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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
`
`16/771,053
`
`06/09/2020
`
`Yuko Ogawa
`
`P200475US00
`
`8933
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`DOUYETTE, KENNETH J
`
`1725
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/14/2022
`
`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)
`
`

`

`
`
`Disposition of Claims*
`1.and 3-10 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`is/are withdrawn from consideration.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 and 3-10 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)M The drawing(s) filed on 6/9/2020 is/are: a) accepted or b){_J 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)[M) 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) All
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.4% 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 8/4/2020.
`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 20220128
`
`Application No.
`Applicant(s)
`16/771 ,053
`Ogawaetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`KENNETH J DOUYETTE
`1725
`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)C) Responsive to communication(s) filed on
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)C) This action is FINAL. 2b)¥)This action is non-final.
`3)0) 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\() 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: 16/771,053
`Art Unit: 1725
`
`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 § 112
`
`2.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—The specification shall conclude with one or more claims particularly
`pointing outand distinctlyclaiming the subject matter whichthe inventor or a jointinventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specifications hall conclude with one or more claims particulary pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`3.
`
`Claims 1 and 3-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-
`
`AIA), second paragraph, as being indefinite for failing to particularly point out and
`
`distinctly claim the subject matter which the inventor or a joint inventor (or for
`
`applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
`
`4.
`
`Claim 1 recites the limitation "the other side"in line 3. There is insufficient
`
`antecedent basis for this limitation in the claim. For the purposesofthis office action
`
`“the other side” will be interpreted as “an other side” or “another side”. Further, claims
`
`3-10 are rejected since they depend from claim 1.
`
`5.
`
`Claim 1 recites the limitation "the product P2T2” and “the product P1T1" in lines
`
`13 and 14, respectively. There is insufficient antecedent basis for this limitation in the
`
`

`

`Application/Control Number: 16/771,053
`Art Unit: 1725
`
`Page 3
`
`claim. For the purposes of this office action, “the product P2T2” will be interpreted as “a
`
`product P2T2” and “the product P1T1” will be interpreted as “a product P1T1”. Further,
`
`claims 3-10 are rejected since they depend from claim 1.
`
`6.
`
`Claim 5 recites the limitation "the thickness of the heat resistant layer" in line 3.
`
`There is insufficient antecedent basis for this limitation in the claim. For the purposes of
`
`this office action, “the thickness of the heat resistant layer” will be interpreted as “a
`
`thickness of the heat resistant layer’.
`
`Claim Rejections - 35 USC § 103
`
`7.
`
`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 groundof
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`8.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis forall
`
`obviousness rejections set forth in this Office action:
`
`Apatent for a claimed invention maynotbe obtained, notwithstanding thatthe claimed
`invention is not identicallydisclosed as set forth insection 102, if the differences between the
`claimed invention and the prior artare 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
`ordinaryskill inthe art to which the claimed invention pertains. Patentabilityshall notbe
`negated by the manner in whichthe invention was made.
`
`9.
`
`The factual inquiries for establishing a background for determining obviousness
`
`under 35 U.S.C. 103 are summarizedas follows:
`
`1. Determining the scope and contents of the prior art.
`
`

`

`Application/Control Number: 16/771,053
`Art Unit: 1725
`
`Page 4
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating
`
`obviousness or nonobviousness.
`
`10.
`
`This application currently namesjoint inventors.
`
`In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was
`
`commonly ownedasof 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
`
`point out the inventor and effective filing dates of each claim that was not commonly
`
`ownedasof the effective filing date of the later invention in order for the examiner to
`
`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
`
`prior art against the later invention.
`
`11.
`
`Claims 1 and 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Hiroyoshi (JP 2013/218913, see Machine Translation).
`
`Regarding claims 1, 5 and 10, Hiroyoshi discloses in Figs 1-8, a secondary battery
`
`(ref 10) comprising an electrode assembly (ref 20) comprising a positive electrode (ref
`
`30), a negative electrode (ref 50), a first separator (ref 70A) disposed on one side of
`
`surface (Fig 4) of the negative electrode (ref 50) and having a thickness T1 (Figs 4, 5),
`
`and a second separator (Fig 70B) disposed on an other side of surface (Figs 4, 5) of the
`
`negative electrode (Fig 50) and having a thickness T2 (Figs 4, 5), wherein the thickness
`
`T2 of the second separator is larger tlian the thickness T1 of the first separator, the first
`
`separator (ref 70A) comprisesa first porous film ([0056], [0058], [0078]) having a
`
`porosity P1 ([0056], [0058], [0078]), the second separator (ref 70B) comprises a second
`
`

