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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
`
`16/637,026
`
`02/06/2020
`
`Masanori Sugimori
`
`P200094US00
`
`4390
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`WILLS, MONIQUE M
`
`ART UNIT
`1722
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/21/2021
`
`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 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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 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 2/6/20 is/are: a)¥) accepted or b)L) 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
`1.2 Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.4 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
`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 20211215
`
`Application No.
`Applicant(s)
`16/637 ,026
`Sugimoriet al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`MONIQUE M WILLS
`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 2/6/20.
`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: 16/637,026
`Art Unit: 1722
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Information Disclosure Statement
`
`The information disclosure statements filed February 18, 2020 and September
`
`30, 2020 has/have been received and complies with the provisions of 37 CFR 1.97,
`
`1.98 and MPEP § 609. Accordingly, the information disclosure statement(s) is/are being
`
`considered by the examiner, and aninitial copied is attached herewith.
`
`Foreign Priority Documents
`
`The Japaneseforeign priority document(s) 2017-164772, submitted under 35
`
`U.S.C. § 119 (a)-(d), was/were been received on February 6, 2020 and placed of record
`
`in the file.
`
`Claim Rejections - 35 USC § 103
`
`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.
`
`

`

`Application/Control Number: 16/637,026
`Art Unit: 1722
`
`Page 3
`
`Claims 1-3 & 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`ZHAOetal. U.S. Pub. 2015/0280197 in view of Chon et al. U.S. Pub. 2015/0197830.
`
`With respect to claim 1, ZHAO teaches a nonaqueous electrolyie secandary
`
`battery (secondary battery}, comprising a positive electrode (positive electrode plate:
`
`[OOTSR, a negative electrode (negalive electrode plate; [(O047}} and a separator (porous
`
`separator; [O037]) dispased between the positive electrode and the negative electrode
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`[9054], wherein the separator comprises an inorganic filer iayer which inchides a first
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`filler layer coniaining phosphate sali particles (ler Bin the coating layer, iihium
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`phosphate [0084] and a second filler layer disposed on the first filler layer and
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`coniaining inorganic particies more heat resistant than ihe chosphate salt particies (Aller
`
`Ais in the composite porcus substrate layer; and may be an inorganic particle: [O01S):
`
`aluminum oxide: (0057), the separator comprises a porous sheel disposed on the
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`inorganic filer layer (palyrner matrix of polyvinylidene fuoride; [0057]},. With respect to
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`claim 3, the phosphate salt particles are selected from at least one of dilithium
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`hydrogen phosphate, lithium cinydragen phosphate and ithiur phosphate (ithiurm
`
`phosphate: (0084). With respect to claim 5, the first fller layer includes a
`
`heteronolyacid fociadecansic acid; (Q084]}.
`
`ZHAOdoesnotteach or suggest that the BET speciHic surface area of the
`
`phosphate salt particles is in the range of not less than 5 m*/q and not more than 100
`
`m/g (claim 1); the inorganic filer layer is of a laminated construction in orderof the first
`
`filler layer and the second filler layer from a positive electrade side, the inorganic fler
`
`layer being disposed between the porous sheet and the positive slectrade (claim 1): the
`
`

`

`Application/Control Number: 16/637,026
`Art Unit: 1722
`
`Page 4
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`BET speciic surface area of the phosphate sail particles is in the range of not less than
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`20 mg and not more than 100 rn@/q. (claim 2).
`
`Chon teachesthatit is well knownin the art to employlithium phosphate with a
`
`surface area ranging from 1 m*/g to 106 m*/g (claims 1 & 2);
`
`ZHAO and Chon are analogous art from the same field of endeavor, namely
`
`fabricating electrochemical cells comprising lithium phosphate.
`
`Therefore, it would have been obvious to one of ordinary skill in the art before the
`
`effective filing date of the claimed invention to employ the lithium phosphate with a BET
`
`surface area ranging from than 5 me/g anc not more than 100 mé/g as taught by Chon,
`
`as the lithium phosphate of ZHAO, as "where the general conditions of a claim are
`
`disclosedin the prior art, it is not 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 knownresult 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, Il.).
`
`With respectto the inorganic filer layer being of a laminated construction in order
`
`of the first filler fayer and the second Mller layer from a positive electrade side, the
`
`inorganic filler layer being disposed between the porous sheet and the positive
`
`electrode (claim 1}; ii would have been obvious to ernploy in the cell of ZHAO in viewof
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`Chon, as rearrangement of essential working paris of a device is primafacie obvious.
`
`See in re Japikse, 181 F.2d 1019, 86 USP 70 (GCPA 1950}.
`
`

`

`Application/Control Number: 16/637,026
`Art Unit: 1722
`
`Page 5
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`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections 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
`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.
`
`Claim 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over ZHAO et
`
`al. U.S. Pub. 2015/0280197 in view of Chon et al. U.S. Pub. 2015/0197830 and further
`
`in view of ZHAO etal. U.S. Pub. 2016/006471 1.
`
`ZHAO ‘197 in view of Chon, teaches a nonacueous elecirolyie secondary
`
`battery (Secondary ballery} as described in the rejection recited hereinabove, including
`
`lithium phosphate (0057)).
`
`ZHAO ‘197 doesnot expressly disclose that the average particle size of the
`
`phosphate salt particles is 0.05 om io 1 orn and is smaller than the average pore size af
`
`the porous sheet (claim 4).
`
`ZHAO ‘7141 feaches thal His well known In the art to employ lihiurn salt as a
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`phosphate salt in a porous separator with 4 particle size cf 0.05 um to 1 um (particle
`
`diameter of 0.001 to 9 microns; [Q02S)}.
`
`ZHAO ‘197, Chon and ZHAO ‘711 are analogous art from the same field of
`
`endeavor, namely fabricating electrochemical cells comprising lithium phosphate.
`
`Therefore, it would have been obvious to one of ordinary skill in the art before the
`
`effective filing date of the claimed invention to employ the lithium phosphate with a
`
`

`

`Application/Control Number: 16/637,026
`Art Unit: 1722
`
`Page 6
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`particle size of 0.05 um to 1 um as taught by ZHAO ‘711, as the particle size of the
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`lithiurn phosphate of ZHAO ‘197 in view of Chon, since such a modification would have
`
`involved a mere change in size of the lithium phosphate component. A change in size
`
`is generally recognized as being within the level of ordinary skill in the art.
`
`In re Rose,
`
`105 USPQ 237 (CCPA 1955). Furthermore, "where the general conditions of a claim
`
`are disclosedin the prior art, it is not 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 knownresult 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, II.).
`
`

`

`Application/Control Number: 16/637,026
`Art Unit: 1722
`
`Page 7
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`examiner should be directed to MONIQUE M WILLS whosetelephone number is
`(571)272-1309. The Examiner can normally be reached on Monday-Friday from
`8:30am to 5:00 pm.
`
`If attempts to reach the examiner by telephone are unsuccessful, the Examiner's
`supervisor, Cynthia Kelly, may be reached at 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 an application may be obtained from the
`Patent Application Information Retrieval (PAIR) system. Status information for
`published applications may be obtained from either Private PAIR or Public PAIR.
`Status information for unpublished applications is available through Private PAIR only.
`For more information about the PAIR system, see http://portal.uspto.gov/external/portal.
`Should you have questions on accessto the Private PAIR system, contact the
`Electronic Business Center (EBC) at 866-217-9197(toll-free).
`
`/Monique M Wills/
`Examiner, Art Unit 1722
`
`/CYNTHIA H KELLY/
`Supervisory Patent Examiner, Art Unit 1722
`
`