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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
`
`16/878,906
`
`05/20/2020
`
`Kazuhiro Yoshii
`
`P200425US00
`
`1057
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`DOUYETTE, KENNETH J
`
`ART UNIT
`1725
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/29/2021
`
`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)
`
`

`

`
`
`Application No.
`Applicant(s)
`16/878 906
`Yoshii, Kazuhiro
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`KENNETH J DOUYETTE
`1725
`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 9/27/2021.
`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.
`
`Disposition of Claims*
`1-22 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 16-20 is/are withdrawn from consideration.
`() Claim(s)__ is/are allowed.
`Claim(s) 1-15 and 21-22 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`C] 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:/Awww.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)M The drawing(s) filed on 5/20/2020 is/are: a)¥) accepted or b)C) 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)() None ofthe:
`b)( Some**
`a) All
`1.4) 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 received in 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)
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`4)
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`
`Paper No(s)/Mail Date5/20/2020,3/23/2021,
`U.S. Patent and Trademark Office
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20211029
`
`

`

`Application/Control Number: 16/878,906
`Art Unit: 1725
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013,
`
`is being examined
`
`under the first inventor to file provisions of the AIA.
`
`2.
`
`Applicant’s election without traverse of Group | in the reply filed on 9/27/2021 is
`
`Election/Restrictions
`
`acknowledged.
`
`Claim Rejections - 35 USC § 102
`
`3.
`
`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-AIA 35 U.S.C. 102 and 103) is incorrect, any
`
`correction of the statutory basis for the rejection will not be considered a new groundof
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`4.
`
`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 person shall be entitled to a patent unless —
`
`(a)(1) the claimed invention was patented, described in a printed publication, orin public use,
`on sale, or otherwise available to the public before the effective filing date of the claimed
`invention.
`
`

`

`Application/Control Number: 16/878,906
`Art Unit: 1725
`
`Page 3
`
`5.
`
`Claims 1-3, 9-10, and 21-22 are rejected under 35 U.S.C. 102(a)(1) as being
`
`anticipated by Ouraet al. (WO 2017/149961, citations from Takahashi et al. (US
`
`2018/0375083).
`
`Regarding claim 1, Takahashi et al. discloses in Figs 1-4, a secondary battery
`
`(Abstract, ref 100), comprising: a positive electrode (ref 10); a negative electrode (ref
`
`20); a battery case (ref 70) housing the positive electrode (ref 10) and the negative
`
`electrode (ref 20); a positive electrode lead (ref 13) electrically connected to the positive
`
`electrode (ref 10); and an insulating tape (ref 14, 141a) covering a part (Figs 1-2) of the
`
`positive electrode lead (ref 13), wherein the positive electrode (ref 10) has a positive
`
`electrode current collector (ref 11) and a positive electrode active material layer (ref 12)
`
`formed on the positive electrode current collector (ref 11), the positive electrode current
`
`collector (ref 11) has, at a longitudinally central part (Figs 1-2) of the positive electrode
`
`active material layer (ref 12) on the positive electrode current collector (ref 11), an
`
`exposed part (ref 11a) on which no positive electrode active material layer (ref 12) is
`
`formed (Fig 1, [0046]), the positive electrode lead (ref 13) has a first end part (ref 13a)
`
`connected to the exposed part (ref 11a) and an extension part (ref 13b) extending from
`
`the first end part (ref 13a) toward an outside of a peripheral part (Fig 1, [0046]) of the
`
`positive electrode current collector (ref 11), an insulating layer (ref 142) is disposed on
`
`an outer surface (Figs 1-2) of the first end part (ref 13a) of the positive electrode lead
`
`(ref 13), the insulating layer (ref 142) is covered with an insulating tape (ref 141c), and
`
`the insulating tape (ref 141c) covers a boundary part (Figs 1-2) between the exposed
`
`part (ref 11a) and the positive electrode active material layer (ref 12).
`
`

