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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
`
`16/665,201
`
`10/28/2019
`
`Hideo Kusada
`
`P191102US00
`
`4437
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`SMITH, ERIC R
`
`ART UNIT
`1726
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/24/2021
`
`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)
`
`

`

`Office Action Summary
`
`Application No.
`16/665 ,201
`Examiner
`ERIC R SMITH
`
`Applicant(s)
`Kusada et al.
`Art Unit
`1726
`
`AIA (FITF) Status
`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 10/28/2019.
`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.
`
`Disposition of Claims*
`1-7 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) 1-7 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 10/28/2019 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)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 1/6/2020.
`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 20211119
`
`

`

`Application/Control Number: 16/665,201
`Art Unit: 1726
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application,filed on or after March 16, 2013, is being examined under the first
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`inventorto file provisions of the AIA.
`
`Claim Rejections - 35 USC § 103
`
`Inthe event the determination of the status of the application as subject to AIA35 U.S.C. 102
`
`and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
`
`basis for the rejection will not be considered a new ground ofrejection if the prior art relied upon, and
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`the rationale supporting the rejection, would be the same under either status.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
`
`set forth in this Office action:
`
`A patent fora claimed invention may not be obtained, notwithstanding that the claimed inventionis
`notidentically disclosed as set forth ins ection 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 ofthe claimed invention to a person having ordinary skillinthe art to which the
`claimed invention pertains. Pa tentability s hall not be negated by the mannerin which the invention
`was made.
`
`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 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
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`nonobviousness.
`
`This application currently names joint inventors. In considering patentability of the claims the
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`examiner presumes that the subject matter of the various claims was commonly owned as of the
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`effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised
`
`

`

`Application/Control Number: 16/665,201
`Art Unit: 1726
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`Page 3
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`of the obligation under 37 CFR 1.56 to point out the inventor and effectivefiling dates of each claim that
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`was not commonly ownedas of the effective filing date of the later invention in order for the examiner
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`to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art
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`against the later invention.
`
`Claims 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US PGPub
`
`2020/0136190 to Yamashita, and further in view of US PGPub 2015/0140403 to Moon.
`
`Regarding claims 1-6, Yamashita teaches a secondary battery (“film exterior battery” in 90018;
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`“lithium secondary battery” described in 40002), comprising an electrode assembly (“electrode
`
`laminate” of 0002, 0018) including a plurality offirst electrodes (the electrode assembly comprises a
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`plurality of mono-cells 1 illustrated in Figs. 2-4; each mono-cell includesfirst electrodes 6/16, 70014,
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`0015; therefore the electrode assembly comprises a plurality of first electrodes) and a plurality of
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`second electrodes (each mono-cell 1 includes second electrodes 10/21, 10016) alternately laminated
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`with a separator8 interposed therebetween (10017), wherein
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`the separator8 includes a resin base material (polyethylene or polypropylene, 410017) and a
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`porous heat-resistant layer 23, the porous heat-resistant layer being formed on oneside of the resin
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`base material,
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`the electrode assembly has: first adhesive particles 46 bonding the first electrodes 6/16 to the
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`heat resistant layer 23 (10020), and second adhesive particles 34 bonding the second electrodes 10/21
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`to the resin base material.
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`While not particularly discussed, a skilled artisan would understand, especially from the context
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`provided in Yamashita, that each of the first adhesive particles 46 and eachof the second adhesive
`
`particles 34 necessarily has a mass, as they clearly have a volume and are formed of an adhesive
`
`material. Further the first adhesive particles 46 are provided ata first interface 6a/8a (Fig. 3) between
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`the first electrodes 6/16 and the heat resistant layer 23, and the combined massofthe first adhesive
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`

