`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`
`15/753,772
`
`02/20/2018
`
`NOIikO Manabe
`
`P180158U500
`
`8862
`
`38834
`
`759°
`
`08/22/2019
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`
`8500 Leesburg Pike
`SUITE 7500
`
`Tysons VA 22182
`
`WEI” ZHONGQING
`
`1727
`
`PAPERNUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/22/2019
`
`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
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`following e—mail address(es):
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`patentmail@ whda.eom
`
`PTOL-90A (Rev. 04/07)
`
`
`
`0/7709 A0170” Summary
`
`Application No.
`15/753,772
`Examiner
`ZHONGQING WEI
`
`Applicant(s)
`Manabe et al.
`Art Unit
`1727
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from 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) MONTHS from 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, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 19 June 2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] This action is non-final.
`
`3)[:] An election was made by the applicant in response to 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`
`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10). The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 20 February 2019 is/are: a)[:I 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:
`
`a)I:J All
`
`b)D Some”
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`c)D None of the:
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`1.[:] Certified copies of the priority documents have been received.
`
`2.[:] Certified copies of the priority documents have been received in Application No.
`
`3:] Copies of the certified copies of the priority documents have been received in 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) C] Notice of References Cited (PTO-892)
`
`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) D Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
`
`Part of Paper No./Mai| Date 20190806
`
`
`
`Application/Control Number: 15/753,772
`Art Unit: 1727
`
`Page 2
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`A NONA UEOUS ELECTROLYTE SECONDARY BATTERY WITH ELECTRODE ASSEMBLY
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`DETAILED CORRESPONDENCE
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`Notice of Pre-AIA or AIA Status
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`1.
`
`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`Response to Amendments
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`2.
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`Applicant’s amendments and arguments have been entered. A reply to the Applicant’s
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`remarks/arguments is presented after addressing the claims.
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`3.
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`Any rejections and/or objections made in the previous Office Action and not repeated
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`below, are hereby withdrawn in view of Applicant’s amendments or/and arguments.
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`4.
`
`The text of those sections of Title 35, U.S. Code not included in this action can be found
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`in a prior Office action. References cited in the current Office action can be found in a prior
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`Office action.
`
`5.
`
`Claims 1—5 are pending, wherein claims 1 and 4 are amended. Claims 1—5 are being
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`examined on the merits in this Office action.
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`Specification
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`6.
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`The amended title has been accepted. However, there does appear to have a typo:
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`l’ELECTORDE" should read l’ELECTRODE".
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`
`
`Application/Control Number: 15/753,772
`Art Unit: 1727
`
`Page 3
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`Drawings
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`7.
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`In response to the drawing objection presented in the previous Office action, Applicant
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`indicated that Fig. 1 and paragraph [0056] disclose the plane. While the Examiner believes the
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`plane(s) is disclosed in, for example, Fig. 1, it is unclear which part is considered by the
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`Applicant to be the claimed plane. Since the surface pressure depends on the position (e.g., the
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`distance from the innermost core of the electrode assembly 4, see [0104] of the instant
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`specification) where the surface pressure is measured, it is important and necessary to know
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`where the plane(s) is/are and which plane(s) is/are for measuring the surface pressure(s) as
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`claimed. The Applicant is advised to mark/indicate with, for example, arrows to show the
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`plane(s) that satisfies (or satisfy) the surface pressure requirements as claimed.
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`The drawings are objected to under 37 CFR l.83(a). The drawings must
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`show/indicate/mark every feature of the invention specified in the claims. Therefore, at least
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`the ”a plane" that meets a surface pressure of ”not less than 0.1 MPa", ”a first plane area" and
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`”a second plane area" recited in claim 1 that meet the claimed surface pressure requirement(s),
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`must be clearly shown/indicated/marked or the feature(s) canceled from the claim(s). No new
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`matter should be entered.
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`Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to
`
`the Office action to avoid abandonment of the application. Any amended replacement drawing
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`sheet should include all of the figures appearing on the immediate prior version of the sheet,
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`even if only one figure is being amended. The figure or figure number of an amended drawing
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`should not be labeled as ”amended." If a drawing figure is to be canceled, the appropriate
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`
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`Application/Control Number: 15/753,772
`Art Unit: 1727
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`Page 4
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`figure must be removed from the replacement sheet, and where necessary, the remaining
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`figures must be renumbered and appropriate changes made to the brief description of the
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`several views of the drawings for consistency. Additional replacement sheets may be necessary
`
`to show the renumbering of the remaining figures. Each drawing sheet submitted after the
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`filing date of an application must be labeled in the top margin as either ”Replacement Sheet" or
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`”New Sheet" pursuant to 37 CFR 1.121(d). |fthe changes are not accepted by the examiner, the
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`applicant will be notified and informed of any required corrective action in the next Office
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`action. The objection to the drawings will not be held in abeyance.
