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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
`
`15/997,984
`
`06/05/2018
`
`MaSSLki Hasegawa
`
`P180513U500
`
`2432
`
`38834
`
`759°
`
`10/03/20”
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`
`8500 Leesburg Pike
`SUITE 7500
`
`Tysons VA 22182
`
`GUPTA” SARIKA
`
`4181
`
`PAPERNUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/03/2019
`
`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)
`
`

`

`0,7709 A0170” Summary
`
`Application No.
`15/997,984
`Examiner
`SARIKA GUPTA
`
`Applicant(s)
`Hasegawa, Masaki
`Art Unit
`AIA (FITF) Status
`4181
`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
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)C] 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.
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`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)
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`Claim(s) fl is/are pending in the application.
`
`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`[:1 Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[j Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`C] Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.jjgptggQV/patents/init_event§/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 06/05/2018 is/are: a)C] 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
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`b)I:J Some**
`
`c)C] None of the:
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`1.. Certified copies of the priority documents have been received.
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`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)
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`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 20190829
`
`

`

`Application/Control Number: 15/997,984
`Art Unit: 4181
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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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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`Drawings
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`The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they
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`include the following reference character(s) not mentioned in the description: 9b. Corrected
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`drawing sheets in compliance with 37 CFR 1.121 (d), or amendment to the specification to add
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`the reference character(s) in the description in compliance with 37 CFR 1.121 (b) are required in
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`reply to the Office action to avoid abandonment of the application. Any amended replacement
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`drawing sheet should include all of the figures appearing on the immediate prior version of the
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`sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing
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`date of an application must be labeled in the top margin as either “Replacement Sheet” or “New
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`Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the
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`applicant will be notified and informed of any required corrective action in the next Office action.
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`The objection to the drawings will not be held in abeyance.
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`Claim Rejections - 35 USC § 103
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`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
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`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`

`

`Application/Control Number: 15/997,984
`Art Unit: 4181
`
`Page 3
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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 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.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459
`
`(1966), that are applied for establishing a background for determining obviousness under 35
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`U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`Claim 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over US
`
`2006/0073375A1 to Hong et al. ("HONG"), in View of US 2015/0056511 A1 to Takamatsu et al.
`
`(“TAKAMATSU”).
`
`Regarding claim 1, Hong discloses a secondary battery [Fig 1] [0012] comprising:
`
`a first electrode plate (111) having a first active material that is a positive active material,
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`such as lithium cobalt oxide (corresponding to the claimed “a positive electrode having a
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`positive electrode active material containing a...Co-and Li-containing transition metal
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`oxide” feature) ([0028]—[0029]),
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`a second electrode plate (112) having a second active material that is a negative
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`electrode active material (corresponding to the claimed “a negative electrode” feature)
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`([0028]—[0029]),
`
`

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`Application/Control Number: 15/997,984
`Art Unit: 4181
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`Page 4
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`an electrolyte (corresponding to the claimed “an electrolyte” feature) ([0031]),
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`a can (120) for containing the first electrode plate (111), the second electrode plate
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`(112), and the electrolyte (corresponding to the claimed “a package housing the positive
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`electrode, the negative electrode and the electrolyte) ([0027] and [0028]),
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`a safety vent (148) that may be made up of such a material that when the battery
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`temperature rises above a predetermined level, it temporarily contracts and opens the
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`vent hole (147), and for example, the safety vent (148) may be made up of such material
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`that is actuated at a temperature range of 70-150°C, in which gas is generally generated
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`in the battery and returns to the original shape when the temperature drops
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`(corresponding to a pressure relief valve actuated at a battery temperature of 145°C or
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`less for lowering an internal pressure of the package when the battery temperature
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`increases) ([0036]). It is noted that this limitation is a recitation of functional language,
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`where HONG is capable of the claimed function, as discussed above. Regarding product
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`and apparatus claims, when the structure recited in the reference is substantially
`
`identical to that of the claims, claimed properties or functions are presumed to be
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`inherent. The Courts have held that it is well settled that where there is a reason to
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`believe that a functional characteristic would be inherent in the prior art, the burden of
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`proof then shifts to the applicant to provide objective evidence to the contrary. See In re
`
`Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997)
`
`(see MPEP § 2112.01, |.).
`
`While HONG does not teach a value "a" obtained by expression (1) is 9.5 or less, nor
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`the claimed equation of
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`a = Remaining space ratio obtained by expression (2)/Pressure resistance
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`of pressure relief valve (kgf/cm2)
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`Expression (1)
`
`