`

`Application/Control Number: 16/878,906
`Art Unit: 1725
`
`Page 4
`
`Regarding claim 2, Takahashi et al. discloses all of the claim limitations as set forth
`
`above and also discloses the insulating layer (ref 142) is disposed on the outer surface
`
`(Figs 1-2) of the first end part (ref 13a) of the positive electrode lead (ref 13) and on the
`
`exposed part (ref 11a).
`
`Regarding claim 3, Takahashi et al. disclosesall of the claim limitations as set forth
`
`above and also disclosesthefirst end part (ref 13a) has a plate shape (Fig 1), the outer
`
`surface of the first end part (ref 13a) has one principal surface opposed to a surface on
`
`which thefirst end part (ref 13a) contacts the exposed part (ref 11a) and a pair of side
`
`surfaces (Figs 1-2), and the insulating layer (ref 142) is disposed on the one principal
`
`surface and the pair of side surfaces ([0047], describes layer 142 covering “entire
`
`surfaces” of ref 13a, even though Fig 2 does not explicitly show the layer 142 on side
`
`surfaces. “Entire surface” at [0047] meets these limitations).
`
`Regarding claim 9, Takahashi et al. disclosesall of the claim limitations as set forth
`
`above and also discloses the insulating layer disposed on the outer surface (Figs 1-2) of
`
`the first end part (ref 13a) is bonded to ([0047], Figs 1-2) the first end part (ref 13a).
`
`Regarding claim 10, Takahashi et al. discloses all of the claim limitations as set forth
`
`above and also discloses the battery case (ref 70) comprises a case body (ref 70)
`
`having an opening and a sealing assembly (Fig 4, [(0071]-[0074]) sealing the opening,
`
`the positive electrode lead (ref 13) has a second end part (ref 13b) connected to the
`
`battery case (ref 70) in a leading end side of the extension part (Figs 1, 4), the second
`
`

`

`Application/Control Number: 16/878,906
`Art Unit: 1725
`
`Page 5
`
`end part (ref 13b) of the positive electrode lead (ref 13) is connected to the sealing
`
`assembly (Fig 4, [0071]-[0074]), and no insulating layer (Figs 1-2, [0046], [0072]) is
`
`formed on the second end part (ref 13b).
`
`Regarding claim 21, Takahashi et al. discloses all of the claim limitations as set forth
`
`above and also discloses a wound-type electrode assembly ([0072]) in which the
`
`positive electrode (ref 10) and the negative electrode (ref 20) are wound with a
`
`separator (ref 30) interoosed there between, wherein the positive electrode active
`
`material layer (ref 12), the positive electrode lead (ref 13), and the insulating tape (ref
`
`141c) are disposed opposed to the negative electrode (ref 20) with the separator (ref
`
`30) interposed there between, and the insulating layer (ref 142) is disposed opposed to
`
`the negative electrode (ref 20) with the insulating tape (ref 141a) and the separator (ref
`
`30) interposed there between.
`
`Regarding claim 22, Takahashi et al. discloses all of the claim limitations as set forth
`
`above and also discloses the insulating layer (ref 142) has electrical resistance of 1 MQ
`
`or more ((0056], alumina).
`
`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-AIA 35 U.S.C. 102 and 103) is incorrect, any
`
`correction of the statutory basis for the rejection will not be considered a new groundof
`
`

`

`Application/Control Number: 16/878,906
`Art Unit: 1725
`
`Page 6
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`7.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis forall
`
`obviousness rejections set forth in this Office action:
`
`A patent for a claimed invention maynotbe obtained, notwithstanding that the claimed
`invention is not identicallydisclosed as set forth insection 102, if the differences between the
`claimed invention and the prior artare 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
`ordinaryskill inthe art to which the claimed invention pertains. Patentabilityshall notbe
`negated by the manner in whichthe invention was made.
`
`8.
`
`The factual inquiries for establishing a background for determining obviousness
`
`under 35 U.S.C. 103 are summarized asfollows:
`
`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 presentin the application indicating
`
`obviousness or nonobviousness.
`
`9.
`
`Claims 4-7, 11 and 14-15 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Ouraet al. (WO 2017/149961, citations from Takahashiet al. (US
`
`2018/0375083) as applied to claim 1 above.
`
`Regarding claims 4 and 11, Takahashi et al. discloses all of the claim limitations as
`
`set forth above and also discloses the insulating layer (ref 142) includes an inorganic
`
`material ([0055], [0056]), and the insulating layer (ref 142) is an oxide film ([0056]), but
`
`does notexplicitly disclose a basis weight of the inorganic material in the insulating
`
`layer is within a range of 0.5 to 10 mg/cm2, nor puncture breaking strength of the
`
`insulating layer is 1 N or more and 3.7 N or less.
`
`

