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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
`
`17/435,232
`
`08/31/2021
`
`Kazuhiro Yoshii
`
`P210762US00
`
`9807
`
`WHDA,LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA22182
`
`HIGGINS, KATHERINE NICOLE
`
`1728
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/17/2024
`
`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)
`17/1435 ,232
`Yoshii et al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`Katherine N Higgins
`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 24 April 2024.
`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*
`1-16 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) 1-16is/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) The drawing(s)filed on 31 August 2021 is/are:
`a)f{¥]) 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)Y) All
`1.) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No. |
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`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 20240705
`
`

`

`Application/Control Number: 17/435,232
`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.
`
`Information Disclosure Statement
`
`2.
`
`The information disclosure statement (IDS) submitted on June 10, 2024 is in
`
`compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure
`
`statement is being considered by the examiner.
`
`3.
`
`The amendmentfiled on April 24, 2024 has been entered.
`
`Response to Amendment
`
`Claim Status
`
`e Claim 1 has been amended; support can be found paragraph [0012].
`
`e Claims 1-16 are currently pending and have been examined on the merits in this
`
`office action.
`
`Claim Rejections - 35 USC § 103
`
`4.
`
`The text of those sections of Title 35, U.S. Code not included in this action can
`
`be found in a prior Office action.
`
`5.
`
`Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Kobayashi (WO 2017/163933 A1), citations from corresponding Published U.S. Patent
`
`Application US 2019/0097228 A1, in view of Matsushita et al. (Published U.S. Patent
`
`Application US 2014/0120417 A1), hereinafter referred to as Matsushita.
`
`

`

`Application/Control Number: 17/435,232
`Art Unit: 1728
`
`Page 3
`
`6.
`
`Regarding claim 1, Kobayashi teaches an insulating member(see e.g., Abstract,
`
`an insulating tape includes a base material layer, an adhesive layer, and an inorganic
`
`particle-containing layer formed therebetween),
`
`the insulating member comprising:
`
`e abase memberportion (see e.g., paragraph [0052], the insulating tape 40
`
`includes the base material layer 41; see e.g., paragraph [0055], the base material
`
`layer 41 preferably contains no inorganic particles and is preferably formed
`
`substantially only from an organic material, preferably a resin excellent in
`
`insulating properties, electrolyte liquid resistance, heat resistance, piercing
`
`strength, and the like);
`
`e aheat resistive portion formed over a part of one surface of the base member
`
`portion (see e.g., paragraph [0052], the insulating tape includes the inorganic
`
`particle-containing layer 43 formed between the base material layer 41 and the
`
`adhesive layer 42) and containing an insulating inorganic material (see e.g.,
`
`paragraph [0058], the inorganic particle-containing layer 43 is a layer containing
`
`20 percent by weight or more of inorganic particles and is a layer mainly
`
`imparting a heat resistance to the insulating tape 40; see e.g., paragraph [0058],
`
`the inorganic particle-containing layer 43 preferably has a layer structure in which
`
`the inorganic particles are dispersed in a resin matrix which forms the layer); and
`
`e
`
`an adhesive portion which directly contacts at least part of each of the surfaces
`
`of the base memberportion and the heatresistive portion facing the positive
`
`electrode (see e.g., paragraph [0057], the adhesive layer 42 is formed, for
`
`example, by applying an adhesive on onesurface of the base material layer 41
`
`on whichthe inorganic particle-containing layer 43 is formed; since the base
`
`

