www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/042,298
`
`09/28/2020
`
`Natsuhiko Mukai
`
`P200940US00
`
`1782
`
`WHDA,LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA22182
`
`HORNSBY, BARTHOLOMEW ANDREW
`
`1728
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/16/2024
`
`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)
`
`

`

`Application No.
`Applicant(s)
`171042,298
`Mukai etal.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`BART A HORNSBY
`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 10/27/2023.
`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) 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.
`
`Disposition of Claims*
`1,4-6 and 10 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`CL] Claim(s)__is/are allowed.
`Claim(s) 1,4-6 and 10 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 20240130
`
`

`

`Application/Control Number: 17/042,298
`Art Unit: 1728
`
`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
`
`underthefirst inventor to file provisions of the AIA.
`
`Claim Status
`
`2.
`
`This office action is in response to the amendment and comments submitted
`
`10/27/2023.
`
`3.
`
`Claims 1, and 4 have been amended. Support for claim 1
`
`is found in figures 1, 2,
`
`8, and 9, [0029]-[0030] of the instant specification. Claim 4 has been amended to better
`
`clarify the invention.
`
`4.
`
`5.
`
`6.
`
`Claims 2, 3, and 7-9 have been cancelled.
`
`No claims have been added.
`
`The 35 USC § 112(b) rejection with respect to claims 1-20 is withdrawn in view of
`
`the amendmentsto the claims.
`
`7.
`
`Claims 1, 4-6 and 10 are currently pending.
`
`Claim Rejections - 35 USC § 103
`
`8.
`
`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 fora claimed invention may notbe obtained, notwithstanding thatthe claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior artare suchthat the claimed invention as a whole would have
`been obvious beforethe effective filing date of the claimed inventionto a person having
`
`

`

`Application/Control Number: 17/042,298
`Art Unit: 1728
`
`Page 3
`
`ordinary skillin the art to which the claimed invention pertains. Patentability shall notbe
`negated by the manner in whichthe invention was made.
`
`9.
`
`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 priorart.
`
`2. Ascertaining the differences between theprior art and the claims atissue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating
`
`obviousness or nonobviousness.
`
`10.
`
`Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Okadaet al. (US8999585B2),
`
`in view of Doo et al.(US2017/0084901A1),
`
`in view of
`
`Woonetal. (KR20150106740A, a machinetranslation), and in further view of Lee etal.
`
`(US2020/0212444A1,
`
`relying upon foreign priority date of 1/4/2018 of
`
`KR1020180001303).
`
`As to claim 1, Okada discloses a non-aqueous electrolyte secondary battery
`
`comprising a spiral-type electrode body ( The electrode assembly of this embodiment
`
`may be formed by rolling up, [C10L61-65]) in which a positive electrode and a negative
`
`electrode are wound with a separator located there between ( The porous insulating
`
`layer is interposed between the positive electrode and the negative electrode.
`
`[Abstract]).
`
`Okadafurther teaches a bottomed cylindrical outer can that holds therein the
`
`electrode body; and (A cylindrical battery of product No. 18650 was fabricated as
`
`

`

`Application/Control Number: 17/042,298
`Art Unit: 1728
`
`Page 4
`
`described below using the positive electrode, the negative electrode and the
`
`nonaqueous electrolyte solution which are described above, Fig. 3 shows a general
`
`vertical cross section of the nonaqueous electrolyte secondary battery. [C13L 1-6])
`
`a sealing body that closes off an opening of the outer can and that functions as a
`
`positive electrode terminal ( The positive electrode lead wire 5 was laser-welded to a
`
`metal filter 8a of a sealing plate 8 [C13L38-39] Fig. 3),
`
`and the positive electrode lead hasa first end portion located toward the sealing
`
`body, the first end portion being one lengthwise end of the positive electrode lead, and a
`
`second end portion located toward a side opposite to the first end portion, the second
`
`end portion being the other lengthwise end of the positive electrode lead (see ... Fig. 3);
`
`second sinface
`
`first surface——a8}“swag. (oy —45____positive lead, fead wire {5}
`
`wl
`
` 5
`
`battery case. 7 -
`
`(Okada, Fig. 3)
`
`While Okada doesnotexplicitly teach the positive electrode lead is metallic but it
`
`is suggested, That, an end of the positive electrode lead wire 5 was resistance-welded
`
`to the connection portion for positive electrode lead wire [C13L13-16].
`
`

