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
`
`15/861,922
`
`01/04/2018
`
`Yuji Oura
`
`Pl7l4l lUSOO
`
`1081
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`
`TYSONS, VA 22182
`
`TAKEUCHI, YOSHITOSHI
`
`1723
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/22/2019
`
`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
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`following e—mail address(es):
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`patentmai1@ whda.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`15/861 ,922
`Examiner
`YOSHITOSHI TAKEUCHI
`
`Applicant(s)
`Oura et al.
`Art Unit
`1723
`
`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 3 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 August 7, 2019.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`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)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above Claim(s) 10 and 13 is/are withdrawn from consideration.
`
`
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`E] Claim(s)s_is/are allowed.
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`Claim(ss) 1 —9, 11— 12 and 14— 17 is/are rejected.
`
`[:1 Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`C] Claim(s
`* If any claims have been determined allowable, 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
`
`httpfiwww.”smogovmatentszinit_events[pph[index.'sp or send an inquiry to PPeredhack@g§ptg.ggv.
`
`Application Papers
`
`10):] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on January 4, 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)[j None of the:
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`1.. Certified copies of the priority documents have been received.
`
`2E] Certified copies of the priority documents have been received in Application No.
`
`3C] 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 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 20191114
`
`

`

`Application/Control Number: 15/861,922
`Art Unit: 1723
`
`Page 2
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`DETAILED ACTION
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`1.
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`2.
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`Claims 1—17 are presented for examination, wherein claims 10 and 13 are withdrawn.
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`Election/Restrictions
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`3.
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`Applicant’s election without traverse of Species A and D in the reply filed on August 7,
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`2019 is acknowledged.
`
`Claim Rejections - 35 US C §§ 102/103
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`4.
`
`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
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`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.
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`5.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`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.
`
`(a)(2)
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`the claimed invention was described in a patent issued under section 151,
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`or in an application for patent published or deemed published under section
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`122(b), in which the patent or application, as the case may be, names another
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`inventor and was effectively filed before the effective filing date of the claimed
`invention.
`
`6.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`A patent for a claimed invention may not be obtained, notwithstanding that the
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`claimed invention is not identically disclosed as set forth in section 102, if the
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`differences between the claimed invention and the prior art are such that the
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`

`

`Application/Control Number: 15/861,922
`Art Unit: 1723
`
`Page 3
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`claimed invention as a whole would have been obvious before the effective filing
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`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.
`
`7.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 US. 1 (1966), that are
`
`applied for establishing a background for determining obviousness under 35 U.S.C. 103 are
`
`summarized as follows:
`
`1.
`2.
`3.
`4.
`
`Determining the scope and contents of the prior art.
`Ascertaining the differences between the prior art and the claims at issue.
`Resolving the level of ordinary skill in the pertinent art.
`Considering objective evidence present in the application indicating
`obviousness or nonobviousness.
`
`8.
`
`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
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`owned as of the effective filing date of the claimed invention(s) absent any evidence to the
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`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly owned as of the effective filing date
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`of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
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`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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`9.
`
`Claims 1—2 and 7 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by or,
`
`in the alternative, under 35 U.S.C. 103 as obvious over Hong (US 2003/0232243).
`
`a.
`
`Regarding independent claim 1, Hong teaches a lithium secondary battery (e. g.
`
`110003), reading on “secondary battery,” said battery comprising:
`
`(1)
`
`a cathode plate (e. g. item 111, noting an apparent misprint calling item
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`111 an “anode plate”), said cathode plate made by coating positive active material on one
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`or both surfaces of a metal foil collector such as an aluminium foil collector, and drying
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`said positive active material (e.g. ‘][0055 plus e.g. Figures 1 and 3—5), reading on “a
`
`

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`Application/Control Number: 15/861,922
`Art Unit: 1723
`
`Page 4
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`positive electrode having a positive electrode current collector and a positive electrode
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`active material layer on the positive electrode current collectorf’
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`(2)
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`an anode plate (e. g. item 113, noting an apparent misprint calling item 113
`
`an “cathode plate”), said anode plate made by coating a negative active material on one
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`or both surfaces of a metal foil collector such as a copper foil collector, and drying said
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`negative active material (e.g. E), reading on “a negative electrode having a negative
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`electrode current collector and a negative electrode active material layer on the negative
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`electrode current collector;”
`
`(3)
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`a separator (e. g. item 115), said separator including at least one porous
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`polymer membrane of polyethylene (PE) or polypropylene (PP), and further including
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`adhesive portions to which said cathode plate and said anode plate are attached (e. g. E),
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`reading on “a separator interposed between the positive electrode and the negative
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`electrode?
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`(4)
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`an electrolyte (e, g. ljlfjl 0026, 29, 52, and 76), reading on “a electrolyte;”
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`(5)
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`a tab rnernher (e. g. iterns l43) welded, at a welded portion (e.g. itemlélfi),
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`to an uncoated portion (“grid”) of each of said cathode plate and anode plate (e.g. ‘ll‘ll
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`0055, til—69, ’7l, 74, 76—77, and 79—80 plus e.g. Figures 4—5 and 1047), reading on “a
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`positive electrode lead electrically connected to the positive electrode;” and,
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`to)
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`an insulating tape (e.g. item l47) covering said welded portion of said
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`cathode plate, at a portion of said uncoated portion of said cathode plate (e.g. llfll 0662 and
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`66—69 plus eg. Figures 7E—7H, 8, and lO—l7), reading on “an insulating tape that covers
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`part of the positive electrode” and “the positive electrode current collector has an exposed
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`