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`Claim Rejections - 35 USC § 112
`
`8.
`
`The following is a quotation of the first paragraph of 35 U.S.C.112(a):
`
`(a) IN GENERAL—The specification shall contain a written description of the invention,
`and of the manner and process of making and using it, in such full, clear, concise, and exact terms
`as to enable any person skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor or joint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre—AIA 35 U.S.C.112:
`
`The specification shall contain a written description of the invention, and of the manner
`and process of making and using it, in such full, clear, concise, and exact terms as to enable any
`person skilled in the art to which it pertains, or with which it is most nearly connected, to make
`and use the same, and shall set forth the best mode contemplated by the inventor of carrying
`out his invention.
`
`9.
`
`Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre—AIA), first
`
`paragraph, as failing to comply with the written description requirement. The claim(s) contains
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`subject matter which was not described in the specification in such a way as to reasonably
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`convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre—AIA the
`
`
`
`Application/Control Number: 15/753,772
`Art Unit: 1727
`
`Page 5
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`inventor(s), at the time the application was filed, had possession ofthe claimed invention.
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`While paragraphs [0056], [0104], [0106] and Table 4 show or describe surface pressures
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`measured at different positions, the specification does not appear to support ”the surface
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`pressure on a first plane area
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`is greater than the surface pressure on a second plane area ...",
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`as claimed in claim 1. Claims 2—5 are also rejected because they depend from claim 1.
`
`10.
`
`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
`out and distinctly claiming the subject matter which the inventor or a joint inventor regards as
`the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre—AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`11.
`
`Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre—AIA), second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
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`matter which the inventor or a joint inventor, or for pre—AIA the applicant regards as the
`
`invention.
`
`Claim 1 recites ”the surface pressure on a first plane area
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`is greater than the surface
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`pressure on a second plane area ...". However, based on claim languages, it appears that the ”a
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`first plane area" can be at different positions. Further, the surface pressure at different
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`positions may be different, according to the data shown in Table 4, for example. Thus, it is
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`unclear which (i.e., at which position) ”first plane area" on which the surface pressure is greater
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`than that on the second plane area. Claims 2—5 are also rejected because they depend from
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`claim 1.
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`
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`Application/Control Number: 15/753,772
`Art Unit: 1727
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`Page 6
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`Claim Rejections - 35 USC § 103
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`12.
`
`Claims 1-2 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Miyawaki et 01/. (JP 2009076373 A, for citation purposes its English machine translation is being
`
`used in this Office action, hereafter Miyawaki) in view of Kokado et 0]. (WO 2013125426 A1, for
`
`citation purposes its U.S. equivalent US 9991505 B2 is being used in this Office action, hereafter
`
`Kokado).
`
`Regarding claim 1, Miyawaki teaches a nonaqueous electrolyte secondary battery
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`(Abstract) comprising an electrode assembly (”electrode unit", ”a winding structure, a
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`laminated structure and the like", [0031]) that comprises a positive electrode (at least [0028])
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`including a positive electrode current collector (at least [0028]) and a positive electrode mixture
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`layer (”positive electrode active material" and ”binder", [0028]) disposed on the positive
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`electrode current collector (at least [0028]), a negative electrode (at least [0016]—[0018])
`
`including a negative electrode current collector (at least [0018]) and a negative electrode
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`mixture layer (”SiOX" combined with ”a carbon material" and ”binder”, at least [0016]—[0017])
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`disposed on the negative electrode current collector (at least [0018]), and a separator (at least
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`[0029], [0031]), wherein
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`the negative electrode mixture layer comprises a carbon material (at least [0017]) and a
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`silicon compound (e.g., SiOX, at least [0017]).
