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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
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`LUNA, UNIQUE JENEVIEVE
`
`1728
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/02/2022
`
`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)
`
`

`

`
`
`Disposition of Claims*
`1-5 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-5 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 20220715
`
`Application No.
`Applicant(s)
`16/973 ,533
`Minami etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`UNIQUE J LUNA
`1728
`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 06 May 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.
`
`

`

`Application/Control Number: 16/973,533
`Art Unit: 1728
`
`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 under the first
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`inventor to file provisions of the AIA.
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`Response to Arguments
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`2.
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`Applicant's argumentsfiled on May 06, 2022 have been fully considered but they are not
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`persuasive.
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`Applicant’s arguments and amendmentswith respect to claims 1 and 3 filed on 05/06/2022
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`have been fully considered but are not persuasive because it does overcome the current 103 rejection of
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`combined teachings of Koike and Kobayashi. The examiner notes that applicant’s arguments are drawn
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`to Koike, and applicant’s amendment necessitated the introduction of the current combination.
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`3.
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`The text of those sections of Title 35, U.S. Code not included in this action can be found in a
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`Claim Rejections - 35 USC § 103
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`prior Office action.
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`4.
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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 presentin the application indicating obviousness or
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`nonobviousness.
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`5.
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`Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Koike et al. (EP 0948076
`
`A1, cited in IDS filed on 01/29/2021) in view of Kobayashi Y et al. (JP 2012206941 A,cited in IDS filed on
`
`01/29/2021).
`
`

`

`Application/Control Number: 16/973,533
`Art Unit: 1728
`
`Page 3
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`The examiner notes that the claim 1 contains the limitation “grinder means”. This limitation
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`does not 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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`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.
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`Koike does not teach that the first member and the second member are positioned so that the
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`grinding surfacesofthe first member and the second member are opposite each other in an alignment
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`direction in which the first member and the second memberare aligned, so as to define a space for
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`grinding the electrode between the grinding surfaces, and
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`at least one of the first member and the second member rotates about a rotation axis extending
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`parallel to the alignmentdirection.
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`Kobayashi discloses a ceramic material manufacturing apparatus comprising of grinder, wherein
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`the grinder consists of the first grinding member (4) with a grinding surface and a second grinding
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`

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`Application/Control Number: 16/973,533
`Art Unit: 1728
`
`Page 4
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`member (5) with a grinding surface and is disposed belowthe first grinding member (4, Abstract).
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`Kobayashi further discloses the first grinding member (4) and the second grinding member (5) are
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`positioned so that the grinding surfaces of the first grinding member (4) and the second grinding
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`member (5) are opposite each other in an alignmentdirection in which the first grinding member (4) and
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`the second grinding member(5) are aligned, so as to define a space for grinding the electrode between
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`the grinding surfaces (Abstract & [0006]; Fig. 1 showsalignment and spacefor grinding), and
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`at least one of the first grinding member (4) and the second grinding member (5) rotates about
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`a rotation axis extending parallel to the alignment direction (Fig. 1 shows rotation direction).
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`Koike discloses various crushing methods such as milling. Kobayashi the milling method is
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`difficult to control the particle size of the powder, and the particle size varies ([0005]). Kobayashi
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`teaches a grinder with two membersfor grinding alleviates this difficulty ([O006]).
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`Therefore, it would have been obvious to one ofordinaryskill in the art to modify the grinder of
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`Koike with the grinder of Kobayashi, in order to control the particle size of the crushed materials as
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`taught by Kobayashi.
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`Regarding Claim 2, modified Koike further discloses the electrode treatment method according
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`to claim 1, comprising: an isolation step of isolating the electrode composite and the current collector
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`from a mixture containing the electrode composite and the current collector obtained in the separation
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`step ([0037] regarding mixture separating the electrode from the conductive substrate). The process
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`that occurs after the initial crushing meets the recited isolating step.
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`Regarding Claim 3, modified Koike further discloses the electrode treatment method according
`
`to claim 1, wherein Kobayashi discloses the alignment direction is vertical (Fig. 1 shows 4 and 5 are
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`aligned vertically with 4 on above5).
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`

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`Application/Control Number: 16/973,533
`Art Unit: 1728
`
`Page 5
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`6.
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`Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Koike et al. (EP 0948076
`
`A1, provide in IDS filed on 01/29/2021) in view of Kobayashi Y et al. JP 2012206941 A,cited in IDSfiled
`
`on 01/29/2021) as applied to claim 1 above, and in further view of Haraguchi et al. (JP 6238070 B2,
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`provide in IDS filed on 01/29/2021).
`
`Regarding Claim 4, modified Koike further discloses the electrode treatment method according
`
`to claim 1, Koike teaches trench on the grinding surface of the second member (5), but does not teach
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`wherein the grinding surfaces of the first member and the second member have a trench extending
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`outward from the center of each grinding surface. The examiner notes that Koike does not particularly
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`limit the 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, modified Koike further discloses the electrode treatment method according
`
`to claim 1, wherein the first member (1) and the second member (5) have a disk shape (Fig. 1 show disk
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`shape of 1 and Fig. 2B show 5 comprising of disk shapes of rotative blades 6), and the grinding surface of
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`the first member (1) and the grinding surface of the second member (5) have an inclined portion (Figs. 1
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`& 2A-B showsincline), but Koike does not teach inclined such that a gap between the grinding surfaces
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`is 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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`However, Haraguchi teaches an electrode treatment method with a twin-screw crusher ([0014]),
`
`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]).
`
`

`

`Application/Control Number: 16/973,533
`Art Unit: 1728
`
`Page 6
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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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`7.
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure.
`
`Hua-bing Zhu et al. (CN 107824299 A — machine translation provided in this office action)
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`regarding crushing device with two grinding members that grinds in between the two grinding members
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`for waste power battery (Figs. 1-2; [0007]).
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`Walch Matthias et al. (EP 2975686 A1) regarding recycling cathode material using an impact
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`grinder such as hammermill that can be either in the vertical or horizontal direction ([0026]).
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`8.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
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`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
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`extension of time policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
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`the mailing date of this action.
`
`In the eventa first reply is filed within TWO MONTHS ofthe mailing date
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`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the advisory
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`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
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`date of the advisory action.
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`In no event, however, will the statutory period for reply expire later than
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`SIX MONTHS from the date of this final action.
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`

`

`Application/Control Number: 16/973,533
`Art Unit: 1728
`
`Page 7
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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
`
`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
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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
`
`