`

`Application/Control Number: 17/435,232
`Art Unit: 1728
`
`Page 4
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`material layer 41 is preferably formed from a resin (See e.g., paragraph [0055])
`
`and the inorganic particle-containing layer 42 is preferably a layer structure in
`
`which the inorganic particles are dispersed in a resin (see e.g., paragraph
`
`[0058]), this claim limitation is met by the adhesive layer 42 forming over the
`
`inorganic particles in the inorganic particle-containing layer 43 (thus, directly
`
`contacting the heat resistive portion) and the resin in the inorganic particle-
`
`containing layer 43 (thus, directly contacting the base material portion)), wherein
`
`the adhesive portion directly contacts respective ends of the base member
`
`portion in a width direction (see e.g., paragraph [0057] and Figure 7, the
`
`adhesive layer 42 is formed, for example, by applying an adhesive on one
`
`surface of the base material layer 41 on which the inorganic particle-containing
`
`layer 43 is formed; since the base material layer 41 is preferably formed froma
`
`resin (see e.g., paragraph [0055]) and the inorganic particle-containing layer 42
`
`is preferably a layer structure in which the inorganic particles are dispersed ina
`
`resin (see e.g., paragraph [0058]), this claim limitation is met by the adhesive
`
`layer 42 forming over the inorganic particles in the inorganic particle-containing
`
`layer 43 (thus, directly contacting the heat resistive portion) and the resin in the
`
`inorganic particle-containing layer 43 (thus, directly contacting the base material
`
`portion)),.
`
`7.
`
`The claim limitation of “the insulating member being placed to oppose a part of a
`
`positive electrode lead connected to a surface of a positive electrode”is intended use
`
`becausethe insulating tape taught by Kobayashi is capable of performing the intended
`
`use. See In re Casey, 152 USPQ 235 (CCPA 1967); and /n re Otto, 136 USPQ 458,
`
`

`

`Application/Control Number: 17/435,232
`Art Unit: 1728
`
`Page 5
`
`459 (CCPA 1963). The Courts have held thatit is well settled that the recitation of a new
`
`intended use, for an old product, does not make a claim to that old product patentable.
`
`See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)
`
`(see MPEP § 2114). Kobayashi is silent to the insulating member being placed to
`
`oppose a part of a positive electrode lead connected to a surface of a positive electrode.
`
`8.
`
`Matsushita discloses a protective layer configured to protect the positive current
`
`collector and positive electrode lead (see e.g., Abstract) to suppress a foil cut of the
`
`positive electrode current collector due to the expansion and shrinkage during
`
`charge/discharge cycles, and to obtain a battery with excellent safety and reliability (see
`
`€.g., paragraph [0047]). Matsushita teaches an insulating member which is placed to
`
`oppose a part of a positive electrode lead connected to a surface of a positive electrode
`
`(see e.g., paragraph [0052], a protective tape 27 covers, on the one main surface side
`
`of the positive electrode current collector 21A, the positive electrode current collector
`
`exposed surface 21a, the lead 25, and the protective layer 28, and, on the other main
`
`surface side of the positive electrode current collector 21A, the positive electrode
`
`current collector exposed surface 21a, and this protective tape 27 is provided in orderto
`
`prevent a thermal runaway of the battery when, for example, the separator orthe like is
`
`split in an abnormal caseof the battery, and the positive electrode 21 and the negative
`
`electrode 22 are in contact with each other).
`
`9.
`
`It would have been obvious to oneof ordinary skill in the art before the effective
`
`filing date to have adhered theinsulating tape in Kobayashi to the surface of a positive
`
`electrode as disclosed in Matsushita. When the protective layer is adhered to the
`
`
`
`positive electrode, it is possible to suppressafoil cut of the positive electrode current
`
`