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`Application/Control Number: 15/861,922
`Art Unit: 1723
`
`Page 5
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`portion without the positive electrode active material layer, and at least part of the
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`exposed portion is covered with the insulating tape”
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`wherein said insulating tape is made of (6a) polyimide film, having characteristics
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`of heat-resistance and chemical inertness; and, (6b) a silicone—based adhesive used as an
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`adhesive to attach said insulating tape to said welded portion (cg. (fl 0619 and 67), said
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`adhesive located between said insulating tape and said welded portion is understood to be
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`a “layer,” reading on “the insulating tape has a substrate layer and an adhesive layer” and
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`“the substrate layer contains a polyimide.”
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`Alternatively, the limitation “layer” in “adhesive layer” does not patentably
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`distinguish the instant invention, e. g. MPEP § 2l44.04(lV)(B), wherein no evidence was
`
`provided in the initial disclosure indicating the configuration of a “layer” is significant.
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`Hong does not expressly teach the property “the adhesive layer has an electrical
`
`resistance of l kill/nun2 or more at Silt)” C.” However, said property would he expected
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`since Hong teaches a substantially identical composition and/or product (see e. g. supra,
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`compared. with instant specification, at e. g. 310023), so said property would be expected,
`
`eg. MPEP § 2i l2.tll(l—ll).
`
`b.
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`Regarding claim 2, Hong teaches the battery of claim 1, wherein said adhesive
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`may be silicone—based adhesive (e. g. supra), reading on “the adhesive layer contains at
`
`least one of a silicone, a melamine resin, or a phenolic resin.”
`
`c.
`
`Regarding claim 7, Hong teaches the battery of claim 1, wherein said tab member
`
`overlaps said uncoated portion (“grid”) of said cathode plate, and said tab member is
`
`welded at said overlapped welded portion to said uncoated portion of said cathode plate;
`
`and, said tab member having a portion projecting from said overlapping uncoated “grid”
`
`

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`Application/Control Number: 15/861,922
`Art Unit: 1723
`
`Page 6
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`portion of said cathode plate, wherein said insulating tape covers said welded portion
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`(e.g. supra and e.g. Figures 3—5, 7E—7H, and 10—17), reading on “the positive electrode
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`lead is connected to the exposed portion, the positive electrode lead has an extending
`
`portion that projects from the exposed portion and an overlapping portion that overlaps
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`the exposed portion, and the insulating tape covers at least part of the overlapping
`
`portion.”
`
`10.
`
`Claims 8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Hong (US
`
`2003/0232243).
`
`Regarding claims 8 and 11, Hong teaches the battery of claim 1, as provided supra,
`
`wherein said insulating tape is made of said polyimide film, having characteristics of heat-
`
`resistance and chemical inertness, and said, silicone—based adhesive (e.g. supra), reading on “an
`
`amount of the polyimide in the substrate layer is 80% by mass or more” (claim 8) and “an
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`amount of a silicone in the adhesive layer is 80% by mass or more” (claim l l).
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`11.
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`Claims 3—5, 8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Hong
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`(US 2003/0232243), as provided supra, in view of Caplinq PITO.5S (website, 2010).
`
`Regarding claims 3-5, 8, and 11, Hong teaches the battery of claim 1, wherein said
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`insulating tape is made of said polyimide film and, said silicone—based, adhesive, as provided
`
`supra, but does not expressly teach the limitations “the insulating tape has a thickness of 45 um,
`
`or less” (claim 3); “the adhesive layer has a thickness Tad of 5 am to 25 um” (claim 4); “the
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`substrate layer has a thickness Ta, of l0 pm to 30 um” (claim 5); “an amount or" the polyimide in
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`the substrate layer is 80% by mass or mere” (claim 8); or, “an amount of a silicone in the
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`adhesive layer is 80% by mass or more” (claim l l),
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`

