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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
`
`16/659,770
`
`10/22/2019
`
`Takahiro Takahashi
`
`P191114US00
`
`2790
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`CHUO, TONY SHENG HSIANG
`
`1729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/15/2022
`
`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)
`
`

`

`Office Action Summary
`
`Application No.
`16/659,770
`Examiner
`TONY S CHUO
`
`Applicant(s)
`Takahashi etal.
`Art Unit
`AIA (FITF) Status
`1729
`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 2/28/22.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J 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.
`
`Disposition of Claims*
`1-4 and 6-12 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.
`Claim(s) 1-4 and 6-12 is/are rejected.
`(1 Claim(s)__is/are objectedto.
`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 10/22/19 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 20220407
`
`

`

`Application/Control Number: 16/659,770
`Art Unit: 1729
`
`Page 2
`
`DETAILED ACTION
`
`Response to Amendment
`
`Claims 1-4 and 6-12 are currently pending. Claim 5 has been cancelled. The
`
`previous objection to the specification is withdrawn. The amended claim 1 does
`
`overcome the previously stated 102 and 103 rejections. However, upon further
`
`consideration, claims 1-4 and 6-12 are rejected under the following new 102 and 103
`
`rejections. This action is made FINAL as necessitated by the amendment.
`
`Claim Rejections - 35 USC § 102/103
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section madein this Office action:
`
`A personshall be entitled to a patent unless —
`
`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale, or otherwise available to the public before the effectivefiling date of the claimed
`invention.
`
`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.
`
`Claim(s) 1, 3,6, and 11 are rejected under 35 U.S.C. 102(a)(1) as anticipated by
`
`or, in the alternative, under 35 U.S.C. 103 as obvious over Kato et al (US
`
`2016/0042878).
`
`

`

`Application/Control Number: 16/659,770
`Art Unit: 1729
`
`Page 3
`
`Regarding claims 1, 3, 6, and 11, Kato et al discloses a lithium ion secondary
`
`battery comprising: a positive electrode; a negative electrode; and an electrolyte,
`
`wherein the positive electrode comprises: a current collector “100” (positive electrode
`
`current collector); an active material layer “115” (positive electrode mixture layer)
`
`including positive electrode active material particles; and a resin layer “105”
`
`(intermediate layer / cured product) provided between the current collector and the
`
`active material layer, wherein the resin layer comprises a polyolefin-based emulsion
`
`particles modified with a carboxylic acid (cured product of a curable resin having a
`
`carboxyl group); and a conductive material (conductive agent) such as carbon powders,
`
`wherein the conductive material is 5 to 50 parts by mass; wherein a composition (cured
`
`product of the curable resin) is cured onto a conductive substrate (current collector) to
`
`form the resin layer (intermediate layer) by baking between 80°C to 240°C, wherein an
`
`example of 110°C inherently has a curing degree of the cured product of the curable
`
`resin that is 30% or more and 90%or less ((0037],[0042],[0044], [0067]-[0070],[0079]).
`
`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.
`
`Claims 1, 3, 4, and 6-11 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Turi et al (US 5478676) in view of Kato et al (US 2016/0042878).
`
`

`

`Application/Control Number: 16/659,770
`Art Unit: 1729
`
`Page 4
`
`Regarding claims 1, 3, 6, 10, and 11, Turi et al discloses a lithium battery
`
`(secondary battery) comprising: a cathode (positive electrode); an anode (negative
`
`electrode); and an electrolyte, wherein the cathode comprises: a support “17” (positive
`
`electrode current collector); a cathode electrode layer (positive electrode mixture layer)
`
`including lithium manganese oxide (positive electrode active material particles); and a
`
`primer layer “18” (intermediate layer / cured product) provided between the support and
`
`the cathode electrode layer, and wherein the primer layer comprises a cured productof
`
`ethylene acrylic acid (curable resin) having a carboxyl group; and a conductivefiller
`
`(conductive agent); wherein a curing degree of the cured product of the curable resin is
`
`construed as being 100%; wherein the primer layer comprises 5 to 70%by weight of
`
`conductivefiller; wherein the primer layer further comprises polyvinylidene fluoride
`
`(fluorine resin) and a massratio of curable resin to the fluorine resin that is 1:1.95;
`
`wherein examples of the conductivefiller include carbon black (carbon particles) (col. 3,
`
`lines 3-7 and lines 54-58, col. 4, lines 31-34, Examples 1 and 12-14).
`
`However, Turi et al does not expressly teach a curing degree of the cured
`
`productof the curable resin that is 30% or more and 90%or less (claim 1).
`
`Kato et al teaches the conceptof curing a composition (cured productof the
`
`curable resin) onto a conductive substrate (current collector) to form a resin layer “105”
`
`(intermediate layer) by baking between 80°C to 240°C, wherein an example of 110°C
`
`inherently has a curing degree of the cured product of the curable resin that is 30%or
`
`more and 90%or less ([0067],[0079)).
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time the invention was made to modify the Turi primer layer to include a curing degree
`
`

