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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
`
`16/640, 128
`
`02/19/2020
`
`Natsumi Goto
`
`P200167US00
`
`1048
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`ANTHONY, JULTAN
`
`1722
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`07/05/2022
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`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):
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`patentmail @ whda.com
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`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`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)
`
`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) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
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`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220625
`
`Application No.
`Applicant(s)
`16/640 128
`Goto etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`JULIAN ANTHONY
`1722
`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
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`1) Responsive to communication(s)filed on 18 February 2022.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`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.
`
`Disposition of Claims*
`) 1-4 and6is/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) 1-4and6is/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/Control Number: 16/640,128
`Art Unit: 1722
`
`Page 2
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`DETAILED ACTION
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`Remarks
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`This Office action is responsive to applicant’s amendmentfiled on February 18, 2022.
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`This Office action is made NON-FINAL.
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`Information Disclosure Statement
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`The IDSfiled on February 23, 2022 has been considered by the examiner.
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
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`rejectionsset forth in this Office action:
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`A patent for a claimed invention may not be obtained, notwithstanding that the claimed inventionis 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 obviousbefore 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.
`
`Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kaet al. (KR
`
`2014 0073957, see machine translation for purposes ofcitation) in view of Kim (US
`
`2016/0072111) and Lee et al. (US 2014/0322586)
`
`For claim 1: Ka teaches a non-aqueous electrolyte secondary battery comprising: a
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`positive electrode, a negative electrode, and a separator, the separator including a substrate
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`({0021]), a first filler layer “first porous coating layer” ([0023]) containing particles and formed
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`on at least one surface of the substrate, and a secondfiller layer “second porous coating layer”
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`containing inorganic particles. ({0024]) The first filler layer contains phosphate particles, inter
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`

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`Application/Control Number: 16/640,128
`Art Unit: 1722
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`Page 3
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`alia. ([(0026]). The secondfiller layer is formed on a surfaceofthefirstfiller layer on a side of
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`the at least one surface of the substrate. ([0024]) The phosphate particles have a particle diameter
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`D50 of about 10 to about 500 nm, or about 20 to 80 nm. ({0027]), which converts to 0.01 um to
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`0.5 um, which overlaps with an average particle size from 0.05 um to 1 um.
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`Kadiscloses that when the inorganic particles are about 500 nm orless, the pores are also
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`about 500 nm orless. (Ka in [0034]) Ka does not explicitly teach the averagesize of the
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`phosphate particles to be smaller than the average pore size of the substrate. However, giving
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`"about" its plain and ordinary meaning of "approximately" would result in the size of the
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`inorganic particles to include sizes smaller than the pore size of the substrate and is considered
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`close enoughthat one skilled in the art would have expected them to have the same properties,
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`thereby establishing a prima facie case of obviousness. Titanium Metals Corp. ofAmerica v.
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`Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) Applicantis invited to submit
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`unexpected results to render the claims unobvious. (MPEP 2131.03) Additionally, absent of
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`such unexpected results it is asserted that the pore size of the substrate, relative to the size of the
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`phosphate particles, is a result-effective variable. In re Boesch, 617 F.2d 272, 205 USPQ 215
`
`(CCPA 1980) To this end, Ka discloses that the pore size directly affects the resistivity of the
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`layer and its mechanical properties. ([0035])
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`Ka does not explicitly teach the secondfiller layer having a higher melting point than the
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`phosphate particles. However, Kim in the samefield of endeavorteachesa first particle and a
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`second particle where the second particle has a higher melting point than the first particle. (Kim
`
`in [(0025]) The skilled artisan would find obvious to modify Ka so the second particles in the
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`secondfiller layer has a higher melting point than thefirst particles. The motivation for such a
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`

