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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
`
`16/744,574
`
`01/16/2020
`
`Yuji Oura
`
`P191345US00
`
`4396
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`KOROVINA, ANNA
`
`ART UNIT
`1729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/27/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-16 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 1-14 and 16 is/are withdrawn from consideration.
`() Claim(s)__ is/are allowed.
`Claim(s) 1-7 and 15 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`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 Papers
`10)() The specification is objected to by the Examiner.
`11) The drawing(s)filed on 16 January 2020 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 been received 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 10 February 2020.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20211013
`
`Application No.
`Applicant(s)
`16/744,574
`Oura et al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ANNA KOROVINA
`1729
`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 23 September 2021.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/744,574
`Art Unit: 1729
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Election/Restrictions
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`2.
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`Applicant’s election without traverse of Species | (claims 1-7, 15; Fig. 2) in the
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`reply filed on 23 September 2021 is acknowledged. Claims 8-14, and 16 are withdrawn
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`from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected
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`group, there being no allowable generic or linking claim. Election was made without
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`traverse in the reply filed on 23 September 2021.
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`3.
`
`Claims 1-16 are pending with claims 1-7 and 15 being considered in the present
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`Office action.
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`Claim Rejections - 35 USC § 103
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`4.
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`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
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`

`

`Application/Control Number: 16/744,574
`Art Unit: 1729
`
`Page 3
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`5.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousnessrejections setforth 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 beforethe 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 manner in which the invention was made.
`
`6.
`
`The factual inquiries for establishing a background for determining obviousness
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`under 35 U.S.C. 103 are summarized asfollows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence presentin the application indicating
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`obviousness or nonobviousness.
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`7.
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`Claims 1-7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over
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`lida et al. (US 2015/0303484) in view of Takeuchi et al. (WO 2012/128274, machine
`
`translation provided), and Sugie et al. (JP 2000-269095, machine translation provided),
`
`hereinafter lida, Takeuchi and Sugie.
`
`Regarding Claims1, and 15, lida teaches a secondary battery comprising a
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`positive electrode, a negative electrode: and anelectrolyte (see title, paras. [0001],
`
`[0018], [0050], [0083]-[0084], [0116]-[0121]); the positive electrode of the secondary
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`battery comprises a positive electrode current collector (103), an intermediate layer
`
`(105) provided the positive electrode current collector (103), and a positive electrode
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`mixture layer (115) including a positive electrode active material (e.g., LiMnzOa,in para.
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`

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`Application/Control Number: 16/744,574
`Art Unit: 1729
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`Page 4
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`[0117], see also para. [0083] for more examples), wherein the intermediate layer (i.e.,
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`conductive layer 105 is a PTC layer) includes conductive agent particles (111) and
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`inorganic material particles (109), see e.g., Figs. 1, 5 and paras. [0038]-[0039], [(0049]-
`
`[0053], and [0073]-[0085).
`
`Regarding Claim 6, lida teachesthe inorganic particles 109 have a particle
`
`diameter between 0.001 um to 10 um, which overlaps with 0.2 um to 1.0 um, see e.g.,
`
`para. [0074]. In the case wherethe claimed ranges "overlap or lie inside ranges
`
`disclosed bythe prior art" a prima facie case of obviousnessexists. In re Wertheim, 541
`
`F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d
`
`1934 (Fed. Cir. 1990). Similarly, A prima facie case of obviousness exists where the
`
`claimed ranges or amounts do notoverlap with the prior art but are merely close.
`
`Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779
`
`(Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of
`
`"having 0.8%nickel, 0.3% molybdenum, up to 0.1%iron, balance titanium" as obvious
`
`over a referencedisclosing alloys of 0.75%nickel, 0.25% molybdenum, balance
`
`titanium and 0.94%nickel, 0.31% molybdenum, balance titanium. "The proportions are
`
`so close that prima facie one skilled in the art would have expected them to have the
`
`same properties."). See MPEP 2144.05. I.
`
`Regarding Claim 7,lida teaches the inorganic particles 109 are at least one of
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`the group consisting metal oxides particles (e.g., silica, alumina, and titanium oxide),
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`metal nitride particles (e.g., aluminum nitride, silicon nitride) and metal fluoride (e.g.,
`
`calcium fluoride), see e.g., para. [0073]. "Products of identical chemical composition can
`
`not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d
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`

