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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, 122
`
`02/06/2020
`
`Takao Sato
`
`P200122US00
`
`3100
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`BARTON,JASON AARON
`
`ART UNIT
`4111
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`10/29/2021
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`ELECTRONIC
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`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.
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`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)
`
`

`

`
`
`) )
`
`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)
`
`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:
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`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20211026
`
`Application No.
`Applicant(s)
`16/637 122
`Sato etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`JASON A BARTON
`4111
`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 2 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
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`1) Responsive to communication(s) filed on 02/06/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`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 incorporatedinto 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.
`
`Disposition of Claims*
`1-6 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj] Claim(s)
`is/are allowed.
`02 Claim(s
`s)___ is/are rejected.
`( Claim(s)
`is/are objected to.
`Claim(s) 1-6 are subject to restriction and/or election requirement
`“If any claims have been‘determined allowable, you may beeligible 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/Control Number: 16/637,122
`Art Unit: 4111
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined underthefirst
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`inventorto file provisions of the AJA.
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`Election/Restrictions
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`REQUIREMENT FOR UNITY OF INVENTION
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`2.
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`Asprovided in 37 CFR 1.475(a), a national stage application shall relate to one invention
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`only or to a group of inventions so linked as to form a single general
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`inventive concept
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`(“requirement of unity of invention”). Where a group of inventionsis claimedin a national stage
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`application, the requirement of unity of invention shall be fulfilled only when there is a technical
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`relationship among those inventions involving one or more of the same or corresponding special
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`technical features. The expression “special technical features” shall mean those technical features
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`that define a contribution which each of the claimed inventions, considered as a whole, makes over
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`the priorart.
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`The determination whether a group of inventionsis so linked as to form a single general
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`inventive concept shall be made without regard to whether the inventions are claimed in separate
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`claimsor as alternatives within a single claim. See 37 CFR 1.475(e).
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`When Claims Are Directed to Multiple Categories of Inventions:
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`Asprovided in 37 CFR 1.475 (b), a national stage application containing claimsto different
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`categories of invention will be considered to have unity of invention if the claims are drawn only
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`to one of the following combinations of categories:
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`(1) A product and a process specially adapted for the manufacture of said product; or
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`

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`Application/Control Number: 16/637,122
`Art Unit: 4111
`
`Page 3
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`(2) A product and a process of use of said product; or
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`(3) A product, a process specially adapted for the manufacture of the said product, and a
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`use of the said product; or
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`(4) A process and an apparatus or meansspecifically designed for carrying out the said
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`process; or
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`(5) A product, a process specially adapted for the manufacture of the said product, and an
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`apparatus or meansspecifically designed for carrying out the said process.
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`Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
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`3.
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`This application contains claims directed to_more than one species of the generic
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`invention. These species are deemed to lack unity of invention because they are not so linked as
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`to form a single general inventive concept under PCT Rule 13.1.
`
`The species are as follows:
`
`e
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`Species A: FIG. 4, corresponding to a secondary battery having an insulating tape
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`wherein the porous region is formed by interpasing a porous layer formed of a resin
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`between the base layer and the adhesive layer; and
`
`e
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`Species B: FIG. 5, corresponding to a secondary battery having an insulating tape
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`wherein the porous region is formed of a protrusion and a depression in a surface of the
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`base layer opposite the adhesive layer.
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`Applicant is required, in reply to this action, to elect a single species to which the claims
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`shall be restricted if no generic claim is finally held to be allowable. The reply mustalso identify
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`the claims readable _on the elected_species, including any claims subsequently added. An
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`argumentthat a claim is allowable or that all claims are generic is considered non-responsive
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`unless accompanied byanelection.
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`

