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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/975,829
`
`08/26/2020
`
`Fumiharu Niina
`
`P200800US00
`
`6904
`
`WHDA,LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA22182
`
`KRONE, TAYLOR HARRISON
`
`1728
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/19/2024
`
`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*
`1-2 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`5a) Of the above claim(s) _ is/are withdrawn from consideration.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) 1-2 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* 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)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)7) 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)C All
`1.1.) Certified copies of the priority documents have been received.
`2.2) 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)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240905
`
`Application No.
`Applicant(s)
`16/975,829
`Niinaet al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`TAYLOR H KRONE
`1728
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 20 August 2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3) 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)(2) 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: 16/975,829
`Art Unit: 1728
`
`Page 2
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`DETAILED ACTION
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`Continued Examination Under 37 CFR 1.114
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`A request for continued examination under 37 CFR 1.114, includingthe fee set forth in
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`37 CFR 1.17(e), was filed in this application after final rejection. Since this applicationis
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`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e)
`
`has been timely paid, the finality of the previous Office action has been withdrawn pursuantto
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`37 CFR 1.114.
`
`Applicant's previously submitted amendmentfiled on July 23, 2024, has been entered.
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`Claims 1-2 remain pendingin the application.
`
`Response to Arguments
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`Applicant's arguments filed on July 23, 2024, have been fully considered. However,
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`applicant’s arguments are unpersuasive in view of the new rejection of record presented below.
`
`Claim Rejections - 35 USC § 103
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`In the eventthe determination ofthe status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (oras subject to pre-AJA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new groundof rejection if the prior art
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`relied upon, andthe rationale supporting the rejection, would be the same undereitherstatus.
`
`The followingis a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejections set forth in this Office action:
`
`A patent fora 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 obviousbefore 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.
`
`The factual inquiries for establishing a backgroundfor determining obviousness under 35
`
`U.S.C. 103 are summarizedas follows:
`
`

`

`Application/Control Number: 16/975,829
`Art Unit: 1728
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`Page 3
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`1. Determining the scope and contents of the priorart.
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`2. Ascertaining the differences betweenthe prior art and the claimsat issue.
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`3. Resolving the level of ordinary skill in the pertinentart.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`This application currently namesjoint inventors. In considering patentability of the
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`claims the examiner presumesthat the subject matter of the various claims was commonly
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`ownedas of the effective filing date of the claimed invention(s) absent any evidenceto 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 asof the effective filing date
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`of the later invention in order for the examinerto 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.
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`Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over
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`JP2012015051 (Toshiro ‘051 — citing to English translation) in view of US20170155167
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`(Abe ‘167), and further in view of US20180062158 (Kim ‘158).
`
`Regarding Claim 1, Toshiro ‘051 teaches a nonaqueous electrolyte secondary battery
`
`comprising a positive electrode containing a positive electrode active material (a positive
`
`electrode having a positive electrode active material; bottom of page 25 of the English
`
`translation), a negative electrode (a negative electrode; middle of page 24 of the English
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`translation) including a negative electrode mix layer (the negative electrode layer comprising at
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`least two layers to form a multilayer structure; top of page 25 of the English translation),
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`wherein the positive electrode active material contains a titanium lithium complex oxide
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`(a lithium composite oxide with the general formula: Li, Niy Mn, Coq-y-z-w) Aw O2 wherein A may
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`

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`Application/Control Number: 16/975,829
`Art Unit: 1728
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`Page 4
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`be a transition metal such as Ti; where 1.0<x< 1.02, y>z,0<z<0.4,0<w<0.01; sce top of
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`page 26 of the English translation) that has a lattice shrinkage in a chargedstate of 98.5% orless.
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`The composition disclosed in Toshiro ‘051 above overlaps with the composition disclosed in
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`paragraph [0019] of the instant application’s specification forthe titanium lithium complex oxide
`
`of claim 1. In Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985),
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`the court said that it was immaterial what properties the alloys had or who discoveredthe
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`properties because the composition is the same and thus must necessarily exhibit the properties.
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`Thus, the limitation that the titanium complex oxide hasa lattice shrinkage in a charged
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`state of 98.5% orless is an inherent property of the composition cited in the specification and
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`does not further impart any structure to the claim. See MPEP 2112.01 I: “Where the claimed and
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`prior art products are identical or substantially identical in structure or composition, or are
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`producedby identical or substantially identical processes, a prima facie case of either
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`anticipation or obviousness has been established” (Un re Best, 562 F.2d 1252, 1255, 195 USPQ
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`430, 433 (CCPA 1977)).
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`Moreover, Toshiro ‘051 teaches that the negative electrode mix layer includes a first
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`layer and a secondlayer disposed successively from the negative electrode collector (the
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`negative electrode layer comprisingat least two layers to form a multilayer structure; top of page
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`25 of the English translation) and that each ofthe first layer and secondlayer contains a carbon-
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`based negative electrode active material (the layer closest to the current collector contains
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`crystalline carbon andthe layer farther away from the current collector contains amorphous
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`carbon; top of page 25 of the English translation), wherein the carbon-basednegative electrode
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`active material is a primary negative electrode active material constituting a highest
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`concentration in eachofthe first layer and the secondlayer (each ofthe two layers of the
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`

