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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
`
`16/580,195
`
`09/24/2019
`
`Takahito Nakayama
`
`P190960US00
`
`6791
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`RAYMOND,BRITTANY L
`
`1722
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/22/2022
`
`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*
`1-2 and 4-13 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-2 and 4-13 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) The drawing(s) filed on 9/24/2019 is/are: a)(¥) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`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 20220215
`
`Application No.
`Applicant(s)
`16/580 ,195
`Nakayamaetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`BRITTANY L RAYMOND
`1722
`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 2/8/2022.
`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: 16/580,195
`Art Unit: 1722
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA 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.
`
`Continued Examination Under 37 CFR 1.114
`
`2.
`
`A requestfor continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), wasfiled 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
`
`2/8/2022 has been entered.
`
`Claim Rejections - 35 USC § 103
`
`3.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections setforth 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.
`
`The factual inquiries for establishing a background for determining obviousness
`
`under 35 U.S.C. 103 are summarized asfollows:
`
`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.
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 3
`
`4. Considering objective evidence presentin the application indicating
`
`obviousness or nonobviousness.
`
`4.
`
`Claims 1, 4, 6, 8 and 10 is/are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Shiozaki (JP Publication 2016-127000) in view of Umeyama (U.S.
`
`Patent Publication 2015/0333324).
`
`Shiozaki discloses a secondary battery comprising a positive electrode, a
`
`negative electrode, and a non-aqueous electrolyte, wherein the positive electrode
`
`comprises a current collector, a protective layer comprising a conductive material and
`
`inorganic compound, and an active material layer (Paragraphs 0012, 0016, 0022,
`
`0023), as recited in claim 1 of the present invention. Shiozaki also discloses that the
`
`content of the inorganic compound in the protective layer is 90-99 wt% (Paragraph
`
`0023), as recited in claim 1 of the present invention. Shiozaki states that the active
`
`material layer can be a lithium transition metal oxide, such as LixCoO2 (Paragraph
`
`0018), as recited in claim 1 of the present invention. Shiozaki teachesthat the
`
`protective layer has a thickness of 1-5 microns (Paragraph 0022), as recited in claim 4
`
`of the present invention. Shiozaki also teaches that the inorganic compound can be
`
`manganeseoxide, silicon dioxide, titanium dioxide, and aluminum oxide (Paragraph
`
`0023), as recited in claim 6 of the present invention. Shiozaki states that the conductive
`
`material can be carbon black, acetylene black, ketjen black or graphite (Paragraph
`
`0019), as recited in claim 11 of the present invention.
`
`Shiozaki fails to disclose that a thermally expandable material, different from a
`
`conductive material, is present in the cathode and has larger volume expansion than the
`
`conductive material, that the expandable material is present in an amountof 0.1-5
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 4
`
`mass%, or 0.1-1 mass%, that an average particle size of the expandable materialis 1-
`
`500 microns and the expansion volume is 10-300 m/g.
`
`Umeyama discloses a nonaqueous electrolyte secondary battery comprising: a
`
`positive electrode, a negative electrode, and an electrolyte, wherein the positive
`
`electrode comprises a positive electrode current collector, and a sheet body on the
`
`current collector, wherein the sheet body comprises a mixture ofa first positive
`
`electrode active material including a lithium nickel composite oxide, a second positive
`
`electrode active material including a lithium iron phosphate, and expanded graphite
`
`(Paragraphs 0057, 0062, 0069), as recited in claim 1 of the present invention.
`
`Umeyama also discloses that the expanded graphite is added in the active
`
`material/expanded graphite mixture in an amountof 0.44-5.83 mass% (Paragraph
`
`0073), as recited in claims 1 and 8 of the present invention. Umeyama teaches that
`
`conductive materials other than the expanded graphite, such as acetylene black and
`
`Ketchen black, can be addedto the positive electrode mixture (Paragraph 0096, 0098),
`
`as recited in claim 1 of the present invention.
`
`It would be knownbyone of ordinaryskill
`
`in the art that expanded graphite has larger volume expansion than any of the
`
`conductive agents listed above, as recited in claim 1 of the present invention.
`
`Umeyama also teachesthat the expanded graphite can have an average particle size of
`
`1-20 microns and that the expanded graphite used can be BSP-5AS, BSP-15AS, BSP-
`
`20AS from Chuetsu Graphite Works Co, Ltd (Paragraph 0144), as recited in claim 10 of
`
`the present invention.
`
`It would have been knownby one of ordinary skill in the art that
`
`these types of expanded graphite have an expansion volume of between 10 and 300
`
`mL/g, as recited in claim 10 of the present invention.
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 5
`
`It would have been obvious to one of ordinary skill in the art, before the effective
`
`filing date of the present invention to have included an expanded graphite in the positive
`
`electrode active material layer of Shiozaki, in addition to the conductive agent, because
`
`Umeyama teaches that this material improves the output characteristics at a low state of
`
`charge.
