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
`
`16/659,774
`
`10/22/2019
`
`Yuji Oura
`
`P191115US00
`
`1935
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`TAKEUCHI, YOSHITOSHI
`
`1723
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/29/2022
`
`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)
`
`

`

`
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11)M The drawing(s)filed on October 22, 2019 is/are: a) accepted or b)C) 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)() None ofthe:
`b)( Some**
`a) All
`1.4) 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 received in 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:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220321
`
`Application No.
`Applicant(s)
`16/659 ,774
`Ouraetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`YOSHITOSHI TAKEUCHI
`1723
`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 January 19, 2022.
`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*
`1-6 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) 1-4and6is/are rejected.
`Claim(s) 5 is/are objectedto.
`C] 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/Control Number: 16/659,774
`Art Unit: 1723
`
`Page 2
`
`DETAILED ACTION
`
`1.
`
`Claims 1-6 are presented for examination, claims 1-3 are currently amended; plus claims
`
`5-6 are newly added.
`
`2.
`
`3.
`
`The objection to claim 3 is withdrawnasa result of the amendmentto said claim.
`
`The present application, filed on or after March 16, 2013, is being examined underthe
`
`first inventor to file provisions of the AJA.
`
`Claim Objections
`
`4,
`
`Newly added claim 5 objected to becauseofthe limitation “the intermediate layer
`
`contains a binder...” should indicate the binderis further required, since claim 1, from which
`
`claim 5 depends, does not require a binderin said intermediate layer.” Appropriate correction is
`
`respectfully required.
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`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-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
`
`statutory basis for the rejection will not be considered a new groundofrejectionif the priorart
`
`relied upon, and the rationale supporting the rejection, would be the same undereither status.
`
`6.
`
`Thetext of those sections of Title 35, U.S. Code not included in this action can be found
`
`in a prior Office action.
`
`7.
`
`Claims 1 and 4 plus newly added claim 6 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Miyazakiet al (US 2013/0089781) in view of Watari et al (US
`
`2004/0234850).
`
`a.
`
`Regarding newly amended independent claim 1, Miyazaki teaches a positive
`
`electrode (e.g. item 2) for use in electric storage devices, such as a nonaqueous
`
`

`

`Application/Control Number: 16/659,774
`Art Unit: 1723
`
`Page 3
`
`electrolyte secondary battery (e.g. [ff] 0021-22 and 56-58), reading on “secondary battery
`
`positive electrode,” said electrode comprising:
`
`(1)
`
`a positive-electrode current collecting plate (e.g. item 5, see e.g. {0060
`
`plus e.g. Figure 1), reading on “a positive electrode current collector;”
`
`(2)
`
`positive electrode active material layer (e.g. item 6) working as an active
`
`material layer for the positive electrode (e.g. Id), reading on “a positive electrode
`
`mixture layer;” and,
`
`(3)
`
`two undercoatlayers (e.g. items 7a and 7a’) each formed on opposite
`
`major faces of said positive-electrode current collecting plate, wherein said positive
`
`electrode active material layer is laminated on one of said two undercoatlayers(e.g. Id),
`
`reading on “an intermediate layer provided between the positive electrode current
`
`collector and the positive electrode mixture layer,”
`
`wherein said undercoat layers comprises
`
`(3a)
`
`a plurality of conductive additive particles (e.g. item 72) composed ofat
`
`least one of e.g. carbon black, acetylene black, ketjen black, copper, and aluminum,
`
`preferably used in a content in a range of 5 to 50 % based onall the materials for the
`
`undercoatlayer (e.g. [J0069-70), reading on “the intermediate layer comprises: first
`
`particles formed of a conductive agent” and overlapping the claimed range, reading on
`
`“a volume percentage ofthe first particles in the intermediate layer is 25% or more and
`
`less than 70%,” MPEP § 2144.05(1) and
`
`(3b)
`
`a plurality of insulating inorganic agent particles (e.g. item 73) composed
`
`of at least one of e.g. alumina,silica, zirconia, magnesia, manganese oxide,silicon
`
`nitride, and boron nitride, wherein said insulating inorganic agenthasa larger particle
`
`