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`Application/Control Number: 15/997,984
`Art Unit: 4181
`
`Page 5
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`Remaining space ratio = Space remaining within battery (cm3)/Rated capacity
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`(Ah) of secondary battery
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`Expression (2),
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`HONG does disclose that the temperature affects when the vent is opened and this
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`affects the pressure and space remaining (swelling) and safety of the battery [0012]. Thus,
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`Hong teaches that temperature, swelling (pressure and remaining space ratio), and safety of the
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`battery are all related.
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`It is noted that the equation of “a” as required by claim 1 requires that “a” is related to the
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`“remaining space ratio” and the “pressure resistance”, and thus “a” would necessarily be related
`
`to pressure and space remaining (i.e. swelling), as taught by Hong.
`
`As the safety of the battery and temperature are variables that can be modified, among
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`others, by adjusting the swelling of the battery (i.e. pressure/remaining space ratio), which
`
`would directly impact the equation of “a” as claimed and the value of “a” as claimed, with said
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`safety of the battery improving as the swelling of the battery is decreased (i.e. pressure is
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`decreased /remaining space ratio is increased), the swelling of the battery (i.e. the
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`pressure/remaining space ratio), and thus the calculation and value of “a”, would have been
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`considered a result effective variable by one having ordinary skill in the art before the effective
`
`filing date of the invention. As such, without showing unexpected results, the claimed equation
`
`and value of “a” cannot be considered critical. Accordingly, one of ordinary skill in the art before
`
`the effective filing date of the invention would have optimized, by routine experimentation, the
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`swelling of the battery (i.e. the pressure/remaining space ratio), and thus the calculation and
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`value of “a”, in the apparatus of HONG to obtain the desired balance between the safety of the
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`battery and temperature (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it
`
`has been held that where the general conditions of the claim are disclosed in the prior art,
`
`discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105
`
`USPQ 223). “[VV]here the general conditions of a claim are disclosed in the prior art, it is not
`
`

`

`Application/Control Number: 15/997,984
`Art Unit: 4181
`
`Page 6
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`inventive to discover the optimum or workable ranges by routine experimentation.” See In re
`
`Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value
`
`of a known result effective variable, without producing any new or unexpected results, is within
`
`the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980)
`
`(see MPEP § 2144.05, ||.).
`
`HONG teaches the positive electrode active material is lithium cobalt oxide (LiC002), but
`
`does not explicitly teach the positive electrode also containing Ni-.
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`Takamatsu teaches a cathode active material for a lithium ion secondary battery [0001].
`
`Takamatsu describes LipNixCoyanMqOrFa which can be used to replace LiC002 as a cathode
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`active material in the secondary battery (see paragraph [0064]).
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`It would have been obvious to one of ordinary skill in the art before the effective filing date
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`of the claimed invention to replace the LiC002 positive electrode active material of Hong with
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`the LipNiXCoyanMqOrFa active material as taught by Takamatsu, as Takamatsu teaches that the
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`LipNiXCoyanMqOrFa is a suitable material for a cathode active material that can also replace
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`LiC002. The selection of a known material, which is based upon its suitability for the intended
`
`use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416
`
`(CCPA 1960), Sinclair & Carroll Co. v. lnterchemical Corp., 325 US. 327, 65 USPQ 297 (1945),
`
`and MPEP § 2144.07.”
`
`Regarding Claim 2, modified HONG teaches the invention as discussed above in claim
`
`1. Modified Hong claim 1 teaches the positive electrode material is the LipNiXCoyanMqOrFa.
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`Further, Takamatsu discloses LiNio.8C00.16Alo.o402, where when element M contains a doped
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`element such as Al, the battery properties such as safety will be improved, which is desirable
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`(corresponds to the claimed “wherein the positive electrode active material containing the Ni-,
`
`

