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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
`
`17/286,89 1
`
`04/20/2021
`
`NAOAKI NISHIMURA
`
`083710-3491
`
`2752
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`RAYMOND,BRITTANY L
`
`1722
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/24/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-12 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-12 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://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) The drawing(s) filed on 4/20/2021 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
`1.2) Certified copies of the priority documents have been received.
`2.2 Certified copies of the priority documents have been received in Application No.
`3.4 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 4/20/2021;1/18/2022.
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20231017
`
`Application No.
`Applicant(s)
`17/286,891
`NISHIMURAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`BRITTANY L RAYMOND
`1722
`Yes
`
`
`
`-- The MAILING DATEof this 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 4/20/2021.
`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)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.
`
`

`

`Application/Control Number: 17/286,89 1
`Art Unit: 1722
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
`
`The present application, filed on or after March 16, 2013,
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`is being examined
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`under the first inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 112
`
`2.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—The specification shall conclude with one or more claims particularly
`pointing outand distinctly claiming the subject matter which the inventor or a jointinventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specificationshall conclude with one or more claims particularly pointing outand distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`3.
`
`Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim the
`
`subject matter which the inventor or a joint inventor (or for applications subject to pre-
`
`AIA 35 U.S.C. 112, the applicant), regards as the invention.
`
`Regarding claim 5, “at least three or more” is redundant and should either be, “at
`
`least three layers” or “three or more layers’.
`
`Claim Rejections - 35 USC § 102
`
`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 made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(a)(1) the claimed invention waspatented, 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.
`
`5.
`
`Claim(s) 1, 3, 4 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being
`
`anticipated by Masaoka (JP Publication 2012-138225).
`
`

`

`Application/Control Number: 17/286,89 1
`Art Unit: 1722
`
`Page 3
`
`Regarding claim 1, Masaoka discloses a primary battery comprising: a positive
`
`electrode layer containing manganese dioxide, a negative electrode layer containing
`
`metallic lithium, a separator interposed therebetween, and a non-aqueous electrolyte,
`
`wherein the layers are spirally wound (Paragraphs 0012, 0036). Masaoka also
`
`discloses that the lithium negative electrode layer can have a width of 37 mm and a
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`length of 192 mm (Paragraph 0069), which are 3.7 and 19.2 cm, respectively. By
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`multiplying this together, we get an area of 71.04 cm? for one principal surface of the
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`layer. Both principal surfaces of the layer would be double this amount, or 142.08 cm2.
`
`As to claim 3, Masaoka teaches that the battery can have a heavy load pulse
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`discharge, which is an instantaneous discharge of 0.3-3 A (Paragraphs 0021 and 0028).
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`Regarding claim 4, Masaoka states that the wound electrode assembly and
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`electrolyte are placed in a battery can and sealing the can withalid plate using laser
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`welding (Paragraphs 0010-0011).
`
`As to claim 6, Masaokadiscloses that the separator comprises a microporous
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`film and has a thickness of 20-100 microns (Paragraphs 0044 and 0047).
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`Masaoka teaches everylimitation of claims 1, 3, 4 and 6 of the present invention
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`and thus anticipates the claims.
`
`Claim Rejections - 35 USC § 103
`
`6.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis forall
`
`obviousness rejections set forth in this Office action:
`
`Apatent fora claimed invention may notbe 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 artare such that the claimed invention as a whole would have
`been obvious beforethe effective filing date of the claimed inventionto a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall notbe
`negated by the manner in whichthe invention was made.
`
`

`

`Application/Control Number: 17/286,89 1
`Art Unit: 1722
`
`Page 4
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`The factual inquiries for establishing a background for determining obviousness
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`under 35 U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims atissue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`7.
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`Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Masaoka (JP Publication 2012-138225) in view of Asano (U.S. Patent Publication
`
`2016/0344060).
`
`The teachings of Masaoka have been discussed in paragraph 5 above.
`
`Masaokafails to disclose that capacity Cn or the negative electrode is larger than
`
`capacity Cp of the positive electrode.
`
`Asano discloses a thin battery including a sheet-like electrode assembly
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`containing a stack of electrode and separator sheets, and a non-aqueous electrolyte in
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`a housing, wherein a capacity ratio Cn/Cp of the negative electrode capacity Cn to the
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`positive electrode capacity Cp is more than 1, preferably 1.01 to 1.3 (Paragraphs 0014,
`
`0068, 0091).
`
`It would have been obvious to oneofordinary skill in the art, before the effective
`
`filing date of the present invention to have created the electrode sheets of Masaoka so
`
`that the negative electrode capacity is larger than the positive electrode capacity
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`because Asano teachesthat this prevents precipitation of metallic lithium.
`
`