`

`Application/Control Number: 16/659,770
`Art Unit: 1729
`
`Page 5
`
`of the cured productof the curable resin that is 30% or more and 90%or lessin order to
`
`optimize the adhesion of the conductive substrate with the resin layer while maintaining
`
`the PTC function of the resin layer ([0067]).
`
`Regarding claim 4, Turi et al discloses a thicknessof the primer layer
`
`(intermediate layer) that is 0.5 to 100 um (col. 4, lines 44-45).
`
`However, Turi does not expressly teach a thickness of the intermediate layer that
`
`is 0.1 um or more and 10 um or less.
`
`However, it would have been obvious to one of ordinary skill in the art at the time
`
`the invention was made to modify the Turi primer layer to include a thicknessthatis 0.1
`
`um or more and 10 um or less because in a case wherethe claimed ranges overlap or
`
`lie inside ranges disclosed bythe prior art a prima facie case of obviousnessexists.
`
`(/n
`
`re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d
`
`1575, 16 USPQ 2d 1934 (Fed. Cir. 1990)). There is no evidenceofcriticality of the
`
`claimed thicknessof the intermediate layer.
`
`Regarding claims 7-9, Turi discloses a primer layer that further comprises a non-
`
`conductivefiller such assilica or titanium dioxide (insulating inorganic material) (col. 4,
`
`lines 40-43).
`
`However, Turi does not expressly teach a content of the insulating inorganic
`
`material is 1 mass% or more and 100 mass%or less in the cured product (claim 7);
`
`a sum content of the conductive agent and the insulating inorganic material that is 25
`
`mass%or more and 100 mass%or less in the cured product (claim 8); a massratio of
`
`the insulating inorganic material to the conductive agent that is in the range of 1:0.05 to
`
`1:70 (claim 9).
`
`

`

`Application/Control Number: 16/659,770
`Art Unit: 1729
`
`Page 6
`
`However, it would have been obvious to one of ordinary skill in the art at the time
`
`the invention was made to modify the Turi primer layer to include a content of the
`
`insulating inorganic material is 1 mass% or more and 100 mass%or less in the cured
`
`product; a sum content of the conductive agent and the insulating inorganic material
`
`that is 25 mass% or more and 100 mass%or less in the cured product; or a massratio
`
`of the insulating inorganic material to the conductive agent thatis in the range of 1:0.05
`
`to 1:70 because it has been held that the discovery of an optimum value of a result
`
`effective variable in a Known processis ordinarily within the skill of the art. In re Boesch,
`
`205 USPQ 215 (CCPA 1980). The content of the insulating inorganic material is a
`
`results effect variable of optimizing the mechanical strength, surface roughnessor
`
`conductivity of the primer layer (col. 4, lines 40-43). 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. /n re Aller, 220 F.2d 454. 456, 105 USPQ
`
`233, 235 (CCPA 1955)). There is no evidenceofcriticality of the claimed content of the
`
`insulating inorganic material.
`
`Claims 2 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Turi et al in view of Kato et al as applied to claim 1 above, and further in view of
`
`Shiozaki et al (US 2016/0190566).
`
`Regarding claim 2, Turi et al as modified by Kato et al does not expressly teach
`
`at least some of the positive electrode active material particles having at least a part
`
`that extends into the intermediate layer.
`
`

`

`Application/Control Number: 16/659,770
`Art Unit: 1729
`
`Page 7
`
`Shiozaki et al discloses a positive electrode mixture layer that is rolled with a
`
`current collector coated with a protective layer which inherently results in at least some
`
`of the positive electrode active material particles having at least a part that extends into
`
`the protective layer ([0045)).
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time the invention was made to modify the Turi/Kato cathode to include at least some of
`
`the positive electrode active material particles having at least a part that extends into
`
`the intermediate layer in order to further bond the cathode electrode layer to the coated
`
`current collector, thereby preventing delamination of the cathode electrode layer.
`
`Regarding claim 12, Turi et al as modified by Kato et al does not expressly teach
`
`a positive electrode active material particles that includeslithium nickel composite oxide
`
`particles.
`
`Shiozaki et al discloses a positive electrode active material that is a lithium-
`
`transition metal oxide such as LixCoyNi1-yO2 ([0024)).
`
`Therefore, the invention as a whole would have been obvious to one of ordinary
`
`skill in the art at the time the invention was made becausethe disclosure of Shiozaki
`
`indicates that LixCoyNi1-yO2 is a suitable material for use as a positive electrode active
`
`material. The selection of a known material based on its suitability for its intended use
`
`has generally been held to be prima facie obvious (MPEP §2144.07). As such, it would
`
`be obvious to use LixCoyNi1-yOz.
`
`

`

`Application/Control Number: 16/659,770
`Art Unit: 1729
`
`Page 8
`
`Responseto Arguments
`
`Applicant's arguments with respect to claim(s) 1-4 and 6-12 have been
`
`considered but are moot because the new groundof rejection does not rely on any
`
`reference applied in the prior rejection of record for any teaching or matter specifically
`
`challenged in the argument.
`
`Conclusion
`
`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).
`
`A shortenedstatutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the eventa first reply is filed within
`
`TWO MONTHS ofthe mailing date ofthis final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortenedstatutory period, then the
`
`shortenedstatutory 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.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to TONY S CHUO whosetelephone number is (571)272-
`
`0717. The examiner can normally be reached Monday- Friday, 9:00am - 5:30pm.
`
`

`

`Application/Control Number: 16/659,770
`Art Unit: 1729
`
`Page 9
`
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`
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`
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`
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`
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`
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`
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`
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`
`/T.S.C/
`Examiner, Art Unit 1729
`
`/ULA C RUDDOCK/
`Supervisory Patent Examiner, Art Unit 1729
`
`