`

`Application/Control Number: 16/771,053
`Art Unit: 1725
`
`Page 5
`
`porous film ([0056], [0058], [0078]) having a porosity P2 ([0056], [0058], [0078]), at least
`
`one ofthe first separator (ref 70A) and the second separator (ref 70B) comprises a heat
`
`resistant laver (multiple refs 74, Figs 4, 5), the positive electrode (ref 30), the first
`
`separator (ref 70A), the negative electrode (ref 50) and the second separator (ref 70B)
`
`are wound together ([0030], Figs 4, 5) in such a manner that the first separator (Fig
`
`70A) is arranged on an outer side (Figs 4, 5) and the second separator (ref 70B) is
`
`arranged on an inner side (Figs 4, 5), wherein the first separator (ref 70A) and the
`
`second separator (ref 70B) each comprise the heat resistant layer (refs 74 on both, Figs
`
`4, 5).
`
`Hiroyoshi does not explicitly disclose a product P2T2 of the porosity P2 of the
`
`second porous film multiplied by the thickness T2 of the second separator is larger than
`
`a product PITI of the porosity P1 of time first porous film multiplied by the thickness T1
`
`of the first separator nor the product P1T1 and P2T2 satisfy the ratio set in claim 10,
`
`and the thickness of the heat resistant layer in the second separatoris larger than the
`
`thickness of the heat resistant layer in the first separator.
`
`As the battery dimensions/durability and performance are variables that can be
`
`modified, among others, by adjusting said thickness and porosity of the first and second
`
`separators relative to one another, with said battery dimensions/durability and
`
`performance both varying as the thickness and porosity of the first and second
`
`separators relative to one another is varied (see Hiroyoshi, [0028], [0056], [0058],
`
`[0061]), the precise thickness and porosity of the first and second separatorsrelative to
`
`one another would have been considered a result effective variable by one having
`
`ordinary skill
`
`in the art at the time the invention wasfiled. As such, without showing
`
`

`

`Application/Control Number: 16/771,053
`Art Unit: 1725
`
`Page 6
`
`unexpected results, the claimed thickness and porosity of the first and second
`
`separators relative to one another cannot be considered critical. Accordingly, one of
`
`ordinary skill
`
`in the art at the time the invention was filed would have optimized, by
`
`routine experimentation,
`
`the thickness and porosity of the first and second separators
`
`relative to one another in the apparatus of Hiroyoshi to obtain the desired balance
`
`between the battery dimensions/durability and performance (/n re Boesch, 617 F.2d.
`
`272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general
`
`conditions of the claim are disclosedin the prior art, discovering the optimum or
`
`workable ranges involves only routine skill in the art. (/n re Aller, 105 USPQ 223).
`
`Regarding claim 3, modified Hiroyoshi disclosesall of the claim limitations as set
`
`forth above and also discloses the heat resistant layer (refs 74) is arranged in opposed
`
`relation (Figs 4, 5) with time positive electrode (ref 50).
`
`Regarding claim 4, modified Hiroyoshi disclosesall of the claim limitations as set
`
`forth above and also discloses the heat resistant layer (ref 74) is arranged in opposed
`
`relation (Figs 4, 5) with the negative electrode (ref 50).
`
`Regarding claim 6, modified Hiroyoshi disclosesall of the claim limitations as set
`
`forth above and also discloses the heat resistant layer (refs 74) comprises a heat
`
`resistant resin ([0057]-[0059]).
`
`

`

`Application/Control Number: 16/771,053
`Art Unit: 1725
`
`Page 7
`
`Regarding claim 7, modified Hiroyoshi disclosesall of the claim limitations as set
`
`forth above and also discloses the heat resistant layer (refs 74) comprises an inorganic
`
`filler ([0059]) and a resin binder ([0059)).
`
`Regarding claim 8, modified Hiroyoshi disclosesall of the claim limitations as set
`
`forth above and also discloses the negative electrode (ref 50) comprises a carbon
`
`material ([0051], [0052]) and a silicon material ([0051], [0052]) as negative electrode
`
`active materials ([0051], [0052]).
`
`Regarding claim 9, modified Hiroyoshi disclosesall of the claim limitations as set
`
`forth above and also discloses the second separator (ref 70B) includes the heat
`
`resistant layer (refs 74) and the heat resistant layer (ref 74) is arranged in opposed
`
`relation (Figs 4, 5) with the positive electrode (ref 30).
`
`12.
`
`Claims 1 and 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Hiroyoshi (JP 2013/218913, see Machine Translation) in view of lwase (US
`
`2016/0276643).
`
`Regarding claims 1, 5 and 10, Hiroyoshi discloses in Figs 1-8, a secondary battery
`
`(ref 10) comprising an electrode assembly (ref 20) comprising a positive electrode (ref
`
`30), a negative electrode (ref 50), a first separator (ref 70A) disposed on one side of
`
`surface (Fig 4) of the negative electrode (ref 50) and having a thickness T1 (Figs 4, 5),
`
`and a second separator (Fig 70B) disposed on an other side of surface (Figs 4, 5) of the
`
`negative electrode (Fig 50) and having a thickness T2 (Figs 4, 5), wherein the thickness
`
`

