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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
`
`16/637,034
`
`02/06/2020
`
`Yuki Morikawa
`
`P200106US00
`
`4089
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`WEL ZHONGQING
`
`1727
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/24/2022
`
`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)
`
`

`

`Application No.
`Applicant(s)
`16/637 ,034
`Morikawaetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ZHONGQING WEI
`1727
`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 16 February 2022.
`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.
`
`Disposition of Claims*
`1-4 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) 1-4 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)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)1) 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)C All
`1.2 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
`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 20220316
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 2
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`NONAQUEOUS ELECTROLYTE SECONDARY BATTERY INCLUDING SEPARATOR WITH FILLER LAYERS ON
`
`OPPOSITE SIDES OF SUBSTRATE
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`DETAILED ACTION
`
`Remarks
`
`1.
`
`Applicant's amendments and arguments have been entered. A reply to the Applicant’ s
`
`remarks/argumentsis presented after addressing the claims.
`
`2.
`
`Any rejections and/or objections made in the previous Office Action and not repeated
`
`below,are hereby withdrawn in view of Applicant’ s amendments or/and arguments.
`
`3.
`
`The text of those sections of Title 35, U.S. Code not included in this action can be found
`
`ina prior Office action. References cited in the current Office action can be found in a prior
`
`Office action.
`
`Status of Claims
`
`4.
`
`Claims 1-4 are pending and being examined on the merits in this Office action. Claim 1 is
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`amended.
`
`Information Disclosure Statement
`
`5.
`
`The information disclosure statements (IDS) submitted on February 16, 2022 has been
`
`considered by the examiner.
`
`6.
`
`The newly amendedtitle is acknowledged and accepted.
`
`Specification
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 3
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`7.
`
`The amended paragraph [0047] in the specification is acknowledged and accepted.
`
`Claim Rejections - 35 USC § 103
`
`8.
`
`Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hatayama etal.
`
`(JP 2016072120 A, whose English machine translation is being used for citation purposes,
`
`hereafter Hatayama) in view ofIto et a/. (US 20170229743 A1, hereafter Ito) and Hamano etal.
`
`(US 5981107, hereafter Hamano).
`
`Regarding claim 1, Hatayama teaches a nonaqueous electrolyte secondary battery
`
`comprising a positive electrode, a negative electrode and a separator disposed therebetween
`
`([0001]-[0002]).
`
`Hatayama further teaches a “porous substrate layer (A)” ([0012], line 108; reading on “a
`
`substrate” as claimed), on both sides of which a “porous layer (B)” may be provided ([0012] and
`
`[0076]) and a “layer (C)” may then be provided on “both surfaces of the outermost porous layer
`
`(B)” ([0076], line 912). As such, the combination of the “porous layer (B)” and “layer (C)”is
`
`provided on each side of the “porous substrate layer (A)”. The one combination of the “porous
`
`layer (B)” and “layer (C)” directed to the positive electrode reads on “afirst filler layer disposed
`
`on one side of the substrate”, and the other combination of the “porous layer (B)” and “layer
`
`(C)” directed to the negative electrode reads on “a second filler layer disposed on the other side
`
`of the substrate”.
`
`Hatayama teaches the “layer (C)” in the first filler layer may contain basic phosphate (c-
`
`1) ([0076], line 908; one skilled in the art would readily appreciate basic phosphate is composed
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 4
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`of basic phosphateparticles) and the basic phosphate may belithium phosphate ([0078]-
`
`[0079]).
`
`Hatayama teaches the “porous substrate layer (B)” in the second filler layer contains an
`
`inorganic filler (b-2), which may be preferably boehmite particles ([0044]-[0048]). According to
`
`the instant specification, boehmite particles has a higher melting point than the phosphatesalt
`
`particles. Thus, Hatayama implicitly teaches the boehmite particles has a higher melting point
`
`than the phosphatesalt particles.
`
`Hatayama is silent to the instantly claimed BET specific surface area of the phosphate
`
`salt particles being not less than 5 m2/g and not more than 100 m2/g. However, in the same
`
`field of endeavor, Ito discloses that an inorganic phosphate compound having a specific surface
`
`area of 5 m?/g to 50 m?/gis contained in a layer disposed on the surface of a separator, which
`
`secures a wide contact area between the inorganic phosphate compound and nonaqueous
`
`electrolyte and an effects at a higher level ([0042]). It would have been obvious to one of
`
`ordinary skill in the art, before the effective filing date of the instant invention, to have
`
`incorporated the teachingsof Ito into Hatayama such that the phosphatesalt particles have a
`
`specific surface area of 5 m2/g to 50 m2/g,as taughtbyIto, in order to at least secure a wide
`
`contact area between the phosphatesalt and nonaqueous electrolyte ([0042], Ito). The range of
`
`5 m2/g to 50 m2/g reads on the instantly claimed “not less than 5 m2/g and not more than 100
`
`m2/g” of the phosphatesalt particles.