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`Application/Control Number: 16/744,574
`Art Unit: 1729
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`Page 5
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`1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
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`Therefore, if the prior art teaches the identical chemical structure, the properties
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`applicant discloses and/or claims are necessarily present. See MPEP 2112.01. lida
`
`discloses the same chemical composition recited in the instant specification (e.g.,
`
`[0027]) thus inherently teaches the claimed property (i.e., resistivity of 10'*Q cm or
`
`more).
`
`Regarding Claims 1-3, lida does not teach the metal foil current collector 103
`
`has irregularities having a depth on the surface thereof; thus, lida does not teach the
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`intermediate layer on the irregularities of the current collector or the average depth of
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`the irregularities is 0.6 um or more and 2.0 um or less.
`
`Regarding Claims1, 4, and 5, lida teachesthe inorganic particles have a
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`particle diameter between 0.001 um to 10 um, see e.g., para. [0074] and the particle
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`size of the conductive agent particles is 10 nm to 100 nm, see e.g., para. [0077];
`
`however, since lida does not teach the irregularities on the current collector, or depth
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`thereof, lida does not teach a ratio of a median particle diameter of the conductive agent
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`particles to an average depth ofthe irregularities of the positive electrode current
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`collector and a ratio of a median particle diameter of the inorganic material particles to
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`the average depth of the irregularities of the positive electrode current collector are both
`
`5:6 or less (0.833 or less). Similarly, lida does not teach the ratio of the medial particle
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`diameter of the inorganic material particles to the average depth ofthe irregularities of
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`the positive electrode current collector is 5:20 or more (0.25 or more) or that the ratio of
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`a median particle diameter of the inorganic material particles to the average depth of the
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`

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`Application/Control Number: 16/744,574
`Art Unit: 1729
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`Page 6
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`irregularities of the positive electrode current collector are both 5:8 or less (0.625 or
`
`less).
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`However, Takeuchi teaches a current collector 3 with irregularities thereon (see
`
`Fig. 4 which shows concave recesses and convex portions). Takeuchi teaches an
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`intermediate layer (PTC layer 2), comprising conductive particles 12 (e.g., carbon) and
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`PTC powder 13 (e.g., barium titanate), on the irregularities of the current collector; the
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`active material layer (1), comprising active material particles 11 and carbon 4, is placed
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`on the intermediate layer (2), see e.g., Fig. 4 and lines 93-140, 207-215, and 264-270 .
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`The conductive particles and PTC powder both have a particle size (i.e., 0.05 um and
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`0.15 um, respectively, see e.g., lines 231-238) smaller than the roughening interval Rsm
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`(2.4 um) of the current collector, such that the carbon and PTC powder canfill the
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`recesses of the roughened surface to improve the conductivity of the active material
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`layer, suppresses the increasein internal resistance during normal use, and to more
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`effectively cut the current due an increasein electrical resistance when the battery
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`temperature rises, thereby improving safety, see e.g.,
`
`lines 137-140, 152-0162, and
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`239-252.
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`Further, Sugie teaches a currentcollector 1 with irregularities/unevenness has
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`increased contact area and provides enhanced adhesion, see e.g., paras. [0009]-
`
`[0011]. The depth of the concave portion of the irregularities is about 0.5 um to 2 um on
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`average, see e.g., para. [0011], and para. [0017]. Sugie forms an intermediate layer
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`(carbon black layer 2) between the current collector 1 and an active material layer 3.
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`The particles (e.g., carbon) of the intermediate layer 2 are smaller (i.e., 0.1 um or less,
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`see e.g., para. [(0012]) than the size of the irregularities/unevennessof the current
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`

