UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/859,856
`
`01/02/2018
`
`Takayuki Shirane
`
`P171418US00
`
`6853
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`
`TYSONS, VA 22182
`
`GONZALEZ RAMOS MAYLA
`
`1721
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/ 1 6/2020
`
`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):
`
`patentmai1@ whda.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`15/859,856
`Examiner
`MAYLA GONZALEZ RAMOS
`
`Applicant(s)
`Shirane et al.
`Art Unit
`1721
`
`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.
`|f 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 12/27/2019.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a). This action is FINAL.
`
`2b) D 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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s) His/are pending in the application.
`
`5a) Of the above Claim(s)
`
`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(ss)
`
`is/are allowed.
`
`Claim(ss) 1_—4 is/are rejected.
`
`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. you may be eligible 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 PPeredback@uspto.gov.
`
`Application Papers
`
`10)|:l The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 01/02/2018 is/are: a). accepted or b)(j 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). All
`
`b)C] Some**
`
`c)C] None of the:
`
`1.. Certified copies of the priority documents have been received.
`
`2C] Certified copies of the priority documents have been received in Application No.
`
`3D 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) [3 Notice of References Cited (PTO-892)
`
`2) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20200412
`
`

`

`Application/Control Number:15/859,856
`Art Unit:1721
`
`Page2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013,
`
`is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Status of Claims
`
`2.
`
`3.
`
`Claim(s) 1-4 are currently pending.
`
`Claim(s) 1-4 have been amended.
`
`Claim Rejections - 35 USC § 102
`
`4.
`
`The following is aquotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(a)(1 ) the claimed inventionwas patented,descn‘bed in a printed publication,or in public use,
`on sale orotherwise available to the public before the effective filing date of the claimed
`invention.
`
`5.
`
`Claim(s) 1-4 is/are rejected under 35 U.S.C. 102a1 as being anticipated by
`
`WO 2013/088540, Takahata et al. with US 20150030931 used as an English
`
`language equivalent.
`
`Regarding claim 1
`
`Takahata teaches a nonaqueous electrolyte secondary battery [Abstract, Figs.
`
`1
`
`and 4, paragraph 0127] comprising:
`
`a positive electrode (30) [Figs.
`
`1 and 4, paragraph 0130],
`
`a negative electrode (50) [Figs. 1-4, paragraphs 0052, 0058 and 0146],
`
`

`

`Application/Control Number:15/859,856
`Art Unit:1721
`
`Page3
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`a separator (70) disposed between the positive electrode (30) and the negative
`
`electrode (50), and a nonaqueous electrolyte [Figs. 1-4, paragraphs 0148 and 0158-
`
`0159L
`
`wherein the negative electrode (50) includes an opposing region (see width b1)
`
`opposes the positive electrode (30) with the separator (70) disposed therebetween [Fig.
`
`4 and paragraph 0148] and a non-opposing region (corresponding to the region
`
`between widths a1 and b1, where the width b1 of negative electrode, 50, is larger than
`
`width a1 of the positive electrode, 30) that does not oppose the positive electrode (30)
`
`but opposes the separator (70) [Fig. 4 and paragraph 0148].
`
`With regards to the limitation “configured such that a discharge cut-off voltage of
`
`the nonaqueous electrolyte secondary battery is in a range of 2.5 V to 3.0 V, and a part
`
`of the non-opposing region adjacent to a boundary between the opposing region and
`
`the non-opposing region has an electric potential plateau in a range of -0.02 V to +0.02
`
`V relative to a negative electrode potential
`
`in the opposing region”, examiner notes that
`
`the materials by which the positive electrode, the negative electrode, the separator and
`
`the electrolyte described in paragraphs 0038, 00460047 and 0050-0054 of the instant
`
`specification are the same as those described in the prior art for said layers e.g.,
`
`natural/synthetic graphite negative electrode, LiCoOZ positive electrode, polypropylene
`
`separator, and an electrolyte containing a solvent and a lithium salt [see paragraphs
`
`0050, 0058, 0066, 0075, 0132, 0139-0141, 0148, and 0158-0159].
`
`Therefore, the claimed properties or functions are presumed to be inherent.
`
`The court has held that products of identical chemical composition cannot have
`
`mutually exclusive properties. A chemical composition and its properties are
`
`

