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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
`
`16/713,421
`
`12/13/2019
`
`Daisuke Furusawa
`
`P191228US00
`
`6477
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`CARVALHO IR., ARMINDO
`
`1729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/01/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`16/713,421
`Furusawaetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ARMINDO CARVALHO JR.
`1729
`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 21 March 2023.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-2 and 5-10 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 1-2 and 5-10 is/are rejected.
`1) Claim(s)__is/are objectedto.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1... Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230524
`
`

`

`Application/Control Number: 16/713,421
`Art Unit: 1729
`
`Page 2
`
`DETAILED ACTION
`
`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.
`
`Claim Rejections - 35 USC § 103
`
`2.
`
`The text of those sections of Title 35, U.S. Code not includedin this action can
`
`be found in a prior Office action.
`
`3.
`
`Claims 1-2, 5-7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Wanget al. (US 2010/0291442) in view of Ikenuma et al. (US 2016/0111700).
`
`4.
`
`Regarding Claim 1, Wang et al. teaches an electrode for a secondary battery
`
`comprising a conductive support(i.e. current collector) (Fig. 3, #22), a first primer layer
`
`(i.e. a protective layer) (Fig. 3, #24) formed on the conductive support and comprising a
`
`polymeric material (Para. [0005]) and conductivefiller (i.e. conductive agent) (Para.
`
`[0061]) and a positive electroactive material layer formed on the primer layer (Fig. 3,
`
`#30) including a positive electrode active material (Para. [0067]) wherein a binding
`
`agent is not contained in the primer layer (Para. [0094]) and the primer layer comprises
`
`polymethylphenylsiloxane (i.e. silicone resin wherein each R is independently
`
`monovalent hydrocarbon group and x = 2) (Para. [0056)).
`
`Wang etal. further teaches any suitable cathode active species can be used
`
`(Para. [0028]). Wang et al. does not explicitly teach the positive electrode active
`
`material is composedofa lithium-containing transition metal oxide.
`
`However, Ikenuma et al. teaches a positive electrode active material a lithium-
`
`containing transition metal oxide such aslithium cobaltate, lithium nickelate or lithium-
`
`

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`Application/Control Number: 16/713,421
`Art Unit: 1729
`
`Page 3
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`containing complex phosphate with a transition metal of Fe, Ni, Co, Mn (Para. [0104]-
`
`[0105)).
`
`It would have been obvious for one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to have modified Wang etal. to incorporate the
`
`teaching of a positive electrode active material of a lithium-containing transition metal
`
`oxide, as it would provide a positive electrode active material into and from whichlithium
`
`ions can beintercalated and deintercalated (Para. [0103]) and a stable positive
`
`electrode active material providing a highly safe power storage device (Para. [0112]).
`
`There is a reasonable expectation of success both Wang et al. and Ikenuma et al. have
`
`aluminum foil as the current collector (Wang et al. — Para. [0049] & Ikenuma et al. —
`
`Para. [0091]).
`
`Wang etal. further teaches the primer layer comprises polymethylphenylsiloxane
`
`(i.e. an organopolysiloxane having a structural unit including a silicon atom having a
`
`phenyl group as a substituent).
`
`Wang et al. does not explicitly teach a ratio of phenyl groups bondedto silicon
`
`atoms based ona total amount of monovalent hydrocarbon groups bondedtosilicon
`
`atoms.
`
`However, Ikenuma et al. teachesalithium-ion secondary battery (Para. [0122],
`
`lines 8-11) wherein a film comprising a silicone resin (Para. [0071], [0076]) wherein the
`
`silicone includes hydrophobic functional groups such as a phenyl group, as the inclusion
`
`of phenyl groups increases the adhesion to the active material due to hydrophobic
`
`interaction (Para. [0077], lines 9-12). Thus, the teaching of a ratio of phenyl groups
`
`bondedto silicon atoms based on a total amount of monovalent hydrocarbon groups
`
`