`

`Application/Control Number: 17/042,298
`Art Unit: 1728
`
`Page 5
`
`In the same filed of endeavor Doo...... discloses a secondary battery of a
`
`cylindrical shape [0009] Fig. 4, and further teaches and the positive electrode lead
`
`comprises: a metallic lead base memberhaving a first surface joined to the positive
`
`electrode (The electrode assembly 100" includes a plurality of first electrode tabs 170
`
`electrically connected to the first electrode 113 (positive electrode) ... The first and
`
`secondelectrode tabs include a conductive material, and, for example, may include
`
`nickel (Ni) or Ni alloy. [0110] ), and a second surface located on an opposite side of the
`
`first surface; see Fig. 5 Af least one of the inner tab and the outer tab maybefixed to
`
`the cap assembly. [0016] Where “at least one of the tabs,” provide for a single lead
`
`base memberand tabsinclude nickel (Ni) provide for a member madeof metal.
`
`It should be noted the use of a one-piece, integrated construction instead of the
`
`structure disclosed or taught in the prior art would have been within the ambit of a
`
`person of ordinary skill in the art. See In re Larson, 340 F.2d 965, 968, 144 USPQ 347,
`
`349 (CCPA 1965) (see MPEP § 2144.04).
`
`
`
`surface gs
`
`HR PHE
`
`__.
`inner susface of 171, 17 is secand
`surface
`
`(Doo, Fig. 5)
`
`

`

`Application/Control Number: 17/042,298
`Art Unit: 1728
`
`Page 6
`
`It would have been obvious to oneof ordinary skill in the art before the effective
`
`filing date of the claimed invention to have modified Okada to incorporate nickel tab of
`
`Doo to improve output characteristics and durability of the battery. [0007] [0008]
`
`In the same filed of endeavor Woondiscloses a secondary battery of a
`
`cylindrical shape [0066], and further teaches, an insulating ceramic layer of an inorganic
`
`compound, (Electrode tab may be coated using fine ceramics (370) [0042].
`
`.. Examples
`
`of fine ceramics include alumina ceramic. [0044]).
`
`According to an aspect of the present invention by coating an insulating material
`
`having excellent thermal properties there is an effect that can reducetherisk offire
`
`when short.[0024].
`
`It would have been obvious to oneof ordinary skill in the art before the effective
`
`filing date of the claimed invention to have modified Doo and Okada to incorporate the
`
`coating of Woon in a woundstructure to improve battery safety due to a short circuit
`
`and improve manufacturability, storage, and maintain a high energy density.
`
`While Okada, Doo, and Woon doesnot explicitly teach the amount of ceramicin
`
`the mixture, in the same field of endeavor Lee discloses a secondary battery and further
`
`teaches, in the insulation coating layer according to the present disclosure, the
`
`inorganic filler and binder may be used at a weight ratio of 5:95-80:20 or 10:90-50:50.
`
`Within the above-defined range, it is possible to obtain sufficient adhesion between
`
`inorganic fillers, sufficient adhesion between the insulation coating layer and the
`
`electrode tab and a desired insulation effect. [0061] Where an 80:20 mixture would
`
`provide a inorganic filler as a main component.
`
`