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`Application/Control Number: 15/861,922
`Art Unit: 1723
`
`Page 7
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`However. Caplinq teaches a relatively inexpensive, commercially available polyimide
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`tape with a silicone adhesive, PlT0.5S, with a 0.5mil (13 um) polyimide film with a 1mil (25
`
`um) silicone adhesive.
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`As a result, it would have been obvious to use said PITO.5S polyimide tape of Caplinq as
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`the insulating tape of Hong, since Caplinq teaches said PlT0.5S polyimide tape is commercially
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`available, and relatively inexpensive, said PITO.5S polyimide tape having said polyimide film
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`with a thickness of 13 um and said silicone adhesive with a thickness of 25 pm thick silicone
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`adhesive, reading on said claimed limitations.
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`12.
`
`Claims 3—6, 8—9, 11—12, 15, and 17 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Hong (US 2003/0232243), as provided supra, in View of Iwata et al (US
`
`2012/0052295).
`
`d.
`
`Regarding claims 3-6, Hong teaches the battery of claim 1, wherein said
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`insulating tape is made of said polyimide film and said silicone—based adhesive, as
`
`provided supra, but does not expressly teach the limitations “the insulating tape has a
`
`thickness of 45 pm or less” (claim 3); “the adhesive layer has a thickness Tad of 5 am to
`
`25 ttrn” (claim 4); “the substrate layer has a thickness st of 10 pan, to 30 pan” (claim 5);
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`“a ratio 'l‘ad/Tgb of the thickness Tad of the adhesive layer to the thickness Ta, of the
`
`substrate layer is 0.2 to 1” (claim 6).
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`However, Iwata teaches an adhesive tape used for protecting electrode plates, said.
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`tape having a polyimide substrate, said substrate havin g a thickness of l2-25 pin, and an
`
`adhesive layer, said adhesive layer having a thickness of 226 pm {fl 6040, 64, 66, 58,
`
`and 71). Further, lwata teaches said tape is engineered to protect an electrode plate
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`

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`Application/Control Number: 15/861,922
`Art Unit: 1723
`
`Page 8
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`against tearing, even when a burr is in euntact therewith, and tn prevent a shurt—circuit
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`during a repeatte charging and discharging (e. g, $0067).
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`As a result, it would have been ebvieus te use the adhesive tape of lwata as the
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`insulating tape 0f Hung, since lwata teaches its adhesive tape has the same type (if
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`eumpusitien as that of Hung and further is engineered tn prutect an electrude plate against
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`tearing, even when a burr is in centact therewith, and/er te prevent a short—circuit during
`
`a repeated charging and discharging, reading on said limitations.
`
`e.
`
`Regarding claims 8-9, 15, and 17 Hong teaches the battery of claim 1, wherein
`
`lwata is applied as provided supra, and lwata teaches said substrate may be either a
`
`single layer er multilayers, said. substrate cempesed 0f resins including pelyimide,
`
`polystyrene, and rubber, wherein said pulyiinide may be Kapten (e. g. (H 0366-67, 73, and
`
`87-89), wherein the examiner takes notice that Kapten is an arematic pelyimide, wherein
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`a single layer 0f pelyimide reads on “an ameunt 0f the pelyimide in the substrate layer is
`
`80% by mass or more” (claim 8); a multilayers substrate cempesed of pelyimide resin
`
`and pelystyrene resin reads en “the substrate layer is made of a polymer alley (if the
`
`pelyimide and a resin other than the pelyimide” (claim 9); a pulyimide substrate made of
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`Kapten reads en “the pulyimide eentains at least one er" a whelly aruniatie pelyimide, a
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`semi—arematic pelyimide, er a thermesetting pelyimide” (claim 15); and, wherein a
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`multilayer substrate including an intermediate rubber resin layer located between said
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`pelyimide layer and said adhesive layer reads en “the insulating tape has an insulating
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`filler—centaining layer between the substrate layer and the adhesive layer” ifclaim 7) as
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`claimed ,
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`

