www.uspto.gov
`
`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
`
`08/16/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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*
`1-3 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-3 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://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)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... Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived 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)
`
`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)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230810
`
`Application No.
`Applicant(s)
`16/637 ,034
`Morikawaetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ZHONGQING WEI
`1727
`Yes
`
`
`
`-- The MAILING DATEof this 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 21 July 2023.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() 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: 16/637,034
`Art Unit: 1727
`
`Page 2
`
`NONAQUEOUS ELECTROLYTE SECONDARY BATTERY INCLUDING SEPARATOR WITH FILLER LAYERS ON
`
`OPPOSITE SIDES OF SUBSTRATE
`
`DETAILED ACTION
`
`Continued Examination Under 37 CFR 1.114
`
`1.
`
`A request for continued examination under 37 CFR 1.114, including the fee set forth in
`
`37 CFR 1.17(e), was filed 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 pursuant to 37 CFR
`
`1.114. Applicant's submission filed on July 21, 2023 has been entered.
`
`Remarks
`
`2.
`
`Applicant's amendments and arguments have been entered. A reply to the Applicant’ s
`
`remarks/argumentsis presented after addressing the claims.
`
`3.
`
`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.
`
`4.
`
`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
`
`5.
`
`Claims 1-3 are pending, wherein claim 1 is amended. Claims 1-3 are being examined on
`
`the merits in this Office action.
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 3
`
`Claim Rejections - 35 USC § 103
`
`6.
`
`Claims 1-3 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 that basic phosphateis
`
`composed ofbasic phosphate particles) and the basic phosphate may be lithium phosphate
`
`([0078]-[0079]).
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 4
`
`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 as 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, Hatayama
`
`explicitly discloses that the particle size can be adjusted from 0.01 um to 30 um ([0080]). One of
`
`ordinary skill in the art would appreciate that the BET specific surface area can be accordingly
`
`adjusted, since the BET specific surface area depends on the size of the particles. Thus, one of
`
`ordinary skill in the art would have readily arrived at the claimed range of the BET specific
`
`surface area through routine experimentation by adjusting the size of the particles.
`
`As an alternative rejection, in the same field of endeavor, Ito discloses that an inorganic
`
`phosphate compound (equivalent to “phosphatesalt” as claimed) contained in a layer disposed
`
`on the surface of a separator has a specific surface area of 5 m*/g to 50 m?/gis, which can
`
`secure a wide contact area between the inorganic phosphate compound and the nonaqueous
`
`electrolyte as well as “handle-ability during work and quality stability” (See [0042]). Thus,it
`
`would have been obvious to one of ordinaryskill in the art, before the effective filing date of
`
`the instant invention, to have incorporated the teachings of Ito into Hatayama such that the
`
`phosphatesalt particles have a specific surface area of 5 m?/g to 50 m2/g,as taught byIto,in
`
`order to at least secure a wide contact area between the phosphatesalt and the nonaqueous
`
`electrolyte as well as “handle-ability during work and quality stability” ([0042], Ito). As a result,
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 5
`
`the range of 5 m2/g to 50 m’/g reads on theinstantly claimed “not less than 5 m2/g and not
`
`more than 100 m2/g” of the phosphatesalt particles.
`
`Hatayama in view of Ito further teaches the particle size of the basic phosphate may be
`
`0.2 um ([0080], Hatayama), which reads on the instantly claimed range of 0.05 pm to 1 um of
`
`the average particle size of the phosphatesalt particles. Hatayama further teaches the average
`
`pore size of the substrate can be adjusted and can be 0.7 um, for example ([0021]). Clearly, the
`
`average particle size of the phosphatesalt particles, 0.2 tum, is smaller than the average pore
`
`size of the substrate, 0.7 um. Asan alternative rejection for the claimed limitation “the
`
`average particle size of the phosphate salt particles ... is smaller than the average poresize of
`
`the substrate”, Hatayama explicitly discloses that the average pore size can be adjusted ([0021],
`
`line 224). Thus, for a given particle size of the phosphatesalt particles, one of ordinaryskill in
`
`the art would have readily arrived at the said claimed limitation by adjusting the average pore
`
`size of the substrate through routine optimization ([0021], line 224, Hatayama).
`
`Hatayama in view ofIto is silent as 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
`
`electrode (the combination of 6 and 7) and a separator (4) to prevent peeling between the
`
`electrode and the separator (at least, Fig. 1 and column 6,lines 14-22). Thus, it would have
`
`been obvious to one of ordinary skill in the art, before the effective filing 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 of
`
`the first filler layer and in contact with the positive electrode in order to prevent the positive
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 6
`
`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).
`
`Hatayama further teaches the firstfiller layer comprises a continuous layer configured
`
`to cover an entirety of a surface of the substrate on which the first filler layer is disposed (See
`
`at least: “the entire surface was coated”in [0147] for Comparative Example 1; Table 1).
