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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
`
`16/651,945
`
`03/27/2020
`
`Tomohiro UEDA
`
`094704-0053
`
`3144
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`WYROUGH,PAUL CHRISTIAN ST
`
`1728
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/31/2023
`
`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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`16/651,945
`Examiner
`PAUL C WYROUGH
`
`Applicant(s)
`UEDAetal.
`Art Unit
`1728
`
`AIA (FITF) Status
`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 03/10/2023.
`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.
`
`Disposition of Claims*
`8-20 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) 8-20 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) The drawing(s) filed on 03/27/2020 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
`1.4) 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 10/26/2022.
`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 20230316
`
`

`

`Application/Control Number: 16/651,945
`Art Unit: 1728
`
`Page 2
`
`DETAILED CORRESPONDENCE
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013,
`
`is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Response to Amendment
`
`2.
`
`Applicant’s amendment,
`
`filed on 03/10/2023, has been entered. Claims 1-7 have
`
`been cancelled. Claims 8-20 are now pending in this application.
`
`Claim Rejections - 35 USC § 103
`
`3.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis forall
`
`obviousnessrejections 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.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
`
`obviousness under 35 U.S.C. 103 are summarized as follows:
`
`PwoNM>
`
`Determining the scope and contents of the prior art.
`Ascertaining the differences between the prior art and the claims at issue.
`Resolving the level of ordinary skill in the pertinent art.
`Considering objective evidence present in the application indicating
`obviousness or nonobviousness.
`
`This application currently names joint inventors.
`
`In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was
`
`commonly owned asof the effective filing date of the claimed invention(s) absent any
`
`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
`
`

`

`Application/Control Number: 16/651,945
`Art Unit: 1728
`
`Page 3
`
`point out the inventor and effective filing dates of each claim that was not commonly
`
`owned asofthe effective filing date of the later invention in order for the examiner to
`
`consider the applicability of 835 US.C. 102(b)(2)(C) for any potential 35 US.C. 102(a)(2)
`
`prior art against the later invention.
`
`4.
`
`Claims 8-16, and 19-20 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Kin (JP 2003123829 A) and further in view of Okuda (JP
`
`2013143224A) and Suehiro (WO 2017163557 A1) (refer to enclosed translations for
`
`citations).
`
`5.
`
`Regarding claim 8,
`
`e
`
`e
`
`e
`
`Kin teaches a cylindrical secondary battery [0001] comprising:
`
`abottomed cylindrical battery case [0007] having an opening [0006];
`
`an electrode group (Fig. 7, 2; [0006]);
`
`an electrolyte solution, the electrode group and the electrolyte solution being
`
`housedin the battery case [0003];
`
`e anda sealing member blocking the opening of the battery case (Fig. 1, 12;
`
`[0031], “cap assembly”),
`
`e wherein the electrode group includes a positive electrode (Fig. 1, 30; [0030)),
`
`e
`
`e
`
`anegative electrode (Fig. 1, 40; [0030)),
`
`anda separator placed betweenthe positive electrode and the negative
`
`electrode (Fig. 1, 50; [0030));
`
`e
`
`and is formed by winding the positive electrode and the negative electrode with
`
`the separator therebetw een [0030];
`
`

`

`Application/Control Number: 16/651,945
`Art Unit: 1728
`
`Page 4
`
`the negative electrode includes a negative electrode current collector and a
`
`negative electrode mix layer formed on at least one principal surface of the
`
`negative electrode current collector (Fig. 1, 42; [0031]);
`
`the positive electrode includes a positive electrode current collector and a
`
`positive electrode mix layer formed on at least one principal surface of the
`
`positive electrode current collector (Fig. 1, 32; [0031]);
`
`the separator includes an inner non-contact region (Fig. 1; 54) whichis located
`
`on the inner peripheral side of the electrode group and both surfaces of the inner
`
`non-contact region of the separator are not in contact with the negative electrode
`
`mix layer and not in contact with the positive electrode mix layer (Fig. 1, [0034]);
`
`the length of the inner non-contact region (Fig. 1; 54); it can be said that the inner
`
`non-contact region does not come into contact with the negative electrode due to
`
`it being further wound from separator 50 (Fig. 1, [0034]); the electrode group
`
`includes a cylindrical section formed by the negative electrode mix layer formed
`
`on a principal surface of the negative electrode current collector that is located
`
`innermost in the electrode group (Fig. 1, [0034)).
`
`How ever, Kin fails to teach the non-contact region 5% or more of the length of
`
`the separator in a winding direction of the electrode group and the diameter of
`
`the cylindrical section is 2.5 mm orless.
`
`Okuda teaches the central portion of a woundelectrode body is formed by
`
`winding the innermost part of the separator to effectively suppress the depletion of
`
`electrolytic solution. Therefore, the suppression of electrolyte depletion is
`
`recognized as a result-effective variable dependent on the amount of winding, in
`
`