`

`Application/Control Number: 16/659,774
`Art Unit: 1723
`
`Page 4
`
`size than said conductive additive in a preferable aspect, wherein said insulating
`
`inorganic agent is used in a content in a range of 10 to 75 % based onall the materials for
`
`the undercoat layer from the viewpoint of ensuring the insulating property (e.g. {f{[ 0101-
`
`106), reading on newly amended “the intermediate layer comprises ... second particles
`
`formedof an insulating inorganic material and having an average particle size larger
`
`than an averageparticle size of the first particles” and overlapping the claimed range,
`
`reading on “a volume percentage of the second particles in the intermediate layer is 30%
`
`or more and less than 75%,” MPEP § 2144.05(I).
`
`Miyazaki does not expressly teach the limitation “a density of the intermediate
`
`layer is more than 1 g/cm? and 2.5 g/cm?orless.”
`
`However, Watari teachesa lithium ion secondary battery (Abstract). As illustrated
`
`in Figure 1, Watari teaches that the battery comprises a bonding layer(e.g. item 19)
`
`disposed in between a positive electrode current collector (e.g. item 12) and a positive
`
`electrode mixture layer (e.g. item 13), wherein said bonding layer comprises a conductive
`
`additive material (e.g. {| 0109-110). Watari teaches that controlling the surface density of
`
`the bonding layer allows for a specific balance to be achieved with respect to adhesion
`
`and conductivity characteristics and further teaches controlling the thickness of said
`
`bondinglayer affects the cycle characteristics and energy density (e.g. {{[ 0036 and 57-
`
`59). Specifically, Watari teaches that when the surface density is too high, electrical
`
`conductivity characteristics of the bonding layer are decreased and whenthe surface
`
`density is too low, adhesion characteristics of the bonding layer are decreased; plus, when
`
`the thickness is too thick, the energy density decreases and whenthe thickness is too thin,
`
`lowers cycle characteristics of discharge capacity (e.g. Id).
`
`

`

`Application/Control Number: 16/659,774
`Art Unit: 1723
`
`Page 5
`
`Asa result, it would have been obvious to a person of ordinary skill in theart,
`
`through routine experimentation with a reasonable expectation of success, to optimize or
`
`otherwise control the density (e.g. to a value within the instantly claimed range) of the
`
`undercoat layer of Miyazaki as a direct means of balancing the adhesion,electrical
`
`conductivity characteristics, and energy density of the undercoatlayer, as taught by
`
`Watari, given that a surface density which is too high would lead to a decrease in terms of
`
`electrical conductivity characteristics, a surface density which is too low would lead to a
`
`decrease in terms of adhesion characteristics, a thickness that is too thick reduces energy
`
`density, and a thickness that is too thin lowers cycle characteristics of discharge capacity,
`
`reading on said limitation.
`
`b.
`
`Regarding newly added claim 6, Miyazaki as modified teaches the electrode of
`
`claim 1, wherein said insulating inorganic agent hasalarger particle size than said
`
`conductive additive (e.g. supra), and further teaches said conductive additive has a
`
`particle size of approximately 0.01 to 0.5 um plus said insulating inorganic agent has a
`
`particle size of 0.1 to 3 um and preferably approximately 1 um (e.g. J§[ 0109-110).
`
`Further, it would have been obvious to a person of ordinary skill in the art to use
`
`said inorganic agent particles with uniform particle sizes and said conductive additive
`
`particles with uniform particle sizes, in order to ensure repeatable manufacturing and
`
`properties of said intermediate layer,
`
`wherein said uniform particle sizes of said conductive additive of approximately
`
`0.01 to 0.5 um plus said uniform particles sizes of said insulating inorganic agentof 0.1
`
`to 3 um, such as approximately 1 um, establishing a prima facie case of obviousness of
`
`the claimed ranges, see also e.g. MPEP § 2144.05(1), reading on “the average particle
`
`

