Application No.: 16/580,195
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`Docket No.: P190960US00
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`REMARKS
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`By this Amendment, claims 1-13 are pending. Claim 1 is herein amendedto recite that
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`“the positive electrode mixture layer further includes a conductive material,” and that “the
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`thermally expandable material has larger volume expansion due to heat than the conductive
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`material.” Claim 2 is herein amendedto recite that “the intermediate layer further includes a
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`conductive agent,” and that “the thermally expandable material has larger volume expansion due
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`to heat than the conductive agent.” Support may be foundin the original disclosure, for example,
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`at paragraphs [0020] and [0022] of the specification as filed, as well as claim 3. Claim 3 is canceled
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`without prejudice or disclaimer. New claims 10-13 are added. Further support is detailed below.
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`Applicant’s Response to the Claim Rejections under 35 U.S.C.§102/103
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`Claims 1-9 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
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`Shiozaki, already of record) (citation made to an English counterpart document, US
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`US11005096B2).
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`In response thereto, applicant respectfully submits that the invention as now claimedis not
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`anticipated or rendered obvious by Shiozaki for at least the reason that the reference does not
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`provide for each and every aspect thereof, nor is there any rationale prompting a skilled artisan to
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`modify the reference so as to derive the current invention.
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`Specifically, Shiozaki at least fails to provide for the aspect of parent claim 1 as to wherein
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`the positive electrode mixture layer further includes a conductive material, and the thermally
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`expandable material has larger volume expansion dueto heat than the conductive material. Also,
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`Shiozaki at least fails to provide for the aspect of parent claim 2 as to wherein the intermediate
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`Application No.: 16/580,195
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`Docket No.: P190960US00
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`layer further includes a conductive agent, and the thermally expandable material has larger volume
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`expansion dueto heat than the conductive agent.
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`Per page 3 bridging page 4 of the Office Action, the rejection asserts that Shiozaki meets
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`all the aspects previously recited in the claims, including,inter alia, “0.1 mass % or more and less
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`than 20 mass% of a thermally expandable material such as graphite; [and] the protective layer
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`includes a conductive agent.” Where the reference discloses different ranges of certain parameters
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`than those recited in the claims, the rejection maintains that a skilled artisan could select any
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`portion of the range from the broader range disclosed in the reference.
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`Applicant respectfully notes that now amended claims | and 2 require that an additional
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`conductive material/agent, which has a different, smaller thermal expansion rate than the
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`thermally expandable material, be included in the corresponding layer which includes the
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`thermally expandable material. Specifically, amended claim 1 requires that the positive electrode
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`mixture layer further include a conductive material, and the thermally expandable material have
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`larger volume expansion due to heat than the conductive material, and likewise, amended claim 2
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`requires that the intermediate layer further include a conductive agent, and that the thermally
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`expandable material has larger volume expansion dueto heat than the conductive agent.
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`As noted above, the rejection identifies “graphite” disclosed in Shiozaki as representing
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`a thermally expandable material. Shiozaki discloses that “[t]he positive electrode mixture layer
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`32 contains the lithtum-containing transition metal oxide as a positive electrode active material
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`and preferably further contains an electroconductive material and a binding material”(col. 4, lines
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`16-20) and that “[t]he protective layer 31 ... contains an inorganic compound... and also contains
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`an electroconductive material” (col. 5,
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`lines 10-15).
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`Shiozaki
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`further discloses that
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`the
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`electroconductive material contained in the positive electrode mixture layer and/or the protective
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`Application No.: 16/580,195
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`Docket No.: P190960US00
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`layer is exemplified by “a carbon material such as carbon black (CB), acetylene black (AB), Ketjen
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`black, or graphite”(col. 4, lines 46-51, col.5, lines 57-62) (emphasis added). That is, the graphite
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`as taught by Shiozaki is an example of a conductive component that may be included in the
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`reference structure.
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`Assuming arguendothat graphite in Shiozaki reads on a thermally expandable material as
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`asserted in the rejection, the reference fails to provide for an additional conductive component
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`which has a smaller thermal expansion rate than the alleged thermally expandable material.
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`Shiozaki as applied in the rejection simply does not provide for both a thermally expandable
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`material and a conductive material/agent simultaneously present in a single layer as required by
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`each of amendedclaims 1| and2.