`

`Application/Control Number: 17/435,232
`Art Unit: 1728
`
`Page 6
`
`collector due to the expansion and shrinkage during charge/discharge cycles, and to
`
`obtain a battery with excellent safety and reliability (see e.g., paragraph [0047)).
`
`10.
`
`Regarding claim 2, Kobayashi teaches the insulating member wherein the heat
`
`resistive portion contains a polymer having an adhesive property (See e.g., paragraph
`
`[0060], a resin forming the inorganic particle-containing layer 43 is preferably excellent
`
`in adhesion property to the inorganic particles and the base material layer 41. As a
`
`preferable resin, for example, there may be mentioned an acrylic-based resin, a
`
`urethane-based resin, or an elastomer thereof).
`
`11.|Regarding claim 3, Kobayashi teaches the insulating member wherein the
`
`polymerincludes at least one of an acryl-based polymer, an acrylonitrile-based polymer,
`
`or arubber-based polymer(see e.g., paragraph [0060], an acrylic-based resin, a
`
`urethane-based resin, or an elastomer thereof).
`
`12.
`
`Regarding claim 4, Kobayashi teaches the insulating member wherein a content
`
`of the inorganic material in the heat resistive portion is greater than or equal to 35
`
`weight%and less than or equal to 99 weight% (see e.g., paragraph [0059], the content
`
`of the inorganic particles with respect to the weight of the inorganic particle-containing
`
`layer 43 is preferably 25 to 80 percent by weight).
`
`13.|Regarding claim 5, Kobayashi teaches the insulating member wherein the
`
`inorganic material includes at least one of a metal oxide, a metal hydroxide, a metal
`
`sulfate, or a metal phosphate, whichis insulating (see e.g., paragraph [0061], the
`
`inorganic particles forming the inorganic particle-containing layer 43 are preferably
`
`particles having an insulating property and a small particle diameter. As preferable
`
`

`

`Application/Control Number: 17/435,232
`Art Unit: 1728
`
`Page 7
`
`inorganic particles, for example, there may be mentionedtitania (titanium oxide),
`
`alumina (aluminum oxide), silica (silicon oxide), or zirconia (zirconium oxide)).
`
`14.
`
`Regarding claim 6, Kobayashi teaches the insulating member wherein a
`
`thickness of the heat resistive portion is greater than or equal to 1 um and less than or
`
`equal to 30 um (see e.g., paragraph [0058], the thickness of the inorganic particle-
`
`containing layer 43 is, for example, 0.5 to 10 um).
`
`15.
`
`Regarding claim 7, Kobayashi teaches the insulating member wherein the
`
`adhesive portion includes at least one of a rubber-based polymeror an acrvl-based
`
`polymer (see e.g., paragraph [0057], the adhesive layer 42 is formed, for example,
`
`using an acrylic-based adhesive or a synthetic rubber-based adhesive).
`
`16.
`
`Regarding claim 8, Kobayashi teaches the insulating member wherein the
`
`adhesive portion covers an entirety of a surface of the heat resistive portion (see e.g.,
`
`Figure 7, adhesive layer 42 covers the entirety of inorganic-particle containing layer 42).
`
`17.|Regarding claim 9, Kobayashi teaches the insulating member wherein the heat
`
`resistive portion has a shape of a single stripe or a plurality of stripes (see e.g., Figure
`
`5, insulating tape 40 has a shape of a single stripe or a plurality of stripes).
`
`18.|Regarding claim 10, Kobayashi teaches the insulating member wherein the heat
`
`resistive portion has a shape of a single spot or a plurality of spots (see e.g., Figure 3,
`
`insulating tape 40 has a spot shape of a quadrangle).
`
`19.
`
`Regarding claim 11, Kobayashi teaches a secondary battery (see e.g.,
`
`paragraph [0021], secondary battery 10) comprising:
`
`e
`
`apositive electrode (see e.g., paragraph [0022], positive electrode 11);
`
`