`

`Application/Control Number: 16/637,122
`Art Unit: 4111
`
`Page 4
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`Uponthe allowance of a generic claim, applicant will be entitled to consideration of claims
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`to additional species which are written in dependent form or otherwise require all the limitations
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`of an allowed generic claim. Currently, the following claim is generic: claim 1.
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`4,
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`The groups of inventions listed above do notrelate to a single general inventive concept
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`under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special
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`technical features for the following reasons:
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`Species A and B lack unity of invention because the groups do not share the same or
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`corresponding technical feature. The technical feature of Species A is that the insulating tape
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`comprises a porous region that is formed by interposing a porous layer formed of a resin between
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`the base layer and the adhesive layer. Species B does not include this special technical feature.
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`5.
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`Applicant is remindedthat upon the cancellation of claims to a non-elected invention, the
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`inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently
`
`named inventors is no longer an inventor of at least one claim remaining in the application. A
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`request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data
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`sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and
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`by the processing fee required under 37 CFR 1.17(i).
`
`Notes on Claims
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`6.
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`The undersigned would like to draw Applicant’s attention to the following issues that may
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`be addressedpriorto a first action on the merits. While the following issues are not being presented
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`as $112 rejections, failure to address them in response to the aboverestriction requirement may
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`result in a §112 rejection in a first action on the merits.
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`

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`Application/Control Number: 16/637,122
`Art Unit: 4111
`
`Page 5
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`e Claim 1 recites, “... and the adhesive layer and that has a pore thatthe electrolytic solution
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`is allowed to enter.” (emphasis added). The specification discusses the plural of pore, i.e.,
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`pores. Thus,it is believed that the recitation of, “a pore” may be a typo and the claim should
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`instead recite, “pores.”
`
`e Claim 3 recites, “...wherein a ratio of the thickness of the porous region to_a total thickness
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`of the base layer and the porous layer.” Phe claimlanguage is understood as a ratio of the
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`thickness of the porous layer to the sumof the thickness of the porous layer and the
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`thickness of the base layer. However,
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`the term, “total thickness” may be considered
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`confusing sinee the thickness of the adhesive layer is omitted from this calculation.
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`Purthermore, the recited calculation cormpares the thickness of the porous region
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`io the sumtotal of the duckness of the hase layer and the porous layer. The use of both the
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`porous region and porous laver in the clause makes i unclear if the porcus region has the
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`same dirnension as the porous layer.is believed where the porous region is formed by
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`inlerposing a porous layer formed of a resin between the hase layer and the adhesivelayer
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`that ihe porous region is the porous laver.
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`Thus, if is suggesied that Applicant amend the claimto reciic, “.. wherein a ratic
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`ofa [fhe } thickness of the porous layer [[region}] tc a suro iftotal thickness]] of a thickness
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`of the base layer andthethicknessof the porous layer is from2% to 50%”
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`e Claim4recites, “... 5% or more by volume of a layer volume.”It is unclear what is meant
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`by “layer volume” and if this language is necessary to the structure of claim 4. The
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`undersigned suggests deleting the text, “of a layer volume” to improveclarity of the claim.
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`e Claim 5 recites, “...wherein the porous layer is formed of as a main component, a kind
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`selected from a group consisting of...” The language used in this claim appears to be
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`

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`Application/Control Number: 16/637,122
`Art Unit: 4111
`
`Page 6
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`improper English (e.g., resulting from a translation of the claim from Japanese). The
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`undersigned suggests that Applicant amendthe claim torecite, “... wherein the resin of the
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`porous layer comprises a main componentselected from the group consisting of: ...”
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`Conclusion
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`7.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to JASON AARON BARTONwhosetelephone numberis (571)270-3551. The
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`examiner can normally be reached 8:30 AM to 5:00 PM.
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`Examinerinterviews are available via telephone, in-person, and video conferencing using
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`a USPTO supplied web-based collaboration tool. To schedule an interview, applicant
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`is
`
`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,
`
`Lies] Baumann can be reached on (571)-270-5758. The fax phone numberfor the organization
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`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 Centeris available to registered
`
`users. To file and manage patent submissionsin Patent Center, visit: https://patentcenter.uspto.gov.
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`Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center
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`and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For
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`additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If
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`you would like assistance from a USPTO Customer Service Representative, call 800-786-9199
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`(IN USA OR CANADA)or 571-272-1000.
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`

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`Application/Control Number: 16/637,122
`Art Unit: 4111
`
`Page 7
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`/JASON BARTON/
`Examiner, Art Unit 4111
`
`/Lies] C Baumann/
`Supervisory Patent Examiner, Art Unit 4111
`
`