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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/543,779
`
`08/19/2019
`
`Takahiro Takahashi
`
`P190813US00
`
`6860
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`MARTIN, ANGELA J
`
`1727
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/26/2022
`
`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):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-5,9 and 13-15 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-5,9 and 13-15 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J 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)[M) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a) All
`1.{¥] Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 4/4/22,
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220521
`
`Application No.
`Applicant(s)
`16/543 ,779
`Takahashi etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ANGELA J MARTIN
`1727
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s)filed on 5/9/22.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/543,779
`Art Unit: 1727
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the first
`
`inventor to file provisions of the AIA.
`
`This Office Action is responsive to the Amendment filed on 5/9/2022. Applicant has amended
`
`independent claims 1 and 4; and has added new dependentclaim 15.
`
`Continued Examination Under 37 CFR 1.114
`
`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 5/9/2022 has been entered.
`
`Claim Rejections - 35 USC § 112
`
`1.
`
`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-AlA), 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.
`
`

`

`Application/Control Number: 16/543,779
`Art Unit: 1727
`
`Page 3
`
`2.
`
`Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), 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 applications subject to pre-AlA 35 U.S.C. 112, the
`
`applicant), regards as the invention.
`
`3.
`
`The term “powder shape”in claim 15 is a relative term which renders the claim
`
`indefinite. The term “powder shape”is not defined by the claim, the specification does not
`
`provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art
`
`would not be reasonably apprised of the scope of the invention. The “substrate has a powder
`
`shape”is unclear, as a “powder shape”is indefinite.
`
`4.
`
`The term “ona side” in claims 1 and 4, is a relative term which renders the claim
`
`indefinite. The term “on a side” is not defined by the claim, the specification does not provide a
`
`standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be
`
`reasonably apprised of the scope of the invention. The amendment,“the inorganic material in
`
`the substrate is concentrated onaside of the collector” is unclear as “side” is a relative term
`
`which depends on directionality.
`
`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 ordinaryskill in the art to which the
`
`

`

`Application/Control Number: 16/543,779
`Art Unit: 1727
`
`Page 4
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`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`6.
`
`Claims 1-5, 8, 9, 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Maeda et al., WO 2013/047402, in view of Ono Yusukeetal., JP 2010-010117.
`
`Regarding claim 1, Maeda etal., teaches a non-aqueous electrolyte secondarybattery (pg. 2 of
`
`11, para. 4-5) comprising a positive electrode (pg. 2 of 11, para. 2) and a negative electrode (pg.
`
`2 of 11, para. 2), wherein at least any one ofthe positive electrode and the negative electrode
`
`comprises a collector (pg. 2 of 11, para. 7), an active material layer formed on the collector (pg.
`
`2 of 11, para. 7), an electrode tab joined to an exposed portion where the active material layer
`
`is not formed and the collector is exposed (pg. 3, para. 4), and a protective layer covering the
`
`electrode tab on the exposed portion and the exposed portion (pg. 3, para. 4-6), and the
`
`protective layer includes a substrate comprising a curable resin (pg. 3, para. 4-6; pg. 4, para. 2).
`
`Maeda et al., does not teach the substrate included in the protective layer comprises an
`
`inorganic material and wherein the inorganic material comprises at least a specific compound
`
`listed in claim 1.
`
`Ono Yusukeet al., teaches the substrate included in the protective layer comprises an inorganic
`
`material and wherein the inorganic material comprises at least zirconia, magnesium oxide,
`
`silicon nitride, titanium oxide, alumina (0046).
`
`Therefore, it would have been obvious to one of ordinary skill in the art to modify the battery of
`
`Maeda et al., because Ono Yusukeet al., teaches a filler to aid in insulation of the structure
`
`(0046). One of ordinaryskill in the art would have been motivated to make the modification to
`
`provide a filler to aid in insulation of the structure (0046).
`
`

`

`Application/Control Number: 16/543,779
`Art Unit: 1727
`
`Page 5
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`Regarding the location of the inorganic material in the substrate, although the prior art of
`
`record does not teach the inorganic material in the substrate is concentrated on a side of the
`
`collector, the location of the material would be an obvious matter of design choice (In re
`
`Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)).
`
`Regarding claim 2, Maeda et al., teaches wherein the electrode tab extends outside of a
`
`peripheral portion of the collector (pg. 3, para. 4-6), and the protective layer is also provided on
`
`at least a part of the electrode tab extending (pg. 3, para. 4-7).
`
`Regarding claim 3, Maeda et al., teaches comprising a battery case (outer package 18; exterior
`
`body 18) accommodating the positive electrode (pg. 7, “Encapsulation in exterior body”) and
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`the negative electrode (pg. 7, “Encapsulation in exterior body”), an opening of the battery case
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`(outer package 18; exterior body 18) andasealing plate sealing the opening (thermally welded)
`
`(pg. 7, “Encapsulation and sealing of electrolyte”), wherein the electrode tab extends outside of
`
`a peripheral portion of the collector (pg. 3, para. 4-7) and is contact with the sealing plate, and
`
`the protective layer is provided on at least a part of the electrode tab between a peripheral
`
`portion of the collector and the sealing plate (pg. 7, “Formation of protective layer’; pg. 6, para.
`
`15).
`
`Regarding claim 4, Maeda et al., teaches a positive electrode and a negative electrode (pg. 2 of
`
`11, para. 2), wherein at least any one of the positive electrode and the negative electrode
`
`comprises a collector (pg. 2 of 11, para. 7), an active material layer formed on the collector (pg.
`
`2 of 11, para. 7), and a protective layer covering a boundary portion between an exposed
`
`portion (pg. 3, para. 4-6), where the active material layer is not formed and the collector is
`
`exposed and the active material layer (pg. 3, para. 4-6), the exposed portion is disposed at a
`
`

