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
`
`15/861,922
`
`01/04/2018
`
`Yuji Oura
`
`Pl7l4l lUSOO
`
`1081
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`
`TYSONS, VA 22182
`
`TAKEUCHI, YOSHITOSHI
`
`1723
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`03/06/2020
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`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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`patentmai1@ whda.eom
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`PTOL-90A (Rev. 04/07)
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`

`

`017/09 A0170” Summary
`
`Application No.
`15/861 ,922
`Examiner
`YOSHITOSHI TAKEUCHI
`
`Applicant(s)
`Oura et al.
`Art Unit
`1723
`
`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 3 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
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`1). Responsive to communication(s) filed on February 21, 2020.
`El 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) D This action is non-final.
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`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.
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`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.
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`Disposition of Claims*
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`5)
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`Claim(s)
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`1 and 3—17 is/are pending in the application.
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`5a) Of the above claim(s) 10 and 13 is/are withdrawn from consideration.
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`
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`E] Claim(s)s_is/are allowed.
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`Claim(ss) 1 ,3—9, 11— 12 and 14— 17 is/are rejected.
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`[:1 Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`C] Claim(s
`* If any claims have been determined allowable, 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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`httpfiwww.”smogovmatentszinit_events[pph[index.'sp or send an inquiry to PPeredhack@g§ptg.ggv.
`
`Application Papers
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`10):] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on January 4, 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
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`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)C] Some**
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`c)[j None of the:
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`1.. Certified copies of the priority documents have been received.
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`2E] Certified copies of the priority documents have been received in Application No.
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`3C] 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)
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`1) [3 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) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20200302
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`

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`Application/Control Number: 15/861,922
`Art Unit: 1723
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`Page 2
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`DETAILED ACTION
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`1.
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`Claims 1 and 3—17 are presented for examination, wherein claim 1 is currently amended;
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`plus, claims 10 and 13 are withdrawn. Claim 2 is cancelled.
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`2.
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`The 35 U.S.C. 102/103 rejection of claims 1—2 and 7 over Hong is withdrawn as result of
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`the amendments to claim 1, from which the other claims depend, and cancellation of claim 2.
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`However, the art is reapplied, as provided infra.
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`3.
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`The 35 U.S.C. § 103 rejection of claims 8 and 11 over Hong is withdrawn as a result of
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`the amendments to claim 1, from which said claims depend. However, the art is reapplied, as
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`provided infra.
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`4.
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`The 35 U.S.C. § 103 rejection of claims 3—5, 8, and 11 over Hong in view of Caplinq is
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`withdrawn as a result of the amendments to claim 1, from which said claims depend.
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`5.
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`The 35 U.S.C. § 103 rejection of claims 3—6, 8—9, 11—12, 15, and 17 over Hong in view of
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`Iwata is withdrawn as a result of the amendments to claim 1, from which said claims depend.
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`However, the art is reapplied, as provided infra.
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`6.
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`The 35 U.S.C. § 103 rejection of claims 3—6, 8—9, 11—12, 14—15, and 16 over Hong in view
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`of Kuo is withdrawn as a result of the amendments to claim 1, from which said claims depend.
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`However, the art is reapplied, as provided infra.
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`7.
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`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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`Claim Rejections - 35 US C § 103
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`8.
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre—AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`

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`Application/Control Number: 15/861,922
`Art Unit: 1723
`
`Page 3
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`9.
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`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.
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`10.
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`Claims 1, 3—9, 11—12, and 14—16 are rejected under 35 U.S.C. 103 as obvious over Hong
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`(US 2003/0232243) in view of Kuo (US 2012/0328863).
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`a.
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`Regarding newly amended independent claim 1, Hong teaches a lithium
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`secondary battery (6. g. 110003), reading on “secondary battery,” said battery comprising:
`
`(1)
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`a cathode plate (e.g. item 111, noting an apparent misprint calling item
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`111 an “anode plate”), said cathode plate made by coating positive active material on one
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`or both surfaces of a metal foil collector such as an aluminium foil collector, and drying
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`said positive active material (e.g. ‘JI0055 plus e.g. Figures 1 and 3—5), reading on “a
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`positive electrode having a positive electrode current collector and a positive electrode
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`active material layer on the positive electrode current collectorf’
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`(2)
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`an anode plate (e. g. item 113, noting an apparent misprint calling item 113
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`an “cathode plate”), said anode plate made by coating a negative active material on one
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`or both surfaces of a metal foil collector such as a copper foil collector, and drying said
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`negative active material (e. g. E), reading on “a negative electrode having a negative
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`electrode current collector and a negative electrode active material layer on the negative
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`electrode current collector;”
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`(3)
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`a separator (e. g. item 115), said separator including at least one porous
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`polymer membrane of polyethylene (PE) or polypropylene (PP), and further including
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`adhesive portions to which said cathode plate and said anode plate are attached (e. g. E),
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`