`

`Application/Control Number: 16/878,906
`Art Unit: 1725
`
`Page 7
`
`As the insulation layer adhesiveness and strength are variables that can be
`
`modified, among others, by adjusting said amountof inorganic material (see Takahashi
`
`et al., [0055]-[0059]), with said insulation layer adhesiveness and strength both varying
`
`as the amountof inorganic material is varied, the precise amount of inorganic material
`
`would have been considered a result effective variable by one having ordinary skill in
`
`the art at the time the invention wasfiled. As such, without showing unexpected results,
`
`the claimed amount of inorganic material cannot be consideredcritical. Accordingly,
`
`one of ordinary skill in the art at the time the invention was filed would have optimized,
`
`by routine experimentation,
`
`the amount of inorganic material in the battery of Takahashi
`
`et al. to obtain the desired balance between the insulation layer adhesiveness and
`
`strength (/n re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since ithas been
`
`held that where the general conditions of the claim are disclosed in the prior art,
`
`discovering the optimum or workable ranges involves only routine skill in the art. (/n re
`
`Aller, 105 USPQ 223).
`
`Regarding claim 5, modified Takahashi et al. discloses all of the claim limitations as
`
`set forth above and also discloses an average particle diameter of the inorganic material
`
`is within a range of 1 —2 microns ([0057)).
`
`Regarding claim 6, modified Takahashi et al. discloses all of the claim limitations as
`
`set forth above and also discloses the insulating layer (ref 142) includes a binder
`
`({0054]-[0059}).
`
`

`

`Application/Control Number: 16/878,906
`Art Unit: 1725
`
`Page 8
`
`Regarding claim 7, modified Takahashi et al. discloses all of the claim limitations as
`
`set forth above and also discloses the inorganic material includes at least one of the
`
`group consisting of aluminum oxide ([0056)), titanium oxide ([0056]), magnesium oxide
`
`([0056])
`
`Regarding claim 14, modified Takahashi et al. discloses all of the claim limitations as
`
`set forth above and also discloses a thickness of the insulating layer (ref 142) is within a
`
`range of 5 - 10 microns ([0058)]).
`
`Regarding claim 15, Takahashi et al. disclosesall of the claim limitations as setforth
`
`above but does not explicitly disclose puncture breaking strength of the insulating layer
`
`is higher than puncture breaking strength of the insulating tape. As the insulation layer
`
`and tape type adhesiveness and strength are variables that can be modified, among
`
`others, by adjusting said type and amountof inorganic material and tape (see
`
`Takahashi et al., [0051]-[0052],
`
`[0055]-[0059]), with said insulation layer and tape type
`
`adhesiveness and strength both varying as the amountof inorganic material is varied,
`
`the precise amount of inorganic material would have been considered a result effective
`
`variable by one having ordinary skill in the art at the time the invention wasfiled. As
`
`such, without showing unexpected results, the claimed amountof inorganic material
`
`cannot be consideredcritical. Accordingly, one of ordinary skill in the art at the time the
`
`invention was filed would have optimized, by routine experimentation,
`
`the amount of
`
`inorganic material in the battery of Takahashi et al. to obtain the desired balance
`
`between the insulation layer and tape type and adhesiveness and strength (/n re
`
`