`
`Miyawaki teaches that cycle characteristics of the battery can be improved by
`
`optimizing surface pressure imposed on the electrode unit/assembly (at least, [0043], [0031]—
`
`[0033]). For instance, Miyawaki teaches that the electrode unit is pressurized with a pressure of
`
`3 kgf/cm2 (z 0.29 MPa) or more (at least Abstract, [0043], [0031]—[0033]). One skilled in the art
`
`
`
`Application/Control Number: 15/753,772
`Art Unit: 1727
`
`Page 7
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`would readily appreciate the pressure imposed on the electrode assembly would necessarily
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`impose on ”a plane in which the positive electrode and the negative electrode are opposed to
`
`each other through the separator" because the plane is inside the electrode assembly. Thus,
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`the surface pressure imposed on the said plane is a result—effective variable. It would have been
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`obvious to one of ordinary skill in the art, before the effective filing date of the instant
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`invention, to have optimized the surface pressure imposed on the said plane to be ”not less
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`than 0.1 MPa" as instantly claimed, in order to achieve remarkable effects such as improved
`
`cycle characteristics (at least [0043]). Furthermore, it would have been obvious to one of
`
`ordinary skill in the art to have also readily optimized the surface pressure to arrive at the
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`instantly claimed ”the surface pressure on a first plane area in which the positive electrode and
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`the negative electrode are opposed to each other at a position between an innermost core of
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`the electrode assembly and an outmost periphery ofthe electrode assembly is greater than the
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`surface pressure on a second plane area in which the positive electrode and the negative
`
`electrode are opposed to each other at the outermost periphery of the electrode assembly",
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`for the benefit of achieving remarkable effects such as improved cycle characteristics (at least
`
`[0043]). Moreover, It is well—established that ”[W]here the general conditions of a claim are
`
`disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by
`
`routine experimentation." In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
`
`Miyawaki further teaches the positive electrode mixture layer comprises a lithium
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`transition metal oxide containing Ni (e.g., ”lithium composite nickel oxide", [0028]), but does
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`not appear to expressly teach ”an attached element belonging to Group VI of the periodic
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`table" that is attached on the surface of the lithium transition metal oxide. However, in the
`
`
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`Application/Control Number: 15/753,772
`Art Unit: 1727
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`Page 8
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`same field of endeavor, Kokado discloses that a positive electrode material formed by attaching
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`(See, e.g., Fig. l) lithium tungstates, such as LizWO4, Li4WO5 and Li6W209 (col. 4, lines 34—39), to
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`the particle surfaces of lithium metal composite oxide represented by a general formula LizNi1_x_
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`yCoXMyOZ (0.103x30.35, OSySO.35, 097323120, and M may be Al) (col. 4, lines 11—25) is capable
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`of achieving both high capacity and high output when used as a positive electrode for
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`nonaqueous electrolyte secondary batteries (See at least Abstract). Therefore it would have
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`been obvious to one of ordinary skill in the art, before the effective filing date of the instant
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`invention, to have used Kokado’s positive electrode material described above as an alternative
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`to the positive electrode active material of Miyawaki, in order to achieve both high capacity and
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`high output when used in the nonaqueous electrolyte secondary battery.
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`Further, for the formula LizNi(1-x-y)CoxMy02, when x=0.10 and y=0, (l—x—y)=0.9. Thus, the
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`molar fraction of Ni relative to the total molar amount of metal elements except lithium is
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`0.9/(0.1+0+0.9)=90%, within the instantly claimed range of ”not less than 80 mol%".
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`Regarding claim 2, Miyawaki in view of Kokado teaches the nonaqueous electrolyte
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`secondary battery according to claim 1, wherein the lithium transition metal oxide is
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`represented by the general formula LizNi1-X-yCoXMy02 (0.103x30.35, OSySO.35, 09735120, and
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`M may be Al) (col. 4, lines 11—25, Kokado).
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`0.853x31.0
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`03(1-x)30.15
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`03(1-x)30.15
`
`LizNi(1—x—y)C0xMy02
`
`0.97323120
`
`0.33(1-x—y)30.9
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`0.103x30.35
`
`LiaNixC0(1—x)AI(1—x)02
`
`0.953a31.2
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`(claimed)
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`(prior art, Kokado)
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`
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`Application/Control Number: 15/753,772
`Art Unit: 1727
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`Page 9
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`As clearly seen from the data above, the molar range of each of elements in Kokado’s
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`formula overlaps that of each corresponding elements in the claimed formula, respectively. In
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`the case where the claimed ranges ”overlap or lie inside ranges disclosed by the prior art", a
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`primafacie case of obviousness exists. (MPEP 2144.05 (I) or 213l.03(|l)).
`
`Regarding claim 4, Miyawaki in view of Kokado teaches the nonaqueous electrolyte
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`secondary battery according to claim 1, Miyawaki teaches that cycle characteristics of the
`
`battery can be improved by optimizing surface pressure imposed on the electrode
`
`unit/assembly (at least, [0043], [0031]—[0033]). For instance, Miyawaki teaches that the
`
`electrode unit is pressurized with a pressure of 3 kgf/cm2 (z 0.29 MPa) or more (at least
`
`Abstract, [0043], [0031]—[0033]). One skilled in the art would readily appreciate the pressure
`
`imposed on the electrode assembly would necessarily impose on ”a plane in which the positive
`
`electrode and the negative electrode are opposed to each other at an outermost periphery of
`
`the electrode assembly" because the said plane is part of or inside the electrode assembly.