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`Application/Control Number: 15/861,922
`Art Unit: 1723
`
`Page 9
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`f.
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`Regarding claims 11-12, Hong teaches the battery of claim 1, wherein lwata is
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`applied as provided supra, and lwata teaches said adhesive layer may be composed of a
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`base polymer composed oi a cross—linked silicone resin containing an as a main
`
`component and optionally a resin tackifier {llllll @057 and 60—61:), wherein the condition of
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`not having said optional resin tachifier reads on “an amount of a silicone in the adhesive
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`layer is 80% by mass or more” (claim 11); and, the condition of including said optional
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`resin tackit‘ier reads on “the adhesive layer is made oi a polymer alloy of a silicone and a
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`resin other than the silicone” (claim 12:).
`
`13.
`
`Claims 3—6, 8—9, 11—12, 14—15, and 16 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Hong (US 2003/0232243), as provided supra, in view of Kuo (US
`
`2012/0328863).
`
`g.
`
`Regarding claims 3-6, Hong teaches the battery of claim 1, wherein said
`
`insulating tape is made of said polyiniide film and said silicone—based adhesive, as
`
`provided supra, but does not expressly teach the limitations “the insulating tape has a
`
`thickness of 45 pm or less” (claim 3); “the adhesive layer has a thickness Tad of 5 pm to
`
`25 pm” (claim 4); “the substrate layer has a thickness st of 10 inn to 30 inn” (claim 5);
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`“a ratio 'l‘ad/Tgb of the thickness Tad of the adhesive layer to the thickness 'l‘gb of the
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`substrate layer is 0.2 to 1” (claim 6).
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`However, Kuo teaches an electrically insulating tape comprising a sheet—form
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`substrate having the releasable adhesive layer with excellent attachment characteristics
`
`(eg. llfll 0630 and l33), said substrate composed of polyether iniide and may optionally
`
`further include an additional synthetic resin, wherein said substrate having a thickness of
`
`generally of 5 to 100 pm (e.g $9105); and, said adhesive layer includes lOO parts by
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`

`

`Application/Control Number: 15/861,922
`Art Unit: 1723
`
`Page 10
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`weight of component (A) and 10—900 parts by weight of component (B), wherein
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`component (A) is an organopolysilexane resin—organepolysiloxane condensation reaction
`
`product and component (B) may be dimethylpelysilexaiie (e. g. (ll‘jl 0969 and 71—79),
`
`wherein said adhesive layer has a thickness of 2—60 pm (eg. “H @026 and 99—10l).
`
`As a result, it would have been obvious to use the electrical insulating tape of Kuo
`
`as the electrical insulating tape of Hong, since Kuo teaches said tape has excellent
`
`attachment characteristics, reading on said limitations.
`
`h.
`
`Regarding claims 8-9 and 15-16, Hong teaches the battery of claim 1, wherein
`
`Kuo is applied as provided supra, wherein Kuo teaches said substrate composed of
`
`pelyether imide alone reads on “an amount of the polyimide in the substrate layer is 80%
`
`by mass or more” (claim 8), “the polyimide contains at least one of a wholly arematic
`
`polyimide, a semi—aromatic polyirnide, or a thermosetting polyimide” {claim l5), and
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`“the polyimide contains at least one of polypyromellitimide, polyetherimide, or
`
`thermosetting polyimide formed by a reaction between bismaleimide and aromatic
`
`diamihes” (claim l6); plus, Kuo teaches said substrate cempesed of pelyether irnide with
`
`an additional optional synthetic. resin reads or: “the substrate layer is made of a polymer
`
`alloy of the polyimide and a resin other than the polyimide” (claim 9), “the polyimide
`
`contains at least one of a wholly aromatic polyimide, a semi—aromatic polyimide, er a
`
`thermesetting polyimide” (claim 15), and “the polyimide contains at least bite of
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`polypyromellitimide, polyetherimide, or thermosetting polyimide formed by a reaction
`
`between bismaleimide and aromatic diamihes” (claim 16).
`
`i,
`
`Regarding claims 11-12 and 14, Hong teaches the battery of claim 1, wherein Kilo
`
`is applied as provided supra, wherein Kuo teaches said adhesive layer includes 100 parts
`
`

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`Application/Control Number: 15/861,922
`Art Unit: 1723
`
`Page 11
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`by weight of component (A) and 10—900 parts by weight of component (B), wherein
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`component (A) is an organopolysiloxane resin—organopolysiloxane condensation reaction
`
`product and component (B) may be dimethylpolysiloxane, reading on “an amount of a
`
`silicone in the adhesive layer is 80% by mass or more” (claim 11); “the adhesive layer is
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`made of a polymer alloy of a silicone and a resin other than the silicone” (claim 12); and
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`“a silicone is dimethylpolysiloxanc or diphenylpolysiloxane” (claim 14).
`
`Conclusion
`
`14.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to YOSHITOSHI TAKEUCHI whose telephone number is
`
`(571)270—5828. The examiner can normally be reached on M—F, 9—6.
`
`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
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`supervisor, MILTON CANO can be reached on 313—446—4937. The fax phone number for the
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`organization where this application or proceeding is assigned is 571—273—8300.
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`15.
`
`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 http://pair—direct.uspto.gov. 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
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`Application/Control Number: 15/861,922
`Art Unit: 1723
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`Page 12
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
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`IYOSH HOSE-H TAKEUCHD’
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`Primary Examiner, Art Unit 1723
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