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
`
`11/30/2023
`
`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)
`
`

`

`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 16 November 2023.
`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*
`1-3 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.
`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://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 20231121A
`
`

`

`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
`
`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 1-3 are pending, wherein claim 1 is amended. Claims 1-3 are being examined on
`
`the merits in this Office action.
`
`Claim Rejections - 35 USC § 112
`
`5.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`(a) IN GENERAL —Thespecification shall contain a written description of the
`invention, and of the manner and process of making and usingit, in suchfull, clear,
`concise, and exact terms as to enable any person skilled in the art to which it pertains,
`or with whichit is most nearly connected, to make and use the same,and shall set forth
`the best mode contemplated by the inventor or joint inventor of carrying out the
`invention.
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 3
`
`The following is a quotation of the first paragraph of pre-AlA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the
`manner and process of making and usingit, in such full, clear, concise, and exact terms
`as to enable anyperson skilled in the art to which it pertains, or with whichit is most
`nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor of carrying out his invention.
`
`6.
`
`Claims 1-3 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA),first
`
`paragraph,as failing to comply with the written description requirement. The claim(s) contains
`
`subject matter which was not described in the specification in such a way as to reasonably
`
`convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications
`
`subject to pre-AlA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had
`
`possession of the claimed invention.
`
`In claim 1, the recited temperature range of “140 C or greater” is not supported because
`
`it has broadened the temperature range as originally disclosed.
`
`7.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION —The specification shall conclude with one or moreclaims particularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint
`inventor regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and
`distinctly claiming the subject matter which the applicant regards as his invention.
`
`8.
`
`Claims 1-3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second
`
`paragraph,as being indefinite for failing to particularly point out and distinctly claim the subject
`
`matter which the inventor or a joint inventor (or for applications subject to pre-AlA 35 U.S.C.
`
`112, the applicant), regards as the invention.
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 4
`
`1) The term “adjacent”in claim 1 is a relative term which renders the claim indefinite.
`
`The term “adjacent” is not defined by the claim, the specification does not provide a standard
`
`for ascertaining the requisite degree, and one of ordinary skill in the art would not be
`
`reasonably apprised of the scope of the invention. The newly amended limitation has been
`
`rendered indefinite because of the use of the in relative term “adjacent”.
`
`2) In claim 1, the phrase “to develop adhesion”in the newly amended limitation can be
`
`interpreted in at least two completely different ways: “is configured to develop adhesion”or “is
`
`configured to fail to develop adhesion”, rendering the limitation indefinite. For purposes of
`
`examination, the phrase is being interpreted as referring to the former, since it appears to be
`
`the Applicant’s intent.
`
`3) Still in claim 1, the metes and bounds of “normal use” and “abnormal heat
`
`generation” are not clearly defined, rendering the claimed limitations vague.
`
`Claim Rejections - 35 USC § 103
`
`9.
`
`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]).
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 5
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`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 “afirstfiller 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]).
`
`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 tum to 30 um ([0080]). One of
`
`ordinary skill in the art would appreciate that the BET specific surface area can be accordingly
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 6
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`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 “phosphate salt” as claimed) contained in a layer disposed
`
`on the surface of a separator has a specific surface area of 5 m2/g to 50 m?/g is, 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 teachingsof 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,
`
`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 um 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 pore size of
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 7
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`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
`
`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 firstfiller 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
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 8
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`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 thatit is well settled
`
`that wherethere is 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 /n re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed.
`
`Cir. 1997). See MPEP § 2112.01, I. 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
`
`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).
`
`The limitation “the resin layer is configured to fail to exhibit adhesion to an adjacent
`
`surface of the positive electrode during normal use of the battery, and to develop adhesion to
`
`the adjacent surface of the positive electrode upon an abnormal heat generation causing a
`
`battery inside temperatureto rise to 140 °C or greater” represents functions, intended uses, or
`
`properties of the resin layer. Since Hatayama as modified teaches polyolefins (e.g.,
`
`polyethylene, polypropylene, see column 9, line 47 in Hamano) as claimed, the claimed
`
`functions or properties are expected to be necessarily present. This is because regarding
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 9
`
`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 where there is 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 /n 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 cannotbe entirely
`
`disregarded. However, in apparatus, article, and composition claims, intended use must result
`
`in a structural difference between the claimed invention and the prior art in order to patentablv
`
`distinguish the claimed invention from the prior art. If the prior art structure is capable of
`
`performing the intended use, then it meets the claim. /n 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 m2/g”. In
`
`the case wherethe 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*).
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 10
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`Response to Arguments
`
`10.
`
`Applicant's argumentsfiled November 16, 2023 have been fully considered but they are
`
`not persuasive.
`
`Applicant’s arguments are focused on the newly amended limitations. As addressed
`
`abovein the rejection, although the prior arts cited in this office action do not expressly
`
`disclose or describe the functions, properties, or intended-use as claimed, they are necessarily
`
`present because the claimed resin layer having a polyolefin composition is taught by the prior
`
`arts. Products of identical chemical composition cannot have mutually exclusive properties. A
`
`chemical composition and its properties are inseparable. See MPEP § 2112.
`
`Conclusion
`
`11.
`
`THIS ACTION IS MADE FINAL. 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
`
`statutory period for reply expire later than SIX MONTHS from the mailing date of this final
`
`action.
`
`

`

`Application/Control Number: 16/637,034
`Art Unit: 1727
`
`Page 11
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`12.
`
`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 interviewsare available via telephone,in-person, and video conferencing
`
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`
`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.
`
`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:
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`
`/ZHONGQING WEI/
`Primary Examiner, Art Unit 1727
`
`