`
`Thus, the surface pressure imposed on the said plane is a result—effective variable. It would
`
`have been obvious to one of ordinary skill in the art, before the effective filing date ofthe
`
`instant invention, to have optimized the surface pressure imposed on the said plane to be ”not
`
`less than 0.1 MPa at 100% SOC (”in the charging completed state", [0031])" as instantly
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`claimed, in order to achieve remarkable effects such as improved cycle characteristics (at least
`
`[0043]). Moreover, It is well—established that ”[W]here the general conditions of a claim are
`
`
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`Application/Control Number: 15/753,772
`Art Unit: 1727
`
`Page 10
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`disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by
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`routine experimentation." In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
`
`Regarding claim 5, Miyawaki in view of Kokado teaches the nonaqueous electrolyte
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`secondary battery according to claim 1, and the instantly claimed ”the positive electrode
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`mixture layer has a volume resistivity under a load of 20 kN of higher than 6.1 Qcm" is
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`considered as the characteristic or property of the positive electrode mixture layer. Since
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`Miyawaki as modified teaches a positive electrode mixture layer having a composition
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`containing Ni and tungstate substantially similar to the claimed (See at least: lines 11—39 of col.
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`4 of Kokado, instant Table 7, and the rejection of claim 1), the claimed volume resistivity is
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`reasonably expected to one of ordinary skill in the art.
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`”Products of identical chemical composition cannot have mutually exclusive properties"
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`(MPEP 2112.01). The applicant’s product and that of the prior art are identical or substantially
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`identical, the burden shifts to the applicant to overcome the rejection by providing evidence
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`that the prior art product does not necessarily or inherently possess a relied—upon characteristic
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`of the applicant’s claimed product. See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596
`
`(CCPA 1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433—34 (CCPA 1977).
`
`13.
`
`Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Miyawaki in view of
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`Kokada, as applied to claim 1 above, and further in view of Ueda et al. (US 20120009452 A1,
`
`hereafter Ueda).
`
`Regarding claim 3, Miyawaki in view of Kokado teaches the nonaqueous electrolyte
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`secondary battery according to claim 1, but is silent to the amount ratio of silicon compound to
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`
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`Application/Control Number: 15/753,772
`Art Unit: 1727
`
`Page 11
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`the total amount of the carbon material and the silicon compound present in the negatiave
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`electrode mixture layer.
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`However, Ueda discloses a nonaqueous electrolyte secondary battery having improved
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`energy density (at least, Abstract, [0047], [0078]) by using a negative electrode material
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`containing 20% or less by weight of silicon compound (silicon oxide SiO, [0078]) and 80% or
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`more by weight ([0078]).
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`It would have been obvious to one of ordinary skill in the art, before the effective filing
`
`date ofthe instant invention, to have used Ueda’s negative electrode material as an alternative
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`to the negative electrode material of Miyawaki as modified, for the benefit of achieving an
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`improved energy density.
`
`Response to Arguments
`
`14.
`
`Applicant's arguments filed on June 19, 2019 have been fully considered but they are
`
`not persuasive.
`
`Applicant's arguments are based on the claims as amended. The amended claims have
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`been addressed in the new rejections above.
`
`15.
`
`In response to applicant's argument that Miyawaki does not recognize ”the presence of
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`such variations will facilitate the diffusion of the electrolytic solution during charging and
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`discarging" as described in the specification, the fact that applicant has recognized another
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`advantage which would flow naturally from following the suggestion of the prior art cannot be
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`the basis for patentability when the differences would otherwise be obvious. See Ex parte
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`Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
`
`
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`Application/Control Number: 15/753,772
`Art Unit: 1727
`
`Page 12
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`16.
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`Applicant’s argument with respect to allowance of claim 3 is not persuasive, because
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`claim 1 upon which claim 3 depends is not allowable.
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`Conclusion
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`17.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as
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`set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE MONTHS
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`from the mailing date of this action.
`
`In the event a first reply is filed within TWO MONTHS of
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`the mailing date of this final action and the advisory action is not mailed until after the end of
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`the THREE—MONTH shortened statutory period, then the shortened statutory period will expire
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`on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a)
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`will be calculated from the mailing date of the advisory action.
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`In no event, however, will the
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`statutory period for reply expire later than SIX MONTHS from the mailing date of this final
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`action.
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`18.
`
`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to ZHONGQING WEI whose telephone number is (571)272—4809.
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`The examiner can normally be reached on Mon — Fri 9:30 — 6:00.
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`Examiner interviews are available via telephone, in—person, and video conferencing
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`using a USPTO supplied web—based collaboration tool. To schedule an interview, applicant is
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`encouraged to use the USPTO Automated Interview Request (AIR) at
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`http://www.uspto.gov/interviewpractice.
`
`
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`Application/Control Number: 15/753,772
`Art Unit: 1727
`
`Page 13
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Barbara Gilliam can be reached on (571)272—1330. The fax phone numberfor the
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`organization where this application or proceeding is assigned is 571—273—8300.
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`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`/Z.W/
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`Examiner, Art Unit 1727
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`/BARBARA L GILLIAM/
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`Supervisory Patent Examiner, Art Unit 1727
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