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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
`
`16/973,533
`
`12/09/2020
`
`Hiroshi Minami
`
`P201126US00
`
`8674
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`LUNA, UNIQUE JENEVIEVE
`
`ART UNIT
`1728
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
`
`01/07/2022
`
`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):
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`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-5 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-5 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.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 12/09/2020 is/are: a)[¥) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) 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 01/29/2021.
`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 20211230
`
`Application No.
`Applicant(s)
`16/973 533
`Minami etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`UNIQUE J LUNA
`1728
`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
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`1) Responsive to communication(s) filed on 09 December 2020 and 29 January 2021.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`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: 16/973,533
`Art Unit: 1728
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`Page 2
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`DETAILED ACTION
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`Priority
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`1.
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`Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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`Notice of Pre-AlA or AIA Status
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`2.
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`Claim Rejections - 35 USC § 102
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`3.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis
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`for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
`
`(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale,
`or otherwise available to the public before the effectivefiling date of the claimed invention.
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`4.
`
`Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over Koike et al. (EP
`
`0948076 A1, provide in IDS filed on 01/29/2021).
`
`The examiner notes that the claim 1 contains the limitation “grinder means”. This limitation
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`doesnot invoke 112(f), because the recited grinder means are modified by sufficient structure for
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`performing the claimed action.
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`Regarding Claim 1, Koike discloses an electrode treatment method ([0021] regarding
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`manufacturing method), comprising: a separation step of grinding (Fig. 4, [0023]. The examiner is
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`interpreting the recited crushing in Koike to meet the recited “grinding”, because the dictionary
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`definition of grinding includes the reduction of something into small particles or powder by crushingit”,
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`thereby encompassing the step as recited), with grinder means (Fig. 2, [0023]), an electrode (positive- or
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`negative-electrode) in which an electrode composite is held on a current collector ([0017] & [0019]
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`

`

`Application/Control Number: 16/973,533
`Art Unit: 1728
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`Page 3
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`regarding electrode active powder held on conductive substrate) and separating the electrode
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`composite (Fig. 4, [0023] regarding separating) from the current collector (conductive substrate),
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`wherein the grinder means (Fig. 2, [0023] & [0037]) include a grinder (Fig. 2A) that includes a
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`first member having a grinding surface ([0041] regarding inner surface of the separation chamber 1) and
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`a second member having a grinding surface ([0041] regarding projections 5 formed on inner surface) as
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`the examiner notes that anything that crushes can be considered to have a grinding surface and that
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`claim 1 does not require any specific structure for the grinding surfaces. Koike further teaches that the
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`first member and the second member are positioned so that the grinding surfacesof the first member
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`and the second member face each other ([0041] regarding contact of 5 and 1) and a spacefor grinding
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`the electrode is defined between the grinding surfaces ([0041] regarding contact of 5 and 1), and at least
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`one ofthe first member and the second member rotates about a rotation axis extendingin a direction in
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`which the grinding surfaces face each other (see rotation arrow in Fig. 2B, [0041] regarding rotation axis
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`of 6, see Fig. 2A-B regarding 1 and 5 facing each other). Koike meets the limitation “at least one of the
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`first member and the second member rotatesalong a rotation axis extendingin a direction in which the
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`grinding surfaces face each other given the broadest reasonable interpretation of claim 1 because the
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`surfaces are taught and shownto face each other and both extend along an axis of rotation shownin
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`figure 2; the broadest reasonable interpretation of claim 1 does not require the two surfaces both facing
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`the grinding axis.
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`Regarding Claim 2, Koike further discloses the electrode treatment method according to claim 1,
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`comprising: an isolation step of isolating the electrode composite and the current collector from a
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`mixture containing the electrode composite and the current collector obtained in the separation step
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`([0037] regarding mixture separating the electrode from the conductive substrate). The process that
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`occursafter the initial crushing meets the recited isolating step.
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`

