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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, 122
`
`02/06/2020
`
`Takao Sato
`
`P200122US00
`
`3100
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`BARTON,JASON AARON
`
`ART UNIT
`1721
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/14/2022
`
`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)
`
`

`

`
`
`Disposition of Claims*
`1-6 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-6 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) The drawing(s) filed on 02/06/2020 is/are: a)[¥) 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) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.2 Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.4 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 02/19/2020.
`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 20220105
`
`Application No.
`Applicant(s)
`16/637 122
`Sato etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`JASON A BARTON
`1721
`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 12/28/2021.
`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: 16/637,122
`Art Unit: 1721
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined underthefirst
`
`inventor to file provisions of the AIA.
`
`Election/Restrictions
`
`2.
`
`Applicant’s election without traverse of in the reply filed on 12/28/2021 is acknowledged.
`
`Applicant elects Species A, FIG. 4, corresponding to a secondary battery having an insulating tape
`
`wherein the porous region is formed by interposing a porous layer formed of a resin between the
`
`base layer and the adhesive layer.
`
`It is noted that Species A reads on claims 1-6 of the application. However, claim 2 includes
`
`language directed toward both Species A and Species B (FIG. 5, corresponding to a secondary
`
`battery having an insulating tape wherein the porous region is formed of a protrusion and a
`
`depression in a surface of the base layer oppose the adhesive layer) in Markush group form. Due
`
`to the election of species in the responseto the restriction requirement, claim 2 is interpreted as
`
`being consistent with only Species A.
`
`Claim Rejections - 35 USC § 112
`
`3.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—Thespecification shall conclude with one or more claimsparticularly pointing out
`and distinctly claiming the subject matter which the inventoror a joint inventor regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specification shall conclude with one or more claimsparticularly pointing out and distinctly claiming
`the subject matter which the applicant regardsashis invention.
`
`

`

`Application/Control Number: 16/637,122
`Art Unit: 1721
`
`Page 3
`
`4.
`
`Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-ATIA), second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the
`
`subject matter which the inventoror a joint inventor (or for applications subject to pre-AIA
`
`35 U.S.C. 112, the applicant), regards as the invention.
`
`5.
`
`Claim 1 recites, “... and the adhesive layer and that has a pore thatthe electrolytic solution
`
`is allowed to enter.” (emphasis added). The specification discusses the plural of pore, i.e., pores.
`
`Thus, it is believed that the recitation of, “a pore” may be a typo and the claim should instead
`
`recite, “pores.” The claim is interpreted in this manner. Forat least these reasons, the claim scope
`
`is indefinite. Claims 2-6 are also indefinite due to their dependency upon claim 1.
`
`6.
`
`Claim 3 recites, “... wherein a ratio of the thickness of the porous region to a total thickness
`o7
`of the base layer and the porous layer.” The claimlanguageis understood as a ratio of the thickness
`
`of the porous Javer to the sum of the thickness of the porous layer and the thickness ofthe base
`
`layer. However, the term, “total thickness’ is considered confusing since the thickness of the
`
`adhesive layer is omitted fram this calenlation,
`
`Purthermore, the recited calculation compares the thickness of the porous region to the sum
`
`total of the thickness of the base layer and the porous Jayver. The use of both of the terms, “the
`
`porous region’ and “the porous layer” im the claim makes it unclear if the porous region has the
`
`same dinicrsion as the porous layer. or if they are the sarne structure. It is believed where the
`
`porons region is formed by inferposing a porous layer formed of a resin between the hase layer
`
`and the adhesive layer that the porous region is the porous layer.
`
`Thus, if is suggested that Applicant amend the claim fo recite, “... wherein a ratio of a
`
`[ithe}] thickness of the porous layer [[region}] tc a sum [ffotal thickness]] of a thickness of the
`
`