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`Application/Control Number: 15/861,922
`Art Unit: 1723
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`Page 4
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`reading on “a separator interposed between the positive electrode and the negative
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`electrode;”
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`(4)
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`an electrolyte (eg. ‘jlfjl 0026, 29, 52, and 76), reading on “a electrolyte;”
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`(5)
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`a tah rnemher (eg. items l43) welded, at a welded portion (eg. itemlélfi),
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`to an uncoated portion (“grid”) of each of said cathode plate and anode plate (e. g. fill
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`@055, (El—69, 7l, ’74, 76—77, and 79—80 plus eg. Figures 4—5 and lG—l7), reading on “a
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`positive electrode lead electrically connected to the positive electrode;” and,
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`{6)
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`an insulating tape (eg. item l4?) covering said welded portion of said
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`cathode plate, at a portion of said uncoated portion or" said cathode plate (eg. 31% 0062 and
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`66—69 plus eg. Figures 7E—7H, 8, and lO—l7), reading on “an insulating tape that covers
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`part of the positive electrode” and “the positive electrode current collector has an exposed
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`portion without the positive electrode active material layer, and at least part of the
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`exposed portion is covered with the insulating tape”
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`wherein said insulating tape is made of (6a) polyiniide film, having characteristics
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`of heat—resistance and chemical inertness; and, (6b) a silicone—based adhesive used as an
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`adhesive to attach said insulating tape to said welded portion (eg. ‘ll‘jl 0019 and 67:), said
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`adhesive located between said insulating tape and said welded portion is understood to he
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`a “layer,” reading on “the insulating tape has a substrate layer and an adhesive layer” and
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`“the substrate layer contains a polyirnide,”
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`Alternatively, the limitation “layer” in “adhesive layer” does not patentably
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`distinguish the instant invention, e. g. MPEP § 2l44.04(lV)(B), wherein no evidence was
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`provided in the initial disclosure indicating the configuration of a “layer” is significant.
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`

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`Application/Control Number: 15/861,922
`Art Unit: 1723
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`Page 5
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`Hong teaches said silicone—based adhesive. as provided supra. but does not
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`expressly teach the newly amended limitation “the adhesive layer has an electrical
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`resi stance of l kQ/mrn2 or more at 500° C and contains at least one of the group of a
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`melamine resin and a phenolic resin.”
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`However, Kuo teaches an electrically insulating tape comprising a sheet—form
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`substrate and a releasable adhesive layer with excellent attachment characteristics (eg. (H
`
`0039 and 133), said sheet—form substrate composed of polyimide or polyether imide (eg.
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`I£0105); and, said adhesive layer includes liltl parts by weight of component (A) and ll)-
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`900 parts by weight of component (B), wherein component (A) is an organopolysiloxane
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`resin—organopolysiloxane condensation reaction product and component (B) may be
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`dimethylpolysiloxane (eg. (H 0069 and 7l—79), wherein component (B) may include
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`benzyl groups.
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`Further, Kuo teaches said electrically insulating tape has an improved adhesive
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`composition that provides improved peeling force, attachment characteristics, and
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`releasahility characteristics ($00 l 6).
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`As a result, it would have been obvious to suhstitute the insulating tape of Hong
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`with the tape of Kuo, since Kuo teaches its tape has improved peeling force. attachment
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`characteristics, andfor releasahility characteristics, wherein said insulating tape has an
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`adhesive layer has a dimethylpolysiloxane that may further include benzyl groups,
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`reading on “the adhesive layer
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`contains at least one of the group of a melamine resin
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`and a phenolic resin.
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`Further, said adhesive layer would, be expected to have the claimed property of
`
`2
`“an electrical resistance of l leg/mm or more at 5000 C” since Kuo teaches a
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`

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`Application/Control Number: 15/861,922
`Art Unit: 1723
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`Page 6
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`substantially identical composition and/or product (see e. g. supra, compared with instant
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`specification, at e.g. W @023. 46, and 48), e.g. MPEP § 2i l2.0l(l—ll).
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`‘0.
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`Regarding claims 3-6, Hong as modified teaches the battery of claim 1, wherein
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`Kuo teaches said substrate having a thickness of generally of 5 to 100 pm and said
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`adhesive layer has a thickness of 2-60 pm (e. g. 1% 0031.6, 99—l0l, and lOS), reading on
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`“the insulating tape has a thickness of 45 pin or less” (claim 3); “the adhesive layer has a
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`thickness Tad of 5 ton to 25 ton” (claim 4); “the substrate layer has a thickness T51; of l0
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`pm to 30 pm” (claim 5); “a ratio 'l‘adl'l‘gb of the thickness Tad of the adhesive layer to the
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`thickness Ta, of the suhstrate layer is 0.2 to l” (claim 6).
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`c.
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`Regarding claim 7, Hong as modified teaches the battery of claim 1, wherein
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`Hong teaches said tab member overlaps said uncoated portion (“grid”) of said cathode
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`plate, and said tab member is welded at said overlapped welded portion to said uncoated
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`portion of said cathode plate; and, said tab member having a portion projecting from said
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`overlapping uncoated “grid” portion of said cathode plate, wherein said insulating tape
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`covers said welded portion (e.g. supra and e.g. Figures 3—5, 7E—7H, and 10—17), reading
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`on “the positive electrode lead is connected to the exposed portion, the positive electrode
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`lead has an extending portion that projects from the exposed portion and an overlapping
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`portion that overlaps the exposed portion, and the insulating tape covers at least part of
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`the overlapping portion.”
`
`(1.
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`Regarding claim 8, Hong as modified teaches the battery of claim 1, wherein Kuo
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`teaches said insulating tape is made of said sheet—form substrate composed of polyimide
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`or polyether imide, reading on “an amount of the polyimide in the substrate layer is 80%
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`h y mass or more.”
`
`