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`Application/Control Number: 15/997,984
`Art Unit: 4181
`
`Page 7
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`00-, and Li- containing transition metal oxide is the positive electrode active material containing
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`a Ni-, Co-, Al- and Li-containing transition metal oxide) ([0063], [0064]).
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`It would have been obvious to one of ordinary skill in the art before the effective filing date
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`of the claimed invention to take modified HONG, which teaches the positive electrode material
`
`of LipNiXCoyanMqOrFa, and select LiNio.8C00.16Alo.o402, where element “M” contains a doped
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`element of “Al” as taught by Takamatsu, as Takamatsu teaches that using doped element AI will
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`improve the safety of the battery.
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`HONG does not teach a value "a" obtained by expression (1) is 6.5 or less. HONG does
`
`disclose that the temperature affects when the vent is opened and this affects the pressure and
`
`space remaining (swelling) and safety of the battery [0012]. Thus, Hong teaches that
`
`temperature, swelling (pressure and remaining space ratio), and safety of the battery are all
`
`related.
`
`It is noted that the equation of “a” as required by claim 1 requires that “a” is related to the
`
`“remaining space ratio” and the “pressure resistance”, and thus “a” would necessarily be related
`
`to pressure and space remaining (i.e. swelling), as taught by Hong.
`
`As the safety of the battery and temperature are variables that can be modified, among
`
`others, by adjusting the swelling of the battery (i.e. pressure/remaining space ratio), which
`
`would directly impact the value of “a” as claimed, with said safety of the battery improving as the
`
`swelling of the battery is decreased (i.e. pressure is decreased /remaining space ratio is
`
`increased), the swelling of the battery (i.e. the pressure/remaining space ratio), and thus the
`
`value of “a”, would have been considered a result effective variable by one having ordinary skill
`
`in the art before the effective filing date of the invention. As such, without showing unexpected
`
`results, the claimed value of “a” cannot be considered critical. Accordingly, one of ordinary skill
`
`in the art before the effective filing date of the invention would have optimized, by routine
`
`

`

`Application/Control Number: 15/997,984
`Art Unit: 4181
`
`Page 8
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`experimentation, the swelling of the battery (i.e. the pressure/remaining space ratio), and thus
`
`the value of “a”, in the apparatus of HONG to obtain the desired balance between the safety of
`
`the battery and temperature (corresponding to the value of “a” obtained by expression (1) is 6.5
`
`or less), (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that
`
`where the general conditions of the claim are disclosed in the prior art, discovering the optimum
`
`or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). “[V\I]here
`
`the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the
`
`optimum or workable ranges by routine experimentation.” See In re AIIer, 220 F.2d 454, 456,
`
`105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result
`
`effective variable, without producing any new or unexpected results, is within the ambit of a
`
`person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP §
`
`2144.05, ||.).
`
`Regarding Claim 3, modified HONG teaches the invention as discussed above in claim
`
`1. Takamatsu further teaches the positive cathode having a composition of -
`
`LiNio_33C00.s7Mno_3002 [0064](corresponding to the claimed “the positive electrode active material
`
`containing Ni-, Co-, Mn- and Li- containing transition metal oxide) [0064].
`
`It would have been obvious to one of the ordinary skill in the art before the effective filing
`
`date of the claimed invention to take modified Hong, which teaches the positive electrode
`
`material of LipNiXCoyanMqOrFa, and use LiNio.33Coo.37Mno.3002 as taught by Takamatsu, because
`
`Takamatsu teaches LiNio_33Coo_37Mno_3002 as one of the possible compositions for the
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`LipNiXCoylVInquorFa cathode active material, and thus the LiNio.33Coo.37Mno.3002 is a known and
`
`suitable material for use as a cathode active material in a secondary battery. The selection of a
`
`known material, which is based upon its suitability for the intended use, is within the ambit of
`
`one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll
`
`Co. v. lnterchemical Corp., 325 US. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.”
`
`