`
`It also would have been obvious to one of ordinary skill in the art to have
`
`included the expanded graphite in the amount of 1-5 wt% because Umeyama teaches
`
`that this amount allows for the improvement of battery capacity. Finally, it would have
`
`been obvious to one of ordinary skill in the art to have used an expanded graphite
`
`having a particle size of 1-500 microns and an expansion volume of 10-300 mL/g
`
`because Umeyama teaches that this results in improved properties of the electrode and
`
`improved capacity of the battery.
`
`5.
`
`Claims 2, 5, 7, 9 and 12 is/are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Shiozaki (JP Publication 2016-127000) in view of Umeyama (U.S.
`
`Patent Publication 2015/0333324) and Kuzuo (JP Publication 2001 -332245).
`
`Shiozaki discloses a secondary battery comprising a positive electrode, a
`
`negative electrode, and a non-aqueous electrolyte, wherein the positive electrode
`
`comprises a current collector, a protective layer comprising a conductive material and
`
`inorganic compound, and anactive material layer (Paragraphs 0012, 0016, 0022,
`
`0023), as recited in claim 2 of the present invention. Shiozaki also discloses that the
`
`content of the inorganic compound in the protective layer is 90-99 wt% (Paragraph
`
`0023), as recited in claim 2 of the present invention. Shiozaki teaches that the
`
`protective layer has a thickness of 1-5 microns (Paragraph 0022), as recited in claim 5
`
`of the present invention. Shiozaki also teaches that the inorganic compound can be
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 6
`
`manganeseoxide, silicon dioxide, titanium dioxide, and aluminum oxide (Paragraph
`
`0023), as recited in claim 7 of the present invention.
`
`Shiozaki fails to disclose that a thermally expandable material, different from a
`
`conductive material, is present in the protective layer of the cathode and has larger
`
`volume expansion than the conductive material, that the expandable material is present
`
`in an amount of 0.1-5 mass%, or 0.1-1 mass%, that an average particle size of the
`
`expandable material is 1-500 microns and the expansion volume is 10-300 m/g.
`
`Umeyama discloses a nonaqueous electrolyte secondary battery comprising: a
`
`positive electrode, a negative electrode, and an electrolyte, wherein the positive
`
`electrode comprises a positive electrode current collector, and a sheet body on the
`
`current collector, wherein the sheet body comprises a mixture ofa first positive
`
`electrode active material including a lithium nickel composite oxide, a second positive
`
`electrode active material including a lithium iron phosphate, and expanded graphite
`
`(Paragraphs 0057, 0062, 0069), as recited in claim 2 of the present invention.
`
`Umeyama also discloses that the expanded graphite is added in the active
`
`material/expanded graphite mixture in an amountof 0.44-5.83 mass% (Paragraph
`
`0073), as recited in claims 2 and 9 of the present invention. Umeyama teaches that
`
`conductive materials other than the expanded graphite, such as acetylene black and
`
`Ketchen black, can be addedto the positive electrode mixture (Paragraph 0096, 0098),
`
`as recited in claim 2 of the present invention.
`
`It would be knownbyone of ordinaryskill
`
`in the art that expanded graphite has larger volume expansion than any of the
`
`conductive agents listed above, as recited in claim 2 of the present invention.
`
`Umeyama also teachesthat the expanded graphite can have an average particle size of
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 7
`
`1-20 microns and that the expanded graphite used can be BSP-5AS, BSP-15AS, BSP-
`
`20AS from Chuetsu Graphite Works Co, Ltd (Paragraph 0144), as recited in claim 12 of
`
`the present invention.
`
`It would have been knownby one of ordinary skill in the art that
`
`these types of expanded graphite have an expansion volume of between 10 and 300
`
`mL/g, as recited in claim 12 of the present invention.
`
`Kuzuo discloses a positive electrode of a battery comprising: a current collector
`
`and an electrode mixture on the current collector, wherein the electrode mixture or a
`
`layer between the electrode mixture layer and current collector can comprise a heat
`
`expandable microcapsule in an amount of 0.01-5 wt% (Paragraphs 0010 and 0021), as
`
`recited in claims 2 of the present invention. Kuzuo also discloses that the electrode
`
`mixture can comprise a conductive agent, such as carbon black (Paragraph 0021).
`
`It would have been obvious to one of ordinary skill in the art, before the effective
`
`filing date of the present invention that the expanded graphite could be usedin the
`
`protective layer of Shiozaki as well as the active material layer because Kuzuo teaches
`
`that expandable materials in either layer protects the electrode from high temperatures
`
`and overheating.
`
`It also would have been obvious to one of ordinary skill in the art to
`
`have included the expanded graphite in the amount of 1-5 wt% because both Umeyama
`
`and Kuzuo teachthat this amount allows for the improvement of battery capacity.
`
`Finally, it would have been obvious to one ofordinary skill in the art to have used an
`
`expanded graphite having a particle size of 1-500 microns and an expansion volume of
`
`10-300 mL/g because Umeyama teaches that this results in improved properties of the
`
`electrode and improved capacity of the battery.
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 8
`
`6.
`
`Claim 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Shiozaki (JP Publication 2016-127000) in view of Umeyama (U.S. Patent Publication
`
`2015/0333324) as applied to claims 1, 4, 6, 8 and 10 above, and further in view of
`
`Schmidt (U.S. Patent Publication 2013/0164635).