`

`Application/Control Number: 16/659,774
`Art Unit: 1723
`
`Page 6
`
`size of the first particles is 0.03 um or more and 0.05 um orless and the average particle
`
`size of the second particles is 0.4 um or more and 2.0 um orless.”
`
`c.
`
`Regarding independent claim 4, Miyazaki and Watari are applied as provided
`
`supra, with the following modifications.
`
`Miyazaki as modified teaches said nonaqueous electrolyte secondary battery
`
`including said positive electrode (e.g. supra), reading on “secondary battery, comprising:
`
`a positive electrode” and “the positive electrode is the secondary battery positive
`
`electrode according to claim 1,” wherein Miyazaki further teaches:
`
`(2)
`
`(3)
`
`a negative electrode (e.g. item 3, e.g. [{] 0057-59 plus e.g. Figure 1); and,
`
`an electrolyte (e.g. JJ 0175-176), reading on “an electrolyte.”
`
`8.
`
`Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Miyazakiet al
`
`(US 2013/0089781) in view of Watari et al (US 2004/0234850), as provided supra, and further
`
`in view of Kato et al (US 2014/0099537).
`
`d.
`
`Regarding newly amended claim 2, Miyazaki as modified teaches the electrode of
`
`claim 1, wherein Miyazaki teaches said conductive additive may have an aspect ratio of
`
`preferably 1 or more and 5 orless, so as to prevent said conductive additive from
`
`penetrating through said undercoat layer during pressing of the electrode (e.g. {{] 0033-34
`
`and 116-120), overlapping the claimed range, reading on “thefirst particles are particles
`
`having an aspectratio of less than 10,” e.g. MPEP § 21144.05(1).
`
`Further, it would have been obvious to a person of ordinary skill in the art,
`
`through routine experimentation with a reasonable expectation of success, to optimize or
`
`otherwise control the density (e.g. to a value within the instantly claimed range) of the
`
`

`

`Application/Control Number: 16/659,774
`Art Unit: 1723
`
`Page 7
`
`undercoat layer of Miyazaki as a direct means of balancing the adhesion,electrical
`
`conductivity characteristics, and energy density of the undercoatlayer, as taught by
`
`Watari, given that a surface density which is too high would lead to a decrease in terms of
`
`electrical conductivity characteristics, a surface density which is too low wouldlead to a
`
`decrease in terms of adhesion characteristics, a thickness that is too thick reduces energy
`
`density, and a thickness that is too thin lowers cycle characteristics of discharge capacity,
`
`reading on the limitation “the density of the intermediate layer is 1.4 g/cm? or more and
`
`2.5 g/cm?orless.”
`
`Miyazaki as modified does not expressly teach the limitation “the secondparticles
`
`are particles having an aspect ratio of 10 or more and 50 orless.”
`
`However, Kato teaches a current collector with a conductive film in a battery,
`
`wherein said conductive film with low electric resistance per unit area in the thickness
`
`direction in contact with a positive electrode active material layer (e.g. [ 0001, 11, and
`
`49-51). Said conductive film contains conductive particles (e.g. items 1) and insulating
`
`plate-like inorganic particles, such as alumina, which improveinterlayer adhesion,
`
`wherein said plate-like inorganic particles preferably have an aspect ratio of 7 or more,
`
`whichresult in said plate-like particles orienting in the conductive film so as to not
`
`increase the resistance value in the thickness direction (e.g. J§[ 0139-140).
`
`As a result, it would have been obvious to substitute the alumina insulating
`
`inorganic agent particles of Miyazaki with the alumina insulating plate-like inorganic
`
`particles of Kato, with aspect ratios of 7 or greater, since Kato teaches said alumina
`
`insulating plate-like inorganic particles result in improved interlayer adhesion while not
`
`increasing the resistance value in the thickness direction of a conductive film,
`
`

