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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
`
`MOHADDES, LADAN
`
`ART UNIT
`1722
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/10/2021
`
`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.
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`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*
`1-9 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-9 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`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)0) The drawing(s) filedon__ is/are: a)(J 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)[M) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a) All
`1.{¥] Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) 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 11/11/2019.
`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 20210505
`
`Application No.
`Applicant(s)
`16/580 ,195
`Nakayamaetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`LADAN MOHADDES
`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 09/24/2019.
`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: 16/580,195
`Art Unit: 1722
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Claim Rejections - 35 USC § 102/103
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`2.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section madein this Office action:
`
`A personshall be entitled to a patent unless —
`
`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale, or otherwise available to the public before the effectivefiling date of the claimed
`invention.
`
`3.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`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 andthe 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.
`
`4.
`
`The factual inquiries for establishing a background for determining obviousness
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`under 35 U.S.C. 103 are summarized asfollows:
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`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.
`
`

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`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 3
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`4. Considering objective evidence presentin the application indicating
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`obviousness or nonobviousness.
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`5.
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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was
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`commonly ownedasof the effective filing date of the claimed invention(s) absent any
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`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`point out the inventor and effective filing dates of each claim that was not commonly
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`ownedas ofthe effectivefiling date of the later invention in order for the examiner to
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
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`prior art against the later invention.
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`6.
`
`Claim(s) 1-9 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the
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`alternative, under 35 U.S.C. 103 as obvious over JP 2016127000 (hereinafter referred
`
`to as Shiozaki, already of record).
`
`Shiozaki discloses a secondary battery, comprising: a positive electrode; a
`
`negative electrode; and an electrolyte, wherein the positive electrode includes a positive
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`electrode current collector (30) (paragraphs [0012],[0016]), a protective layer which is
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`equivalent to Applicant’s intermediate layer (31) formed on the positive electrode current
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`collector wherein the thickness of the protective layer is 0.3m, and a positive electrode
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`mixture layer formed on the protective layer (32); the positive electrode mixture layer
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`includes a positive electrode active material (paragraph [0027]) and 0.1 mass %or
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`more and less than 20 mass %of a thermally expandable material such as graphite; the
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`protective layer includes a conductive agent and 90 mass %or more and 99 mass %or
`
`

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`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 4
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`less of an insulating inorganic material such as aluminum oxide (paragraph [0023],
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`[0025],[0038)).
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`As stated in /n re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83
`
`(Fed. Cir. 2003), in the case of a “prior art reference that discloses a range
`
`encompassing a somewhatnarrower claimed range is sufficient to establish a prima
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`facie case of obviousness”. Therefore it would have been obvious for the person of the
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`ordinary skill in the art to select any portion of the range, including the claimed range,
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`from the broader range disclosed in the prior art reference becausethe prior art
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`reference finds that the prior art composition in the prior art composition in the entire
`
`disclosed range hasa suitable utility. Also see MPEP § 2131.03 and § 2123.
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`Conclusion
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`7.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to LADAN MOHADDESwhosetelephone number is
`
`(571)270-7742. The examiner can normally be reached on Monday-Friday 9AM-5PM.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO AutomatedInterview Request
`
`(AIR) at http:/Awww.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.
`
`

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`Application/Control Number: 16/580,195
`Art Unit: 1722
`
`Page 5
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`
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`
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`
`Status information for unpublished applications is available through Private PAIR only.
`
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`
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`
`272-1000.
`
`LADAN . MOHADDES
`Primary Examiner
`Art Unit 1726
`
`/LADAN MOHADDES/
`Primary Examiner, Art Unit 1722
`
`