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`Under U.S. case law regarding 35 U.S.C. §102: "unless a reference discloses within the
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`four corners of the documentnot only all of the limitations claimed butalso all of the limitations
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`arranged or combined in the same way asrecited in the claim, it cannot be said to prove prior
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`invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102." Net MoneyIN,
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`Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
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`Additionally, applicant respectfully notes that experimental data disclosed at paragraphs
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`[0054]-[0076] of the specification as filed tends to prove superior results obtained with
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`simultaneous presence of a prescribed amount of thermally expandable material and conductive
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`component
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`in reducing temperature rise due to internal short circuit.
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`For example,
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`the
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`representative Example | represents a sample produced with a positive electrode active material
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`layer including both a thermally expandable material (“1 part by mass of expanded graphite”) and
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`a conductive material (“5 parts by mass of acetylene black (AB)) ([0056]). Comparative Example
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`6 represents a sample produced with similar ingredients in a similar manner, except that expanded
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`Application No.: 16/580,195
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`Docket No.: P190960US00
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`graphite is omitted such that only the conductive material/AB is includedin the positive electrode
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`active material layer ([0068]). As seen in Table 1, Example 1 yielded a more favorable result
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`than Comparative Example 6 in lowering the highest attainable temperature in the nailingtest.
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`The priorart of record does not recognizecriticality of having both a thermally expandable
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`material and a conductive material/agent in a single layer in accomplishing protection against
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`excessive temperature rise due to internal short circuit, as demonstrated in the present application.
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`In the absence of such recognition, there would be no reason to believe that a skilled artisan could
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`modify Shiozaki to arrive at the invention as currently presented.
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`Wherefore, applicant respectfully submits that parent claims | and 2 as now presented, as
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`well as their respective dependent claims, are not anticipated or rendered obvious by Shiozak1.
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`New Claims
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`New claims 10 and 12, dependent on claims 1 and 2, respectively, recite that an average
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`particle size of the expanded graphite is 1 to 500 um, and the expansion volumeof the expanded
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`graphite is 10 to 300 mL/g. Support may be foundin the original disclosure, at least, in paragraph
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`[0025] of the specification asfiled.
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`Newclaims 11 and 13, dependent on claims 1 and2, respectively, recite that the expanded
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`graphite comprises a crystalline compound having a graphitic layer structure, the crystalline
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`compound obtained by treating natural graphite with concentrated sulfuric acid, nitric acid, or
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`selenic acid, and concentrated nitric acid, perchlorate, permanganate, or dichromate, and that the
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`conductive material/agent includes a carbon material selected from the group consisting of carbon
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`black (CB), acetylene black (AB), ketjen black, graphite, and combinations thereof. Support may
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`be found in the original disclosure, at least,
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`in paragraphs [0025], [0031] and [0036] of the
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`Application No.: 16/580,195
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`Docket No.: P190960US00
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`specification asfiled.
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`In addition to their respective dependency from baseclaims 1 and 2, applicant respectfully
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`submits that the new claims are on their own merits distinguished over the prior art of record.
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`Specifically, to the extent that the alleged thermally expandable material in Shiozakiis limited to
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`graphite in general, the specific physical properties of expanded graphite as recited in claims 10
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`and 12, as well as the specific characteristics of expanded graphite, as opposed to other type of
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`carbon materials that constitute a conductive material/agent, as recited in claims 11 and 13, would
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`not be derived from the reference.
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`In view of the foregoing amendments and accompanying remarks,it is submitted thatall
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`pending claims are in condition for allowance. A prompt and favorable reconsideration of the
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`rejection and an indication of allowability of all pending claimsare earnestly solicited.
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`If the Examiner believes that there are issues remaining to be resolved in this application,
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`the Examineris invited to contact the undersigned attorney at the telephone number indicated
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`below to arrange for an interview to expedite and complete prosecution of this case.
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`If this paper is not timely filed, Applicants respectfully petition for an appropriate extension of
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`time. The fees for such an extension or any other fees that may be due with respect to this paper
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`may be charged to Deposit Account No. 50-2866.
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`Respectfully submitted,
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`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
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`/Michael J. Caridi/
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`Michael J. Caridi
`Attorney for Applicants
`Registration No. 56,171
`Telephone: 703-827-3800
`Facsimile: 571-395-8753
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`MJC/fo
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