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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
`
`16/637,034
`
`02/06/2020
`
`Yuki Morikawa
`
`P200106US00
`
`4089
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`WELZHONGQING
`
`ART UNIT
`1727
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/14/2021
`
`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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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 06 February 2020 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)
`
`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 20211008
`
`Application No.
`Applicant(s)
`16/637 ,034
`Morikawaetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ZHONGQING WEI
`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 06 April 2021.
`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: 16/637,034
`Art Unit: 1727
`
`Page 2
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`NONAQUEOUS ELECTROLYTE SECONDARY BATTERY
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
`
`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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`Information Disclosure Statement
`
`2.
`
`The information disclosure statements (IDS) submitted on February 19, 2020 and April
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`6, 2021 are being considered by the examiner.
`
`3.
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`Receipt is acknowledgedof certified copies of papers required by 37 CFR 1.55.
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`Priority
`
`Specification
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`4.
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`The title of the invention is not descriptive. A new title is required that is clearly
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`indicative of the invention to which the claims are directed.
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`5.
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`The specification is objected to because reference characters "32" has been used to
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`designate both “firstfiller layer” and “second filler layer” (e.g., page 25, the bottom paragraph:
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`“first filler layer 32” and “second filler layer 32”).
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 3
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`The lengthy specification has not been checked to the extent necessary to determine
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`the presence ofall possible minor errors. Applicant’s cooperation is requested in correcting any
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`errors of which applicant may become awarein the specification.
`
`Claim Rejections - 35 USC § 103
`
`6.
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction
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`of the statutory basis for the rejection will not be considered a new ground of rejection if the
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`prior art relied upon, and the rationale supporting the rejection, would be the same under
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`either status.
`
`7.
`
`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:
`
`A patentfor 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 beforethe effectivefiling date of the claimed
`invention to a person having ordinaryskill in the art to which the claimed invention
`pertains. Patentability shall not be negated by the manner in which the invention was
`made.
`
`8.
`
`The factual inquiries for establishing a background for determining obviousness under
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`35 U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contentsofthe 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.
`4. Considering objective evidence present in the application indicating obviousness or
`nonobviousness.
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 4
`
`9.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was commonly
`
`ownedas ofthe effective filing date of the claimed invention(s) absent any evidence to the
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`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly owned as ofthe effective filing date
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`of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
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`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
`
`10.
`
`Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hatayama etal.
`
`(JP 2016072120 A, whose English machine translation is being used for citation purposes,
`
`hereafter Hatayama) in view ofIto et a/. (US 20170229743 A1, hereafter Ito).
`
`Regarding claim 1, Hatayama teaches a nonaqueous electrolyte secondary battery
`
`comprising a positive electrode, a negative electrode and a separator disposed therebetween
`
`([0001]-[0002]).
`
`Hatayama further teaches a “porous substrate layer (A)” ([0012], line 108; reading on “a
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`substrate” as claimed), on both sides of which a “porous layer (B)” may be provided ([0012] and
`
`[0076]) and a “layer (C)” may then be provided on “both surfaces of the outermost porous layer
`
`(B)” ([0076], line 912). As such, the combination of the “porous layer (B)” and “layer (C)”is
`
`provided on each side of the “porous substrate layer (A)”. The one combination of the “porous
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`layer (B)” and “layer (C)” directed to the positive electrode reads on “a firstfiller layer disposed
`
`on one side of the substrate”, and the other combination of the “porous layer (B)” and “layer
`
`(C)” directed to the negative electrode reads on “a second filler layer disposed on the other side
`
`of the substrate”.
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 5
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`Hatayama teaches the “layer (C)” in the first filler layer may contain basic phosphate(c-
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`1) ([0076], line 908; one skilled in the art would readily appreciate basic phosphate is composed
`
`of basic phosphateparticles) and the basic phosphate may belithium phosphate ([0078]-
`
`[0079]).
`
`Hatayama teaches the “porous substrate layer (B)” in the second filler layer contains an
`
`inorganic filler (b-2), which may be preferably boehmite particles ([(0044]-[0048]). According to
`
`the instant specification, boehmite particles has a higher melting point than the phosphatesalt
`
`particles. Thus, Hatayama implicitly teaches the boehmite particles has a higher melting point
`
`than the phosphatesalt particles.