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`Application/Control Number: 16/665,201
`Art Unit: 1726
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`Page 4
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`particles is spread over the area of the interface in the plane of “W” and “D2” shown in Fig. 5 (4]0025-
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`0027). Similarly the second adhesive particles 34 are provided at a second interface 10a/8b between the
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`second electrodes 10/21 and the resin base material, andthe combined mass of the second adhesive
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`particles is spread over the area of that interface.
`
`Yamashita very clearly teachesthat the number (“a” in 10026-0043) offirst adhesive particles
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`46, and the area (a function of “b” shown in Fig. 5) of each of the first adhesive particles, and the
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`distribution of first adhesive particles across plane which has an area are known result effective
`
`variables that can be calculated to optimize an adhesion force (“peeling strength”) at the first interface
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`6a/8a. Yamashita further teaches that these same parameters can be independently calculated with
`
`respect to the second adhesive particles 34 and the second interface 10a/8b. The massofthe first
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`adhesive particles per unit area at the first interface between thefirst electrodes and the heat resistant
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`layer, and the massof the second adhesive particles per unit area at a second interface between the
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`second electrodes and the resin base material are parametersthat are fully dependent upon these
`
`result effective variables. Therefore it would have been obvious as of the effective filing date of the
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`claimed invention for a person having ordinaryskill in the art to individually optimize the massof the
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`first adhesive particles per unit area at the first interface and the mass of the second adhesive particles
`
`per unit area at the second interface to individually optimize the adhesion force at those interfaces.
`
`“{W]here the general conditions of a claimare disclosed in the priorart, itis not inventive to
`
`discover the optimum or workable ranges by routine experimentation.” See /n re Aller, 220 F.2d 454,
`
`456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result 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.).
`
`Therefore the claimed limitation that the massoffirst adhesive particles per unit area at the
`
`first interface is larger than a mass of the second adhesive particles at the second interface is an obvious
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`

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`Application/Control Number: 16/665,201
`Art Unit: 1726
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`result of this optimization.
`
`Page5S
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`Yamashita does not particularly teach that the battery is a non-aqueous electrolyte battery, that
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`the resin base materialis porous, or that the porous heat resistant layer has larger surface irregularities
`
`than surface irregularities than the resin base material. It would have been obvious as of the effective
`
`filing date of the claimed invention for a person having ordinaryskill in the art to form the separator to
`
`include a porous resin base material it may function to prevent short circuits in the battery while still
`
`absorbing electrolyte (10047-0049, 0091 of Moon).
`
`It would have been obvious as of the effectivefiling date of the claimed invention for a person
`
`having ordinaryskill in the art to use a non-aqueous electrolyte in the battery because such an
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`electrolyte (ethylene carbonate/dimethylene carbonate/diethylene carbonate/LiPF, of 10112 of Moon)
`
`is known tobe suitable in the art. The selection of a known material, which is based uponits suitability
`
`for the intended use, is within the ambit of one of ordinaryskill in the art. See /n re Leshin, 125 USPQ
`
`416 (CCPA 1960) (see MPEP § 2144.07).
`
`It would have been obvious as of the effectivefiling date of the claimed invention for a person
`
`having ordinaryskill in the art to form the surface irregularities of the porous heat-resistant layer
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`(analogous to layer 2 of Fig. 1 of Moon) to be larger than surface irregularities of the resin base material
`
`(analogous to layer 1) in order to allow adhesive particles to contact the resin base material (10032 of
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`Moon).
`
`Per claims 2-5, modified-Yamashita teachesthe limitations of claim1. Based on the reasoning
`
`above, the claimed ratio (A/B) of (A) the number offirst adhesive particles per unit area at thefirst
`
`interface and (B) the number of second adhesive particles per unit area at the second interface is an
`
`obvious result of the optimization. The claimed rangesof ($1) adhesion force between the first electrode
`
`and the heat resistant layer and (S2) adhesion force between the second electrode and the resin base
`
`material, and an adhesion force ratio ($1/S2), are obvious results of the optimization (particularly see
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`