`

`Application/Control Number:15/859,856
`Art Unit:1721
`
`Page4
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`inseparable. Therefore, if the prior art teaches the identical chemical structure, the
`
`properties applicant discloses and/or claims are necessarily present.
`
`In re Spada, 911
`
`F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
`
`Further,
`
`it has been held that when the structure recited in the reference is
`
`substantially identical to that of the claims, claimed properties or functions are
`
`presumed to be inherent (see MPEP § 2112.01). “When the PTO shows a sound basis
`
`for believing that the products of the applicant and the prior art are the same, the
`
`agglicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709,
`
`15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
`
`Regarding claim 2
`
`With regards to the limitation “configured such that a discharge cut-off voltage of
`
`the nonaqueous electrolyte secondary battery is in a range of 2.5 V to 3.0 V, and the
`
`part of the non-opposing region adjacent to the boundary between the opposing region
`
`and the non-opposing region has an electric potential plateau at 0.37 V (vs. Li/Li+) or
`
`lower”, examiner notes that the materials by which the positive electrode, the negative
`
`electrode, the separator and the electrolyte described in paragraphs 0038, 00460047
`
`and 0050-0054 of the instant specification are the same as those described in the prior
`
`art for said layers e.g., natural/synthetic graphite negative electrode, LiCoO2 positive
`
`electrode, polypropylene separator, and an electrolyte containing a solvent and a
`
`lithium salt [see paragraphs 0050, 0058, 0066, 0075, 0132, 0139-0141, 0148, and
`
`0158-0159].
`
`Therefore, the claimed properties or functions are presumed to be inherent.
`
`

`

`Application/Control Number:15/859,856
`Art Unit:1721
`
`Page5
`
`The court has held that products of identical chemical composition cannot have
`
`mutually exclusive properties. A chemical composition and its properties are
`
`inseparable. Therefore, if the prior art teaches the identical chemical structure, the
`
`properties applicant discloses and/or claims are necessarily present.
`
`In re Spada, 911
`
`F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
`
`Further,
`
`it has been held that when the structure recited in the reference is
`
`substantially identical to that of the claims, claimed properties or functions are
`
`presumed to be inherent (see MPEP § 2112.01). “When the PTO shows a sound basis
`
`for believing that the products of the applicant and the prior art are the same, the
`
`agglicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709,
`
`15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
`
`Regarding claim 3
`
`With regards to the limitation “Configured such that a discharge cut-off voltage of
`
`the nonaqueous electrolyte secondary battery is in a range of 2.5 V to 3.0 V, and a
`
`negative electrode potential
`
`in the part of the non-opposing region adjacent to the
`
`boundary is 0.37 V (vs. Li/Li.+) or lower”, examiner notes that the materials by which the
`
`positive electrode, the negative electrode, the separator and the electrolyte described in
`
`paragraphs 0038, 00460047 and 0050-0054 of the instant specification are the same as
`
`those described in the prior art for said layers e.g., natural/synthetic graphite negative
`
`electrode, LiCoO2 positive electrode, polypropylene separator, and an electrolyte
`
`containing asolvent and a lithium salt [see paragraphs 0050, 0058, 0066, 0075, 0132,
`
`0139-0141, 0148, and 0158-0159].
`
`Therefore, the claimed properties or functions are presumed to be inherent.
`
`

`

`Application/Control Number:15/859,856
`Art Unit:1721
`
`Page6
`
`The court has held that products of identical chemical composition can not have
`
`mutually exclusive properties. A chemical composition and its properties are
`
`inseparable. Therefore, if the prior art teaches the identical chemical structure, the
`
`properties applicant discloses and/or claims are necessarily present.
`
`In re Spada, 911
`
`F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
`
`Further,
`
`it has been held that when the structure recited in the reference is
`
`substantially identical to that of the claims, claimed properties or functions are
`
`presumed to be inherent (see MPEP § 2112.01). “When the PTO shows a sound basis
`
`for believing that the products of the applicant and the prior art are the same, the
`
`agglicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709,
`
`15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
`
`Regarding claim 4
`
`With regards to the limitation “configured such that a discharge cut-off voltage of
`
`the nonaqueous electrolyte secondary battery is in a range of 2.5 V to 3.0 V, and a
`
`negative electrode potential
`
`in the part of the non-opposing region adjacent to the
`
`boundary is 0.37 V (vs. Li/Li.+) or lower”, examiner notes that the materials by which the
`
`positive electrode, the negative electrode, the separator and the electrolyte described in
`
`paragraphs 0038, 00460047 and 0050-0054 of the instant specification are the same as
`
`those described in the prior art for said layers e.g., natural/synthetic graphite negative
`
`electrode, LiCoO2 positive electrode, polypropylene separator, and an electrolyte
`
`containing asolvent and a lithium salt [see paragraphs 0050, 0058, 0066, 0075, 0132,
`
`0139-0141, 0148, and 0158-0159].
`
`Therefore, the claimed properties or functions are presumed to be inherent.
`
`

