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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
`
`16/580,206
`
`09/24/2019
`
`Hideharu Takezawa
`
`P190991US00
`
`5567
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`JOHNSON, SORAYA JASMYN
`
`ART UNIT
`1721
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/18/2020
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-9 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-9 is/are rejected.
`S)
`) O Claim(s)___is/are objected to.
`C] 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:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)C The specification is objected to by the Examiner.
`11) The drawing(s)filed on 24 September 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)X None ofthe:
`b)L) Some**
`a) All
`1.4] 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 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) (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 20201124
`
`Application No.
`Applicant(s)
`16/580 206
`Takezawaetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`SORAYA J JOHNSON
`4162
`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)C) Responsive to communication(s) filed on
`CJ 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)0) 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\() 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: 16/580,206
`Art Unit: 4162
`
`Page 2
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`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined underthe
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`first inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 112
`
`1.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—Thespecification shall conclude with one or more claimsparticularly pointing
`out anddistinctly 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-ATA), second paragraph:
`The specification shall conclude with one or more claimsparticularly pointing out and distinctly
`claiming the subject matter which the applicant regardsas his invention.
`
`2.
`
`Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
`
`paragraph,asfailing to set forth the subject matter which the inventor or a joint inventor,
`
`or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention.
`
`Claim 3 recites the limitation “wherein a standard deviation of a thickness distribution of
`
`the protective layer is 1.0 um or more”. The phrase “standard deviation of a thickness
`
`distribution of the protective layer is 1.0 um or more”is indefinite in scope sinceit is not clear if
`
`“standard deviation of a thickness distribution of the protective layer is 1.0 um or more”is
`
`referring to +/- 1.0 um or more,orif the standard deviation of a thickness distribution of the
`
`protective layer includes values that vary by 1.0 um or more. For examination purposes, the
`
`examiner has interpreted “standard deviation of a thickness distribution of the protective layeris
`
`1.0 um or more”to be “standard deviation of a thickness distribution of the protective layer is +/-
`
`1.0 um or more).
`
`Claim Rejections - 35 USC § 103
`
`

`

`Application/Control Number: 16/580,206
`Art Unit: 4162
`
`Page 3
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`3.
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`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejections set forth in this Office action:
`
`A patentfor a claimed invention may not be obtained, notwithstanding that the claimed inventionis 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 obviousbefore 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 mannerin which the invention was made.
`
`4,
`
`The factual inquiries for establishing a background for determining obviousness under 35
`
`U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claimsat issue.
`
`3. Resolving the level of ordinary skill in the pertinentart.
`
`4. Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`5.
`
`Claims 1, 3-5, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Miyazakiet al. (U.S. Pub. No. 2013/0089781) in view of Uemura (U.S. Pub. No.
`
`2013/0164614).
`
`Regarding claim 1, Miyazaki discloses a secondary battery comprising: a positive
`
`electrode; a negative electrode; and an electrolyte, wherein the positive electrode includes: a
`
`positive electrode current collector ([0005]); a positive electrode mixture layer including a
`
`positive electrode active material containing a lithium transition metal oxide ((0044]); and an
`
`undercoat layer (protective layer) provided between the positive electrode current collector and
`
`the positive electrode mixture layer ([0022]-[0025]), the undercoat layer (protective layer)
`
`includes an inorganic compoundagent((0101]), a conductive agent ([0025]), and a binder
`
`({0026]), and has an uneven (recessed) structure where the positive electrode mixture layer has
`
`

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`Application/Control Number: 16/580,206
`Art Unit: 4162
`
`Page 4
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`an uneven(recessed) interface with the protective layer ({0134]-[0137]), and a content of the
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`binder is 20 to 80 mass % based on the total amountof the undercoat (protective) layer ({0091]).
`
`Miyazaki does not explicitly disclose that a content of the binder is 1 mass % or more and
`
`10 mass % or less based on the total amountof the undercoat (protective) layer.Uemura discloses
`
`a conductive composition for coating a current collector for a battery ([0001]) containing a
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`binder ((0134]-[0135] and [0150]) and a conductive auxiliary ([0134]-[0136]) measured in parts
`
`by weight ((0137]-[0139]).
`
`Uemura teaches a conductive composite coating (protective) layer containing 1,055 total
`
`parts (1,000 parts water, 20 parts saponified polyvinyl alcohol, 10 parts pyromellitic acid, 25
`
`parts acetylene black) to 30 parts binder (20 parts saponified polyvinyl alcohol, 10 parts
`
`pyromellitic acid) ([0343]). The content of the binder is 2.84 mass % based on the total amount
`
`of the conductive composite coating (protective layer) (25/1,055 = 2.84%).
`
`Uemura further teaches that the weight ratios are selected to prevent the excessive
`
`increase of the resistance due to the contact of the conductive auxiliary with each other or contact
`
`of the conductive auxiliary with the current collector and active material layer to stabilize the
`
`resistance, obtaining a good balance between the amounts of the conductive auxiliary and the
`
`binder, achieving stable adhesion force and stable electrolysis resistance properties ([0138]).
`
`It would have been obvious to one of ordinary skill in the art at the time of filing to have
`
`selected the binder content of 2.84 mass % based on the total amountof the protective layer of
`
`Uemura to modify the battery of Kim in order to obtain stable adhesion force and stable
`
`electrolysis resistance properties.
`
`