`

`Application/Control Number: 16/543,779
`Art Unit: 1727
`
`Page 6
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`longitudinal end of the current collector, and the protective layer includes a substrate
`
`comprising a curable resin (pg. 3, para. 4-6; pg. 4, para. 2; pg. 6, para. 8).
`
`Maeda etal., does not teach the substrate included in the protective layer comprises an
`
`inorganic material and wherein the inorganic material comprises at least a specific compound
`
`listed in claim 1.
`
`Ono Yusukeet al., teaches the substrate included in the protective layer comprises an inorganic
`
`material and wherein the inorganic material comprises at least zirconia, magnesium oxide,
`
`silicon nitride, titanium oxide, alumina (0046).
`
`Therefore, it would have been obvious to one of ordinary skill in the art to modify the battery of
`
`Maeda et al., because Ono Yusukeet al., teaches a filler to aid in insulation of the structure
`
`(0046). One of ordinaryskill in the art would have been motivated to make the modification to
`
`provide a filler to aid in insulation of the structure (0046).
`
`Regarding the location of the inorganic material in the substrate, although the prior art of
`
`record does not teach the inorganic material in the substrate is concentrated onaside of the
`
`collector, the location of the material would be an obvious matter of design choice (In re
`
`Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)).
`
`Regarding claim 5, Maeda et al., teaches wherein the curable resin comprises at least any one
`
`of a thermosetting resin and a photocurable resin (pg. 3, para. 4-6; pg. 4, para. 2).
`
`Regarding claim 8, Maeda et al., teaches wherein the inorganic material in the substrateis
`
`concentrated on a side of the collector (Fig. 13) (ref. 13P curable resin; ref.1a active material
`
`layer).
`
`Regarding claim 9, Maeda etal., teaches wherein the curable resin comprises at least a
`
`

`

`Application/Control Number: 16/543,779
`Art Unit: 1727
`
`photocurable resin (pg. 3, para. 4-6; pg. 4, para. 2).
`
`Page 7
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`Regarding claim 12, Maeda etal., teaches wherein the inorganic material in the substrate is
`
`concentrated on a side of the collector (Fig. 13) (ref. 13P curable resin; ref.1a active material
`
`layer).
`
`Regarding claim 13, Maeda etal., teaches the protective layer is electrically insulative (pg. 3,
`
`para. 5-7; last para.).
`
`Regarding claim 14, Maeda etal., teaches the protective layer is electrically insulative (pg. 3,
`
`para. 5-7; last para.).
`
`Regarding claim 15, although Maeda etal., does not teach the inorganic material in the
`
`substrate has a particular shape, the shape of the material would be an obvious matter of
`
`design choice (In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)).
`
`Response to Arguments
`
`7.
`
`Applicant's argumentsfiled 5/9/2022 have been fully considered but they are not
`
`persuasive. The Applicant argues that “Amendment was discussed, including clarification of the
`
`limitation that the inorganic material in the substrate is concentrated on a side of the collector,
`
`as missing in the art of record.”
`
`However, “on a side”is a relative term which is neither clear in the Specification, nor in
`
`the Figures. The amendment, “the inorganic material in the substrate is concentrated on a side
`
`of the collector” is unclear, as “side” is a relative term which depends on directionality.
`
`

`

`Application/Control Number: 16/543,779
`Art Unit: 1727
`
`Page 8
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`Conclusion
`
`8.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ANGELA J MARTIN whose telephone number is (571)272-1288.
`
`The examiner can normally be reached 7am-4pm.
`
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`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Barbara Gilliam can be reached on 571-272-1330. The fax phone number for the
`
`organization wherethis application or proceeding is assigned is 571-273-8300.
`
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`
`ANGELA J. MARTIN
`
`Examiner
`
`Art Unit 1727
`
`

`

`Application/Control Number: 16/543,779
`Art Unit: 1727
`
`Page 9
`
`/ANGELA J MARTIN/
`Examiner, Art Unit 1727
`
`