`
`Hatayama in view ofIto is silent to a polyolefin resin layer disposed on the surface of the
`
`first layer and in contact with the positive electrode, as claimed. However, in the same field of
`
`endeavor, Hamano discloses an adhesiveresin layer (11) is disposed between a positive
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 5
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`electrode (the combination of 6 and 7) and a separator (4) to prevent peeling between the
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`electrode and the separator (at least, Fig. 1 and column 6,lines 14-22).
`
`It would have been obvious to one of ordinary skill in the art, before the effectivefiling
`
`date of the instant invention, to have dispose an adhesive resin layer between the positive
`
`electrode and the separator, as taught by Hamano, such that the adhesive resin layer is
`
`disposed on the surface ofthe first filler layer and in contact with the positive electrode in
`
`order to prevent the positive electrode from peeling from the separator. Hatayama further
`
`teaches the adhesiveresin layer may contain a polyolefin, such as polyethylene (See at least
`
`col. 9, lines 36-47; col. 13, lines 21-22).
`
`Regarding claim 2, Hatayama in view of Ito teaches the nonaqueous electrolyte
`
`secondary battery according to claim 1, and the above-mentioned range of 5 m2/g to 50 m?2/g
`
`overlaps the instantly claimed range of “not less than 20 m2/g and not more than 100 m2/g”. In
`
`the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a
`
`prima facie case of obviousnessexists. See MPEP § 2144.05(I).
`
`Regarding claim 3, Hatayama in view of Ito teaches the nonaqueous electrolyte
`
`secondary battery according to claim 1, wherein the phosphatesalt particles are lithium
`
`phosphateparticles ([0078]-[0079]: PO4> and Li*).
`
`Regarding claim 4, Hatayama in view of Ito teaches the nonaqueous electrolyte
`
`secondary battery according to claim 1, and further teaches the particle size of the basic
`
`phosphate may bepreferably in the range of 0.2 um to 2 um ([0080]), reading on the instantly
`
`claimed average particle size of the phosphatesalt particles being 0.05 um to 1 um. The range
`
`of 0.2 um to 2 um overlapsthe instantly claimed range of 0.05 em to 1 um. In the case where
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 6
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`the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of
`
`obviousnessexists. See MPEP § 2144.05(I).
`
`Hatayama further teaches the average poresize of the substrate may be preferably in
`
`the range of 0.03 um to 0.7 um ([0021]). Thus, the ratio of the averageparticle size of the
`
`phosphate salt particles to the average pore size of the substrate is in the range of about 0.29
`
`to 67 (i.e., 0.2/0.7=0.29; 2/0.03=67), which overlaps the instantly claimed range of less than 1
`
`(i.e., the average particle size of the phosphatesalt particles is smaller than the average pore
`
`size of the substrate). In the case where the claimed ranges “overlap or lie inside ranges
`
`disclosed by the prior art”, a prima facie case of obviousnessexists. See MPEP § 2144.05(lI).
`
`Response to Arguments
`
`9.
`
`Applicant's arguments filed February 14, 2022 have been fully considered but they are
`
`not persuasive.
`
`In response to Applicant’s arguments regarding “adhesive resin solution [being a
`
`mixture of polyvinylidene fluoride and N-methylpyrrolidone] was coated on both sides of a
`
`separator material ...” (p7, Remarks), it is respectfully noted that a reference may be relied
`
`upon for ALL that it would have reasonably suggested to one having ordinary skill the art, ,
`
`consult Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.1989). In
`
`this case, even if Hamano discloses “adhesive resin solution [being a mixture of polyvinylidene
`
`fluoride and N-methylpyrrolidone]”, it does teach the resin layer containing a polyolefin, as
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`addressed in the rejections above.
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 7
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`Conclusion
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`10.
`
`THIS ACTION IS MADEFINAL. Applicant is reminded of the extension of time policy as
`
`set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE MONTHS
`
`from the mailing date of this action.
`
`In the eventa first reply is filed within TWO MONTHS of
`
`the mailing date of this final action and the advisory action is not mailed until after the end of
`
`the THREE-MONTH shortened statutory 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
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`statutory period for reply expire later than SIX MONTHS from the mailing date of this final
`
`action.
`
`11.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ZHONGQING WEI whosetelephone number is (571)272-4809.
`
`The examiner can normally be reached Mon - Fri 9:30 - 6:00.
`
`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 Automated Interview Request(AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Barbara Gilliam can be reached on (571)272-1330. The fax phone number for the
`
`organization wherethis application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 8
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`
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`
`/ZHONGQING WEI/
`Primary Examiner, Art Unit 1727
`
`