent to a boundary
`
`(corresponding to boundary between portions 24b and 24h) is a region that extends
`
`toward the non-opposing region from the boundary by 1 mm to 2mm (the width of the
`
`non-opposing region is 0.5 mm or more and, preferably, 5 mm or less. Therefore the
`
`non-opposing region 24n includes a part that extends from the end of region 24b Le, a
`
`boundary, towards region 24n i.e., non-opposing region, by 0.5 mm or more) [Fig. 4 and
`
`paragraph 0063].
`
`In the case where the claimed ranges “overlap or lie inside ranges disclosed by
`
`the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,
`
`191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.
`
`Cir. 1990) [MPEP 2144.05].
`
`With regards to the limitation “configured such that a discharge cut-off voltage of
`
`the nonaqueous electrolyte secondary battery is in a range of 2.5 V to 3.0 V, and 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
`
`

`

`Application/Control Number: 15/859,856
`Art Unit: 1721
`
`Page 5
`
`V relative to a negative electrode potential in the opposing region”, a recitation of the
`
`intended use of the claimed invention must result in a structural difference between the
`
`claimed invention and the prior art in order to patentably distinguish the claimed
`
`invention from the prior art.
`
`It the prior art structure is capable of performing the
`
`intended use, then it meets the claim.
`
`Further, 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).
`
`Regarding claim 2
`
`With regards to the limitation “configured such that a discharge cut-off voltage of
`
`the nonaqueous electrolyte secondary battery is in a range of 2.5 V to 3.0 V, and 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”, a recitation of the intended use of the claimed invention must result in a
`
`structural difference between the claimed invention and the prior art in order to
`
`patentably distinguish the claimed invention from the prior art.
`
`If the prior art structure is
`
`capable of performing the intended use, then it meets the claim.
`
`

`

`Application/Control Number: 15/859,856
`Art Unit: 1721
`
`Page 6
`
`Further, 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).
`
`Regarding claim 3
`
`With regards to the limitation “Configured such that a discharge cut-off voltage of
`
`the nonaqueous electrolyte secondary battery is in a range of 2.5 V to 3.0 V, and 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”, a recitation of the intended use of the claimed
`
`invention must result in a structural difference between the claimed invention and the
`
`prior art in order to patentably distinguish the claimed invention from the prior art.
`
`If the
`
`prior art structure is capable of performing the intended use, then it meets the claim.
`
`Further, 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).
`
`Regarding claim 4
`
`With regards to the limitation “configured such that a discharge cut-off voltage of
`
`the nonaqueous electrolyte secondary battery is in a range of 2.5 V to 3.0 V, and 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”, a recitation of the intended use of the claimed
`
`invention must result in a structural difference between the claimed invention and the
`
`prior art in order to patentably distinguish the claimed invention from the prior art.
`
`If the
`
`prior art structure is capable of performing the intended use, then it meets the claim.
`
`Further, 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).
`
`Response to Arguments
`
`8.
`
`Applicant's arguments, see Remarks filed 07/16/2020, with respect to the
`
`rejection of claims 1-4 under 35 U.S.C. §102(a)(1) have been fully considered but they
`
`

`

`Application/Control Number: 15/859,856
`Art Unit: 1721
`
`Page 8
`
`are moot because the arguments do not apply to the combination of references being
`
`used in the current rejection.
`
`With regards to applicant’s argument that the method of manufacture (a second
`
`step of discharging the nonaqueous electrolyte battery to a battery voltage lower than a
`
`typical discharge voltage and then allowing the battery to stand for a predetermined
`
`time...) specifically imparts structure, Examiner respectfully disagrees.
`
`It is not clear how said second step results in a different structure. Applicant’s
`
`showings do not appear a method of manufacture but a to the use of the produced
`
`battery. The instant specification clearly distinguishes the production of the batteries
`
`from the tests, charge/discharge conditions performed thereafter. Applying a use on an
`
`old structure based on “unknown” properties dos not impart additional structure to the
`
`claims. The fact that a charge/discharge step is performed on a known/old structure
`
`does not differentiate the claimed battery from prior art that is identical in structure to
`
`that in the claims. There must be a structural difference between the claimed invention
`
`and the prior art in order to patentably distinguish the claimed invention from the prior
`
`art.
`
`If the prior art structure is capable of performing the intended use, then it meets the
`
`claim.
`
`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 USPQZd
`
`1655, 1658 (Fed. Cir. 1990).
`
`

`

`Application/Control Number: 15/859,856
`Art Unit: 1721
`
`Page 9
`
`Conclusion
`
`9.
`
`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.
`
`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, Allison Bourke can be reached on (303)297-4684. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see https://ppair-
`
`my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`If you would like assistance from a USPTO Customer Service Representative or access
`
`to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-
`
`272-1000.
`
`

`

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