`

`Application/Control Number: 16/580,206
`Art Unit: 4162
`
`Page 5
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`Regarding claims 3, 4, and 7, Modified Miyazaki discloses all elements of the current
`
`invention as stated above but Miyazaki does not explicitly disclose that a standard deviation of a
`
`thickness distribution of the protective layer is 1.0 um (In view of the 112b rejection above, the
`
`examiner has interpreted “standard deviation of a thickness distribution of the protective layeris
`
`1.0 um or more”to be “standard deviation of a thickness distribution of the protective layer is +/-
`
`1.0 um or more), or that a standard deviation of a thickness distribution of the protective layeris
`
`30% or more and 50% orless based on an average thickness of the protective layer, or that the
`
`positive electrode includes a region wherethe protective layer does not exist locally, and the
`
`positive electrode current collector and the positive electrode mixture layer are in direct contact
`
`with each other in the region.
`
`However, Miyazaki teaches that the undercoat (protective) layer is made by mixing the
`
`binder, conductive additive (acetylene black), and aluminum oxide, applying the solution to the
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`current collector (aluminum foil), and drying the solution to form a 3um layer ((0184]-[0185]).
`
`The positive active material is applied onto the undercoat (protective) layer, dried, and pressed to
`
`form the positive electrode ({0188]).
`
`In the instant disclosure, the applicant discloses that the protective layer slurry is prepared
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`by mixing the binder, conductive additive (acetylene black), and aluminum oxide, applying the
`
`mixture onto an aluminum foil, and drying the mixture (specification [0056]). The positive active
`
`material is applied onto the protective layer, dried, and rolled (pressed) (specification [0057]).
`
`Applicant further discloses that unevenness is formedat the interface between the
`
`protective layer and the positive electrode mixture layer when the positive electrode active
`
`material protruding from the surface of the positive electrode mixture layer is pressed against the
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`protective layer (specification [0026]). Also, there is a region wherethe protective layer does not
`
`

`

`Application/Control Number: 16/580,206
`Art Unit: 4162
`
`Page 6
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`exist locally, and the positive electrode current collector and the positive electrode mixture layer
`
`are in direct contact with each other exists in the region, depending on the average thickness and
`
`thickness distribution of the protective layer (specification [0030]).
`
`The examiner’s position is that because the method of Miyazaki follows the same method
`
`as disclosed by applicant, the method of Miyazaki would have produced the sameresult for the
`
`value for standard deviation of the thickness distribution and the region where the protective
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`layer does not exist locally, since the values for thickness of Miyazaki lie within the claimed
`
`ranges of applicant. Pressing the two uneven layers of Miyazaki would have produced the same
`
`standard deviation of a thickness distribution of the protective layer and would have been
`
`difficult to prevent the active and collector from coming into direct contact. Thus these features
`
`would have beeneither inherent to or obvious in view of the combinedpriorart.
`
`Regarding claim 5, Modified Miyazaki discloses all elements of the current invention as
`
`stated above and Miyazaki further discloses that the undercoat (protective) layer has an average
`
`thickness of 0.1 to 10 um since when the thickness falls in this range, the undercoat (protective)
`
`layer may be easily applied ((0071]).
`
`Case law holdsthat in the case where the claimed ranges "overlap or lie inside ranges
`
`disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d
`
`257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir.
`
`1990) (Theprior art taught carbon monoxide concentrations of "about 1-5%" while the claim
`
`waslimited to "more than 5%." The court held that "about 1-5%" allowed for concentrations
`
`slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43
`
`USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
`
`