`

`Application/Control Number: 16/637,122
`Art Unit: 1721
`
`Page 4
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`base layer and the thickness of the porous laver is from 2% to 50%0". The claim is interpreted in
`
`this manner.
`
`7.
`
`Claim 4 recites, “... 5% or more by volumeof a layer volume.”It is unclear what is meant
`
`by “layer volume”andif this language is necessary to the structure of claim 4. The undersigned
`
`suggests deleting the text, “of a layer volume” to improveclarity of the claim, and the claim is
`
`interpreted as if the claim recited, “... 5% or more by volume-efatayeryvoline.”
`
`8.
`
`Claim 5 recites, “... wherein the porous layer is formed of as a main component, a kind
`
`selected from a group consisting of...” The language used in this claim appears to be improper
`
`English (e.g., resulting from a translation of the claim from Japanese). Moreover, it’s unclear if
`
`“the resin” is the recited “main component” since claim 2 (from which claim 5 depends) requires
`
`that, “...the porous region is formed by interposing a porous layer formed of a resin...”
`
`The claim is interpreted as reciting, “... wherein the resin of the porous layer comprises a
`
`main componentselected from the group consisting of: ...” It is suggested that Applicant amend
`
`the claim in this manner.
`
`Claim Rejections - 35 USC § 102
`
`9.
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
`
`102 and 103 (or as subject to pre-ATA 35 U.S.C. 102 and 103) is incorrect, any correction of the
`
`statutory basis for the rejection will not be considered a new ground ofrejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same undereither status.
`
`10.
`
`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 —
`
`

`

`Application/Control Number: 16/637,122
`Art Unit: 1721
`
`Page 5
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`(a)(1) the claimed invention waspatented, described in a printed publication, or in public use, on sale, or
`otherwise available to the public before the effective filing date of the claimed invention.
`
`11.
`
`Claims 1-4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li
`
`(US20170222204A1).
`
`12.
`
`Regarding claim 1, £1 teaches a secondary battery (relates to an insulating tape and a Li-
`
`ion battery” (abstract}) comprising:
`
`an clectrode body formed by layering a positive electrode and a negative electrode with a
`
`separator therebetween and an electrolytic solution (a Li-ion battery,
`
`including a_positive
`
`electrode, a negative electrode and a diaphragm arranged between the positive electrode and
`
`the negative electrode, and an electrolyte. ” ({O035)); it is noted that, “a diaphragny” is a common
`
`termused in the art for a “separator” as claimed, see also [DOG4E-[G065)),
`
`wherein cach of the positive electrode and the negative electrode includes:
`
`a current collector ([u]niformly coating the positive electrode slurry on the
`
`positive electrode current collector...” (emphasis added, [OG61}s; “fuiniformly
`
`coating the negative electrode
`
`slurry on a_negative electrode current
`
`collector aluminum foil” (emphasis added, [0063)),
`
`a maxture layer formed on the current collector ([u]niformly coating the
`
`positive electrode slurry on the positive electrode current collector...” (emphasis
`
`added, {OD61); “[ujniformly coating the negative electrode slurry on a negative
`
`electrode current collector copper foil” ([0053)); the positive/negative clectrode
`
`slurries contain the active materials), and
`
`an electrode lead connected to an exposed portion at which a surface ofthe
`
`current collector is exposed (“[ifhe above referred “area ta be insulated” includes
`
`the weiding ares of the lab...” (emphasis added, [0U35]}),
`
`

`

`Application/Control Number: 16/637,122
`Art Unit: 1721
`
`Page 6
`
`wherein insulating tape adheredfo at least one of the clectrode lead and the expased portion
`
`is providedin at least one of the positive electrode and the negative electrode (‘[tjensile testing
`
`method: adhering the tape to the [fan}}] Al current collector” GO046]}); the alaminum(AL current
`
`collector is the positive current collector. ..}, and
`
`wherein the insulating tape includes:
`
`a base layer formed of an insulating organic material (substrate 10, PRG. 1; [0026];
`
`“[t]he material of the substrate can adopt a single component, such as PE (polyethylene),
`
`PP (polypropylene) or PI (polyimide), or a composite of two or more thereof.” ((0029}};
`
`PE, PP. and Pi are well-known insulating polymers made from organic material
`
`monomers},
`
`an adhesive layer (adhesivelayer 30, PIG. 1: 0028). and
`
`a porous region (hard particle layer 20, PEG. 1; 0028]; “[ijn addition, a plurality of
`
`gaps will also be formed among the hard particles due to the large particle diameter”
`
`([0030P) that is interposed between the base layer and the adhesive layer (see arder of
`
`layer stacking in PEG. 1) and that bas pores that the electrolytic solution is allowed to enter
`
`(“...these gaps can also play a role of penetration and storage of the electrolyte and the
`
`gas” (00307).
`
`13.
`
`Regarding claim 2, Li teaches the secondary battery according to claim 1 as described
`
`above, and wherem the porous region is formed by interposing a porous layer formedof a resin
`
`between the hase layer and the adhesive layer (“[s]ince the hard particle layer 20 is composed of
`
`numerous hard particles, these hard particles need to be bonded together through a binder, and a
`
`dispersant can also be added for dispersion if necessary. ” (cimphasis edded, {0031}; a binder is a
`
`

