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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
`
`12/14/2021
`
`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*
`1-20 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`5a) Of the above claim(s) 3 and 12-19 is/are withdrawn from consideration.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) 1-2,4-11 and 20 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)() The drawing(s) filedon__ is/are: a)C) accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`cc) None ofthe:
`b)L) Some**
`a)D) All
`1.1) 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 receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 11/3/2021.
`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 20211207
`
`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 03 November 2021.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 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\0) 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
`
`Notice of Pre-AIA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined underthe
`
`first inventor to file provisions of the AJA.
`
`Continued Examination Under 37 CFR 1.114
`
`A request for continued examination under 37 CFR 1.114, including the fee set forth in
`
`37 CFR 1.17(e), wasfiled in this application after final rejection. Since this application is
`
`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e)
`
`has been timely paid, the finality of the previous Office action has been withdrawn pursuantto
`
`37 CFR 1.114. Applicant's submission filed on 12/03/2021 has been entered.
`
`In response to the amendments received 12/03/2021:
`
`Response to Amendment
`
`1.
`
`Claims 1- 20 are pending in the current application. Claim 1 has been amended. Claim 20
`
`is new. Claims 3 and 12-19 remain withdrawn withouttraverse.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation ofthe first paragraph of 35 U.S.C. 112(a):
`
`(a) INGENERAL.—Thespecification shall contain a written description of the invention, and
`of the manner and process of making and usingit, 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 inventoror joint inventor
`of carrying out the invention.
`
`The following is a quotation ofthe 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 usingit, 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.
`
`Claims 1-2, 4-11, and 20 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)
`
`

`

`Application/Control Number: 16/253,494
`Art Unit: 1729
`
`Page 3
`
`contains subject matter which wasnotdescribed in the specification in such a wayasto
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`reasonably convey to one skilled in the relevantart that the inventoror a joint inventor, or for
`
`applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was
`
`filed, had possession of the claimed invention.
`
`Claim 1 recites “wherein the inorganic material in the composite material layer is
`
`dispersed in a predetermined powder form in the composite material layer...” It is unclear what
`
`is meant by a ‘predetermined powderform’ based on the claim, figures and instant disclosure.
`
`Theinstant disclosure does not appear to provide support for powderin the final
`
`composite material layer. It is unclear what function is intended to be achieved, and when read in
`
`light of the supporting disclosure no guidelines are provided as to whether the inorganic mixture
`
`is only initially in a predetermined powderform, and then can be changed to form the composite
`
`layer, or if it is a powderin its final form. It is unclear what is meant to be imparted bythis
`
`limitation, and one of ordinary skill in the art would not know if this is with regardsto the initial
`
`or final product.
`
`Claims 2, 4-11, and 20 are rejected for depending on rejected independent claim 1.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—Thespecification shall conclude with one or more claims particularly pointing
`out anddistinctly 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 claimsparticularly pointing out and distinctly
`claiming the subject matter which the applicant regardsas his invention.
`
`Claims 1-2, 4-11, and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-
`
`AJA), second paragraph, as being indefinite for failing to particularly point out and distinctly
`
`claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-
`
`AJA 35 U.S.C. 112, the applicant), regards as the invention.
`
`

`

`Application/Control Number: 16/253,494
`Art Unit: 1729
`
`Page 4
`
`Claim 1 recites “wherein the inorganic material in the composite material layer is
`
`dispersed in a predetermined powder form in the composite material layer...” It is unclear what
`
`the intended scope of the claim is and whether the predetermined powderrelates to an
`
`undisclosed predetermined size, weight, composition or the process of making or product made.
`
`The specification does not provide a standard for ascertaining the requisite degree, and one of
`
`ordinary skill in the art would not be reasonably apprised of the scope of the invention. Using the
`
`broadest reasonable interpretation “a predetermined powder form”is interpreted as either using a
`
`powderin a productby process or having a powderin the final layer.
`
`Claims 2, 4-11, and 20 are rejected for depending on rejected independent claim 1.
`
`Claim Interpretation
`
`In claim 20 it is unclear what is meant by “distinct”. The instant specification discloses
`
`that “the composite material layer 52 is composed of two layers of the composite material layer
`
`52a and the composite material layer 52b. The composite material layer 52a and the composite
`
`material layer 52b may have the sameor different weight composition ratios of the organic
`
`material and the inorganic material to each other” (P33). It is unclear what differentiates these
`
`layers, are they adhered to one another via adhesive to make them distinct or not bonded together
`
`at all? Are they layers made of different materials? Is there a clear break between the changing
`
`inorganic particle concentration? Therefore, using the broadest reasonable interpretation, “two
`
`distinct composite material layers” will be interpreted as layers of different concentration of
`
`material. Therefore, any composite reading on claim 1, where the gradient or concentration of
`
`the inorganic material changes will be interpreted as comprising multiple layers.
`
`Claim Rejections - 35 USC § 103
`
`