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`Application/Control Number: 16/665,201
`Art Unit: 1726
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`Page 6
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`0035). Consequently, the claimed range of the combined parameter (A/B, $1/S2) results from the
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`optimization.
`
`Per claim 6, modified-Yamashita teaches the limitations of claim 1. Yamashita does not
`
`specifically teach the kind of the adhesive particles used for the first adhesive particles and the second
`
`adhesive particles, but Moon teaches that it would have been obvious as of the effective filing date of
`
`the claimed invention for a person having ordinaryskill in the art to form similar adhesive particles (3, 4
`
`of Fig. 1) to be the same kind (0041). The combination of familiar elementsis likely to be obvious when
`
`it does no morethan yield predictable results. See KSR InternationalCo. v. Teleflex inc., 550 U.S. 398,
`
`415-421, 82 USPQ2d 1385, 1395 — 97 (2007) (see MPEP § 2143, A.).
`
`Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita and Moon
`
`as applied to claim 1 above, and further in view of US PGPub 2015/0004464 to Okuno.
`
`Regarding claim7, modified-Yamashita teaches thelimitations of claim 1. Yamashita teaches
`
`exemplaryfirst adhesive particles 46 having an averageparticle diameter (“b” of Fig. 5) that is on the
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`scale of millimeters (10035, 0036). Yamashita’s heat resistant layer 23 is described as being formed of a
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`binder and inorganic compound particles (410017). Yamashita does not particularly teachan average
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`particle diameter of the inorganic compound particles. Moon teachesa layer (2 of Fig. 1) formed of
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`binder and inorganic compound particles which may have an average particle diameter of up to 100 nm
`
`(10044), and a range of average particle diameter of a similar adhesive particle that may be as low as
`
`about 10 micrometers and perform the same function as those of Yamashita (0034). Thereforeit
`
`would have been obvious as of the effective filing date of the claimed invention for a person having
`
`ordinary skill
`
`in the art to form the averageparticle diameter of the first adhesive particles to be as low
`
`as about 10 micrometers, with the expectation that such particles would successfully perform their
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`intended function. A range can be disclosed in multiple prior art references instead of in a single prior
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`

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`Application/Control Number: 16/665,201
`Art Unit: 1726
`
`Page 7
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`art reference depending on the specific facts of the case. Iron Grip Barbell Co., Inc. v. USA Sports,Inc.,
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`392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004). MPEP §2144.05. The references do not
`
`suggest the relative size of inorganic compound particles and first adhesive particles.
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`Okuno, however, teaches that it would have been obvious as of the effectivefiling date of the
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`claimed invention for a person having ordinaryskill in the art to include inorganic compound particles
`
`(4a of Figs. 2, 3) having an average particle diameter of greater than 3.5 micrometers, specifically
`
`including a diameter of 9.5 micrometers, in a heat resistant layer such as taught by modified-Yamashita
`
`to improve spacing between a separator and electrode and reducing damage to a battery (Table 1, 2 and
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`related text; 40043, 0044, 0046, 0060). Based on Okuno’s disclosure, a skilled artisan would understand
`
`Okuno’s range of anaverageparticle diameter of greater than 3.5 micrometers to include values of
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`average particle diameter that are about 10 micrometers. Therefore the range of the average particle
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`diameter of inorganic compound particles and the range of average particle diameter offirst adhesive
`
`particles rendered obvious by the references overlap, andaskilled artisan would form an embodiment
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`in which the inorganic compound particles are larger thanthefirst adhesive particles and have a
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`reasonable expectation that such an embodiment would function as desired. The prior art can be
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`modified or combined to reject claims as prima facie obvious as long as there is a reasonable
`
`expectation of success. See In re Merck & Co., Inc., 8300 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (see
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`MPEP § 2143.02).
`
`The prior art made of recordand notrelied upon is considered pertinent to applicant's
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`Conclusion
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`disclosure. US PGPub 2018/0309108.
`
`

`

`Application/Control Number: 16/665,201
`Art Unit: 1726
`
`Page 8
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`Anyinquiry concerning this communication or earlier communications from the examiner
`
`should be directed to ERICR SMITH whose telephone number is (571)270-7186. The examiner can
`
`normally be reached M-F, 8:30am-5:30pm MST.
`
`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 encouraged to use
`
`the USPTO Automated Interview Request (AIR) at http://www. uspto. gov/interviewpractice.
`
`If attempts to reachthe examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Jeffrey Barton canbe reached on (571) 272-1307. The fax phone number for the organization where this
`
`application or proceedingis assigned is 571-273-8300.
`
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`
`ERICR. SMITH
`
`Primary Examiner
`Art Unit 1726
`
`/ERICR SMITH/
`Primary Examiner, Art Unit 1726
`
`