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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
`
`16/580,195
`
`09/24/2019
`
`Takahito Nakayama
`
`P190960US00
`
`6791
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`RAYMOND,BRITTANY L
`
`ART UNIT
`1722
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/08/2021
`
`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*
`1-2 and 4-13 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj] Claim(s)
`is/are allowed.
`Claim(s) 1-2 and 4-13 is/are rejected.
`(1 Claim(s)__is/are objectedto.
`Cj) 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://www.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) filed on 9/24/2019 is/are: a)(¥) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`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 20211103
`
`Application No.
`Applicant(s)
`16/580 ,195
`Nakayamaetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`BRITTANY L RAYMOND
`1722
`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 8/10/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J 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: 16/580,195
`Art Unit: 1722
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA 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.
`
`Claim Rejections - 35 USC § 103
`
`2.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections setforth 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 obvious before the effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall not be
`negated by the manner in which the invention was made.
`
`The factual inquiries for establishing a background for determining obviousness
`
`under 35 U.S.C. 103 are summarized asfollows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence presentin the application indicating
`
`obviousness or nonobviousness.
`
`3.
`
`Claims 1, 4, 6, 8, 10 and 11 is/are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Shiozaki (JP Publication 2016-127000) in view of Schmidt (U.S.
`
`Patent Publication 2013/0164635).
`
`Shiozaki discloses a secondary battery comprising a positive electrode, a
`
`negative electrode, and a non-aqueous electrolyte, wherein the positive electrode
`
`comprises a current collector, a protective layer comprising a conductive material and
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 3
`
`inorganic compound, and an active material layer (Paragraphs 0012, 0016, 0022,
`
`0023), as recited in claim 1 of the present invention. Shiozaki also discloses that the
`
`content of the inorganic compound in the protective layer is 90-99 wt% (Paragraph
`
`0023), as recited in claim 1 of the present invention. Shiozaki teaches that the
`
`protective layer has a thickness of 1-5 microns (Paragraph 0022), as recited in claim 4
`
`of the present invention. Shiozaki also teachesthat the inorganic compound can be
`
`manganeseoxide, silicon dioxide, titanium dioxide, and aluminum oxide (Paragraph
`
`0023), as recited in claim 6 of the present invention. Shiozaki states that the conductive
`
`material can be carbon black, acetylene black, ketjen black or graphite (Paragraph
`
`0019), as recited in claim 11 of the present invention.
`
`Shiozaki fails to disclose that a thermally expandable material, different from a
`
`conductive material, is present in the cathode and has larger volume expansion than the
`
`conductive material, that the expandable material is present in an amountof 0.1-5
`
`mass%, or 0.1-1 mass%, that an average particle size of the expandable materialis 1-
`
`500 microns and the expansion volume is 10-300 m/g, and that an expanded graphite is
`
`formed by treating a natural graphite with concentrated sulfuric acid and concentrated
`
`nitric acid.
`
`Schmidt discloses a lithium sulfur secondary battery comprising: a cathode, an
`
`anode and electrolyte, wherein the cathode comprises sulfur, 1-75 wt% of an expanded
`
`graphite and further conductive agents (Paragraph 0012), as recited in claims 1 and 8 of
`
`the present invention. Schmidt also discloses that the conductive agent can be carbon
`
`black, acetylene black, ketjen black, graphite, etc. (Paragraph 0057), as recited in claim
`
`11 of the present invention.
`
`It would be known by one of ordinary skill in the art that
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 4
`
`expanded graphite has larger volume expansion than any of the conductive agents
`
`listed above, as recited in claim 1 of the present invention. Schmidt teachesthat the
`
`expanded graphite can be formedbytreating a natural graphite with concentrated
`
`sulfuric acid and concentrated nitric acid (Paragraph 0038), as recited in claim 11 of the
`
`present invention. Schmidt also teachesthat a variety of types of expanded graphite
`
`can be used, whichis discussed in the examples.
`
`It would have been knownbyone of
`
`ordinary skill in the art that these types of expanded graphite have a particle size
`
`between 1 and 500 microns and an expansion volume between 10 and 300 mL/g, as
`
`recited in claim 10 of the present invention.