`

`Application/Control Number: 16/637,122
`Art Unit: 1721
`
`Page 7
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`term used m the art of secondarybatteries that is synonymous with resin and tt held to meet the
`
`Uroitation}.
`
`14.
`
`Regarding claim 3, Li teaches the secondary battery according to claim 2 as described
`
`aboveand wherein a thickness of the porous region is O.5 pm or more (“ithe thickness ofthe hard
`
`particle layer 20 can be selected within the range of [PS nim accordingto the difference of the
`
`adopted type of the hard particie and the adhering pasition.” ({0030))) or wherein a ratio of the
`
`thickness of the porous region to a total thickness of the base layer and the porous layer is 2%to
`
`50%(see Table |: for example, Experiment group 1 has a substrate 10 thickness of 16 ym anda
`
`thickness of hard particle layer 2@ of 1 um. fumy/(lim + i6um)*i00%=3.9%: other examples
`
`e.g., Experiment groups 18-20 have a calculatedratio of 25%}.
`
`15.
`
`Regarding claim 4, Li teaches the secondary battery according to claim 2 as described and
`
`wherein a porosity of the porous layer is 5%or more by volume as shown below.
`
`Liteaches that the porosity of the substrate layer 9) is from 35-55% ({O012)) and that the
`
`particle diameter of the particles in the hard particle layer 20 i8 greater than the pore diameter of
`
`the microporous structure of the substrate Hh Accordingly, a porosity of 33% or less (e.g., 35% or
`
`jess if the porosity of the substrate layer is 35%) would be expected in the hard particle Jayer 20.
`
`Purthermore, see the examples of Table 1. Examples 18 and 14 have the highest relative
`
`proportion of hard particle Layer (~15%)} when comparing the thicknesses of each layer (ie., Lum
`
`/@Gum-+ ium + 3 pm. Yet, the overall porasity (39.0%and 39.2%) of the tape does not
`
`substantially differ fromthat of the substrate (45%). Accordingly, if would be unlikely that the
`
`porosity of the hard particle layer G.c., porous fayer) is less than 5%. Thus, tf is rnore likely than
`
`rict that Li teaches wherein a porosity of the porouslayer is 3%or more by volurne.
`
`

`

`Application/Control Number: 16/637,122
`Art Unit: 1721
`
`Page 8
`
`16.
`
`Regarding claim 6, Li teaches the secondary battery according to claim 1 as described
`
`above and wherein the insulating tape is adheredto at least the positive electrode ([tlensile testing
`
`method: adhering the tape to the [[an]} Al current collector...” (0046); the alaminum(AD current
`
`collector is the positive current collector},
`
`Claim Rejections - 35 USC § 103
`
`17.
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
`
`102 and 103 (or as subject to pre-ATA 35 U.S.C. 102 and 103) is incorrect, any correction of the
`
`statutory basis for the rejection will not be considered a new ground ofrejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same undereither status.
`
`18.
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejections set forth 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 and the
`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 mannerin which the invention was made.
`
`19.
`
`The factual inquiries for establishing a background for determining obviousness under 35
`
`U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claimsat issue.
`
`3. Resolving the level of ordinary skill in the pertinentart.
`
`4. Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`20.
`
`This application currently namesjoint inventors. In considering patentability of the claims
`
`the examiner presumesthat the subject matter of the various claims was commonly owned as of
`
`the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant
`
`