`

`Application/Control Number: 16/651,945
`Art Unit: 1728
`
`Page 5
`
`which an increased amount of winding, which requires a greater length of the
`
`innermost separator, corresponds to an improved suppression of the electrolyte
`
`depletion. There would be reasonable expectation of success to attempt different
`
`length percent values of the non-contact region until the electrolyte depletion was
`
`suppressed. Therefore, it is not inventive to discover the optimum workable range or
`
`value by routine experimentation, and it would have been obvious to one of ordinary
`
`skill in the art before the effective filling date of the claimed invention, to modify Kin
`
`by employing an inner length of non-contact region being 5% or more of the length
`
`of the separator (see MPEP 2144.05Il.). However, modified Kin fails to teach the
`
`diameter of the core thickness 2.5 mm or less.
`
`Suehiro teaches a cylindrical battery (Fig. 10, 14) witha cylindrical core thickness
`
`of 1.5 mm, within the claimed range ([077]; “whenthe diameter of the core 50 is too
`
`large, the battery capacity becomes small’).
`
`It wouldbe obvious to one of ordinary
`
`skill of the art before the effectivefiling date to combine an innermost cylindrical
`
`section of 1.5 mm orless as taught by Suehiro withthe cylindrical battery as taught
`
`by modified Kin in order to improve battery capacity.
`
`6.
`
`Regarding claim 9,
`
`Modified Kin teaches a cylindrical secondary battery according to Gaim 8 (see
`
`elements of claim 8 above), wherein the inner non- contact region is placed in an
`
`inner portion of the cylindrical section (Fig. 1; [0034)).
`
`7.
`
`Regarding claim 10,
`
`

`

`Application/Control Number: 16/651,945
`Art Unit: 1728
`
`Page 6
`
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`
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`
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`
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`
`
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`
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`
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`
`
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`
`Modified Kin teaches the cylindrical secondary battery according to Claim 8 (see
`
`elements of claim 8 above), wherein the separator has a first folded portion in the inner
`
`non-contact region (annotated Fig. 6, “firstfolded portion”; [0034]).
`
`8.
`
`Regarding claim 11,
`
`Modified Kin teaches the cylindrical secondary battery according to Claim 10
`
`(see elements of claim 10 above), wherein the separator is folded atthe first folded
`
`portion (annotated Fig. 6, 54, “first folded portion’; [0034]) to sandwich a portion of the
`
`negative electrode, as the separator is on both sides of the current collector for the
`
`negative electrode (annotated Fig. 6, “exposed section”; [0034]). The examiner notes
`
`that the separator 54 in Fig. 6 sandwiches the exposed section (annotated Fig. 6,
`
`“exposed section’; [0034]) because it is on both sides of the exposed section.
`
`9.
`
`Regarding claim 12,
`
`Modified Kin teaches the cylindrical secondary battery according to Claim 8 (see
`
`elements of claim 8 above), wherein the negative electrode includes an exposed section
`
`where at least one principal surface of the negative electrode current collector is
`
`