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`Application/Control Number: 16/973,533
`Art Unit: 1728
`
`Page 4
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`Regarding Claim 3, Koike further discloses the electrode treatment method according to claim 1,
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`wherein the grinder havethe first member (1) and the second member (5) aligned up and downin the
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`vertical direction (Fig. 2A-B shows 1 and 5 are vertically aligned). The examiner notes that claim 3 does
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`not define any particular directional position. Thus, the structure facing each other can be considered to
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`be “up and downina vertical direction”.
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`Claim Rejections - 35 USC § 103
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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 obviousness rejections
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`set forth in this Office action:
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`A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is
`not identically disclosed as set forth in section 102, if the differences between the claimed invention
`and the prior art are such that the claimed invention as a whole would have been obvious before the
`effective filing date of the claimed invention to a person having ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
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`6.
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`The factual inquiries for establishing a background for determining obviousness under 35 U.S.C.
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`103 are summarized as follows:
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`1. Determining the scope and contentsofthe 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 present in the application indicating obviousness or
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`nonobviousness.
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`7.
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`This application currently names joint inventors. In considering patentability of the claims the
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`examiner presumesthat the subject matter of the various claims was commonly ownedas of the
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`effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised
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`of the obligation under 37 CFR 1.56 to point out the inventor and effectivefiling dates of each claim that
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`was not commonly ownedas of the effective filing date of the later invention in order for the examiner
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`

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`Application/Control Number: 16/973,533
`Art Unit: 1728
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`Page 5
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`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
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`against the later invention.
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`8.
`
`Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Koike et al. (EP 0948076
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`A1, provide in IDS filed on 01/29/2021) as applied to claim 1 above, and in further view of Haraguchi et
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`al. JP 6238070 B2, provide in IDS filed on 01/29/2021).
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`Regarding Claim 4, Koike further discloses the electrode treatment method according to claim 1,
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`Koike teaches trench on the grinding surface of the second member (5), but does not teach wherein the
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`grinding surfacesof the first member and the second member have a trench extending outward from
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`the center of each grinding surface. The examiner notes that Koike does not particularly limit the
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`structure of the grinder/crusher used (see paragraph 35).
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`However, Haraguchi teaches an electrode treatment method with a twin-screw crusher ([0014]),
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`which have a trench extending outward from the center of each grinding surface (screw).
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`Therefore, it would have been obvious to one ordinarily skilled in the art to modify the grinding
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`surface of the first member of Koike with the projections of the grinding surfacesof the first member
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`and second member of Haraguchi, in order to roughly crush into segments ([0014]).
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`Regarding Claim 5, Koike further discloses the electrode treatment method according to claim 1,
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`wherein the first member (1) and the second member (5) have a disk shape (Fig. 1 show disk shape of 1
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`and Fig. 2B show 5 comprising of disk shapes of rotative blades 6), and the grinding surface of the first
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`member (1) and the grinding surface of the second member (5) have an inclined portion (Figs. 1 & 2A-B
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`showsincline), but Koike does not teach inclined such that a gap between the grinding surfacesis
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`narrowed from the center of each grinding surface toward the outer circumference. The examiner
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`notes that Koike does not particularly limit the structure of the grinder/crusher used (see paragraph 35).
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`

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`Application/Control Number: 16/973,533
`Art Unit: 1728
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`Page 6
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`However, Haraguchi teaches an electrode treatment method with a twin-screw crusher ([0014]),
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`whichare inclined such that a gap between the grinding surfaces is narrowed from the center of each
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`grinding surface toward the outer circumference ([0014]).
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`Therefore, it would have been obvious to one ordinarily skilled in the art to modify the incline of
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`the grinding surfaces of Koike with the inclined of the grinding surfaces of Haraguchi so that the grinding
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`surfaces is narrowed from the center of each grinding surface toward the outer circumference in order
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`to roughly crush into segments [(0014]).
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`Conclusion
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`9.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to UNIQUE JENEVIEVE LUNA whose telephone number is (571)272-2859. The
`
`examiner can normally be reached M-F 8am-4pm.
`
`Examiner interviewsare available via telephone, in-person, and video conferencing using a
`
`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
`
`the USPTO Automated Interview Request(AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Matthew Martin can be reached on 571-270-7871. The fax phone number for the organization where
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`this application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from
`
`Patent Center. Unpublished application information in Patent Center is available to registered users. To
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`file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit
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`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
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`https://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For additional
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`questions, contact the Electronic Business Center (EBC) at 866-217-9197(toll-free). If you would like
`
`

`

`Application/Control Number: 16/973,533
`Art Unit: 1728
`
`Page 7
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`assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or
`
`571-272-1000.
`
`/UNIQUE JENEVIEVE LUNA/
`Examiner, Art Unit 1728
`
`/MATTHEW T MARTIN/
`Supervisory Patent Examiner, Art Unit 1728
`
`