`
`It would have been obvious to one of ordinary skill in the art, before the effective
`
`filing date of the present invention to have included an expanded graphite in the positive
`
`electrode active material layer of Shiozaki, in addition to the conductive agent, because
`
`Schmidt teaches that this material improves the number of cycles of charge/discharge
`
`that can be performed using the battery without losing capacity.
`
`It also would have
`
`been obvious to one of ordinary skill in the art to have included the expanded graphite in
`
`the amount of 1-75 wt% because Schmidt teaches that this amount allowsfor the
`
`improvement of battery capacity.
`
`It would have been obvious to one of ordinary skill in
`
`the art that the expanded graphite could be made bytreating natural graphite with
`
`concentrate sulfuric acid and concentrated nitric acid because Schmidt teaches that this
`
`is a common technique for forming this material. Finally, it would have been obvious to
`
`one of ordinary skill in the art to have used an expanded graphite having a particle size
`
`of 1-500 microns and an expansion volume of 10-300 mL/g because Schmidt teaches
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 5
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`that this results in improved properties of the electrode and improved capacity of the
`
`battery.
`
`4.
`
`Claims 1, 2 and 4-9 is/are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Shiozaki (JP Publication 2016-127000) in view of Kuzuo (JP Publication 2001-
`
`332245).
`
`Shiozaki discloses a secondary battery comprising a positive electrode, a
`
`negative electrode, and a non-aqueous electrolyte, wherein the positive electrode
`
`comprises a current collector, a protective layer comprising a conductive material and
`
`inorganic compound, and an active material layer (Paragraphs 0012, 0016, 0022,
`
`0023), as recited in claims 1 and 2 of the present invention. Shiozaki also discloses that
`
`the content of the inorganic compoundin the protective layer is 90-99 wt% (Paragraph
`
`0023), as recited in claims 1 and 2 of the present invention. Shiozaki teaches that the
`
`protective layer has a thickness of 1-5 microns (Paragraph 0022), as recited in claims 4
`
`and 5 of the present invention. Shiozaki also teachesthat the inorganic compound can
`
`be manganeseoxide, silicon dioxide, titanium dioxide, and aluminum oxide (Paragraph
`
`0023), as recited in claims 6 and 7 of the present invention.
`
`Shiozaki fails to disclose that a thermally expandable material, different from a
`
`conductive material, is present in the cathode and has larger volume expansion than the
`
`conductive material, that the expandable material is present in an amountof 0.1-5
`
`mass%, or 0.1-1 mass%.
`
`Kuzuo discloses a positive electrode of a battery comprising: a current collector
`
`and an electrode mixture on the current collector, wherein the electrode mixture or a
`
`layer between the electrode mixture layer and current collector can comprise a heat
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 6
`
`expandable microcapsule in an amount of 0.01-5 wt% (Paragraphs 0010 and 0021), as
`
`recited in claims 1, 2, 8 and 9 of the present invention. Kuzuo also discloses that the
`
`electrode mixture can comprise a conductive agent, such as carbon black (Paragraph
`
`0021).
`
`It would have been knownby one ofordinary skill in the art that a heat
`
`expandable microcapsule would have a larger volume expansion than carbon black, as
`
`recited in claims 1 and 2 of the present invention.
`
`It would have been obvious to one of ordinary skill in the art, before the effective
`
`filing date of the present invention to have included an expandable microcapsule in the
`
`protective layer or active material layer of Shiozaki, in addition to the conductive agent,
`
`because Kuzuo teaches that this material protects the electrode from high temperatures
`
`and overheating.
`
`It also would have been obvious to one of ordinary skill in the art to
`
`have included the expandable microcapsules in the amount of 0.01-5 wt% because
`
`Kuzuo teaches that this amount allows for effective protection from heat without being
`
`detrimental to other properties of the electrode.
`
`5.
`
`Claims 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Shiozaki (JP Publication 2016-127000) in view of Kuzuo (JP Publication 2001-332245)
`
`as applied to claims 1, 2 and 4-9 above, and further in view of Schmidt (U.S. Patent
`
`Publication 2013/0164635).
`
`The teachings of Shiozaki and Kuzuo have been discussedin paragraph 4
`
`above. Shiozaki states that the conductive material can be carbon black, acetylene
`
`black, ketjen black or graphite (Paragraph 0019), as recited in claim 11 of the present
`
`invention.