`

`Application/Control Number: 16/253,494
`Art Unit: 1729
`
`Page 5
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
`
`102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
`
`statutory basis for the rejection will not be considered a new groundofrejectionif the priorart
`
`relied upon, and the rationale supporting the rejection, would be the same undereither status.
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejectionsset forth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is 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
`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.
`
`The factual inquiries for establishing a background for determining obviousness under 35
`
`U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contents of the priorart.
`
`2. Ascertaining the differences betweenthe prior art and the claimsat issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`This application currently namesjoint inventors. In considering patentability of the
`
`claims the examiner presumesthat the subject matter of the various claims was commonly
`
`owned asofthe effective filing date of the claimed invention(s) absent any evidenceto the
`
`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
`
`effective filing dates of each claim that was not commonly ownedasofthe effective filing date
`
`of the later invention in order for the examinerto consider the applicability of 35 U.S.C.
`
`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
`
`

`

`Application/Control Number: 16/253,494
`Art Unit: 1729
`
`Page 6
`
`Claims 1-2, 4-11 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Hamazakiet al. (JP 2010055906) in view of Kurata et al. (US 2018/0134923), Motoomiet al.
`
`(JP 2000248065A) and Watanabeet al. (US 6,737,145).
`
`Regarding claim 1, Hamazaki teaches a non-aqueous electrolyte secondary battery (Fig. 1)
`
`comprising
`
`a positive electrode 11; and
`
`a negative electrode 12 (P28 Fig. 1),
`
`wherein at least any one of the positive 11 and negative electrodes comprising:
`
`a current collector, or aluminum foil 11¢/11f (P41) ;
`
`an active material layer, or core member 11b formed on the current collector (P40; Fig.
`
`2B),
`
`an electrode tab 11a joined to an exposed portion where the active material layer 11b is
`
`not formed andthe current collector is exposed 11f (P40; Fig. 2); and
`
`an insulating tape 25a covering the electrode tab 11a on the exposed portion 11f (Fig. 2).
`
`Hamazaki teaches the insulating tape has a multilayer structure with a polyimide film and
`
`an organic layer, or rubber base material (P35).
`
`Hamazakiis silent in teaching the insulating tape a composite material layer containing
`
`an organic material and an inorganic material; the inorganic material in the composite material
`
`layer accounts for 20% or more of the weight of the composite material layer; and the inorganic
`
`material includesat least one selected from the group consisting of a metal oxide, a metal nitride,
`
`a metal fluoride, and a metal carbide; however, Kurata, in a similar field of endeavor related to
`
`non-aqueous electrolyte battery (P106) teaches an insulating tape, or adhesive sheet 1 that can be
`
`used inside a battery with a positive electrode and a negative electrode to fix one or more
`
`