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`Application/Control Number: 16/713,421
`Art Unit: 1729
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`Page 4
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`bondedto silicon atoms is recognized as a result effective variable (i.e. a variable that
`
`achieves a recognized result) and changing the ratio of phenyl groups presentis
`
`optimization involving only routine skill in the art.
`
`lt has been held that when the general conditions are disclosed in the art,
`
`discovering the optimum or workable ranges involves only routine skill in the art. In re
`
`Aller, 105 USPQ 233 (See MPEP §2144.05).
`
`Absent any showing ofcritical or unexpected results, such limitations appearto
`
`be routine optimization within the skill of the ordinary artisan before the effective filing
`
`date of the invention are therefore prima facie obvious.
`
`5.
`
`Regarding Claim 2, Wang etal. as modified by Ikenuma et al. teachesall of the
`
`elements of the current invention in claim 1 as explained above.
`
`Wang et al. teaches the primer layer comprises polymethylphenylsiloxane (i.e. R
`
`is a phenyl group and a methyl group).
`
`6.
`
`Regarding Claim 5, Wang et al. as modified by Ikenuma etal. teachesall of the
`
`elements of the current invention in claim 1 as explained above.
`
`Wang et al. teaches the primer layer comprises polymethylphenylsiloxane (i.e. an
`
`organopolysiloxane silicone resin comprising hydroxyl and hydrolyzable functional
`
`groups bondedto a silicon atom in a molecule).
`
`Regarding the content of the hydroxyl groups and the hydrolyzable function
`
`groups, Wang etal. further teaches the hydroxyl-containing polymer may have varying
`
`levels of hydrolysis (thereby including varying amounts of hydroxyl groups), and a
`
`greater degree of hydrolysis may allow better adhesion of the hydroxyl-containing
`
`material to a conductive support, and in some cases may cause the polymer to be less
`
`

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`Application/Control Number: 16/713,421
`Art Unit: 1729
`
`Page 5
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`soluble in the electrolyte. Thus, a content of the hydroxyl groups and the hydrolyzable
`
`functional groups is recognized as a result effective variable (i.e. a variable that
`
`achieves a recognized result) and changing the content of the hydroxyl groups and the
`
`hydrolyzable groups is optimization involving only routine skill in the art.
`
`lt has been held that when the general conditions are disclosedin the art,
`
`discovering the optimum or workable ranges involves only routine skill in the art. In re
`
`Aller, 105 USPQ 233 (See MPEP §2144.05).
`
`Absent any showing ofcritical or unexpected results, such limitations appearto
`
`be routine optimization within the skill of the ordinary artisan before the effectivefiling
`
`date of the invention are therefore prima facie obvious.
`
`7.
`
`Regarding Claim 6, Wang et al. as modified by Ikenuma etal. teachesall of the
`
`elements of the current invention in claim 1 as explained above.
`
`Wang etal. further teaches the primer layer (i.e. protective layer) has a thickness
`
`from 5-10 micrometers (within the range of the instant claim) (Para. [0060])
`
`8.
`
`Regarding Claim 7, Wang et al. as modified by Ikenuma etal. teachesall of the
`
`elements of the current invention in claim 1 as explained above.
`
`Wang et al. teaches the conductive support (i.e. conductive agent) is 5.4 wt%
`
`(carbon black, Para. [0094}) (i.e. within the claimed conductive agent range) and the
`
`polymeric material (in this case, the silicon resin) is included in a range of 20-90 wt%
`
`(overlapping with the claimed range).
`
`In the case where the claimed ranges “overlap or lie inside ranges disclosed by
`
`the prior art” a prima facie case of obviousnessexists. /n re Wertheim, 541 F.2d 257,
`
`