`

`Application/Control Number: 17/435,232
`Art Unit: 1728
`
`Page 8
`
`and a positive electrode lead connected to the positive electrode (see e.g.,
`
`paragraph [0023], positive electrode lead),
`
`wherein the positive electrode comprises a positive electrode current
`
`collector (see e.g., paragraph [0023], a belt-shaped positive electrode
`
`collector 30),
`
`and a positive electrode active material layer formed overat least one
`
`surface of the positive electrode current collector (see e.g., paragraph
`
`[0036] and Figure 3, positive electrode active material layer 31),
`
`at least one surfaceof the positive electrode comprises a layered portion
`
`in which the positive electrode active material layer is formed (see e.g.,
`
`paragraph [0036] and Figure 3, positive electrode active material layer
`
`31), and an exposed portion in which the positive electrode current
`
`collector is exposed (see e.g., paragraph [0036] and Figure 3, plain
`
`portion 32 at which the surfaceof the positive electrode collector 30 is not
`
`covered with the positive electrode active material layer 31),
`
`the positive electrode lead comprises a one-end portion connected to the
`
`exposed portion, and an extended portion which extends from the one-end
`
`portion to an outer side of the positive electrode (see e.g., paragraph
`
`[0036] and Figure 3, the plain portion 32 is a portion to which the positive
`
`electrode lead 19 is connected),
`
`the secondary battery further comprises the insulating member according
`
`to limitations regarding claim 1 as above (see e.g., paragraph [0027], the
`
`electrode assembly 14 includes an insulating tape).
`
`

`

`Application/Control Number: 17/435,232
`Art Unit: 1728
`
`Page 9
`
`However, Kobayashiis silent to the insulating memberis placed over a surface of the
`
`positive electrode in such a mannerthat the heat resistive portion opposes an outer
`
`surface of the one-end portion.
`
`20. Matsushita teaches a secondary battery (see e.g., paragraph [0035], secondary
`
`battery) comprising:
`
`a positive electrode (see e.g., paragraph [0042], positive electrode);
`
`and a positive electrode lead connected to the positive electrode (see e.g.,
`
`paragraph [0043] and Figure 4, lead 25),
`
`wherein the positive electrode comprises a positive electrode current
`
`collector (see e.g., paragraph [0042], positive electrode current collector
`
`21A),
`
`and a positive electrode active material layer formed overat least one
`
`surface of the positive electrode current collector (see e.g., paragraph
`
`[0042] and Figure 4, positive electrode mixture layer 21B),
`
`at least one surface of the positive electrode comprises a layered portion
`
`in which the positive electrode active material layer is formed (see e.g.,
`
`paragraph [0042] and Figure 4, positive electrode mixture layer 21B), and
`
`an exposed portion in which the positive electrode current collector is
`
`exposed (see e.g., paragraph [0042] and Figure 4, a gap through which a
`
`part of the positive electrode current collector 21A is exposedin the both-
`
`surface non-coated portion 21b),
`
`the positive electrode lead comprises a one-end portion connected to the
`
`exposed portion, and an extended portion which extends from the one-end
`
`

`

`Application/Control Number: 17/435,232
`Art Unit: 1728
`
`Page 10
`
`portion to an outer side of the positive electrode (see e.g., paragraph
`
`[0043] and Figure 4, he lead 25 is, forexample, bonded to the positive
`
`electrode current collector exposed surface 21a which is exposed through
`
`the gap of the positive electrode mixture layer 21B, the gap being provided
`
`on the one main surfaceof the positive electrode current collector 21A),
`
`e
`
`the secondary battery further comprises the insulating member according
`
`to the limitations of claim 1 as described above (see e.g., paragraph
`
`[0043], protective layer 28), and
`
`e
`
`the insulating memberis placed over a surface of the positive electrode in
`
`such a mannerthat the heat resistive portion opposes an outer surfaceof
`
`the one-end portion (see e.g., paragraph [0044] and Figure 4, at least a
`
`part of the protective layer 28 is interposed between at least a part of the
`
`peripheral edge of the lead 25 and the positive electrode current collector
`
`exposed surface 21a).
`
`21._It would have been obviousto oneof ordinary skill in the art before the effective
`
`filing date to have adhered theinsulating tape in Kobayashi to the surface of a positive
`
`electrode in a secondary battery as disclosed in Matsushita. Whenat least part of the
`
`protective layeris interposed between at least part of the lead and the positive electrode
`
`collector exposed surface,it is possible to suppress a foil cut of the positive electrode
`
`current collector due to the expansion and shrinkage during charge/discharge cycles,
`
`and to obtain a battery with excellent safety and reliability (see e.g., paragraph [0047)).
`
`22.
`
`Regarding claim 12, Kobayashi teaches the secondary battery wherein the heat
`
`resistive portion has a shape of asingle stripe (see e.g., paragraph [0027] and Figures
`
`