`

`Application/Control Number: 16/659,774
`Art Unit: 1723
`
`Page 8
`
`overlapping the claimed range, reading in the claimed limitation “the second particles are
`
`particles having an aspect ratio of 10 or more and 50 orless,” e.g. MPEP § 2144.05(1).
`
`e.
`
`Regarding newly amended claim 3, Miyazaki as modified teaches the electrode of
`
`claim 2, wherein Kato teaches said alumina insulating plate-like inorganic particles have
`
`aspect ratios of 7 or greater, overlapping the claimed range, reading on “the second
`
`particles are particles having an aspect ratio of 10 or more and 30 orless,” e.g. MPEP §
`
`2144.05(1).
`
`9.
`
`Newly added claim 6 is rejected under 35 U.S.C. 103 as being unpatentable overlidaet al
`
`(US 2015/0303484) in view of Watari et al (US 2004/0234850).
`
`f.
`
`Regarding newly added claim 6, which depends from claim 1, lida teaches an
`
`improved electrode, such as a positive electrode, for use in a secondary battery (e.g. {]
`
`0001, 20, 50, and 82-83), said positive electrode (e.g. item 117) reading on “secondary
`
`battery positive electrode” (claim 1), said positive electrode comprising:
`
`(1)
`
`a current collector (e.g. item 100) comprising a metalfoil (e.g. 103) with a
`
`conductive layer (e.g. item 105) formed on a surface of said metal foil (e.g. {{{[ 0034, 38,
`
`50-53, and 79-80 plus e.g. Figure 2), said metal foil reading on “a positive electrode
`
`current collector” (claim 1);
`
`(2)
`
`an active material layer (e.g. item 115) comprising a positive electrode
`
`active material, said active material layer provided on said conductive layer of said
`
`current collector (e.g. [J 0034, 38, and 82-83), reading on “a positive electrode mixture
`
`layer” (claim 1); and,
`
`

`

`Application/Control Number: 16/659,774
`Art Unit: 1723
`
`Page 9
`
`(3)
`
`said conductive layer formed between said metal foil and said active
`
`material layer (e.g. supra), reading on “an intermediate layer provided between the
`
`positive electrode current collector and the positive electrode mixture layer” (claim 1),
`
`wherein said conductive layer comprises
`
`(3a)
`
`particles of a conductive material (e.g. item 111) in an amountof e.g. 6-50
`
`vol% of said layer, said conductive material may be metal powders, carbon black, furnace
`
`black, acetylene black, and Ketchen black(e.g. {| 0034, 36, 39, 53, 71, and 77-79 plus
`
`e.g. Figure 5), reading on “the intermediate layer comprises: first particles formed of a
`
`conductive agent” and establishing a prima facie case of obviousness of the claimed
`
`range, e.g. MPEP § 214.05(1), reading on “a volumepercentage ofthe first particles in
`
`the intermediate layer is 25% or more and less than 70%” (claim 1) and
`
`(3b)_particles of a non-conductive material (e.g. item 109) in an amountofe.g.
`
`5-30 vol% of said layer, said non-conductive material may be oxides suchassilica,
`
`alumina, titanium oxide, and barium titanate; nitrides such as aluminum nitride and
`
`silicon nitride; ionic crystals such as calcium fluoride and barium sulfate; covalently
`
`bondedcrystals such as silicone and diamond; andparticles of clay such as
`
`montmorillonite (e.g. {9 0025, 34, 39, 73-76, and 79 plus e.g. Figure 5), reading on “the
`
`intermediate layer comprises ... second particles formed of an insulating inorganic
`
`material ...” (claim 1) and establishing a prima facie case of obviousness of the claimed
`
`ranges, e.g. MPEP § 214.05(J), reading on “a volume percentage of the secondparticles
`
`in the intermediate layer is 30% or more and less than 75%”(claim 1).
`
`lida teaches said conductive material may havea particle size preferably in the
`
`range of 10-100 nm (0.01-0.1 um)plus said non-conductive material may have an
`
`