`
`The teachings of Shiozaki and Umeyama have been discussed in paragraph 4
`
`above. Shiozaki states that the conductive material can be carbon black, acetylene
`
`black, ketjen black or graphite (Paragraph 0019), as recited in claim 11 of the present
`
`invention.
`
`Shiozaki and Umeyama fail to disclose that the expanded graphite is formed by
`
`treating a natural graphite with concentrated sulfuric acid and concentrated nitric acid.
`
`Schmidt discloses a lithium sulfur secondary battery comprising: a cathode, an
`
`anode and electrolyte, wherein the cathode comprises sulfur, 1-75 wt% of an expanded
`
`graphite and further conductive agents (Paragraph 0012). Schmidt teachesthat the
`
`expanded graphite can be formedbytreating a natural graphite with concentrated
`
`sulfuric acid and concentrated nitric acid (Paragraph 0038), as recited in claim 11 of the
`
`present invention.
`
`It would have been obvious to one ofordinary skill in the art, before the effective
`
`filing date of the present invention that the expanded graphite could be madebytreating
`
`natural graphite with concentrate sulfuric acid and concentrated nitric acid because
`
`Schmidt teachesthat this is a common technique for forming this material.
`
`7.
`
`Claims 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Shiozaki (JP Publication 2016-127000) in view of Umeyama (U.S. Patent Publication
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 9
`
`2015/0333324) and Kuzuo (JP Publication 2001-332245) as applied to claims 2, 5, 7, 9
`
`and 12 above, and further in view of Schmidt (U.S. Patent Publication 2013/0164635).
`
`The teachings of Shiozaki, Umeyama and Kuzuo have been discussed in
`
`paragraph 5 above. Shiozaki states that the conductive material can be carbon black,
`
`acetylene black, ketjen black or graphite (Paragraph 0019), as recited in claim 13 of the
`
`present invention.
`
`Shiozaki, Umeyama and Kuzuo fail to disclose that the expanded graphite is
`
`formed by treating a natural graphite with concentrated sulfuric acid and concentrated
`
`nitric acid.
`
`Schmidt discloses a lithium sulfur secondary battery comprising: a cathode, an
`
`anode and electrolyte, wherein the cathode comprises sulfur, 1-75 wt% of an expanded
`
`graphite and further conductive agents (Paragraph 0012). Schmidt teachesthat the
`
`expanded graphite can be formedbytreating a natural graphite with concentrated
`
`sulfuric acid and concentrated nitric acid (Paragraph 0038), as recited in claim 13 of the
`
`present invention.
`
`It would have been obvious to one ofordinary skill in the art, before the effective
`
`filing date of the present invention that the expanded graphite could be madebytreating
`
`natural graphite with concentrate sulfuric acid and concentrated nitric acid because
`
`Schmidt teachesthat this is a common technique for forming this material.
`
`Responseto Arguments
`
`8.
`
`Applicant’s arguments, filed 2/8/2022, have been fully considered and are
`
`persuasive. Therefore, the rejection has been withdrawn. However, due to the
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 10
`
`amendments made to the claims, a new ground(s) of rejection is made in view of a
`
`newly found prior art reference.
`
`Applicants argue that neither Shiozaki nor Schmidt teach a combination of a
`
`lithium composite oxide active material and an expanded graphite or foaming agent.
`
`Applicants argue that since the active material of Schmidt is a sulfur material, the result
`
`of this combination would be different than with a lithium composite oxide material. The
`
`reference, Umeyama,has replaced Schmidt to teach the use of an expanded graphite
`
`in a cathode that comprisesalithium composite oxide active material. Thus, Umeyama
`
`teaches that an expandable material can be usedwith a lithium composite oxide active
`
`material to result in improved battery output characteristics. Schmidt is now onlyrelied
`
`upon to teach that an expandable material can also be usedin a protective material
`
`between the current collector and active material.
`
`Applicants also argue that Kuzuo fails to disclose that the expandable materialis
`
`an expanded graphite or a foaming agent because Kuzuo teaches the use of a heat
`
`expandable microcapsule. Umeyama is now being used to teach the use of an
`
`expanded graphite mixed with a cathode active material consisting of a lithium
`
`composite oxide. Thus, Umeyama is teaching one of the choices of expandable
`
`material that is listed in the claims of the present invention.
`
`Conclusion
`
`9.
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR 1.136(a).
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 11
`
`A shortenedstatutory period for reply to this final action is set to expire THREE
`
`
`
`MONTHS from the mailing date of this action. In the eventafirst replyis filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortenedstatutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the date of this final action.
`
`10.=Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to BRITTANY L RAYMOND whosetelephone number is
`
`(571)272-6545. The examiner can normally be reached Monday-Friday 9 am-5 pm.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
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`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Cynthia Kelly can be reached on 571-272-1526. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Center is
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`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
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`center for more information about Patent Center and
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`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 12
`
`https:/Awww.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
`
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`
`BRITTANY L. RAYMOND
`Examiner
`
`Art Unit 1722
`
`/BRITTANY L RAYMOND/
`Primary Examiner, Art Unit 1722
`
`