`

`Application/Control Number: 17/435,232
`Art Unit: 1728
`
`Page 11
`
`3 and 5, insulating tape 40 has a shape of a single strip). However, Kobayashi is silent
`
`to a longitudinal direction of the stripe shape is parallel to a longitudinal direction of the
`
`one-end portion of the positive lead.
`
`23. Matsushita teaches the secondary battery wherein the heat resistive portion has
`
`a shapeof a single stripe (see e.g., Figure 4, protective layer is a single stripe), anda
`
`longitudinal direction of the stripe shape is parallel to a longitudinal direction of the one-
`
`end portion (see e.g., Figure 4, the longitudinal direction protective layer 28 is parallel to
`
`the longitudinal direction of the lead 25).
`
`24.
`
`It would have been obviousto oneof ordinary skill in the art before the effective
`
`filing date to have modified Kobayashi to havea longitudinal direction of the stripe
`
`shapeis parallel to a longitudinal direction of the one-end portion of the positive lead as
`
`disclosed in Matsushita. The placement of the heat resistive portion would suppress a
`
`foil cut of the positive electrode current collector and, therefore, be able to obtain a
`
`battery with excellent safety and reliability (see e.g., paragraph [0047)).
`
`25.
`
`Regarding claim 13, Kobayashi discloses all claim limitations as set forth above.
`
`However, Kobayashiis silent to the insulating memberis placed over a surface of the
`
`positive electrode in such a mannerthat the heat resistive portion opposes an entirety of
`
`the exposed portion
`
`26. Matsushita teaches the secondary battery wherein the insulating memberis
`
`placed over a surface of the positive electrode in such a mannerthat the heatresistive
`
`portion opposes an entirety of the exposed portion (see e.g., Figure 4, protective tape
`
`27 opposes an entirety of the exposed portion).
`
`

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`
`Page 12
`
`27.—It would have been obviousto oneof ordinary skill in the art before the effective
`
`filing date to have modified Kobayashi to place the insulating memberover a surfaceof
`
`the positive electrode as disclosed in Matsushita. The placementof the heat resistive
`
`portion would suppress a foil cut of the positive electrode current collector and,
`
`therefore, be able to obtain a battery with excellent safety and reliability (see e.g.,
`
`paragraph [0047)).
`
`28.
`
`Regarding claim 14, Kobayashi discloses all claim limitations as set forth above.
`
`However, Kobayashiis silent to the insulating memberis placed over a surface of the
`
`positive electrode in such a mannerthat the heat resistive portion opposes a part of the
`
`exposed portion.
`
`29. Matsushita teaches the secondary battery wherein the insulating memberis
`
`placed over a surface of the positive electrode in such a mannerthat the heatresistive
`
`portion opposes a part of the exposed portion (see e.g., Figure 4, protective layer 28
`
`opposes a part of the exposed portion 21a).
`
`30.
`
`It would have been obvious to oneof ordinary skill in the art before the effective
`
`filing date to have modified Kobayashi to place the insulating memberover a surfaceof
`
`the positive electrode in such a mannerthat the heat resistive portion opposes a part of
`
`the exposed portion as disclosed in Matsushita. The placement of the heat resistive
`
`portion would suppress a foil cut of the positive electrode current collector and,
`
`therefore, be able to obtain a battery with excellent safety and reliability (see e.g.,
`
`paragraph [0047)).
`
`