`

`Application/Control Number: 16/771,053
`Art Unit: 1725
`
`Page 8
`
`T2 of the second separator is larger tlian the thickness T1 of the first separator, the first
`
`separator (ref 70A) comprisesa first porous film ([0056], [0058], [0078]) having a
`
`porosity P1 ([0056], [0058], [0078]), the second separator (ref 70B) comprises a second
`
`porous film ([0056], [0058], [0078]) having a porosity P2 ([0056], [0058], [0078]), at least
`
`one ofthe first separator (ref 70A) and the second separator (ref 70B) comprises a heat
`
`resistant laver (multiple refs 74, Figs 4, 5), the positive electrode (ref 30), the first
`
`separator (ref 70A), the negative electrode (ref 50) and the second separator (ref 70B)
`
`are wound together ([0030], Figs 4, 5) in such a manner that the first separator (Fig
`
`70A) is arranged on an outer side (Figs 4, 5) and the second separator (ref 70B) is
`
`arranged on an inner side (Figs 4, 5), wherein the first separator (ref 70A) and the
`
`second separator (ref 70B) each comprise the heat resistant layer (refs 74 on both, Figs
`
`4, 5).
`
`Hiroyoshi does not explicitly disclose a product P2T2 of the porosity P2 of the
`
`second porous film multiplied by the thickness T2 of the second separator is larger than
`
`a product PITI of the porosity P1 of time first porous film multiplied by the thickness T1
`
`of the first separator nor the product P1T1 and P2T2 satisfy the ratio set in claim 10,
`
`and the thickness of the heat resistant layer in the second separatoris larger than the
`
`thickness of the heat resistant layer in the first separator.
`
`As the battery safety and performance are variables that can be modified, among
`
`others, by adjusting said thickness and porosity of the first and second separators
`
`relative to one another, with said battery safety and performance both varying as the
`
`thickness and porosity of the first and second separators relative to one anotheris
`
`varied (see lwase, [0008]-[0015],
`
`[0048]-[0052]), the precise thickness and porosity of
`
`

`

`Application/Control Number: 16/771,053
`Art Unit: 1725
`
`Page 9
`
`the first and second separators relative to one another would have been considered a
`
`result effective variable by one having ordinary skill in the art at the time the invention
`
`wasfiled. As such, without showing unexpected results, the claimed thickness and
`
`porosity of the first and second separators relative to one another cannot be considered
`
`critical. Accordingly, one of ordinary skill in the art at the time the invention wasfiled
`
`would have optimized, by routine experimentation,
`
`the thickness and porosity of the first
`
`and second separators relative to one another in the apparatus of Hiroyoshi as taught
`
`by lwase to obtain the desired balance between the battery safety and performance (/n
`
`re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that
`
`where the general conditions of the claim are disclosed in the prior art, discovering the
`
`optimum or workable ranges involves only routine skill
`
`in the art. (/n re Aller, 105 USPQ
`
`223).
`
`Regarding claim 3, modified Hiroyoshi disclosesall of the claim limitations as set
`
`forth above and also discloses the heat resistant layer (refs 74) is arranged in opposed
`
`relation (Figs 4, 5) with time positive electrode (ref 50).
`
`Regarding claim 4, modified Hiroyoshi disclosesall of the claim limitations as set
`
`forth above and also discloses the heat resistant layer (ref 74) is arranged in opposed
`
`relation (Figs 4, 5) with the negative electrode (ref 50).
`
`

`

`Application/Control Number: 16/771,053
`Art Unit: 1725
`
`Page 10
`
`Regarding claim 6, modified Hiroyoshi disclosesall of the claim limitations as set
`
`forth above and also discloses the heat resistant layer (refs 74) comprises a heat
`
`resistant resin ([0057]-[0059]).
`
`Regarding claim 7, modified Hiroyoshi disclosesall of the claim limitations as set
`
`forth above and also discloses the heat resistant layer (refs 74) comprises an inorganic
`
`filler ([0059]) and a resin binder ([0059)).
`
`Regarding claim 8, modified Hiroyoshi disclosesall of the claim limitations as set
`
`forth above and also discloses the negative electrode (ref 50) comprises a carbon
`
`material ([0051], [0052]) and a silicon material ([0051], [0052]) as negative electrode
`
`active materials ([0051], [0052]).
`
`Regarding claim 9, modified Hiroyoshi disclosesall of the claim limitations as set
`
`forth above and also discloses the second separator (ref 70B) includes the heat
`
`resistant layer (refs 74) and the heat resistant layer (ref 74) is arranged in opposed
`
`relation (Figs 4, 5) with the positive electrode (ref 30).
`
`Conclusion
`
`13.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to KENNETH J DOUYETTE whosetelephone numberis
`
`(571)270-1212. The examiner can normally be reached Monday - Friday 8A - 4P EST.
`
`

`

`Application/Control Number: 16/771,053
`Art Unit: 1725
`
`Page 11
`
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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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`
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`
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`
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`
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`
`/KENNETH J DOUYETTE/
`Primary Examiner, Art Unit 1725
`
`