www.uspto.gov
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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
`
`18/140,877
`
`04/28/2023
`
`Yuki Tokuda
`
`P200521US01
`
`8514
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA22182
`
`DOUYETTE, KENNETH J
`
`1725
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/30/2024
`
`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)
`18/140,877
`Tokuda et al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`KENNETH J DOUYETTE
`1725
`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)C) Responsive to communication(s) filed on
`CA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon
`
`2a)C) 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)() 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*
`1-6 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) 1-6 is/are rejected.
`Claim(s) 2-6 is/are objectedto.
`OC 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:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)C) The specification is objected to by the Examiner.
`11) The drawing(s)filed on 4/28/2023 is/are: a)(¥) accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)(¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`—_c)LJ None ofthe:
`b)LJ Some**
`a)¥) All
`1.) Certified copies of the priority documents have been received.
`2.[¥) Certified copies of the priority documents have been received in Application No. 16/771,394.
`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)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`4)
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`
`Paper No(s)/Mail Date4/28/23,12/7/23,S17/24.
`U.S. Patent and Trademark Office
`
`3)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20231129
`
`

`

`Application/Control Number: 18/140,877
`Art Unit: 1725
`
`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, is being examined
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`underthe first inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 102
`
`2.
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103)is incorrect, any
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`correction of the statutory basis (i.e., changing from AIA to pre-AlA) for the rejection will
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`not be considered a new ground ofrejection if the prior art relied upon, and the rationale
`
`supporting the rejection, would be the same undereither status.
`
`3.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section madein this Office action:
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`A person shall be entitled to a patent unless —
`
`(a)(1) the claimed invention was patented, 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.
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an
`application for patent published or deemed published under section 122(b), in which the
`patent or application, as the case may be, names another inventor and waseffectively filed
`before the effective filing date of the claimed invention.
`
`4.
`
`Claim 1
`
`is rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by
`
`Yeo (US 2006/0003221).
`
`Regarding claim 1, Yeo disclosesin Figs 1-3, a secondary battery ([0039])
`
`comprising: an electrode group (ref 410); and an electrolyte ([0045]), wherein the
`
`

`

`Application/Control Number: 18/140,877
`Art Unit: 1725
`
`Page 3
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`electrode group (ref 410) includes a positive electrode ([0041]), a negative electrode
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`([(0041]), a separator (ref 300) interposed betweenthe positive electrode ([0041]) and
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`the negative electrode ([0041]), and a positive electrode lead (ref 250) electrically
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`connected ([0026]) to the positive electrode ([0041]), the positive electrode ([0041]) and
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`the negative electrode ([0041]) are disposed so as to face each other(Figs 2-3) with the
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`separator (ref 300) therebetween, and are wound (Figs 2-3), the positive electrode
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`([0041]) includes a positive electrode currentcollector (ref 200) and a positive electrode
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`active material layer (ref 240) carried on each main surface ([0026]) of the positive
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`electrode current collector (ref 200), the positive electrode current collector (ref 200) has
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`a first exposed section that does not carry ([0032], Fig 1A2, ref 220_1) the positive
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`electrode active material layer (ref 240), the positive electrode lead (ref 250)is
`
`connectedto the first exposed section ([0032], Fig 1A2, ref 220_1), the negative
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`electrode ([0041]) includes a negative electrode current collector (ref 100) anda
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`negative electrode active material layer (ref 140) carried on each main surface ([0026])
`
`of the negative electrode current collector (ref 100) and hasa first region (ref 120_1)
`
`and a second region (at ref 120_3, etc.),the negative electrode current collector (ref
`
`100) is exposedin the first region (at ref 120_1), and thefirst region ([0032], Fig 1A2,ref
`
`220_1) faces (Figs 2-3) the positive electrode lead (ref 250).
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`Double Patenting
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`5.
`
`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`