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`Application/Control Number: 16/975,829
`Art Unit: 1728
`
`Page 5
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`multilayer structure is primarily composed of a carbon based material, either crystalline carbon
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`or amorphous carbon; page 25 of the English translation).
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`Toshiro ‘051 does not explicitly teach that a ratio (B/A) of the D-band/G-bandratio (B)
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`of the Ramanspectrum of the second layer to the D-band/G-bandratio (A) of the Raman
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`spectrum of the first layer is 4 to 6 and that the carbon-based negative electrode active material
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`containedin the second layer includes an amorphous carbon anda graphite-based carbon,
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`wherein the amorphous carbon is configured to be chemically and/or physically bondedto a
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`surface of the graphite-based carbon. However, Toshiro ‘051 does vary the carbon content of the
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`amorphous carbon mixture layer with the crystalline graphite carbon mixture layer, such that the
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`negative electrode mixture layer farther from the negative electrode current collector has a higher
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`content of the amorphouscarbon, while the content of the crystalline carbon at the layer closest
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`to the negative electrode collector is higher than that of the amorphous carbon (abstract). As
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`such, varying the amount of amorphous carbon correspondsto the peak intensity ratio of D-
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`band/G-band, wherebya higherratio correspondsto a larger amount of amorphous carbon
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`(paragraph [0023] of the instant application).
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`Additionally, Abe ‘167 teaches a negative electrode active material with a graphite B and
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`graphite A, such that the lithium ion receptivity can be increased (paragraph [0058]). The
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`graphite B is comprised of graphite particles as base particles whose surface are coated with an
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`amorphous carbon. The graphite carbon particles and the amorphouscarbonparticles are
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`contained in a single layer correspondingto the second layer, whereby it is the examiner’s
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`position that the graphite carbon and amorphous carbon are chemically and/or physically bonded
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`together by a vapor phase methodthrough thermolysis of a hydrocarbon gas such as propane or
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`acetylene carbon, thereby makingit into carbon to be deposited onto the surface of graphite
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`

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`Application/Control Number: 16/975,829
`Art Unit: 1728
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`Page 6
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`(paragraph [0056] of Abe ‘167), which correspondsto the instant application’s disclosure of the
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`amorphous carbon beingfixed or bondedto the surface of graphite -based carbon (paragraphs
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`[0033] & [0034] of the instant application). Further, Abe ‘167 teaches that the R value is a peak
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`strength ratio of the peak strength at 1340 to 1370 cm“! with respect to the peak strength at 1570
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`to 1590 cm:! by means of an argon ion laser Raman spectrum (paragraph [0056] of Abe ‘167),
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`which correspondsto the instant application’s disclosure of the peak intensity ratio of D-band/G-
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`bandbeing usedas an indicator of the amount of amorphous carbon (paragraph [0023] of the
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`instant application). It is preferable, that the R value is 0.3 or more in orderto secure sufficient
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`quantity of the coating by the amorphous carbon ((0056] of Abe ‘167).
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`Accordingly, prior to the effective filing date of the claimed invention, one of ordinary
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`skill in the art, would have optimized, by routine experimentation, the amount of amorphous
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`carbon in each layer, corresponding to the D-band/G-bandratio, in order to secure sufficient
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`quantity of the coating by amorphous carbon in the secondlayerof the negative electrode mix
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`layer. “[W]here the general conditions of a claim are disclosed in the priorart, itis not inventive
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`to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220
`
`F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a
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`knownresult effective variable, without producing any new or unexpectedresults, is within the
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`ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980)(see
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`MPEP§ 2144.05, II).
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`However, modified Toshiro ‘051 does not disclose that the negative electrode mix layer
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`further includes a silicon compound as a secondary negative electrode active material in addition
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`to the carbon-based negative electrode active material, and the silicon compoundiseither(1)
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`contained only in thefirstlayer, or (11) contained in a higher concentration in the first layer than
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`