`

`Application/Control Number: 17/286,89 1
`Art Unit: 1722
`
`Page 5
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`8.
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`Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Masaoka (JP Publication 2012-138225) in view of Takai (JP Publication 2009-252731).
`
`The teachings of Masaoka have been discussed in paragraph 5 above.
`
`Masaokafails to disclose that the separator has a multilayer structure of at least
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`three or more layers.
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`Takai disclosesalithium primary battery comprising: a positive electrode
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`containing manganese dioxide, a negative electrode containing metallic lithium, and a
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`separator which are spirally wound, and a non-aqueous electrolyte, wherein the
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`separator can be a multilayer structure constructed by laminating a plurality of
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`microporous films or nonwoven fabrics (Paragraphs 0007, 0014, 0024).
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`It would have been obvious to oneofordinary skill in the art, before the effective
`
`filing date of the present invention to have used a multilayer separator with at least three
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`layers in the battery of Masaoka because Takai teaches that more layers improve the
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`reliability of the separator.
`
`9.
`
`Claim(s) 7-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over
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`Masaoka (JP Publication 2012-138225) in view of Suzuki (U.S. Patent Publication
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`2008/0107965).
`
`The teachings of Masaoka have been discussed in paragraph 5 above.
`
`Masaokaalso discloses that each primary cell was discharged at a current of 2000
`
`mAh, and a voltage after a pulse discharge of 1300 ms at a current value of 500 mA
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`was measured (Paragraph 0079), as recited in claims 8 and 9 of the present invention.
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`Masaokafails to disclose that the primary battery is installed on a device
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`controlled so that a pulse current and a base current that is smaller than the pulse
`
`

`

`Application/Control Number: 17/286,89 1
`Art Unit: 1722
`
`Page 6
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`current are discharged, that the pulse current is discharged at least once a day, that the
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`pulse current is discharged two or more times a day, and that the base current is 0.1 WA
`
`or more.
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`Suzuki discloses that pulse discharge experiments can be performed on batteries
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`wherein 25 UA of base current is flown and wherein discharge (pulse discharge) by 50
`
`mA at every 10 hours was kept for 0.5 seconds at 60 degrees Celsius (Paragraph
`
`0041), as recited in claims 7 and 12 of the present invention.
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`If the discharge is
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`performed every 10 hours, this would be at least 2 times a day, as recited in claims 10
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`and 11 of the present invention.
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`It would have been obvious to oneofordinary skill in the art, before the effective
`
`filing date of the present invention to have performed the pulse discharge of Masaoka
`
`with a base current in the range taught in Suzuki because Suzuki teaches thatit is
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`common for the base current to be much lower than the pulse current in order to
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`properly test the discharge properties of the battery.
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`It also would have been obvious to
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`one of ordinary skill in the art that the pulse current could be discharged at least twice a
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`day because Suzuki teachesthat this allows fora more accurate measurement for
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`pulse discharge characteristic determination.
`
`Conclusion
`
`10.=Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to BRITTANY L RAYMOND whosetelephone numberis
`
`(571)272-6545. The examiner can normally be reached Monday-Friday 9 am-5 pm.
`
`Examiner interviews are available via telephone,
`
`in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`

`

`Application/Control Number: 17/286,89 1
`Art Unit: 1722
`
`Page 7
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`interview, applicant is encouraged to use the USPTO AutomatedInterview Request
`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Cynthia Kelly can be reached on 571-272-1526. The fax phone numberfor
`
`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
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`
`BRITTANY L. RAYMOND
`
`Examiner
`Art Unit 1722
`
`/BRITTANY L RAYMOND/
`Primary Examiner, Art Unit 1722
`
`