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`Application/Control Number: 15/861,922
`Art Unit: 1723
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`Page 7
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`e.
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`Regarding claims 9 and 15, Hong as modified teaches the battery of claim 1,
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`wherein Kuo teaches said insulating tape is made of said sheet—form substrate composed
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`of pol yimide or polyether imide, wherein, it would have been obvious to combine the
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`polyimide and polyether imide compositions to make said sheet~form substrate, since
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`Kuo teaches they are used for the same purpose, reading on “the substrate layer is made
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`of a polymer alloy of the polyirnide and a resin other than the polyimide” (claim 9) and
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`“the polyimide contains at least one of a wholly aromatic polyimide, a, semi—aromatic
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`polyiniide, or a thennosetting polyimide” (claim l5), see also instant specification at eg.
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`$0045 and eg. MPEP § 2l44.06(l).
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`f,
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`Regarding claims 11-12 and 14, Hong as modified teaches the battery of claim 1,
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`wherein Kuo teaches said adhesive layer includes lOQ parts by weight of component (A)
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`and 10—900 parts by weight of component (B), wherein component (A) is an
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`organopolysiloxane resin—organopolysiloxane condensation reaction product and
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`component (B) may be dimethylpolysiloxane, reading on “an amount of a silicone in the
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`adhesive layer is 80% by mass or more” (claim ll); “the adhesive layer is made of a
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`polymer alloy of a silicone and a resin other than the silicone” (claim l2}; and, “a silicone
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`is dimethylpolysiloxane or diphenylpolysiloxane” tclaim l4)
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`g.
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`Regarding claim 16, Hong as modified teaches the battery of claim 1,
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`wherein Kuo teaches said insulating tape is made of said sheet—form substrate composed
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`of polyimide or polyether imide, as provided supra, reading on “the polyimide contains at
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`least one of polypyromeliitimide, polyetherimide, or thermosetting polyimide formed by
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`a reaction between bismaleimide and aromatic diamines.”
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`

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`Application/Control Number: 15/861,922
`Art Unit: 1723
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`Page 8
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`11.
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`Claims 3—6, 9, 11—12, 15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable
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`over Hong (US 2003/0232243) in view of Kuo (US 2012/0328863), as provided supra, in view
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`of Iwata et al (US 2012/0052295).
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`Regarding claim 17, Hong as modified teaches the battery of claim 1, wherein Kuo
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`teaches said electrically insulating tape comprising said sheet-form substrate and said releasable
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`adhesive layer with excellent attachment characteristics, as provided supra, but does not
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`expressly teach “the insulating tape has an insulting filler-containing layer between the substrate
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`and the adhesive layer.”
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`However, lwata teaches an adhesive tape used for protecting electrode plates, said tape
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`having a polyimide substrate and an adhesive layer (fl 0040, 64. 66, 68, and, 7l). Further, lwata
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`teaches an intermediate la yer may be applied between the substrate and the adhesive layer to
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`increase adhesion between said substrate and adhesive layer (eg. ‘ll‘jl 0008, 12, l5, 36, 66—67, '72—
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`73, 75, 78, 83, and 87—89).
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`As a result, it would have been obvious to incorporate the intermediate layer of lwata
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`between said substrate and adhesive layer ol llong as modified, since lwata teaches said
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`intermediate layer may be applied between the substrate and the adhesive layer to increase
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`adhesion between said substrate and adhesive layer.
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`Response to Arguments
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`12.
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`Applicant's arguments filed February 21, 2020 have been fully considered but they are
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`not persuasive. The applicants allege the art does not teach the newly amended limitation of
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`claim 1, from which the other claims depend.
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`in response, the examiner respectfully rel’ers supra.
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`

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`Application/Control Number: 15/861,922
`Art Unit: 1723
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`Page 9
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`Conclusion
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`13.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
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`Applicant is reminded of the extension of time policy as set forth in 37 CFR l.l36(a).
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`A shortened 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. In the event a first reply is filed within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE—MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR l.l36(a) will be calculated from the mailing date of the advisory action. In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the date of this
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`final action.
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`l4.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to YOSHITOSHI TAKEUCHI whose telephone number is
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`(571)270—5 828. The examiner can normally be reached on M—F, 9—6.
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`Examiner interviews are available via telephone, in—person, and video conferencing using
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`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.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, MILTON CANO can be reached on 313—446—4937. The fax phone number for the
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`organization where this application or proceeding is assigned is 571—273—8300.
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`

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`Application/Control Number: 15/861,922
`Art Unit: 1723
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`Page 10
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`15.
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`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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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private 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.
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`.I'YOSHITOSHI TAKEUCHII’
`
`Primary Examiner, Art Unit E723
`
`