`

`Application/Control Number: 17/435,232
`Art Unit: 1728
`
`Page 13
`
`31.|Regarding claim 15, Kobayashi discloses all claim limitations as set forth above.
`
`However, Kobayashiis silent to the adhesive portion of the insulating memberis
`
`adhered to the positive electrode active material layer.
`
`32. Matsushita teaches the secondary battery wherein the adhesive portion of the
`
`insulating memberis adhered to the positive electrode active material layer (see e.g.,
`
`Figure 4, protective tape 27 adhered to the positive electrode active material layer 21B).
`
`33.
`
`It would have been obvious to oneof ordinary skill in the art before the effective
`
`filing date to have modified Kobayashi to adhere the adhesive portion of the insulating
`
`memberto the positive electrode active material as disclosed in Matsushita. The
`
`placementof the heat resistive portion would suppress a foil cut of the positive electrode
`
`current collector and, therefore, be able to obtain a battery with excellent safety and
`
`reliability (See e.g., paragraph [0047]).
`
`34.
`
`Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi
`
`(WO 2017/163933 A1), citations from corresponding Published U.S. Patent Application
`
`US 2019/0097228 A1,
`
`in view of Matsushita et al. (Published U.S. Patent Application
`
`US 2014/0120417 A1) as applied to claims above, and further in view of Nishino etal.
`
`(WO 2019/044168 A1), hereinafter referred to Nishino, citations from corresponding
`
`Published U.S. Patent Application US 2020/0373582 A1.
`
`35.
`
`Regarding claim 16, modified Kobayashi disclosesall claim limitations as set
`
`forth above. However, modified Kobayashi is silent to the secondary battery further
`
`comprising another insulating memberdifferent from the insulating member, and
`
`comprising another base memberportion different from the base memberportion,
`
`another heatresistive portion formed over a part of one surface of the other base
`
`

`

`Application/Control Number: 17/435,232
`Art Unit: 1728
`
`Page 14
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`memberportion and containing an insulating inorganic material. and another adhesive
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`portion which coversat least a part of each of surfaces of the other base member
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`portion and the other heat resistive portion, wherein the other insulating memberis
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`placed overa surface of the positive electrode, which is not connected to the positive
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`electrode lead, and the other heat resistive portion opposes a position corresponding to
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`the one-end portion.
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`36.
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`Nishino discloses a secondary battery with a positive electrode having a positive
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`electrode current collector, positive electrode active material layer, and an insulating
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`tape (see e.g., Abstract). Nishino discloses that when a secondary battery is externally
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`short-circuited and generates heat, the heat may be concentrated on the positive
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`electrode lead, and when the heated positive electrode lead comesin contact with the
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`negative electrode, battery failure may occur (see e.g., paragraph [0004]). Nishino
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`discloses the insulating tape can suppress the occurrence offailure (see e.g.,
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`paragraph [0006]). Nishino teaches the secondary battery further comprising:
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`e
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`another insulating memberdifferent from the insulating member(see e.g.,
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`Figure 3 and paragraph [0036], two insulating tapes 14), and comprising
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`another base memberportion different from the base memberportion (see
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`e.g., Figure 3 and paragraph [0036], base 14a), another heat resistive
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`portion formed overa part of one surface of the other base member
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`portion and containing an insulating inorganic material portion (see e.g.,
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`Figure 3 and paragraph [0036], second layer 14c; see e.g., paragraph
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`[0045], examples of the alkali metal include sodium, potassium, and
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`lithium), and another adhesive portion which coversat least a part of each
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`