`

`Application/Control Number: 16/659,774
`Art Unit: 1723
`
`Page 10
`
`average particle diameter of preferably 0.1-2 um (e.g. Jf] 0074 and 77), but does not
`
`expressly teach the limitation “the intermediate layer comprises ... second particles...
`
`having an average particle size larger than an average particle size of the first particles”
`
`(claim 1).
`
`However, it would have been obvious to form said conductive material having a
`
`uniform particle size, in order to ensure repeatable manufacturing and properties of said
`
`intermediate layer.
`
`Said conductive material having a uniform particle size in the range of 10-100 nm
`
`(0.01-0.1 um) plus said non-conductive material having an average particle diameter in
`
`the range of 0.1-2 um either overlaps at 0.1 um or has said conductive material having a
`
`uniform particle size of less than the average particle size of said non-conductive
`
`material, thereby either establishing a prima facie case of obviousness of the claimed
`
`relative range “... having an average particle size larger than an averageparticle size...”
`
`or sufficiently close to the claimed relative range to establish a prima facie case of
`
`obviousness, see e.g. MPEP § 2144.05(1), reading on said limitation.
`
`lida does not expressly teach the limitation “a density of the intermediate layeris
`
`more than 1 g/cm? and 2.5 g/cm? orless” (claim 1).
`
`However, Watari teaches a lithium ion secondary battery (Abstract). As illustrated
`
`in Figure 1, Watari teaches that the battery comprises a bonding layer (e.g. item 19)
`
`disposed in between a positive electrode current collector (e.g. item 12) and a positive
`
`electrode mixture layer (e.g. item 13), wherein said bonding layer comprises a conductive
`
`additive material (e.g. {| 0109-110). Watari teaches that controlling the surface density of
`
`the bonding layer allows for a specific balance to be achieved with respect to adhesion
`
`

`

`Application/Control Number: 16/659,774
`Art Unit: 1723
`
`Page 11
`
`and conductivity characteristics and further teaches controlling the thickness of said
`
`bonding layer affects the cycle characteristics and energy density (e.g. 4] 0036 and 57-
`
`59). Specifically, Watari teaches that when the surface density is too high, electrical
`
`conductivity characteristics of the bonding layer are decreased and when the surface
`
`density is too low, adhesion characteristics of the bonding layer are decreased; plus, when
`
`the thickness is too thick, the energy density decreases and whenthe thickness is too thin,
`
`lowers cycle characteristics of discharge capacity (e.g. Id).
`
`Asa result, it would have been obvious to a person of ordinary skill in theart,
`
`through routine experimentation with a reasonable expectation of success, to optimize or
`
`otherwise control the density (e.g. to a value within the instantly claimed range) of the
`
`undercoat layer of Iida as a direct meansof balancing the adhesion,electrical
`
`conductivity characteristics, and energy density of the undercoat layer, as taught by
`
`Watari, given that a surface density which is too high would lead to a decrease in terms of
`
`electrical conductivity characteristics, a surface density which is too low wouldlead to a
`
`decrease in terms of adhesion characteristics, a thickness that is too thick reduces energy
`
`density, and a thickness that is too thin lowers cycle characteristics of discharge capacity,
`
`reading on said limitation.
`
`Still regarding newly added claim 6, said conductive material has a uniform
`
`particle size in the range of 10-100 nm (0.01-0.1 um) plus said non-conductive material
`
`has an average particle diameter in the range of 0.1-2 um (e.g. supra), establishing a
`
`prima facie case of obviousness of the claimed relative ranges, see e.g. MPEP §
`
`2144.05(1), reading on “the average particle size ofthe first particles is 0.03 um or more
`
`