`

`Application/Control Number: 16/651,945
`Art Unit: 1728
`
`Page 7
`
`exposed (annotated Fig. 6, “exposed section’) and which is located at an end section on
`
`the inner peripheral side of the electrode group (annotated Fig. 6, “exposed section’).
`
`10.
`
`Regarding claim 13,
`
`Modified Kin teaches cylindrical secondary battery according to Gaim 12 (see
`
`elements of claim 12 above), wherein the exposed section is placed in an inner portion
`
`of the cylindrical section (annotated Fig. 6, “exposed portion’).
`
`11.
`
`Regarding claim 14,
`
`Modified Kin teaches the cylindrical secondary battery according to Claim 12
`
`(see elements of claim 12 above), wherein the exposed section has a secondfolded
`
`portion placedin the inner portion of the cylindrical section (annotated Fig. 6, “second
`
`folded portion’).
`
`12.
`
`Regarding claim 15,
`
`Modified Kin teaches the cylindrical secondary battery according to Claim 14
`
`(see elements of claim 14 above), but fails to teach wherein the exposed section is
`
`folded at the second folded portion together with the separator in the inner non-contact
`
`region. However, Okuda teaches wherein the exposed section is folded together with
`
`the separator in the inner non-contact region ([O006], “a central portion formed by
`
`winding or folding at least one of the innermost part of the negative electrode not coated
`
`withthe substance and the innermost part of the separator”). Additionally, Okuda
`
`teaches that the electrode may bent even further and positioned together with the
`
`separator inside the inner non-contact region ([0049], “You may make it arrange |
`
`position to the other bending part 32 side in the center part of the body 11) to avoid
`
`compressing the inner region from both sides which can allow cracking and short circuit
`
`

`

`Application/Control Number: 16/651,945
`Art Unit: 1728
`
`Page 8
`
`to occur [0035]. Therefore,
`
`it would be obvious to one ofordinary skill of the art before
`
`the effective filing date to combine the exposed section folded together with the
`
`separator in the inner non-contact region with the cylindrical secondary battery of Kin
`
`such that cracking in the inner region, and consequently a short circuit, is avoided.
`
`13.
`
`Regarding claim 16,
`
`Modified Kin teaches the cylindrical secondary battery according to Claim 12
`
`(see elements of claim 12 above), wherein the negative electrode mix layer formed on a
`
`principal surface of the negative electrode current collector that is located innermostof
`
`the electrode group (annotated Fig. 6, “electrode mix”) faces the exposed section witha
`
`plurality of the separator therebetween (Fig. 6, 54, see plurality of separators defined by
`
`the first and second folding region).
`
`14.
`
`Regarding claim 18,
`
`
`
`Modified Kin teaches the cylindrical secondary battery according to Gaim 8 (see
`
`elements of claim 8 above), wherein the outside of the separator that is located on the
`
`

`

`Application/Control Number: 16/651,945
`Art Unit: 1728
`
`Page 9
`
`outermost peripheral side of the electrode group (Fig. 1, 52, outermost spiral hollow with
`
`white) is covered by the negative electrode current collector (Annotated Fig. 1, 42,
`
`“outermost peripheral separator”).
`
`15.
`
`Regarding claim 19,
`
`Modified Kin teaches the cylindrical secondary battery according to Claim 8 (see
`
`elements of claim 8 above), wherein Suehiro the outside diameter of the cylindrical
`
`secondary battery (Suehiro; annotated Fig. 1, black arrow) is 6 mm orless, whichis
`
`encompassed bythe claimed range of 6.5 mm orless, in order to improve the technical
`
`significance [089] of a high-capacity small sized battery being realized [034]. Thus, it
`
`w ould be obvious to one of ordinary skill of the art before the effective filing date to use
`
`an outside diameter of 6.5 mm orless, as taught by Suehiro,
`
`in order to better prevent a
`
`short.
`
`16.
`
`Regarding claim 20,
`
`Modified Kin teaches the cylindrical secondary battery according to Claim 8 (see
`
`elements of claim 8). While Suehiro silent to the number of turns present, and fails to
`
`depict the number of turns being three to ten (see Fig. 10, 14, number of turns depicted
`
`as twoin the preferred embodiment witha 4.5 mm diameter [087]), Suehiro teaches
`
`alternate embodiments wherein the diameter of the can is 6 mm or less or 10 mm or
`
`less. Accordingly, it is clear that the number of turns in the alternate embodiment must
`
`overlap withthe claimed range of 3-10 turns. Thus,
`
`it would be obvious to one of
`
`ordinary skill of the art before the effective filing date to use at least 3 turns ina
`
`cylindrical battery, as taught by as taught by modified Kin,
`
`in order to improve capacity
`
`while still maintaining a relatively small diameter.
`
`In the case where the claimed ranges
`
`