`
`The limitation “the phosphate salt particles contained in the first filler layer are
`
`configured to undergo melting and polycondensation by heat and a potential of the positive
`
`electrode, so as tofill pores in the substrate upon generation of an abnormal heat” represents
`
`functions, intended use, or property of the phosphatesalt particles. Since Hatayama as
`
`modified teaches all the claimed compositional and structural limitations including phosphate
`
`salt particles containedin the firstfiller layer, the claimed function or property is expected to
`
`be necessarily present. This is because 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 present. The Courts have held that it is well settled
`
`that wherethereis a reason to believe that a functional characteristic would be inherent in the
`
`prior art, the burden of proof then shifts to the applicant to provide objective evidence to 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, |. Moreover, while intended use recitations and other types of
`
`functional language cannot beentirely disregarded. However, in apparatus, article, and
`
`composition claims, intended use mustresult in a structural difference between the claimed
`
`invention and the prior art in order to patentablv distinguish the claimed invention from the
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 7
`
`prior art. If the prior art structure is capable of performing the intended use, then it meets the
`
`claim. In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967).
`
`Regarding claim 2, Hatayama as modified teaches the nonaqueous electrolyte
`
`secondary battery according to claim 1, and the above-mentioned range of 5 m2/g to 50 m?/g
`
`overlaps the instantly claimed range of “not less than 20 m2/g and not more than 100 m?/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 as modified teaches the nonaqueous electrolyte
`
`secondary battery according to claim 1, wherein the phosphatesalt particles are lithium
`
`phosphateparticles ([0078]-[0079]: PO4*and Li*).
`
`7.
`
`Applicant's argumentsfiled June 22, 2023 have been fully considered but they are not
`
`Response to Arguments
`
`persuasive.
`
`Most of the Applicant's arguments are based on the claims as amended (i.e., the newly
`
`added limitation). The amended claims have been addressedin the new rejections above.
`
`In addition:
`
`1) Applicant argues:
`
`saa may Gi
`S TANRES TO AN EYSVARS POTS AYSEOT 8
`
`
`
`
`
`GEER,
`
`» Pals do fimach oe
`
`tAricic see. da fact per
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 8
`
`In response, as addressed in the aboverejection, Hatayama factually teaches the
`
`relationship, no matter whether or notit describes the relationship.
`
`2) Applicant argues:
`
`se
`Sewer
`sepaieon
`SPAMES. TRO marke sice.
`dn fact. gar parsgrapis
`
`
`OHS
`
`Apivanan No: Heide she
`
`Thoaghas Neg) PEQGHES
`
`
`
`BIW
`
`avcsph
`
`Sy and Ae 3
`
`82, CEES} the
`
`nace Of prhor wyt crtadd
`
`ace
`
`+
`
`weyetigition lagen ei
`
`evade Ghanwier af b
`
`
`
`IP NPAC wo cat
`
`In response,it is respectfully noted that a reference may be relied upon for all thatit
`
`would have reasonably suggested to one having ordinaryskill the art, including nonpreferred
`
`embodiments, consult Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843
`
`(Fed. Cir.1989). The teachings relied upon for the rejection do not have to be from examples.
`
`3) Applicant argues:
`
`
`dy clamed. Alse, Hateyame’s “Op
`we Exaraple PF", the ate proce af priorast
`
`
`
`TAET SOLE E REIS.
`SES
`STS oop Eaacae Gat sdeewie,
`yay
`thee:
`o
`‘
`ARNONES
`go) oe ys
`eet
`ne tes athe
`
`
`Set TRS Coates sens aso oe ES
`fer beaver gs shinsfo Sat oahertor ho ocier
`
` Beged Rest fier hey
`
`In response, again, a reference may berelied upon for all that it would have reasonably
`
`suggested to one having ordinaryskill the art, including nonpreferred embodiments, consult
`
`Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.1989). In the
`
`instant case, Hatayama in Comparative Example 1 (considered a nonpreferred embodiment)
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 9
`
`explicitly discloses the first filler layer comprises a continuous layer configured to cover an
`
`entirety of a surface of the substrate, even if this arrangement may lead to inferior property.
`
`However, this inferiority does not vitiate the fact that the substrate is entirely covered with the
`
`first filler layer is disclosed. See also /n re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed.
`
`Cir. 1994) (The invention was directed to an epoxy impregnatedfiber-reinforced printed circuit material. The
`
`applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with
`
`polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was knownfor this use, but
`
`that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of
`
`flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the
`
`rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient
`
`to overcome the rejection since “Gurley asserted no discovery beyond what was knownin the art." /d. at 554, 31
`
`USPQ2d at 1132.). Similarly, the instant application’s arrangement that the substrateis entirely
`
`covered with the first filler layer does not discover beyond what was known in the prior art
`
`Hatayama.
`
`Correspondence
`
`8.
`
`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.
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 10
`
`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.
`
`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 manage patent submissions in Patent Center,visit:
`
`https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for
`
`moreinformation about Patent Center and https://www.uspto.gov/patents/docx for
`
`information about 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.
`
`/ZHONGQING WEI/
`Primary Examiner, Art Unit 1727
`
`