`

`Application/Control Number: 18/140,877
`Art Unit: 1725
`
`Page 4
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the conflicting claims are not identical, but at
`
`least one examined application claim is not patentably distinct from the reference
`
`claim(s) because the examined application claim is either anticipated by, or would have
`
`been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46
`
`USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
`
`Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
`
`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`
`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timelyfiled terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321 (d)
`
`may be used to overcome an actualor provisional rejection based on nonstatutory
`
`double patenting provided the reference application or patent either is shown to be
`
`commonly owned with the examined application, or claims an invention made as a
`
`result of activities undertaken within the scopeof a joint research agreement. See
`
`MPEP § 717.02 for applications subject to examination underthe first inventor to file
`
`provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146etseq.for
`
`applications not subject to examination underthe first inventor to file provisions of the
`
`AlA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
`
`The filing of a terminal disclaimerbyitself is not a complete reply to a
`
`nonstatutory double patenting (NSDP)rejection. A complete reply requires that the
`
`terminal disclaimer be accompanied by a reply requesting reconsideration of the prior
`
`Office action. Even where the NSDP rejection is provisional the reply must be complete.
`
`See MPEP § 804, subsection |.B.1. For a reply to a non-final Office action, see 37 CFR
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`

`

`Application/Control Number: 18/140,877
`Art Unit: 1725
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`Page 5
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`1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A requestfor
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`reconsideration while not provided for in 37 CFR 1.113(c) may befiled after final for
`
`consideration. See MPEP §§ 706.07(e) and 714.13.
`
`The USPTOInternet website contains terminal disclaimer forms which may be
`
`used. Please visit www.uspto.gov/patent/patents-forms. The actualfiling date of the
`
`application in which the form is filed determines what form (e.g., PTO/SB/25,
`
`PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal
`
`Disclaimer may befilled out completely online using web-screens. An eTerminal
`
`Disclaimer that meets all requirements is auto-processed and approved immediately
`
`upon submission. For more information about eTerminal Disclaimers, refer to
`
`www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
`
`6.
`
`Claims 1-6 are rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claims 1-5 of U.S. Patent No. 11,677,064. Although the claims at
`
`issue are notidentical, they are not patentably distinct from each other because the
`
`claims of the ‘064 patent anticipate the instant claims.
`
`/n re Goodman, 11 F.3d 1046,
`
`29 USPQ2d 2010 (Fed. Cir. 1993).
`
`Allowable Subject Matter
`
`7.
`
`Claims 2-6 are objected to as being dependent upona rejected base claim, but
`
`would be allowableif rewritten in independent form including all of the limitations of the
`
`base claim and any intervening claims and if the above double patenting rejection was
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`overcome.
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`

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`Application/Control Number: 18/140,877
`Art Unit: 1725
`
`Page 6
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`8.
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`The following is a statement of reasons for the indication of allowable subject
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`matter:
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`instant dependentclaim 2 discloses a configuration of the battery wherein a first
`
`insulating member that covers the positive electrode lead, wherein a boundary between
`
`the first region and the second region is positioned between an end ofthe positive
`
`electrode lead and an end ofthe first insulating member.
`
`Yeo discloses an insulating member(ref 260) disposed on/overthe positive
`
`electrode lead (ref 250). However, the placement of the insulating member, while
`
`generally seeming to correspond to a same shape/configuration of the negative
`
`electrode structure in general, does not have any positioning based on boundariesof
`
`the first region and secondregion of the negative electrode active material layer.
`
`Additional pertinent references include:
`
`Lee et al. (US 2011/0027636) discloses in Figs 1-10, a secondary battery (Abstract)
`
`including a wound electrode structure with insulating tape attached at lead connections
`
`([(0017]). However, the insulating tapes while attached at the leads, do not correspond
`
`to the structure of the instant claims.
`
`Morimoto et al. (US 2006/0222937) discloses in Figs 1-6, a secondary battery (Abstract)
`
`including a woundelectrode assembly including insulating tape (ref 13) applied a tab
`
`regions/end regions ([0028]-[0029]). However, this tape configuration does not disclose
`
`nor render obvious the structural limitations of the instant claims above.
`
`

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`Application/Control Number: 18/140,877
`Art Unit: 1725
`
`Page 7
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`However, none of these referencesalleviate the deficiencies of the Yeo reference.
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`Assuch, theselimitations would be found allowable if incorporated into instant
`
`independent claim 1 as stated above and the above double patenting rejection was
`
`overcome.
`
`Conclusion
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`9.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to KENNETH J DOUYETTEwhosetelephone numberis
`
`(571)270-1212. The examiner can normally be reached Monday- Friday 8A - 4P EST.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, Basia Ridley can be reached on 571-272-1453. The fax phone numberfor
`
`the organization wherethis 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: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
`
`center for more information about Patent Center and
`
`https:/Awww.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
`
`

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`Application/Control Number: 18/140,877
`Art Unit: 1725
`
`Page 8
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`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.
`
`/KENNETH J DOUYETTE/
`Primary Examiner, Art Unit 1725
`
`