`

`Application/Control Number: 16/651,945
`Art Unit: 1728
`
`Page 10
`
`"overlap orlie inside ranges disclosed by the prior art" a prima facie case of
`
`obviousness exists. MPEP 2144.05
`
`17.
`
`Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Kin (JP
`
`2003123829 A) and further in view of Okuda (JP 2013143224A), Suehiro (WO
`
`2017163557 A1), and Shiori (JP2001176482A) (refer to enclosed translations for
`
`citations).
`
`18.
`
`Regarding claim 17,
`
`Modified Kin teaches the cylindrical secondary battery according to Claim 8 (see
`
`elements of claim 8 above), but fails to teach wherein the separator including a base
`
`layer and a resin layer formed on at least one principal surface of the base layer, the
`
`resin layer having swelling properties for the electrolyte solution.
`
`Shiori teaches a polyvinylidene fluoride resin layer (Fig. 2b, 21) laminated witha
`
`reinforcing layer [0009], meeting the claimed base layer and corresponding to the
`
`feature in modified Kin as described above. Shiori teaches the resin layer swells while
`
`holding the electrolytic solution [0035], because increasing the liquid retaining property
`
`decreasesthe internal resistance of the battery [0004].
`
`It would be obvious to one of
`
`ordinary skill of the art before the effective filing date to combine the base layer and
`
`resin layer having swelling properties for the electrolyte solution as taught by Shiori with
`
`the cylindrical secondary battery as taught by Kin in order to decrease the internal
`
`resistance of the battery.
`
`Response to Arguments
`
`The amendment
`
`improving the grammatical clarity of claim 8 has been
`
`acknow ledged. The objection of claim 8 has been withdrawn.
`
`

`

`Application/Control Number: 16/651,945
`Art Unit: 1728
`
`Page 11
`
`Applicant’s arguments, see Remarks,
`
`filed 03/10/2023, withrespect to the
`
`rejection(s) of claim(s) 8-20 have been fully considered and are persuasive. Therefore,
`
`the rejection has been withdrawn. How ever, upon further consideration, a new
`
`ground(s) of rejection is made in view of Suehiro
`
`Applicant’s arguments regarding the diameter of the cylindrical section, in light of
`
`the updated rejection, are not persuasive as Suehiro teaches aclaimed diameter of 2.5
`
`mm or less (see rejection of claim 1 above).
`
`Applicants argues that the outside peripheral separator is not in contact with the
`
`negative electrode current collector. How ever, this is not persuasive, asit is the
`
`examiner’s position that the negative electrode current collector is in contact with
`
`outside peripheral separator, as shownin annotated Fig.
`
`1 (see rejection of claim 18
`
`above).
`
`Conclusion
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to PAUL WYROUGH whose telephone numberis
`
`(571)272-4806. The examiner can normally be reached on Monday-Friday 10am-5pm.
`
`Examiner
`
`interviews are available via telephone,
`
`in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview , applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Av ww.uspto.gov/interview practice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, MATTHEW MARTIN can be reached on (571) 270-7871. The fax phone
`
`

`

`Application/Control Number: 16/651,945
`Art Unit: 1728
`
`Page 12
`
`number for the organization wherethis application or proceeding is 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 may be 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 system, see hittp://pair-direct.uspto.gov. Should
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`If you wouldlike assistance from a
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/PAUL CHRISTIAN ST WYROUGH/
`Examiner, Art Unit 1728
`
`/MATTHEW T MARTIN
`Supervisory Patent Examiner, Art Unit 1728
`
`