`

`Application/Control Number: 16/580,206
`Art Unit: 4162
`
`Page 7
`
`While Miyazaki does not explicitly disclosed the claimed range of less than 3.5m for the
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`undercoat (protective) layer thickness, it would have been obvious to one of ordinary skill in the
`
`art to have selected the overlapping portions of the range disclosed by Miyazaki in order to allow
`
`the protective layer to be applied moreeasily.
`
`Regarding claim 9, Miyazaki discloses that the positive electrode active material is a
`
`lithium nickel composite oxide ([0045)).
`
`6.
`
`Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Miyazakietal.
`
`(U.S. Pub. No. 2013/0089781) as applied to claim 1 above, in further view of Hanazaki(U.S.
`
`Pub.No. 2015/0303519).
`
`Regarding claim 2, Modified Miyazaki disclosesall of the elements of the current
`
`invention as stated above exceptthat the density of the positive electrode active material in the
`
`positive electrode mixture layer is 3.2 g/cm? or more.
`
`Hanazaki discloses a nonaqueous electrolyte secondary battery comprising a positive
`
`electrode provided with a positive material active material and a nonaqueous electrolyte
`
`containing a lithium salt ((0012]).
`
`Hanazaki teachesthat the density of the positive electrode active material layeris
`
`typically 2.0 g/cm? or more and 4.5 g/cm?orless ([0053]).
`
`Hanazaki further teaches thatas a result of the density being from 2.0 to 4.5 g/cm’, output
`
`characteristics and durability can be realized at a higher level during normal use ((0053]).
`
`It would have been obvious to one of ordinary skill in the art at the time offiling to have
`
`incorporated the overlapping portions for the density of the positive electrode active layer of
`
`

`

`Application/Control Number: 16/580,206
`Art Unit: 4162
`
`Page 8
`
`Hanazaki to modify the positive electrode active material of Miyazaki in order to provide higher
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`output characteristics and durability.
`
`7.
`
`Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Miyazakietal.
`
`(U.S. Pub. No. 2013/0089781) as applied to claim 1 above, in further view of Kajiura. (U.S.
`
`Pub.No. 6,679,926).
`
`Regarding claim 6, Modified Miyazaki disclosesall of the elements of the current
`
`invention as stated above except that the inorganic compoundparticles have a shape formed by
`
`connecting a plurality of primaryparticles.
`
`Kaijura discloses a lithium secondary battery comprising a cathode made bysintering a
`
`lithium-transition metal oxide ([0003]) ({0023] - LiCoO2, inorganic particles).
`
`Kaijura teaches that by sintering enoughto achieve electrical conductivity of more than
`
`0.1 mS/cm,high bonding strength between primary particles of the sintered (connected) material
`
`can be achievedso that the primary particles do not come off and the electrode does not
`
`disintegrate even when the sintered material expands and shrinks during charging and
`
`discharging cycles of the battery ([0015)]).
`
`It would have been obvious to one of ordinary skill in the art to have incorporated the
`
`connection of primary inorganic particles by sintering of Kaijura into the battery of Kim so that
`
`the primary particles do not comeoff and the electrode does not disintegrate even when the
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`sintered material expands and shrinks during charging and discharging cycles of the battery.
`
`8.
`
`Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Miyazakietal.
`
`(U.S. Pub. No. 2013/0089781) as applied to claim 1 above, in further view of Miyaki (U.S.
`
`Pub.No. 6,365,299).
`
`

`

`Application/Control Number: 16/580,206
`Art Unit: 4162
`
`Page 9
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`Regarding claim 8, Modified Miyazaki disclosesall of the elements of the current
`
`invention as stated above except for the inorganic compoundparticles being composed of a-
`
`alumina.
`
`Miyaki discloses a nonaqueous secondary battery comprising a positive electrode,
`
`negative electrode, and the positive electrode having a protective layer containing alumina (Col.
`
`1, lines 37-45).
`
`Miyaki teachesthat the protective layer comprises o-alumina (Col. 32, lines 6-9) for the
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`purpose of improving strength of the protective layer (Col. 4, lines 4-8).
`
`It would have been obvious to one of ordinary skill in the art at the time offiling to
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`incorporate the protective layer comprising o-alumina of Miyaki to modify the positive electrode
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`active material protective layer of Miyazaki in order to improvethe strength of the protective
`
`layer.
`
`Conclusion
`
`9.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to SORAYA J JOHNSON whose telephone numberis (571)272-
`
`1201. The examiner can normally be reached on M-F 7:30 am-5 pm EST.
`
`Examinerinterviewsare available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicantis
`
`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Allison Bourke can be reached on (303)297-4684. The fax phone numberfor the
`
`organization wherethis application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 16/580,206
`Art Unit: 4162
`
`Page 10
`
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`1000.
`
`/SORAYA JASMYN JOHNSON/
`Examiner, Art Unit 1721
`
`/Magali P Slawski/
`Primary Examiner, Art Unit 1721
`
`