`

`Application/Control Number: 16/659,774
`Art Unit: 1723
`
`Page 12
`
`and 0.05 um orless and the average particle size of the second particles is 0.4 um or
`
`more and 2.0 um orless” (claim 5).
`
`Allowable Subject Matter
`
`10.
`
`Claim 5 is objected to as being dependent upon a rejected base claim, but would be
`
`allowable if rewritten in independentform includingall of the limitations of the base claim and
`
`any intervening claims.
`
`The following is a statement of reasonsfor the indication of allowable subject matter:
`
`none ofthe timely art of record teaches or suggests the claimed intermediate layer located
`
`between the positive electrode mixture layer and positive electrode current collector, wherein
`
`said intermediate layer has the claimed combination of limitations of its relative average particle
`
`sizes, density, and claimed composition including the binder in the amount of 0.1-5 mass%.
`
`Response to Arguments
`
`11.
`
`Applicant's arguments filed January 19, 2022 have been fully considered but they are not
`
`persuasive.
`
`12.
`
`First, the applicants allege the following.
`
`First, regarding the volume percentages in the intermediate layer, the rejection
`points to paragraphs [0069-0070] of Miyazaki for the disclosure of “a plurality of
`conductive additive particles (e.g. item 72) composed of [an alleged conductive
`agent] preferably used in a content in a range of 5 to 50 % based onall the
`materials for the undercoat layer,” reading on “a volume percentage ofthe first
`particles in the intermediate layer is 25% or more andless than 70%”as instantly
`claimed; and paragraphs [0101-0106] of Miyazaki for the disclosure of “a
`plurality of insulating inorganic agentparticles (e.g. item 73) composed of [an
`alleged insulating inorganic material] ... used in a content in a range of 10 to 75%
`based onall the materials for the undercoat layer,” reading on “a volume
`percentage of the second particles in the intermediate layer is 30% or more and
`less than 75%”as instantly claimed.
`
`Applicant notes that in each of the above noted instances of Miyazaki disclosing
`the amountof a particular type of particles in the undercoatlayer, the reference
`does not indicate the percentage in terms of volumeasrecited in present claim 1.
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`Art Unit: 1723
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`Rather, Miyazaki teaches the percentage in terms of mass: “the conductive
`additive is included in a content of preferably 5 to 50 mass% based onall the
`materials for the undercoat layer” (0042) and “[t]he insulating inorganic agent 73
`is preferably used in a content in a range of 10 to 75 mass% based onall
`the materials for the undercoat layer” (0106).
`
`Giventhe difference in unit used in the reference and present claim 1, applicant
`respectfully submits that an apparent overlap between the numberrangestaught
`by Miyazaki and those instantly claimed would not byitself establish a prima
`facie case of obviousness per MPEP 2144.05(D).
`
`(Remarks, at 5:3-6:2, emphasisin the original.)
`
`In response, the examiner respectfully notes that the relationship between mass% and
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`volume% is the density of the components.
`
`Of note, where the densities of the taught conductive additive particles and the taught
`
`insulating inorganic agent particles are the same, the mass% and volume% will be the same.
`
`Wherethe densities thereof are similar, the mass% and volume% will be similar.
`
`Further, the scope of the claimed compositions is broad. The claimed “first particles” is
`
`only limited by “a conductive agent” and the claimed “secondparticles” is only limited by “an
`
`insulating inorganic material.” For example, non-limiting examples expressly taught in the
`
`instant specification include the following.
`
`[0023] Examples of the conductive agent include carbon particles such as carbon
`black (CB), acetylene black (AB), ketjen black, and graphite. These may be used
`singly or in combination of two or more.
`
`[0028] The insulating inorganic material is preferably, for example, an inorganic
`material havingaresistivity of 10! Q-cm or more, and examples thereof include
`metaloxide particles, metal nitride particles, metal fluoride particles, and
`insulating magnetic particles. Examples of the metal oxide particles include
`aluminum oxide, titanium oxide, zirconium oxide, silicon oxide, manganese
`oxide, magnesium oxide, and nickel oxide. Examples of the metal nitride particles
`include boron nitride, aluminum nitride, magnesium nitride, and silicon nitride.
`Examplesof the metal fluoride particles include aluminum fluoride, lithium
`fluoride, sodium fluoride, magnesium fluoride, calcium fluoride, barium fluoride,
`aluminum hydroxide, and boehmite. Examples ofthe insulating magnetic
`particles include Ni—Cu—Znferrite. The insulating inorganic material preferably
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`Art Unit: 1723
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`Page 14