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`Application/Control Number: 16/713,421
`Art Unit: 1729
`
`Page 6
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`191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.
`
`Cir. 1990).” See MPEP §2144.05(I).
`
`9.
`
`Regarding Claim 10, Wanget al. as modified by Ikenuma et al. teachesall of the
`
`elements of the positive electrode in claim 1 as explained above.
`
`Wang etal. further teaches a secondary battery, a negative electrode and an
`
`electrolyte (Para. [0011], [0096)).
`
`10.
`
`Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Wang et al. (US 2010/0291442) in view of Ikenuma et al. (US 2016/0111700) as applied
`
`to claim 1 above, and further in view of Hinoki et al. (US 2010/0248026).
`
`11.
`
`Regarding Claim 8, Wang et al. as modified by Ikenuma etal. teachesall of the
`
`elements of the current invention in claim 1 as explained above.
`
`Wang et al. as modified by Ikenuma etal. does not teach the protective later
`
`includes inorganic compound particles.
`
`However, Hinoki et al. further teaches a second invention wherein a protective
`
`layer containing an organic particle an inorganic particle comprises a ratio of a content
`
`of the inorganic particle in the protecting layer from 1:1 to 1:4 (Para. [0029)).
`
`Since Hinoki et al. discloses several embodiments in a single disclosure, it would
`
`be within the skill of one of ordinary skill in the art to look to the additional embodiments
`
`disclosed by Hinoki et al. to provide additional functionality to the protecting layer.
`
`Additionally, it would have been obvious for one of ordinary skill in the art before the
`
`effective filing date of the claimed invention to have modified Wang et al. as modified by
`
`Hinoki et al. to incorporate the teaching of inorganic particles, as it would provide
`
`sufficient shutdown function without degrading characteristics of a battery, and
`
`

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`Application/Control Number: 16/713,421
`Art Unit: 1729
`
`Page 7
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`shrinkage during heat-up time can be sufficiently suppressed as the inorganic particle
`
`does not melt and remains asit is, sufficiently reducing impedance (Para. [0030)).
`
`12.
`
`Regarding Claim 9, Wang et al. as modified by Ikenuma etal. teachesall of the
`
`elements of the current invention in claim 8 as explained above.
`
`Wang et al. teaches the conductive support(i.e. conductive agent) is 5.4 wt%
`
`(carbon black, Para. [0094]) (i.e. within the claimed conductive agent range) and the
`
`polymeric material (in this case, the silicon resin) is included in a range of 20-90 wt%
`
`(overlapping with the claimed range).
`
`Wang et al. does not teach inorganic compound particles in the primer layer.
`
`However, Hinoki et al. further teaches a second invention wherein a protective
`
`layer containing an organic particle an inorganic particle comprises a ratio of a content
`
`of the inorganic particle in the protecting layer from 1:1 to 1:4 (Para. [0029)).
`
`Since Hinoki et al. discloses several embodimentsin a single disclosure, it would
`
`be within the skill of one of ordinary skill in the art to look to the additional embodiments
`
`disclosed by Hinoki et al. to provide additional functionality to the protecting layer.
`
`Additionally, it would have been obvious for one of ordinary skill in the art before the
`
`effective filing date of the claimed invention to have modified Wang et al. as modified by
`
`Hinoki et al. to incorporate the teaching of the ratio of organic particles to inorganic
`
`particles , as it would provide sufficient shutdownfunction without degrading
`
`characteristics of a battery, and shrinkage during heat-up time can be sufficiently
`
`suppressed asthe inorganic particle does not melt and remains asit is, sufficiently
`
`reducing impedance (Para. [0030]). The combination of the ratio of organic particles to
`
`inorganic particles, for example 1:1, would result in equal parts of the organic silicone
`
`

