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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/253,494
`
`01/22/2019
`
`Yuji Oura
`
`P190044US00
`
`1016
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`ROSENBAUM, AMANDA R
`
`ART UNIT
`1729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/29/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-19 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 3 and 12-19 is/are withdrawn from consideration.
`[] Claim(s)__ is/are allowed.
`Claim(s) 1-2 and 4-11 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11)M The drawing(s) filed on 1/22/2019 is/are: a)C) accepted or b)M objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)[¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)() None ofthe:
`b)( Some**
`a)) All
`1.4) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been 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)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 1/22/2019.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210123
`
`Application No.
`Applicant(s)
`16/253 494
`Ouraetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`Amanda Rosenbaum
`1729
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s)filed on 22 January 2019.
`LC} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)(J This action is FINAL. 2b))This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\(Z Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/253,494
`Art Unit: 1729
`
`Page 2
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined underthe
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`first inventor to file provisions of the AJA.
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`Election/Restrictions
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`Applicant’s election without traverse of Species I, claims 1-2 and 4-11 drawnto Fig. 4a
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`and 4b in the reply filed on 11/19/2020 is acknowledged.
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`Drawings
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`Figures 6A and 6B should be designated by a legend suchas --Prior Art-- because only
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`that whichis old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with
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`37 CFR 1.121(d) are required in reply to the Office action to avoid abandonmentofthe
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`application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header
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`(as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawingfigures. If the changes
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`are not accepted by the examiner, the applicant will be notified and informed of any required
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`corrective action in the next Office action. The objection to the drawings will not be held in
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`abeyance.
`
`Claim Rejections - 35 USC § 103
`
`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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`statutory basis for the rejection will not be considered a new ground ofrejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same undereither status.
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`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejectionsset forth in this Office action:
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`A patent for a claimed invention may not be obtained, notwithstanding that the claimed inventionis not
`identically disclosed as set forth in section 102, if the differences between the claimed invention and the
`prior art are such that the claimed invention as a whole would have been obviousbefore the effective
`
`

`

`Application/Control Number: 16/253,494
`Art Unit: 1729
`
`Page 3
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`filing date of the claimed invention to a person having ordinaryskill in the art to which the claimed
`invention pertains. Patentability shall not be negated by the mannerin which the invention was made.
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`The factual inquiries for establishing a background for determining obviousness under 35
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`U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the priorart.
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`2. Ascertaining the differences between the prior art and the claimsat issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`This application currently namesjoint inventors. In considering patentability of the
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`claims the examiner presumesthat the subject matter of the various claims was commonly
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`owned asofthe effective filing date of the claimed invention(s) absent any evidenceto the
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`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly ownedasofthe effective filing date
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`of the later invention in order for the examinerto consider the applicability of 35 U.S.C.
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`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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`Claims 1-2 and 4-11 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Hamazakiet al. (JP 2010055906) in view of Kurata et al. (US 2018/0134923).
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`Regarding claim 1, Hamazaki teaches a non-aqueous electrolyte secondary battery (Fig. 1)
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`comprising
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`a positive electrode 11; and
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`a negative electrode 12 (P28 Fig. 1),
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`wherein at least any one of the positive 11 and negative electrodes comprising:
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`a current collector, or aluminum foil 11¢/11f (P41) ;
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`

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`Application/Control Number: 16/253,494
`Art Unit: 1729
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`Page 4
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`an active material layer, or core member 11b formed on the current collector (P40; Fig.
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`2B),
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`an electrode tab 11a joined to an exposed portion where the active material layer 11b is
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`not formed andthe current collector is exposed 11f (P40; Fig. 2); and
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`an insulating tape 25a covering the electrode tab 11a on the exposed portion 11f (Fig. 2).
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`Hamazaki teaches the insulating tape has a multilayer structure with a polyimide film and
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`an organic layer, or rubber base material (P35).
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`Hamazakiis silent in teaching the insulating tape a composite material layer containing
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`an organic material and an inorganic material; the inorganic material in the composite material
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`layer accounts for 20% or more of the weight of the composite material layer; and the inorganic
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`material includesat least one selected from the group consisting of a metal oxide, a metal nitride,
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`a metal fluoride, and a metal carbide; however, Kurata, in a similar field of endeavor related to
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`non-aqueous electrolyte battery (P106) teaches an insulating tape, or adhesive sheet 1 that can be
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`used inside a battery with a positive electrode and a negative electrode to fix one or more
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`electrode lead out tabs (P105). Kurata teaches this tape suppresses short circuiting and thermal
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`runawayand gives excellent temperature stability (P107).
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`Kurata teaches the insulating tape 1, or adhesive sheet (abstract. P25) has a multilayer
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`structure (P19) including an organic material layer, or base material layer 11 mainly composed
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`of an organic material (P25) and a composite material layer, or hard coat layer 12 containing an
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`organic material and an inorganic material (P28; Fig. 1);
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`the inorganic material in the composite material layer accounts for 30% or more of the
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`weight of the composite material layer (P47); and
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`