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`Application/Control Number: 16/640,128
`Art Unit: 1722
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`Page 4
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`modification is so that the second particles are not softened when an internal temperature of the
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`battery increases and thus the shape of the separator is maintained. (Id.)
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`Ka doesnot explicitly teach the phosphate particles to have a BET specific surface area
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`of 5 m?/g or more and 100 m?/g or less. However, Lee in the samefield of endeavor teaches
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`inorganicparticles having a BET surface in a range of 10 to 50 m’/g. (Lee in [0029]) As the
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`claimed ranges “overlap or lie inside ranges disclosed by the prior art” a primafacie case of
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`obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff,
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`919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) The skilled artisan would find obvious to
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`modify Ka so that the phosphate particles have a BET specific surface area which overlaps with
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`the claimed range. The motivation for such a modification is to implement a metal ion
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`adsorption effect and improvedispersibility. (Id.)
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`For claim 2: In Ka, thefirst filler layer and the secondfiller layer are formed on only one
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`surface of the substrate (Fig. 1), and the separator is disposed between the positive electrode and
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`the negative electrode. (Ka in [0023], [0038]) Ka does not explicitly teach the one surface of the
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`substrate facing the positive electrode. However, the skilled artisan would find obvious for the
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`one surface to face the positive electrode as the separator is sandwiched between the positive
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`electrode and the negative electrode so that the one surface faces either electrode. A patent claim
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`can be proved obvious merely by showing that the combination of elements was obvious to try.
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`Whenthere is a design need or market pressure to solve a problem and there are a finite number
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`of identified, predictable solutions, a person of ordinary skill has good reason to pursue the
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`knownoptions within his or her technical grasp. If this leads to the anticipated success, it is
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`likely the product is not of innovation but of ordinary skill and commonsense. KSR Int'l Co. v.
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`Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)
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`

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`Application/Control Number: 16/640,128
`Art Unit: 1722
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`Page 5
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`For claim 3: As already discussed, Lee teaches a BET surface in a range of 10 to 50 m7/g
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`(Lee in [0029]), which overlaps with the range of 20 m?/g or more and 100 m7/g orless.
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`For claim 4: In Ka, the phosphate particles are lithium phosphate, inter alia. ([0026]).
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`Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ka et al. (KR
`
`20140073957 in view of Kim (US 2016/0072111) and Lee et al. (US 2014/0322586), and further
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`in view of Kajita et al. (US 2009/0011337)
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`The teachings of Ka, Kim and Leeare discussed above.
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`Ka does not explicitly teach the separator further include a resin layer formed on a
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`surface of the secondfiller layer away from the firstfiller layer. However, Kajita teaches a resin
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`layer 204b formed on a surface of a separator away from thefirst layer. (Kajita in [0161]) The
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`skilled artisan would find obvious to further modify Ka with a resin layer formed on a surface of
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`the secondfiller layer away from thefirst filler layer. The motivation for such a modification is
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`to improvethe heatresistance. (Id.)
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`Response to Arguments
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`Applicant’s arguments filed February 18, 2022 with the present amendment have been
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`fully considered and are persuasive. Specifically, applicant notes that Ka fails to teach or
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`suggest the average pore size of the substrate and a relationship between the substrate average
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`pore size and the phosphate particle average diameter as required by amended claim 1. The prior
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`Office action relied on Ka disclosing the first porous coating layer, containing inorganic
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`particles, coating at least one of the pores of the substrate (Ka in [0023]) as a basis for finding as
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`obvious that the particle diameter of the inorganic particles is smaller than an average pore size
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`

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`Application/Control Number: 16/640,128
`Art Unit: 1722
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`Page 6
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`of the substrate. In { [0007], Ka also makesa distinction between coating the surface of the
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`substrate and coating the pores. The previous Office action interpreted coating of the pores as
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`coating the inside of the pores with the inorganic particles smaller in size than the pores.
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`However, on further consideration, the examiner concedes with applicant’s argument on this
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`reading of Kato not account for the phosphate particle average diameter. To this end, the
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`present Office action now relies on Ka disclosing the size of the inorganic particles and the size
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`of the pores, and also sets forth that the disclosed sizes teach orat least suggest inorganic
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`particles smaller in size than the pore size of the substrate. In addition, the present Office action
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`sets forth that the pore size is a result-effective variable, so that doing so would result in
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`inorganic particles smaller in size than the pore size of the substrate.
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`Conclusion
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`The prior art made of record and notrelied upon is considered pertinent to applicant's
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`disclosure. US 2018/0315971 to Kwonetal. discloses organic particles with an average diameter
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`smaller than that of pores formed in a porous polymersubstrate or porous coating layer. ({0013])
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to JULIAN ANTHONYwhose telephone numberis (571) 272-1289
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`and email is julian.anthony @uspto.gov. The examiner can normally be reached on Mondayto
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`Friday from 9:30am to 5:30pm.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicantis
`
`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
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`

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`Application/Control Number: 16/640,128
`Art Unit: 1722
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`Page 7
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`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
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`supervisor, Cynthia Kelly, can be reached on (571) 272-1526. The fax phone numberfor the
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`organization wherethis application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`maybe obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
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`like assistance from a USPTO Customer Service Representative or access to the automated
`
`information system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/Julian Anthony/
`Examiner, Art Unit 1722
`
`/CYNTHIA H KELLY/
`Supervisory Patent Examiner, Art Unit 1722
`
`