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`Application/Control Number: 16/713,421
`Art Unit: 1729
`
`Page 8
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`resin (see section “4.” above for details regarding the silicone resin, not reiterated herein
`
`for brevity’s sake) and the inorganic particle. As Wang et al. teaches the conductive
`
`support (i.e. conductive agent) is 5.4 wt% (carbon black, Para. [0094]) the silicone resin
`
`and the inorganic compound particles in Wang et al. as modified by Hinoki et al. would
`
`each have a content range of about 47.3 wt%, within the claimed ranges for both the
`
`silicone resin and the inorganic compound particles.
`
`Responseto Arguments
`
`13.
`
`Applicant's arguments filed March 21, 2023 have been fully considered but they
`
`are not persuasive.
`
`Applicant argues there is no evidence that Wang in view of Ikenuma that
`
`incorporating a phenyl group containing silicon resin into a positive electrode to
`
`obtained improvement in adhesion as a result-effective variable within the claimed
`
`range, as it creates adhesion to a negative electrode active material and there is no
`
`mention of an amount of phenyl, or range.
`
`Examiner respectfully disagrees. A prima facie case of obviousness may be
`
`established even though a prior art reference does not disclose any particular range, but
`
`teaches that the claimed parameters are knownto affect results or properties. See /n re
`
`Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)(D]iscovery of an optimum value
`
`of a result effective variable...is ordinarily within the skill of the art.”). In this case,
`
`Ikenuma et al. teaches the inclusion of phenyl groups increases the adhesion to the
`
`active material particles 111 due to hydrophobic interaction (Para. [0077], lines 9-12)
`
`wherein the active material particles 111 are positive electrode active material particles
`
`(Para. [0066], lines 10-15). Thus, the teaching is applicable to a positive electrode and a
`
`

`

`Application/Control Number: 16/713,421
`Art Unit: 1729
`
`Page 9
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`ratio (or amount) of phenyl groups bondedto silicon atoms based ona total amount of
`
`monovalent hydrocarbon groups bondedtosilicon atoms is knownto affect adhesion.
`
`Wang et al. teaches adhesivenessis a desirable property of the polymer (Para. [0056])
`
`and the positive electroactive material may be a transition metal chalcogenide (Para.
`
`[0067]) wherein Ikenuma et al. also teaches the positive electrode active material may
`
`be a transition metal chalcogenide (Para. [0107]) and thus, there is a reasonable
`
`expectation of success.
`
`Applicant argues Wang is not specifically directed to a polyorganosiloxane with a
`
`phenyl group asit is mentioned as only one possible group of polymers for the primer.
`
`Examiner respectfully disagrees. A reference may berelied upon for all thatit
`
`would have reasonably suggestedto one having ordinary skill the art, including
`
`nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10
`
`USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Disclosed examples and
`
`preferred embodiments do not constitute a teaching away from a broader disclosure or
`
`nonpreferred embodiments. See MPEP §2123.
`
`Applicant argues Ikenuma teaches the silicone in Ikenuma is within a film located
`
`within the active material layer contrary to the claimed invention.
`
`The argument is not commensurate in scope with the rejection of record. Wang et
`
`al. is relied upon for teaching the primer layer comprises polymethylphenylsiloxane (Para.
`
`[0056]) and thusasilicon resin and a conducting agent in a protective layer formed on a
`
`current collector
`
`is taught
`
`(Para.
`
`[0061]). Therefore,
`
`the Examiner maintains the
`
`obviousnessrejections and upholds the rejection to the independent claim, as above.
`
`

`

`Application/Control Number: 16/713,421
`Art Unit: 1729
`
`Page 10
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`Applicant argues that the dependentclaims are distinct from the prior art of record
`
`for the same reason as the independent claim.
`
`Examiner respectfully disagrees. The rejection with respect to the independent
`
`claim has been maintained, and thus the rejections to the dependent claims are
`
`maintained as well.
`
`Conclusion
`
`14.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`A shortenedstatutory period for reply to this final action is set to expire THREE
`
`
`
`MONTHS from the mailing date of this action. In the eventafirst reply is filed within
`
`TWO MONTHS ofthe mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortenedstatutory period, then the
`
`shortenedstatutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the mailing date ofthis final action.
`
`15.—Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ARMINDO CARVALHO JR. whosetelephone number is
`
`(571)272-5292. The examiner can normally be reached Monday-Thursday 7:30a.m.-
`
`5p.m..
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`

`

`Application/Control Number: 16/713,421
`Art Unit: 1729
`
`Page 11
`
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`
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`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Ula Ruddock can be reached on 571 272-1481. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of published or unpublished applications may be
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`obtained from Patent Center. Unpublished application information in Patent Center is
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`available to registered users. To file and manage patent submissions in Patent Center,
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`
`/A.C./
`Examiner, Art Unit 1729
`
`/ULA C RUDDOCK/
`Supervisory Patent Examiner, Art Unit 1729
`
`