`

`Application/Control Number: 17/042,298
`Art Unit: 1728
`
`Page 7
`
`It would have been obvious to oneof ordinary skill in the art before the effective
`
`filing date of the claimed invention to have modified Woon, Doo, and Okadato
`
`incorporate concentration of inorganic filler of Lee to improve adhesion of the tab with
`
`the insulating coating layer.
`
`Okadais silent on the ceramic layer being formed directly on the second surface
`
`of the single lead base memberin at least an area facing the negative electrode via the
`
`separator, the ceramic layer is formed over the entire area facing the negative electrode
`
`via the separator, and additionally in the first end portion on the second surface of the
`
`lead base member;
`
`Dooteaches, the inner tab 171 may further include an insulating layer 172
`
`coated overthe front and rear of a portion of the inner tab 171 extending from the
`
`electrode assembly 100. Similarly, the outer tab 176 may further include an insulating
`
`layer 177 coated overthe front and rear of a portion of the outer tab 176 extending from
`
`the electrode assembly 100. [0081] and at least one of the inner tab and the outer tab
`
`may befixed to the cap assembly. [0016], would provide a single lead based member
`
`as applied to either inner ta (171) or outer tab (176). Where an insulating coating on
`
`both sides of the tab extending from the electrode assembly would encompass the
`
`claimedlimitation as Doo possess the same claimed structure as seen in Fig. 5.
`
`It should be noted the use of a one-piece, integrated construction instead of the
`
`structure disclosed or taught in the prior art would have been within the ambit of a
`
`person of ordinary skill in the art. See In re Larson, 340 F.2d 965, 968, 144 USPQ 347,
`
`349 (CCPA 1965) (see MPEP § 2144.04).
`
`Aspects of embodiments of the present disclosure are directed toward a
`
`

`

`Application/Control Number: 17/042,298
`Art Unit: 1728
`
`Page 8
`
`secondary battery having improved output characteristics and durability. [0007], [0008]
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to have modified Okadato incorporate metallic tab of
`
`Dooto improve output characteristics and durability of the battery.
`
`Okadais silent on the single lead base material includes, on the second surface
`
`thereof, a region which is sandwiched between the ceramic layer formedin the first end
`
`portion and the area facing the negative electrode via the separator, and is not covered
`
`by the ceramic layer, the region being a region where a welded portion which is welded
`
`to the sealing body is formed.
`
`Dooteaches,the inner tab 171 includes extending end portion and 171D(first
`
`end portion) further extending from the connection area (connection area (e.g., the
`
`welding area) [0080]) 171 C of the inner tab. A portion of the inner tab 171 is joined with
`
`the cap assembly 270 [0079]
`
`Where a tab entirely covered by an insulating layer (171) with a connection
`
`portion, join by welding, (171 C), and an extending portion (171 D) provides the claimed
`
`region joined by welding.
`
`Aspects of embodiments of the present disclosure are directed toward a
`
`secondary battery having improved output characteristics and durability. [0007], [0008]
`
`It would have been obvious to oneof ordinary skill in the art before the effective
`
`filing date of the claimed invention to have modified Okadato incorporate metal tab of
`
`Dooto improve output characteristics and durability of the battery.
`
`Doo does notexplicitly teach the region is not covered by ceramic layer, however
`
`Lee teaches, the insulation coating layer may be formedtotally in the electrode tab.
`
`

`

`Application/Control Number: 17/042,298
`Art Unit: 1728
`
`Page 9
`
`Since the electrical insulation coating layer is molten and removed during welding for
`
`the connection with an electrode lead, it is possible to form an insulation coating layerin
`
`the whole electrode tab. In terms of process feasibility,
`
`it is preferred to form the
`
`insulation coating layer totally in the electrode tab. [0077]
`
`It would have been obvious to oneof ordinary skill in the art before the effective
`
`filing date of the claimed invention to have modified Doo and Okada to incorporate the
`
`welding of Lee to improve the manufacturing process.
`
`Where Dooprovides a region sandwiched betweenthefirst end portion (171D)
`
`and the area facing the negative electrode via the separator (171) and the welded
`
`portion (171C) of the region provides an uncovered portion.
`
`Asto claim 4, the rejection of claim 1
`
`is incorporated, modified Okada an upper
`
`insulation plate (9) disposed between the sealing body (8) and an electrode group (4)
`
`constituted of the positive electrode, the negative electrode, and the separator
`
`[Abstract], the upper insulation plate having an insertion hole for the positive electrode
`
`lead (see Fig. 3),
`
`
`
`