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`Application/Control Number: 16/253,494
`Art Unit: 1729
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`Page 5
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`the inorganic material includesat least one selected from the group consisting of a metal
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`oxide, metal nitride, or metal carbide (P37).
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`Therefore, it would have been obvious to one of ordinary skill in the art before the
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`effective filing date of the instant application to substitute the insulating tape of Hamazaki with
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`the adhesive tape of Kurata to suppress short circuiting and thermal runaway and have excellent
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`temperature stability. Additionally, the selection of a known material, which is based uponits
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`suitability for the intended use, is within the ambit of one of ordinary skill in the art. See Jn re
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`Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
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`Regarding claim 2, modified Hamazaki teachesthe insulating tape 25a/26 coversat least
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`a part of the exposed portion 11f (Fig. 2B).
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`Regarding claim 4, Hamazaki in view of Kurata teaches the inorganic material in the
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`composite material layer accounts for 35% or more and 80% weightor less, or 40-70% of the
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`weight of the composite material layer (P47).
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`Regarding claim 5, Hamazaki in view of Kurata teaches the composite material layer 12
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`thickness is 1 um or more and 5 um orless, or between 1 and 4 um (P41).
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`Regarding claim 6, Hamazaki in view of Kurata teaches the inorganic material includes
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`at least any one of aluminum oxideorsilicon oxide (P38).
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`Regarding claim 7, Hamazaki in view of Kurata teaches the organic material contained in
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`the composite material layer includesat least one of an acrylic resin, an epoxy resin (P32. 36).
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`Regarding claim 8, Hamazaki in view of Kurata teaches the an adhesive layer 13 formed
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`on the composite material layer 12 (Fig. 1),
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`wherein the organic material in the composite material layer and the adhesive layer are
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`composed of the same type of resin (P30. 32. 36. 54. 56).
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`

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`Application/Control Number: 16/253,494
`Art Unit: 1729
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`Page 6
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`Regarding claim 9, Hamazaki in view of Kurata teaches the same type of resin includes
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`at least one of an acrylic resin and an epoxyresin (P30. 32. 36. 54. 56).
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`Regarding claim 10, Hamazaki in view of Kurata teaches examples of the organic layer
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`and composite layer. Kurata teaches, the organic layer as a polyimide film with a thickness of 25
`
`um (P112) where the composite layer has at least 20 weight% inorganic material (P111. 113.
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`119. 122) with a thickness of 2 um (P112). As presented in the instant disclosure, when the same
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`composition and structure, of an organic layer as a polyimide film with a thickness of 25 um, and
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`the composite layer with a thickness between 1 and 5 um with an inorganic weight between 25-
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`70%, the weight of the organic material is less than 20% with respect to the total weight of the
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`organic material layer and the composite material layer (examples 1-4; Table 1). Therefore,
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`Hamazaki in view of Kurata would have the weight of the organic material less than 20% with
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`respect to the total weight of the organic material layer and the composite material layer, given
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`that the composition and structure of Kurata and the instant disclosure are the same.
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`Regarding product and apparatus claims, when the structure recited in the reference is
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`substantially identical to that of the claims, claimed properties or functions are presumed to be
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`inherent. The Courts have held that it is well settled that where there is a reason to believe that a
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`functional characteristic would be inherentin the priorart, the burden of proof then shifts to the
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`applicant to provide objective evidenceto the contrary. See In re Schreiber, 128 F.3d at 1478, 44
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`USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, L.).
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`Regarding claim 11, Hamazaki in view of Kurata teaches the organic material contained
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`in the organic material layer 11 includesat least one of polyethylene terephthalate (PET) or
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`polybutylene terephthalate (PBT) (P25).
`
`

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`Application/Control Number: 16/253,494
`Art Unit: 1729
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`Page 7
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`Conclusion
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`The prior art made of record and notrelied upon is considered pertinent to applicant's
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`disclosure.
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`Ishikawaet al. (US 2017/0309951) teaches an insulating tape for an electrode tab
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`covering an exposed portion with a multilayer structure including an organic material layer, a
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`composite material layer containing an organic material and an inorganic material such assilica
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`(P57), and an adhesive layer. The inorganic material in the composite material layer accounts for
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`20 % or more of the weight of the composite material layer (abstract) with the claimed thickness
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`(P78).
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Amanda Rosenbaum whosetelephone numberis (571)272-8218.
`
`The examiner can normally be reached on Monday-Friday 8:00 am-4 pm.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicantis
`
`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
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`supervisor, Ula Ruddock can be reached on (571) 272-1481. The fax phone numberfor the
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`organization wherethis application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`maybe 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
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`

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`Application/Control Number: 16/253,494
`Art Unit: 1729
`
`Page 8
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`system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to
`
`the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-
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`
`1000.
`
`/Amanda Rosenbaum/
`Examiner, Art Unit 1729
`
`/ULA C RUDDOCK/
`Supervisory Patent Examiner, Art Unit 1729
`
`