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`Application/Control Number: 16/975,829
`Art Unit: 1728
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`Page 7
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`in the second layer. Further, modified Toshiro ‘051 does not disclose that the negative electrode
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`mix layer contains a polyacrylic acid ora salt thereof, and each ofthe first layer and the second
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`layer contains a binderdifferent from the polyacrylic acid or a salt thereof, wherein the second
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`layer contains no polyacrylic acid norsalt thereof, and a concentration of the polyacrylic acid or
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`a Salt thereof in the first layer is higher than a concentration of the polyacrylic acid ora salt
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`thereof in the secondlayer.
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`Kim ‘158 discloses a negative electrode for a lithium secondary battery comprising: a
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`negative electrode currentcollector; a first negative electrode mixture layer containing a first
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`negative electrode active material, a first polymer binder and a first conductive material and
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`formed on at least one surface of the negative electrode current collector; and a second negative
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`electrode mixture layer containing a second negative electrode active material, a second polymer
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`binder and a second conductive material and formed on an uppersurface ofthe first negative
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`electrode mixture layer, wherein the first negative electrode active material contains natural
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`graphite and silicone oxide, and the second negative electrode active material containsartificial
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`graphite ([0008]). The first negative electrode mixture layer containing silicon oxide and natural
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`graphite has high capacity and excellent adhesion, while the second negative electrode mixture
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`layer containingartificial graphite improves output characteristics ([0015] & [0023]).
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`Therefore, prior to the effective filing date of the claimed invention, it would have been
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`obvious to a person of ordinary skill in the art, to modify the negative electrode mix layerof the
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`negative electrode of the nonaqueouselectrolyte secondary battery, as taught by modified
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`Toshiro ‘051, to include a silicon compound as a secondary negative electrode active material in
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`addition to the carbon-based negative electrode active material, wherein the silicon compoundis
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`

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`Application/Control Number: 16/975,829
`Art Unit: 1728
`
`Page 8
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`contained only in thefirst layer, to provide a negative electrode mix layer with high capacity and
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`excellent adhesion, as suggested by Kim ‘158.
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`Kim ‘158 further discloses that preferably, the first polymer binder and the second
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`polymer binder may be independently at least one selected from the group consisting of
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`polyvinylidene fluoride-hexafluoropropylene copolymer (PVDF-co-HFP), polyvinylidene
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`fluoride, polyacrylonitrile, polymethyl methacrylate, polyvinyl pyrrolidone, tetrafluoroethylene,
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`polyethylene, polypropylene, polyacrylic acid, ethylene-propylene-diene monomer (EPDM),
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`sulfonated EPDM,andstyrene butadiene rubber (SBR)(paragraph [0012]). As the first polymer
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`binder and the second polymerbinder may be independently selected from the group of binder
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`polymers disclosed above, wherein the bindersassist in the bonding of the active material and
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`the conductive material and the bondingto the current collector, itis the examiner’s position that
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`it would be obvious to a person of ordinaryskill in the art to select polyacrylic acid as the binder
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`in the first layer, along with anotherbinder other than polyacrylic acid, and to select a binder
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`other than polyacrylic acid in the second layer, such as SBR, wherein the second layer contains
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`no polyacrylic acid norsalt thereof, because the selection of a known material, which is based
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`uponits suitability for the intendeduse, is within the ambit of one of ordinary skill in the art. See
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`In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
`
`Regarding Claim 2, modified Toshiro ‘051 teaches the nonaqueous electrolyte
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`secondary battery according to claim 1, wherein the thickness of the secondlayeris 20% to 70%
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`of the thickness of the negative electrode mix layer(the first negative electrode mixture layer and
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`the second negative electrode mixture may have a thickness ratio of 3:7 to 1:9; [0010] & [0033]
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`of Kim ‘158). As set forth in MPEP 2144.05, in the case where the claimed range “overlaporlie
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`inside ranges disclosed by the priorart,” a prima facie case of obviousness exists (In re
`
`

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`Application/Control Number: 16/975,829
`Art Unit: 1728
`
`Page 9
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`Wertheim, 541 F.2d 257, 191 USPQ 90(CCPA 1976); In re Woodruff, 919 F.2d 1575, 16
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`USPQ2d 1934 (Fed. Cir. 1990)).
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to TAYLOR H KRONEwhosetelephone numberis (57 1)270-5064.
`
`The examiner can normally be reached Mondaythrough Friday from 9:00 AM - 6:00 PM EST.
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`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
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`supervisor, MATTHEW T MARTINcan be reached on 571-270-7871. The fax phone number
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`for the organization wherethis application or proceedingis assigned is 57 | -273-8300.
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`

`

`Application/Control Number: 16/975,829
`Art Unit: 1728
`
`/TAYLOR HARRISON KRONE/
`Examiner, Art Unit 1728
`
`/MATTHEW T MARTIN/
`Supervisory Patent Examiner, Art Unit 1728
`
`Page 10
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