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`Application/Control Number: 17/435,232
`Art Unit: 1728
`
`Page 15
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`of surfaces of the other base memberportion and the other heat resistive
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`portion (see e.g., Figure 3 and paragraph [0036], first layer 14b),
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`e wherein the other insulating memberis placed over a surface of the
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`positive electrode, which is not connected to the positive electrode lead,
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`and the other heat resistive portion opposes a position corresponding to
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`the one-end portion (see e.g., modified Figure 3).
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`Figure 3
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`s== oR
`SRE HH SS
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`
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`EEE
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`Ss of
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`&S
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`37.—It would have been obvious to oneof ordinary skill in the art before the effective
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`Modified Nishino Figure 3
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`filing date to include another insulating memberdifferent from the insulating member
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`disclosed in Nishino to modified Kobayashi. The two insulating members on the positive
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`electrode would prevent the heat from the positive electrode lead transferring to the
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`negative electrode, and, therefore, it would suppress battery failure (see e.g., paragraph
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`[0006}).
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`

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`Application/Control Number: 17/435,232
`Art Unit: 1728
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`Page 16
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`Response to Arguments
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`38.
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`Applicant's arguments filed on April 24, 2024 have been fully considered by are
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`not persuasive. Applicant argues that the amended claim overcomestherejection of
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`record because (a) Kobayashi in view of Matsushita fails to provide for the aspects of
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`claim 1 as to the insulating member comprising an adhesive portion which directly
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`contacts at least part of each of surfaces of the base memberportion and the heat
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`resistive portion facing the positive electrode, wherein the adhesive portion directly
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`contacts respective ends of the base memberportion in a width direction and (b)
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`Kobayashi in view of Matsushita and Nishino fails to provide the aspects of claim 16
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`because of its dependency on claim 1.
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`39.|Regarding argument A, Kobayashi teaches an insulating tape 40 includes the
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`base material layer 41, the adhesive layer 42, and the inorganic particle-containing layer
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`43 formed between the base material layer 41 and the adhesive layer 42 (see e.g.,
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`paragraph [0052]). Kobayashi teaches the base material layer 41 is preferably formed
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`from a resin (see e.g., paragraph [0055]) and the inorganic particle-containing layer 42
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`is preferably a layer structure in which the inorganic particles are dispersed in a resin
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`(see e.g., paragraph [0058]). The claim limitation of the adhesive portion being in direct
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`contact of at least a part of each of the surfaces of the base memberportion and the
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`heat resistive portion facing the positive electrode can be met by the adhesivelayer 42
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`forming over the inorganic particles in the inorganic particle-containing layer 43 (thus,
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`directly contacting the heat resistive portion) and the resin in the inorganic particle-
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`containing layer 43 (thus, directly contacting the base material portion). The claim
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`limitation of “the insulating member being placed to oppose a part of a positive electrode
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`

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`Application/Control Number: 17/435,232
`Art Unit: 1728
`
`Page 17
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`lead connected to a surface of a positive electrode” is intended use because the
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`insulating tape taught by Kobayashi is capable of performing the intended use. See /n
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`re Casey, 152 USPQ 235 (CCPA 1967); and /n re Otto, 136 USPQ 458, 459 (CCPA
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`1963). The Courts have held thatit is well settled that the recitation of a new intended
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`use, for an old product, does not makea claim to that old product patentable. See /n re
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`Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP §
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`2114). Therefore, in view of the amendments, the rejection has been updated under 35
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`U.S.C. 103 as being unpatentable over Kobayashi in view of Matsushita.
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`40.
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`Regarding argumentB, the rejection has been updated rendering the arguments
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`moot. Kobayashi in view of Matsushita and Nishino teachesall the features as recited in
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`claim 16.
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`Conclusion
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`41.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
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`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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`CFR 1.136(a).
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`42.|Ashortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTHshortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`

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`Application/Control Number: 17/435,232
`Art Unit: 1728
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`Page 18
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`the advisory action.
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`Inno event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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`43.—Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Katherine N Higgins whose telephone numberis
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`(703)756-1196. The examiner can normally be reached Mondays - Thursdays 7:30-4:30
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`EST, Fridays 7:30 - 11:30 EST.
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`44.
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`Examinerinterviews are available via telephone,
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`in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO AutomatedInterview Request
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`(AIR) a