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`Application/Control Number: 16/744,574
`Art Unit: 1729
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`Page 7
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`collector 1 (0.5 um to 2 um) such that the particles of the intermediate layer are allowed
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`to enter and fill the concave portions of the unevenness, see e.g., para. [0009]. The
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`intermediate layer 2 on the uneven surface of the current collector has improved
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`adhesion and increased contact area with the current collector from the unevennessof
`
`the current collector; therefore, the contact resistance at the interface between the
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`current collector surface and the active material layer can be reduced, which can
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`effectively reduce internal resistance, see e.g., para. [0009].
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`It would be obvious to one having ordinary skill in the art the current collector of
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`lida includes irregularities since they would advantageously improve the adhesion of the
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`intermediate layer of lida to the current collector. Moreover, the increased contact area
`
`of the current collector would be appreciated by lida to reduce the contact resistance
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`between the current collector and active material layer. It would be obvious to one
`
`having ordinary skill in the art the irregularities of the current collector have a depth(i.e.,
`
`0.5 um to 2 um, as suggested by Sugie) greater than the particles of the conductive
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`agent and inorganic particles of lida (10 nm to 100 nm and 0.001 um to 10 um,
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`respectively) for the same reasons noted above(i.e., improve adhesion, reduce contact
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`resistance), but also because having the PTC layer oflida in the recessesof the current
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`collector allows for the PTC layer to more effective cut off the current due an increase in
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`electrical resistance when the battery temperature rises, thereby improving safety, as
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`suggested by Takeuchi in lines 239-252.
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`The particle diameter values and depth suggestedin the prior art (i.e., lida,
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`Takeuchi and Sugie) overlaps with the claimed range, or is close. For example, a ratio
`
`of the conductive agent particle diameter (0.05 uum (which is between the range of 10
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`

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`Application/Control Number: 16/744,574
`Art Unit: 1729
`
`Page 8
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`nm to 100 nm), see lida, para. [0077]) to the average depth (1 um, see e.g., para.
`
`[0017] of Sugie) is about 0.05, which overlaps with the claimed ratio of 5:6 (i.e., 0.833 or
`
`less); similarly, a ratio of the inorganic material particle diameter (0.3 um (which is
`
`between the range of 0.001 um to 10 um), see lida, para. [0074]) to the average depth
`
`(1 um, see e.g., para. [0017] of Sugie) is about 0.3, which overlaps with the claimed
`
`ratio of 5:6 (i.e., 0.833 or less), 5:20 or more (0.25 or more), and 5:8 or less (0.625 or
`
`less). In the case where the claimed ranges "overlapor lie inside ranges disclosed by
`
`the prior art" a prima facie case of obviousnessexists. In re Wertheim, 541 F.2d 257,
`
`191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.
`
`Cir. 1990). Similarly, A prima facie case of obviousness exists where the claimed
`
`ranges or amounts do not overlap with the prior art but are merely close. Titanium
`
`Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir.
`
`1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8%
`
`nickel, 0.3% molybdenum, up to 0.1%iron, balance titanium" as obvious over a
`
`reference disclosing alloys of 0.75%nickel, 0.25% molybdenum, balance titanium and
`
`0.94%nickel, 0.31% molybdenum, balancetitanium. "The proportions are so close that
`
`prima facie one skilled in the art would have expected them to have the same
`
`properties."). See MPEP 2144.05. I.
`
`Considering the PTC layer of lida includes resin and inorganic particles of e.g.,
`
`silica, alumina, etc., which have high resistivity (See e.g., rejection of instant claim 7),
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`and the PTC layer is intended to cut off the current (see e.g., para. [0044], [0132), the
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`intermediate layer (i.e., PTC layer) of lida is expected to have higher resistance than the
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`positive electrode active material to function as the current cut off mechanism.
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`

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`Application/Control Number: 16/744,574
`Art Unit: 1729
`
`Page 9
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`Conclusion
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`8.
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ANNA KOROVINA whosetelephone number is
`
`(571)272-9835. The examiner can normally be reached M-Th 7am - 6 pm.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Ula Ruddock can be reached on 5712721481. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
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`
`/ANNA KOROVINA/
`Examiner, Art Unit 1729
`
`/ULA C RUDDOCK/
`Supervisory Patent Examiner, Art Unit 1729
`
`