`
`Hatayama is silent to the instantly claimed BET specific surface area of the phosphate
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`salt particles being not less than 5 m2/g and not more than 100 m2/g. However, in the same
`
`field of endeavor, Ito discloses that an inorganic phosphate compound having a specific surface
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`area of 5 m?/g to 50 m?2/gis contained in a layer disposed on the surface of a separator, which
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`secures a wide contact area between the inorganic phosphate compound and nonaqueous
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`electrolyte and an effects at a higher level ([0042]). It would have been obvious to one of
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`ordinary skill in the art, before the effective filing date of the instant invention, to have
`
`incorporated the teachings of Ito into Hatayama such that the phosphatesalt particles have a
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`specific surface area of 5 m2/g to 50 m2/g,as taughtbyIto, in order to at least secure a wide
`
`contact area between the phosphatesalt and nonaqueous electrolyte ([0042], Ito). The range of
`
`5 m2/g to 50 m2/g reads on the instantly claimed “not less than 5 m2/g and not more than 100
`
`m2/g” of the phosphatesalt particles.
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 6
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`Regarding claim 2, Hatayama in view of Ito teaches the nonaqueous electrolyte
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`secondary battery according to claim 1, and the above-mentioned range of 5 m*/g to 50 m2/g
`
`overlaps the instantly claimed range of “not less than 20 m2/g and not more than 100 m2/g”. In
`
`the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a
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`prima facie case of obviousnessexists. See MPEP § 2144.05(I).
`
`Regarding claim 3, Hatayama in view of Ito teaches the nonaqueous electrolyte
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`secondary battery according to claim 1, wherein the phosphatesalt particles are lithium
`
`phosphateparticles ([0078]-[0079]: PO4*and Li*).
`
`Regarding claim 4, Hatayama in view of Ito teaches the nonaqueous electrolyte
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`secondary battery according to claim 1, and further teaches the particle size of the basic
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`phosphate may bepreferably in the range of 0.2 um to 2 um ([0080]), reading on the instantly
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`claimed average particle size of the phosphatesalt particles being 0.05 um to 1 um. The range
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`of 0.2 um to 2 um overlaps the instantly claimed range of 0.05 um to 1 um. In the case where
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`the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of
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`obviousnessexists. See MPEP § 2144.05(I).
`
`Hatayama further teaches the average poresize of the substrate may be preferably in
`
`the range of 0.03 um to 0.7 um ([0021]). Thus, the ratio of the average particle size of the
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`phosphate salt particles to the average pore size of the substrate is in the range of about 0.29
`
`to 67 (i.e., 0.2/0.7=0.29; 2/0.03=67), which overlaps the instantly claimed range of less than 1
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`(i.e., the average particle size of the phosphatesalt particles is smaller than the average pore
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`size of the substrate). In the case where the claimed ranges “overlap or lie inside ranges
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`disclosed by the prior art”, a prima facie case of obviousnessexists. See MPEP § 2144.05(I).
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 7
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`11.
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`Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hatayama in view of
`
`Ito, as applied to claim 1 above,and further in view of Hamano etal. (US 5981107, hereafter
`
`Hamano).
`
`Regarding claim 5, Hatayama in view of Ito teaches the nonaqueous electrolyte
`
`secondary battery according to claim 1, but is silent to a resin layer disposed on the surface of
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`the first layer and in contact with the positive electrode, as claimed.
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`In the same field of endeavor, Hamano discloses an adhesive resin layer (11) is disposed
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`between a positive electrode (the combination of 6 and 7) and a separator (4) to prevent
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`peeling between the electrode and the separator (at least, Fig. 1 and column 6,lines 14-22).
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`It would have been obvious to one of ordinaryskill in the art, before the effective filing
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`date of the instant invention, to have dispose an adhesiveresin layer between the positive
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`electrode and the separator, as taught by Hamano, such that the adhesiveresin layer is
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`disposed on the surface ofthe first filler layer and in contact with the positive electrode in
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`order to prevent the positive electrode from peeling from the separator.
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`Conclusion
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`12.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ZHONGQING WEI whosetelephone number is (571)272-4809.
`
`The examiner can normally be reached Mon - Fri 9:30 - 6:00.
`
`Examiner interviews are available via telephone,in-person, and video conferencing
`
`using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 8
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`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, Barbara Gilliam can be reached on (571)272-1330. The fax phone number for the
`
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`
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`
`/ZHONGQING WEI/
`Primary Examiner, Art Unit 1727
`
`