`

`Application/Control Number: 17/042,298
`Art Unit: 1728
`
`Page 10
`
`(Okada, Fig. 3)
`
`As to claim 5,
`
`the rejection of claim 1
`
`is incorporated, Okada discloses the
`
`negative electrode comprises a negative electrode core and a negative electrode
`
`mixture layer formed on the negative electrode core ( The active material layer for the
`
`negative electrode was formed overthe copperfoil [C12L42-44]);
`
`an exposed core portion in which a surface of the negative electrode coreis
`
`exposed is provided on an outermost peripheral surface of the electrode body; and the
`
`exposed core portion is in contact with an inner peripheral surface of the outer can. (The
`
`negative electrode lead wire 6 was passed through a lowerinsulation ring 10 before the
`
`electrode assembly 4 was put into a metal case )battery case) 7. Then the negative
`
`electrode lead wire 6 was resistance-welded to the bottom of the metal closed-end case
`
`7 such that the negative electrode lead wire 6 waselectrically connected to the closed-
`
`end case 7 [C13L24-31]). Where the lead wire 6 acts as the electrically exposed portion
`
`of the negative electrode.
`
`t should be noted the mere rearrangementof parts, without any new or
`
`unexpected results,
`
`is within the ambit of one of ordinary skill in the art. See In re
`
`Japikse, 86 USPQ 70 (CCPA 1950) (see MPEP § 2144.04).
`
`Asto claim 10, the rejection of claim 1
`
`is incorporated, Doo discloses the
`
`positive electrode includes a positive electrode core ( The positive electrode plate 1
`
`[0075], Fig. 3, a positive electrode mixture layer formed on the positive electrode core,
`
`(The positive electrode includes mixture layers on both sides of the current collector...
`
`

`

`Application/Control Number: 17/042,298
`Art Unit: 1728
`
`Page 11
`
`The mixture layers of the positive electrode contain an active material for the positive
`
`electrode). [C9L4-10]
`
`and an exposed core portion which is provided only toward one endin a width
`
`direction of the positive electrode core and surrounded on three sides by the positive
`
`electrode mixture layer; See Fig. 3, and it should be noted Regarding product and
`
`apparatus claims, when the structure recited in the reference is substantially identical to
`
`that of the claims, claimed properties or functions are presumed to be inherent. The
`
`Courts have held that it is well settled that where there is a reason to believe that a
`
`functional characteristic would be inherent in the prior art, the burden of proof then shifts
`
`to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128
`
`F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP §
`
`2112.01,
`
`I.).
`
`and the positive electrode lead is joined to the exposed core portion.
`
`( Then, an
`
`end of the positive electrode lead wire 5 was resistance-welded to the connection
`
`portion for positive electrode lead wire [C13L 13-16].
`
`11.
`
`Applicant's arguments filed 10/27/2023 have been fully considered but they are
`
`Response to Arguments
`
`not persuasive.
`
`a.
`
`Applicant argues not all aspects are provided and there is no motivation to
`
`combine.
`
`The office disagrees as the positive lead is described with “comprising,”
`
`and therefore the combination meets the limitation as provided above.
`
`

`

`Application/Control Number: 17/042,298
`
`Art Unit: 1728
`
`

`

`Application/Control Number: 17/042,298
`Art Unit: 1728
`
`Page 13
`
`Conclusion
`
`The prior art made of record and notrelied upon is considered pertinent to
`
`applicant's disclosure.
`
`Sugita et al. (US 6,432,578B1) Sealed battery with coated tabs.
`
`Yamazakiet al. (US 6,632,538B1) Coating on battery tabs.
`
`Hatta et al. (US2016/0336614A1)
`
`Insulation with inorganic particle.
`
`12.
`
`THISACTIONIS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTHshortened statutory period, then the
`
`shortened statutory 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 mailing date of this final action.
`
`13.=Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to BART A HORNSBYwhose telephone numberis
`
`(313)446-6637. The examiner can normally be reached 9:00-6:00 EST.
`
`Examinerinterviews are available via telephone,
`
`in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`

`

`Application/Control Number: 17/042,298
`Art Unit: 1728
`
`Page 14
`
`interview, applicant is encouraged to use the USPTO AutomatedInterview Request
`
`(AIR) at http:/Avwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, Matthew T Martin can be reached on 571-270-7871. 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,
`
`visit: httos://patentcenter.uspto.gov. Visit https:/Avww.uspto.gov/patents/apply/patent-
`
`center for more information about Patent Center and
`
`https://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
`
`additional questions, contact the Electronic Business Center (EBC) at 866-217-9197
`
`(toll-free).
`
`If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`BART HORNSBY
`
`Examiner
`Art Unit 1728
`
`/MATTHEW T MARTIN/
`Supervisory Patent Examiner, Art Unit 1728
`
`