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 7
`
`Shiozaki and Kuzuo fail to disclose that expanded graphite could be an
`
`expandable material used in the positive electrode, that an average particle size of the
`
`expanded graphite is 1-500 microns and the expansion volume is 10-300 m/g, and that
`
`expanded graphite is formed by treating a natural graphite with concentrated sulfuric
`
`acid and concentrated nitric acid.
`
`Schmidt discloses a lithium sulfur secondary battery comprising: a cathode, an
`
`anode and electrolyte, wherein the cathode comprises sulfur, 1-75 wt% of an expanded
`
`graphite and further conductive agents (Paragraph 0012). Schmidt teaches that the
`
`expanded graphite can be formedbytreating a natural graphite with concentrated
`
`sulfuric acid and concentrated nitric acid (Paragraph 0038), as recited in claims 11 and
`
`13 of the present invention. Schmidt also teachesthat a variety of types of expanded
`
`graphite can be used, whichis discussed in the examples.
`
`It would have been known
`
`by one of ordinary skill in the art that these types of expanded graphite have a particle
`
`size between 1 and 500 microns and an expansion volume between 10 and 300 mL/g,
`
`as recited in claims 10 and 12 of the present invention.
`
`It would have been obvious to one of ordinary skill in the art, before the effective
`
`filing date of the present invention that an expanded graphite could also be usedin the
`
`positive electrode of Shiozaki because Schmidt teaches that this material improves the
`
`number of cycles of charge/discharge that can be performed using the battery without
`
`losing capacity.
`
`It also would have been obvious to one ofordinary skill in the art that
`
`the expanded graphite could be made bytreating natural graphite with concentrate
`
`sulfuric acid and concentrated nitric acid because Schmidt teaches thatthis is a
`
`common technique for forming this material. Finally, it would have been obvious to one
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 8
`
`of ordinary skill in the art to have used an expanded graphite having a particle size of 1-
`
`500 microns and an expansion volume of 10-300 mL/g because Schmidt teaches that
`
`this results in improved properties of the electrode and improved capacity of the battery.
`
`Response to Arguments
`
`6.
`
`Applicant’s arguments, filed 8/10/2021, have been fully considered and are
`
`persuasive. Therefore, the rejection has been withdrawn. However, due to the
`
`amendments made to the claims, a new ground(s)of rejection is made in view of newly
`
`found prior art references.
`
`Applicants argue that Shiozakifails to disclose that the active material layer or
`
`protective layer comprise both a conductive material and an expandable material, and
`
`that the expandable material has larger volume expansion than the conductive material.
`
`The references, Kuzuo and/or Schmidt, are now combined with Shiozaki to teach either
`
`an expandable microcapsule or an expanded graphite that can be added to either a
`
`positive electrode active material mixture or a layer in between an active material layer
`
`and a current collector. Kuzuo and Schmidt teach that these are in addition to a
`
`conductive agent, such as carbon black.
`
`It would have been knownbyone of ordinary
`
`skill in the art that expandable microcapsules and expanded graphite have a larger
`
`volume expansion than carbon black. Additionally, Kuzuo teaches that the expandable
`
`microcapsulesprotect the battery from overheating. Thus, Kuzuo and/or Schmidt
`
`combined with Shiozaki teach everylimitation of claims 1 and 2 of the presentinvention.
`
`Regarding the new claims, Schmidt teaches everylimitation of the properties of
`
`the expanded graphite.
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 9
`
`Conclusion
`
`7.
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR 1.136(a).
`
`A shortenedstatutory period for reply to this final action is set to expire THREE
`
`
`
`MONTHS from the mailing date of this action. In the eventafirst replyis filed within
`
`TWO MONTHS ofthe mailing date ofthis final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortenedstatutory period, then the
`
`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 date of this final action.
`
`8.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to BRITTANY L RAYMOND whosetelephone number is
`
`(571)272-6545. The examiner can normally be reached Monday-Friday 9 am-5 pm.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Cynthia Kelly can be reached on 571-272-1526. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 10
`
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`
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`
`BRITTANY L. RAYMOND
`Examiner
`
`Art Unit 1722
`
`/BRITTANY L RAYMOND/
`Primary Examiner, Art Unit 1722
`
`