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`Application/Control Number: 16/253,494
`Art Unit: 1729
`
`Page 7
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`electrode lead out tabs (P105). Kurata teaches this tape suppresses short circuiting and thermal
`
`runawayand gives excellent temperature stability (P107).
`
`Kurata teaches the insulating tape 1, or adhesive sheet (abstract. P25) has a multilayer
`
`structure (P19) including an organic material layer, or base material layer 11 mainly composed
`
`of an organic material (P25) and a composite material layer, or hard coat layer 12 containing an
`
`organic material and an inorganic material (P28; Fig. 1);
`
`the inorganic material in the composite material layer accounts for 30% or more of the
`
`weight of the composite material layer (P47); and
`
`the inorganic material includesat least one selected from the group consisting of a metal
`
`oxide, metal nitride, or metal carbide (P37).
`
`Therefore, it would have been obvious to one of ordinary skill in the art before the
`
`effective filing date of the instant application to substitute the insulating tape of Hamazaki with
`
`the adhesive tape of Kurata to suppress short circuiting and thermal runaway and have excellent
`
`temperature stability. Additionally, the selection of a known material, which is based uponits
`
`suitability for the intended use, is within the ambit of one of ordinary skill in the art. See Jn re
`
`Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
`
`Modified Hamazakiis silent in teaching the inorganic material is dispersed in a
`
`predetermined powderform in the composite material layer such that the concentration of the
`
`inorganic material increases closer to an attachmentsite, the attachmentsite representing a
`
`surface of the insulating tape which attachesto the electrode tab; however, Motoomi, in a similar
`
`field of endeavorrelated to adhesives with a composite material layer comprising an inorganic
`
`material and organic material (P69-71). Motoomi teaches inorganic material and organic
`
`

`

`Application/Control Number: 16/253,494
`Art Unit: 1729
`
`Page 8
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`polymersare generally incompatible and therefore forming a gradient decreasesthe likelihood of
`
`cracksandbrittleness (P5-6).
`
`Motoomi teaches the inorganic material in the composite material layer is dispersed in a
`
`predetermined powder form (P38-40. 62-63. 68) in the composite material layer such that the
`
`concentration of the inorganic material increases closer to an attachmentsite, the attachmentsite
`
`representing a surface of the insulating tape which attachesto the electrode tab, or the
`
`concentration decreases closer to the organic material layer (P50. 62. 88). Motoomi teaches
`
`having the inorganic material dispersed in a gradient, or changing concentration makes the
`
`material resistant to cracking, peeling, warping and deformation (P63. 70).
`
`Therefore, it would have been obvious to one of ordinary skill in the art before the
`
`effective filing date of the instant application to have the composite material layer of modified
`
`Hamazaki where the inorganic material is dispersed in a predetermined powderform in the
`
`composite material layer such that the concentration of the inorganic material increases closer to
`
`an attachmentsite, as taught by Motoomi, to improve the material with respect to cracking,
`
`peeling, warping and deformation.
`
`Modified Hamazaki in view of Motoomiis vague with regards to having the
`
`concentration of the inorganic material increases closer to an attachmentsite, the attachmentsite
`
`representing a surface of the insulating tape which attachesto the electrode tab is further
`
`evidenced by Watanabe,in a similar field of endeavorrelated to insulating tape with a composite
`
`material layer.
`
`Watanabeteachesthe inorganic material in the composite material layer is dispersed in
`
`the composite material layer such that the concentration of the inorganic material increases
`
`closer to an attachmentsite (Col. 12 [15-26]) to improve adhesion of the material to a metallic
`
`

`

`Application/Control Number: 16/253,494
`Art Unit: 1729
`
`Page 9
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`material (Col. 13 [44-50]). Watanabe teaches having the inorganic material concentration highest
`
`at the attachmentsite and the organic material concentration highest at the opposite side (organic
`
`layer/plastic film) to improveheat and scratch resistance and adhesion (Col. 13 [35-42]).
`
`Therefore, it would have been obvious to one of ordinary skill in the art before the
`
`effective filing date of the instant application to have the inorganic material in the composite
`
`material layer of modified Hamazaki in view of Motoomi dispersed in the composite material
`
`layer such that the concentration of the inorganic material increases closer to an attachmentsite,
`
`as taught/evidenced by Watanabe, because the inorganic material at the attachmentsite will
`
`improvethe heat resistance, hardness, and adhesion. Furthermore, one of ordinary skill in the art
`
`could have arranged the layer of modified Hamazaki such that the inorganic material
`
`concentration is highest at the attachmentsite, as taught by Watanabe because in combination,
`
`each element merely performs the same function as it does separately; one of ordinary skill in the
`
`art would have recognizedthat the results of the combination were predictable despite having a
`
`different method of forming.
`
`Regarding claim 2, modified Hamazaki teachesthe insulating tape 25a/26 coversat least
`
`a part of the exposed portion 11f (Fig. 2B).
`
`Regarding claim 4, modified Hamazaki in view of Kurata teaches the inorganic material
`
`in the composite material layer accounts for 35% or more and 80% weightor less, or 40-70% of
`
`the weight of the composite material layer (P47).
`
`Regarding claim 5, modified Hamazaki in view of Kurata teaches the composite material
`
`layer 12 thickness is 1 um or more and 5 um orless, or between 1 and 4 um (P41).
`
`Regarding claim 6, modified Hamazaki in view of Kurata teaches the inorganic material
`
`includesat least any one of aluminum oxideorsilicon oxide (P38).
`
`