`

`Application/Control Number:15/859,856
`Art Unit:1721
`
`Page7
`
`The court has held that products of identical chemical composition can not have
`
`mutually exclusive properties. A chemical composition and its properties are
`
`inseparable. Therefore, if the prior art teaches the identical chemical structure, the
`
`properties applicant discloses and/or claims are necessarily present.
`
`In re Spada, 911
`
`F.2d 705, 709, 15 USPQZd 1655, 1658 (Fed. Cir. 1990)
`
`Further,
`
`it has been held that when the structure recited in the reference is
`
`substantially identical to that of the claims, claimed properties or functions are
`
`presumed to be inherent (see MPEP § 2112.01). “When the PTO shows a sound basis
`
`for believing that the products of the applicant and the prior art are the same, the
`
`agglicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709,
`
`15 USPQZd 1655, 1658 (Fed. Cir. 1990).
`
`Response to Arguments
`
`6.
`
`Applicant’s arguments, see Remarks filed 12/27/2019, with respect to the
`
`rejection of claims 1-4 under 35 U.S.C. §112(b) or 35 U.S.C. §112 (pre-AIA), second
`
`paragraph, have been fully considered and are persuasive. The rejection of claims 1-4
`
`under 35 U.S.C. §112(b) or 35 U.S.C. §112 (pre-AIA), second paragraph, has been
`
`withdrawn.
`
`7.
`
`Applicant's arguments, see Remarks filed 12/27/2019, with respect to the
`
`rejection of claims 1-4 under 35 U.S.C. §102(a)(1) have been fully considered but they
`
`are not persuasive.
`
`Applicant argues that Takahata at least fails to disclose the aspect of parent
`
`claim 1 that the battery is configured such that a discharge cut-off voltage of the
`
`

`

`Application/Control Number:15/859,856
`Art Unit:1721
`
`Page8
`
`nonaqueous electrolyte secondary battery is in a range of 2.5 V to 3.0 V, and a part of
`
`the non-opposing region adjacent to a boundary between the opposing region and the
`
`non-opposing region has an electric potential plateau in a range of -0.02 V to +0.02 V
`
`relative to a negative electrode potential
`
`in the opposing region.
`
`Applicant argues that the invention as now claimed is not provided for by
`
`Takahata as the discharge cut-off voltage aspect as now claimed is not inherent to the
`
`structure taught and relied upon as noted above.
`
`Applicant further argues that per M.P.E.P. §2112.l\/: “The fact that a certain
`
`result or characteristic may occur or be present in the prior art is not sufficient to
`
`establish the inherency of that result or characteristic. In re Ffijckaert, 9 F.3d 1531,
`
`1534, 28 USPQZd 1955, 1957 (Fed. Cir. 1993).” Moreover, under U.S. case law
`
`regarding 35 U.S.C. §102: "unless a reference discloses within the four comers of the
`
`document not only all of the limitations claimed but also all of the limitations arranged or
`
`combined in the same way as recited in the claim, it cannot be said to prove prior
`
`invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. §
`
`102." NetMoney/N, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
`
`Examiner respectfully disagrees. Applicant’s arguments are directed to a method
`
`of charging/discharging the claimed battery. "[A]pparatus claims cover what a device is,
`
`not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc, 909 F.2d 1464,
`
`1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim
`
`containing a "recitation with respect to the manner in which a claimed apparatus is
`
`intended to be employed does not differentiate the claimed apparatus from a prior art
`
`

`

`Application/Control Number:15/859,856
`Art Unit:1721
`
`Page9
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`apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex
`
`parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & lnter. 1987).
`
`In the instant case, Takahata recites a battery that is identical in structure to the
`
`one claimed. Further, the materials by which the layers in the battery of Takahata are
`
`made are the same as the ones disclosed in the instant specification for the claimed
`
`battery. Specifically, Takahata teaches a battery comprising a natural/synthetic graphite
`
`negative electrode, a LiCoO2 positive electrode, a polypropylene separator, and an
`
`electrolyte containing a solvent and a lithium salt [see paragraphs 0050, 0058, 0066,
`
`0075, 0132, 0139-0141, 0148, and 0158-0159]. Said materials are the same disclosed
`
`in paragraphs 0038, 00460047 and 0050-0054 of the instant specification for the
`
`claimed positive electrode, negative electrode, separator and electrolyte.
`
`Therefore, the claimed properties or functions are presumed to be inherent.
`
`The court has held that products of identical chemical composition can not have
`
`mutually exclusive properties. A chemical composition and its properties are
`
`inseparable. Therefore, if the prior art teaches the identical chemical structure, the
`
`properties applicant discloses and/or claims are necessarily present.
`
`In re Spada, 911
`
`F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
`
`It has been held that when the structure recited in the reference is substantially
`
`identical to that of the claims, claimed properties or functions are presumed to be
`
`inherent (see MPEP § 2112.01). “When the PTO shows a sound basis for believing that
`
`the products of the applicant and the prior art are the same, the applicant has the
`
`burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d
`
`1655, 1658 (Fed. Cir. 1990).
`
`

`

`Application/Control Number:15/859,856
`Art Unit:1721
`
`Page10
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`Conclusion
`
`8.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the mailing date of this final action.
`
`9.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to MAYLA GONZALEZ RAMOS whose telephone number
`
`is (571)272-5054. The examiner can normally be reached on Monday - Thursday, 9:00-
`
`5:00 - 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://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Allison Bourke can be reached on (303)297-4684. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number:15/859,856
`Art Unit:1721
`
`Page11
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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 applications is available through Private PAIR only.
`
`For more information about the PAIR system, see https://ppair-
`
`my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private
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`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`If you would like assistance from a USPTO Customer Service Representative or access
`
`to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-
`
`272-1000.
`
`/MAYLA GONZALEZ RAIVIOS/
`
`Primary Examiner, Art Unit 1721
`
`