`

`Application/Control Number: 16/637,122
`Art Unit: 1721
`
`Page 9
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`is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates
`
`of each claim that was not commonly ownedasofthe effective filing date of the later invention in
`
`order for the examiner to considerthe applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35
`
`U.S.C. 102(a)(2) prior art against the later invention.
`
`21.
`
`Claim 5 is
`
`rejected under 35 U.S.C. 103 as being unpatentable over Li
`
`(US20170222204A1), as applied to claim 2 above, in view of Ishikawa Ishikawa (WO
`
`2016121339A1 (cited in IDS dated 02/19/2020); US20170309951A1 is used as English
`
`translation thereof(also cited in IDS dated 02/19/2020)).
`
`22.
`
`Regarding claim 5, Li teaches the secondary battery according to claim Z as described
`
`above. Li does not teach wherein the resin of the porous layer comprises a main component
`
`selected from the group consisting of: of polyirnide, polyarmde, ararnid resin, epoxy resin, and
`
`acrylic res,
`
`However, Ishikawa teaches the deficient limitations.
`
`ishikawa relates to the design of
`
`insulating tape for use in lithium secondary batteries (abstract) and is thus analogous arf to Li
`
`
`
`Ishikawa teaches an insulating tape|CFHG. 1) that inchades an organic material layer 50, a
`
`
`
`composite material layer 52, and an adhesive layer ((O023). The insulating tape 1 has generally
`
`the same structure as the tape tanght by Li. In this regard, the cornposite material layer 32 is
`
`analogous to the hard particle layer taught by Li. Ishikawa teaches the materials used in this
`
`composite material layer 32: “[t]he composite material layer 52 contains an organic material as a
`
`base and an inorganic material dispersed in a predetermined powderform in the base layer. The
`
`organic material may be a rubber-basedresin or acrylic-based resin, and preferably a resin that
`
`is the sameasthat in the adhesive layer. The inorganic material is preferably, for example,a silica
`
`sol” (emphasis added, [0026]).
`
`

`

`Application/Control Number: 16/637,122
`Art Unit: 1721
`
`Page 10
`
`In view of the above, Li in view of Ishikawa teach cach cloment claimed by claim 5, with
`
`the difference between the claimed invention and Li being that Li doos not teach the species of the
`
`disclosed “binder” genus has a main component selected fromthe group consisting of polyimide,
`
`polyamide, aramid resin, epoxy ream, and acrylic resin.
`
`The skilled person could have used the teaching of Ishikawa in that the organic material
`
`ray be an “acrylic-based resin” (.e., the acrylic resin of claim 5). In this regard, Li teaches that
`
`this organic material im the hard particle layer 20 ray he used to bind the imorganic particles G.c.,
`
`by virtte of the name, “binder”: see also [G0S0} of Li}. Given the similarities between the
`
`composite layer 32 of Ishikawa and the hard particle layer 20 of Li, the organic material of the
`
`composite layer 32 of Ishikawa more likely than not is used for the sarne function, Le., to bind the
`
`inorganic particles. Thus, the funchons of the binder in Li and the organic material in Ishikawa
`
`were known in the art before the effective filme date of the invention.
`
`ituted the “binder” genus of
`Accordingly, the skilled person conki have sim
`
`
`tanght by Li with the species of organic materials as taught by Ishikawa, and the results of the
`
`substifition would have predictably resulted in the organic material binding the inorganic
`
`materials. See MEDI2145 SLB.
`
`Thus, it would have been obvious before the effective filing date of the claimed invention
`
`to have modified the secondary battery of clairn 2 as tanght by Li with that of Ishikawa by simply
`
`subshinting the binder of Li with the organic material of Ishikawato have arrived at the claimed
`
`invention wherein the resin of the porous layer comprises a main componentselected from the
`
`group consisting of: of polyimide, polyamide, aramid resin, epoxyresin, and acrylic resin.
`
`

`

`Application/Control Number: 16/637,122
`Art Unit: 1721
`
`Page 11
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`Conclusion
`
`23.
`
`Anyinquiry concerning this communication or earlier communications from the examiner
`
`should be directed to JASON AARON BARTONwhosetelephone numberis (571)270-3551. The
`
`examiner can normally be reached 9:00 AM to 5:00 PM.
`
`Examinerinterviewsare 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,
`
`Allison Bourke can be reached on (303)297-4684. The fax phone numberfor the organization
`
`where this 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 Centeris available to registered
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`users. To file and manage patent submissionsin Patent Center, visit: https://patentcenter.uspto. gov.
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`Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center
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`(IN USA OR CANADA)or 571-272-1000.
`
`/JASON BARTON/
`Examiner, Art Unit 1721
`
`/CHRISTINA CHERN/
`Primary Examiner, Art Unit 1721
`
`