`

`Application/Control Number: 16/253,494
`Art Unit: 1729
`
`Page 10
`
`Regarding claim 7, modified Hamazaki in view of Kurata teaches the organic material
`
`contained in the composite material layer includesat least one of an acrylic resin, an epoxy resin
`
`(P32. 36).
`
`Regarding claim 8, modified Hamazaki in view of Kurata teaches the an adhesive layer
`
`13 formed on the composite material layer 12 (Fig. 1),
`
`wherein the organic material in the composite material layer and the adhesive layer are
`
`composed of the same type of resin (P30. 32. 36. 54. 56).
`
`Regarding claim 9, modified Hamazaki in view of Kurata teaches the same type of resin
`
`includesat least one of an acrylic resin and an epoxyresin (P30. 32. 36. 54. 56).
`
`Regarding claim 10, modified Hamazaki in view of Kurata teaches examples of the
`
`organic layer 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. 119. 122) with a thickness of 2 um (P112). As presented in the instant disclosure,
`
`when the same composition and structure, of an organic layer as a polyimide film with a
`
`thickness of 25 um, and the composite layer with a thickness between 1 and 5 um with an
`
`inorganic weight between 25-70%, the weight of the organic material is less than 20% with
`
`respect to the total weight of the organic material layer and the composite material layer
`
`(examples 1-4; Table 1). Therefore, Hamazaki in view of Kurata would have the weight of the
`
`organic material less than 20% with respectto the total weight of the organic material layer and
`
`the composite material layer, given that the composition and structure of Kurata and the instant
`
`disclosure are the same.
`
`Regarding product and apparatus claims, when the structure recited in the reference is
`
`substantially identical to that of the claims, claimed properties or functions are presumed to be
`
`

`

`Application/Control Number: 16/253,494
`Art Unit: 1729
`
`Page 11
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`inherent. The Courts have held that it is well settled that where there is a reason to believe that a
`
`functional characteristic would be inherentin the priorart, the burden of proof then shifts to the
`
`applicant to provide objective evidenceto the contrary. See In re Schreiber, 128 F.3d at 1478, 44
`
`USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, L.).
`
`Regarding claim 11, Hamazaki in view of Kurata teaches the organic material contained
`
`in the organic material layer 11 includesat least one of polyethylene terephthalate (PET) or
`
`polybutylene terephthalate (PBT) (P25).
`
`Regarding claim 20, modified Hamazaki in view of Motoomiteaches the composite
`
`material layer is composedof two distinct composite material layers, each containing an organic
`
`material and an inorganic material, or the components increase or decrease in thickness direction
`
`(P22), thus having manylayers of different compositions.
`
`Response to Arguments
`
`Applicant's arguments with respect to the claims are based on the claims as amended.
`
`The amended claims have been addressed in the new rejection above.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Amanda Rosenbaum whosetelephone numberis (571)272-8218.
`
`The examiner can normally be reached 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.
`
`

`

`Application/Control Number: 16/253,494
`Art Unit: 1729
`
`Page 12
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`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, Ula Ruddock can be reached on (571) 272-1481. The fax phone numberfor the
`
`organization wherethis application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Center is available
`
`to registered users. To file and managepatent submissions in Patent Center,visit:
`
`https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more
`
`information about Patent Center and https://www.uspto.gov/patents/docx for information about
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`filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC)
`
`at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/Amanda Rosenbaum/
`Examiner, Art Unit 1729
`
`/ULA C RUDDOCK/
`Supervisory Patent Examiner, Art Unit 1729
`
`