`

`Application/Control Number: 16/878,906
`Art Unit: 1725
`
`Page 9
`
`Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that
`
`where the general conditions of the claim are disclosed in the prior art, discovering the
`
`optimum or workable ranges involves only routine skill
`
`in the art. (/n re Aller, 105 USPQ
`
`223).
`
`10.
`
`Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ouraetal.
`
`(WO 2017/149961, citations from Takahashi et al. (US 2018/0375083) as applied to
`
`claim 4 above, and further in view of Saitoh et al. (US 2016/0043375).
`
`Regarding claim 8, modified Takahashi et al. discloses all of the claim limitations as
`
`set forth above but does not explicitly disclose the insulating layer disposed on the outer
`
`surface of the first end part is unbonded to the first end part.
`
`Saitoh et al. discloses in Figs 1-24, a battery (Abstract) including electrode leads
`
`coated with an insulating layer (not bonded, [0037]). This configuration enhances
`
`battery insulation without the cost of a bonding treatment ([0037]).
`
`Saitoh et al. and Takahashi et al. are analogous since both deal in the same field of
`
`endeavor, namely, batteries.
`
`It would have been obvious to one of ordinary skill in the art at the time offiling to
`
`incorporate the unbondedinsulation layer disclosed by Saitoh et al. into the lead
`
`structure of Takahashi et al. to enhance battery insulation while retaining low production
`
`costs.
`
`

`

`Application/Control Number: 16/878,906
`Art Unit: 1725
`
`Page 10
`
`11.
`
`Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Ouraetal.
`
`(WO 2017/149961, citations from Takahashi et al. (US 2018/0375083) as applied to
`
`claim 11 above, and further in view of Wyser (US 4,520,085).
`
`Regarding claim 12, Takahashi et al. disclosesall of the claim limitations as setforth
`
`above and also discloses the positive electrode lead (ref 13) includes aluminum ([0045])
`
`or an alloy mainly containing aluminum ([0045]), but does not disclose and the oxide
`
`film includes an anodized film.
`
`Wyser discloses in Figs 1-6, a battery (Title) including electrode leads that are
`
`anodized (C2/L55-64). This configuration enhancesinsulating strength within the lead
`
`structure (C2/L55-64).
`
`Wyser and Takahashi et al. are analogous since both deal in the same field of
`
`endeavor, namely, batteries.
`
`It would have been obvious to one of ordinary skill in the art at the time offiling to
`
`incorporate the anodized layer disclosed by Wyser into the lead material of Takahashi
`
`et al. to enhance the insulating strength of the material.
`
`12.
`
`Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Ouraetal.
`
`(WO 2017/149961, citations from Takahashi et al. (US 2018/0375083) as applied to
`
`claim 11 above, and further in view of Mizuta et al. (US 2009/0263712).
`
`Regarding claim 13, Takahashi et al. discloses all of the claim limitations as set forth
`
`above but does not disclose the phosphate film includes a phosphoric chromate film or
`
`a zinc phosphate film.
`
`

`

`Application/Control Number: 16/878,906
`Art Unit: 1725
`
`Page 11
`
`Mizuta et al. discloses in Figs 1-10, a battery (ref 1) including electrode leads
`
`([0058]) that are treated with a zinc phosphate film ({0058]). This configuration
`
`enhances corrosion resistance within the electrode lead ([0058)).
`
`Takahashi et al. and Mizuta et al. are analogous since both deal in the same field of
`
`endeavor, namely, batteries.
`
`It would have been obvious to one of ordinary skill in the art at the time offiling to
`
`incorporate the zinc phosphatefilm treatment disclosed by Mizuta etal. to the lead of
`
`Takahashi et al. to enhance corrosion resistance of the lead.
`
`Conclusion
`
`13.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to KENNETH J DOUYETTE whosetelephone numberis
`
`(571)270-1212. The examiner can normally be reached Monday - Friday 8A - 4P EST.
`
`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:/AWwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Basia Ridley can be reached on 571-272-1453. The fax phone number for
`
`the organization 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 submissions in Patent Center,
`
`

`

`Application/Control Number: 16/878,906
`Art Unit: 1725
`
`Page 12
`
`visit: httos://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
`
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`
`/KENNETH J DOUYETTE/
`Primary Examiner, Art Unit 1725
`
`