`

`Application/Control Number: 15/997,984
`Art Unit: 4181
`
`Page 9
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`Regarding Claim 4, modified HONG teaches the invention as discussed above in claim
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`3. Hong in view of Takamatsu teaches the composition, LiNio_33Coo_37Mno_3002 [0064]. As
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`discussed above, LiNio.33Coo.37Mno.3002 means Li with a subscript with the value of “1”
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`(corresponds to 0<x<1.1), Ni.033 or Ni1..o_67 (corresponding to y50.7 and y= B+y+6=0.37+0.30+0),
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`C0037 (corresponding to B has the value .37 which falls within 0.1 s B s 0.4), Mnoso
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`(corresponding to 0.2 <y< 0.4), M is 0 (corresponds to 05650.1) and 02 (corresponds to 02)
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`([0064]). The values of the composition thus fall within the ranges of the claimed values.
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`Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US
`
`2006/0073375A1 to Hong et aI. ("HONG") in view of US 2015/0056511 A1 to Takamatsu et aI.
`
`(“TAKAMATSU”), as applied to claim 1 above, and further in view of WO 2015/136345 A1 to
`
`SAKA et al. ("SAKA").
`
`Regarding Claim 5, modified HONG teaches the positive electrode active material is
`
`LipNixCoyanMqOrFa, but does not explicitly teach the positive electrode also containing Zr
`
`and/or W.
`
`However, SAKA teaches a nonaqueous electrolyte secondary battery, and discloses a
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`positive electrode contains active material Zr. Saka teaches that Zr is set to 0.2 mol%, which
`
`falls within the claimed range (corresponds to “the positive electrode active material contains
`
`one or more of elements Zr and W, and a content of the elements in the positive electrode
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`active material is in a range of 0.1% by mole or more and 1.5% by mole or less”) ([0049] and
`
`[0050D.
`
`It would have been obvious to one of ordinary skill in the art before the effective filing
`
`date of the claimed invention to use the LipNiXCoyanMqOrFa positive electrode active material
`
`taught by modified Hong and further include 0.2 mol% of Zr as taught by Saka, because adding
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`Zr can increase the output performance of the secondary battery. [0027]—[0029].
`
`

`

`Application/Control Number: 15/997,984
`Art Unit: 4181
`
`Page 10
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`Claim 6 and 7 under 35 U.S.C. 103 as being unpatentable over US 2006/0073375A1 to
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`Hong et al. ("HONG") in view of US 2015/0056511 A1 to Takamatsu et al. (“TAKAMATSU”), as
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`applied to claim 1 above, and further in view of US2013/0052508 A1 to KIM et al. ("KIM").
`
`Regarding Claim 6, modified HONG teaches the positive electrode active material is
`
`LipNiXCoyanMqOrFa, but does not explicitly teach that the electrolyte contains a nonaqueous
`
`solvent that also contains a fluorine containing compound and falls in a range of 5% by volume
`
`or more and 15% by volume or less with respect to a total volume of the nonaqeuous solvent.
`
`However, KIM discloses a secondary battery wherein the electrolyte contains a
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`nonaqueous solvent containing a fluorine-containing compound which states the electrolyte may
`
`include a solvent including fluorinated ethylene carbonate which may be 10% volume or more
`
`based on the total volume of the solvent, which overlaps with the claimed range ([0020]).
`
`It would have been obvious to one of ordinary skill in the art before the effective filing
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`date of the invention to take the electrolyte, taught by modified Hong, and use a 10% volume or
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`more based on the total volume of the solvent of the fluorinated ethylene carbonate as a
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`nonaqueous solvent, as taught by Kim. Additionally, the use of a fluorine containing compound
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`is obvious because these materials are known in the art to be suitable for use in secondary
`
`batteries. “A second reference may be used to show that a feature is inherent in a first reference
`
`if the first reference is silent with regard to the inherent feature. However, the evidence must
`
`make clear that the missing characteristic is ‘necessarily present’ in the first reference.” In re
`
`Imes, No. 14-1206 (Fed. Cir. Jan. 29, 2015) (quoting Cont’l Can Co. USA, Inc. v. Monsanto C0,,
`
`948 F.2d 1264, 1268-69 (Fed. Cir. 1991)). It would have been obvious to one of ordinary skill in
`
`the art before the effective filing date of the invention to have selected overlapping portion of the
`
`ranges disclosed by the reference, because selection of overlapping portion of ranges has been
`
`held to be a prima facie case of obviousness. See MPEP § 2144.05.l.
`
`

`

`Application/Control Number: 15/997,984
`Art Unit: 4181
`
`Page 11
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`Regarding claim 7, modified HONG teaches the invention as discussed above in claim 6,
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`which discloses the secondary battery wherein the fluorine containing organic compound is
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`fluoroethylene carbonate which is also found in KIM, paragraph [0020].
`
`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to SARIKA GUPTA whose telephone number is (571 )272—9907. The
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`
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`free). If you would like assistance from a USPTO Customer Service Representative or access to
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`the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`

`

`Application/Control Number: 15/997,984
`Art Unit: 4181
`
`Page 12
`
`/sg/
`Examiner, Art Unit 4181
`
`/Lies| C Baumann/
`
`Primary Examiner, Art Unit 1726
`
`

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