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`includesat least any one of aluminum oxide,titanium oxide, silicon oxide, and
`manganeseoxide, and more preferably includesat least aluminum oxide, from the
`viewpoints such as an insulating property, a high melting point, and lower
`oxidizing powerthan a positive electrode active material. When an internal short
`circuit occurs, the redox reaction between the positive electrode active material
`and the positive electrode current collector 30 (especially the positive electrode
`current collector of aluminum or aluminum alloy) may generate heat, but the
`above redox reaction can be suppressed byusingthe insulating inorganic material
`having lower oxidizing powerthan the positive electrode active material, and thus
`the amountof heat generated by the battery can be suppressed.
`
`(Instant specification, at e.g. J] 0023 and 28, emphasis added.)
`
`Similarly, Miyazaki teaches a broad range of non-limiting example of said conductive
`
`additive particles and said insulating inorganic agent particles.
`
`[0096] The conductive additive 72 is, for example, at least one selected from the
`group consisting of carbon materials such as carbon black, acetylene black and
`ketjen black and metal particulates of iron, nickel, copper, aluminum andthelike.
`
`[0101] The insulating inorganic agent 73 is, for example, at least one selected
`from the group consisting of oxide ceramics, nitride ceramics, other ceramics,
`metal oxides andthelike.
`
`[0102] Examples of the oxide ceramics include zirconia, magnesia, ceria, yttria,
`zine oxide andiron oxide.
`
`[0103] Examples of the nitride ceramics includesilicon nitride, titanium nitride
`and boronnitride.
`
`[0104] Examples of other ceramics include silicon carbide, calcium carbonate,
`aluminum sulfate, potassium titanate, talc, kaolin clay, kaolinite, halloysite,
`pyrophyllite, montmorillonite, sericite, mica, amesite, bentonite, asbestos, zeolite,
`calcium silicate, magnesium silicate, diatomite, ceramics of silica sand or the like,
`and ceramics of glass fiber or the like.
`
`[0105] Examples of the metal oxides include alumina,silica, titanium oxide,
`zirconia, calcium oxide, magnesia, ceria, lanthanum oxide and manganese oxide.
`
`(Miyazaki specification, at e.g. [{] 0096 and 101-105, emphasis added.)
`
`Some ofthe taught compositions have the following densities.
`
`(g/cm?)
`
`(3a) Some taught conductive additive particles reading on the
`claimed “first particle” of “conductive particle”
`
`Density
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`Application/Control Number: 16/659,774
`Art Unit: 1723
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`carbon black
`
`acetylene black
`
`1.7-1.9
`
`
`
`(3b) Some taught insulating inorganic agent particles reading on
`the claimed “second particle” of “insulating inorganic material”
`
`
`
`
`
`2.1boron nitride
`
`This illustrates a variety of taught conductive additive particles and taught insulating
`
`inorganic agent particles that have similar densities. As noted above, where the densities thereof
`
`are similar, the mass% and volume% will be similar.
`
`Further, the taught amount of conductive additive particles is 5 to 50 mass% and the
`
`taught amountof insulating inorganic agentparticles is 10 to 75 mass%, wherein the densities
`
`thereof are similar to one another.
`
`Likewise, the claimed ranges are broad. Here, the claimed volumepercent ranges—25 to
`
`<70 vol% for the first particles and 30 to <75 vol% for the second particles, permitting the
`
`relative difference in taught densities to be greater.
`
`Given the conductive additive composition, such as carbon black or aluminium
`
`conductive additive, has a similar density to that of the insulating inorganic agent, suchassilica
`
`
`or boron nitride; and, the likewise broad breadth of the ranges—the taught amountof conductive
`
`additive particles is 5 to 50 mass% and the taught amountof insulating inorganic agentparticles
`
`is 10 to 75 mass% plus the claimed 25 to <70 vol% for the first particles and 30 to <75 vol% for
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`Art Unit: 1723
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`Page 16
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`the second particles, the finding of a prima facie case of obviousness is properin light of all of
`
`the evidence of record, as providein the prior and instant Office actions.
`
`13.
`
`Second,the applicants allege the following.
`
`Second, regarding the density of the intermediate layer, the rejection cites to
`paragraphs [0036] and [0057-0059] of Watari as teaching control of the surface
`density and thickness of the bonding layer to obtain certain effects in the
`reference device.
`
`Watari teaches a bonding layer in which “a polymerbinder... in the form of
`particles” ({0051) “exists together with the conductive material” (0052). Watari
`states that “[t]he surface density of the particulate polymerbinder in a cross
`section of the bonding layer parallel to the surface of the bondinglayeris
`preferably from 1 to 100/cm2”(0057) (emphasis added), where limiting the
`parameterin the stated range allows “the particulate polymer