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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
`
`16/973,622
`
`12/09/2020
`
`Kazuhiro Yoshii
`
`P201113US00
`
`1087
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`LEONARD, MICHELLE TURNER
`
`1724
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`05/17/2023
`
`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):
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`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-8 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-8 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://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 09 December 2020 is/are: a)¥) accepted or b)L) 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.
`3.4.) 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 03/03/2021.
`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 20230508
`
`Application No.
`Applicant(s)
`16/973 ,622
`Yoshii, Kazuhiro
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`Michelle T Leonard
`1724
`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
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`1) Responsive to communication(s) filed on 03 March 2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() 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.
`
`

`

`Continuation Sheet (PTOL-326)
`
`/MICHELLE T LEONARD/
`Examiner, Art Unit 1724
`
`Application No. 16/973,622
`
`

`

`Application/Control Number: 16/973,622
`Art Unit: 1724
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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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 § 103
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102
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`and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
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`basis (i.e., changing from AIA to pre-AlA) 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 the same
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`under either status.
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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.
`
`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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`

`

`Application/Control Number: 16/973,622
`Art Unit: 1724
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`Page 3
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`This application currently namesjoint 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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`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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`Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kuroki etal.
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`[JP2009181756, dated August 13, 2009], hereinafter Kuroki, in view of Watanabeet al. [US
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`2013/0244116-A1, dated September 19, 2013], hereinafter Watanabe, with evidence by Nagaoka et
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`al. [US 2017/0139336-A1, dated May 18, 2017], hereinafter Nagaoka, and with further evidence by
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`Cottrell, Introduction to Metallurgy (2nd Edition, 1975).
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`RegardingClaim 1, Kuroki discloses a non-aqueous electrolyte [0016] secondary battery [0001]
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`comprising: a positive electrode [0009]; a negative electrode [0009] ; a heat-resistant layer formed on at
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`least any one of the positive electrode and the negative electrode [0009]; and a non-aqueous electrolyte
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`[0016]; wherein the heat-resistant layer includes heat-resistant particles having at least a surface
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`including a metal compound [0017], the heat-resistant layer has an average thicknessin the range of 0.5
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`yum to 5 um [0065 (example 1), 4 um; 0075 (example 2), 3 um; 0078-0082 {examples 5-9), 4 um]; the
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`heat-resistant layer has a porosity of 25% to 55% [0032, 0065 (example 1), 54%; 0078-0080 (examples 5-
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`7), 39%, 43%, 50%].
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`Kuroki does not disclose the metal ions in the metal compound havean electronegativity of 13.5
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`or more. Nagaoka provides an equation for calculating a metal ion’s electronegativity. The
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`electronegativity X of each metal oxide as a metal ion is determined by the following Expression (1):
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`

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`Application/Control Number: 16/973,622
`Art Unit: 1724
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`X=(1+2Z)*Xo
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`Page 4
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`(where Z represents the number of charges and Xo is Pauling’s electronegativity) [0058].
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`Kuroki Example 9 discloses titanium dioxide, TiO2, [0082] for the heat-resistant particle metal
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`compound. Referencing Cottrell’s Introduction to Metallurgy, the electronegativity of titanium is 1.6.
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`The number of charges of titanium in titanium oxide, TiQ2, is 4. The calculated electronegativity (X) of
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`titanium ions is (1 + 2*4)*1.6 = 14.4, whichis greater than 13.5. Though Kuroki does not recite the
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`electronegativity of the titanium oxide’s titanium ions is greater than 13.5, an inherent feature need not
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`be recognized at the relevant time per MPEP 2112.
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`Kuroki is silent to the heat-resistant layer has an average surface roughness (Ra) of 0.35 um or
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`less. Watanabe discloses example 10 [0163] with an average surface roughness (Ra) of 0.3 um [0029,
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`0230-0233, Table 2; for the heat-resistant layer deposited on the active material [abstract]. It would
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`have been obvious to one ofordinaryskill in the art, before the effective filing date of the present
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`invention, to use Kuroki’s non-aqueous electrolyte secondary battery with a heat-resistant layer
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`combined with Watanabe’s disclosure of average surface roughness for the of 0.3 um for the heat-
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`resistant layer with a reasonable expectation of success because Watanabeteachesthat the low surface
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`roughnessis important for peeling strength [0233] and to prevent a reduction in the load characteristics
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`of the battery [0029]. (MPEP 2144.05|)
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`Regarding Claim 2, modified Kuroki discloses the non-aqueous electrolyte secondary battery
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`according to claim 1, wherein the heat-resistant particles have an averageparticle size of 0.05 um to 1
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`uum [0022].(Kuroki discloses a preferred range of 0.25 uum to 1 um and provides motivation:
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`larger
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`particles reduce battery capacity and result in difficulty forming a thin heat-resistant layer and smaller
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`particles require additional binder and result in layer deterioration risk [0022].) In the case where the
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`claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness
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`exists. (MPEP 2144.051)
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`

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`Application/Control Number: 16/973,622
`Art Unit: 1724
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`Page 5
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`Regarding Claim 3, modified Kuroki discloses the non-aqueous electrolyte secondary battery
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`according to claim 1, wherein the metal compound corresponds to an oxide, a hydroxide, or an
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`oxyhydroxide including at least any one of Ti, Sn, W, Nb, Mo, and Si [Kuroki, 0082; Watanabe, 0054].
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`(Kuroki discloses titanium oxide in Example 9 [0082, Table 1, and Table 2]. Watanabe discloses titanium
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`oxide,silica, and tin oxide [0054].)
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`Regarding Claim 4, modified Kuroki discloses the non-aqueous electrolyte secondary battery
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`according to claim 1, wherein the heat-resistant particles each correspond to an oxide, a hydroxide, or
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`an oxyhydroxide including at least any one ofTi, Sn, W, Nb, Mo, and Si[Kuroki, 0082; Watanabe, 0054].
`
`(Kuroki discloses titanium oxide in Example 9 [0082, Table 1, and Table 2]. Watanabediscloses titanium
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`oxide,silica, and tin oxide [0054].)
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`Regarding Claim 6, modified Kuroki discloses the non-aqueous electrolyte secondary battery
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`according to claim 1, wherein a plurality of exposed portions in which an electrode located under the
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`heat-resistant layer is partially exposed are present on a surface of the heat-resistant layer [0027].
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`Modified Kurokiis silent to a maximum length for each of the exposed portions is 30 um or less anda
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`sum of lengths of the exposed portions is 20% or less based on a length of an entire surface of the
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`electrode, in any cross section of the electrode. Kuroki discloses the presence of these defects, such as
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`stripes or streaks [0027], but does not characterize a permissible level of the defects. Kuroki suggests
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`they should be avoided to improve the safety of the battery cell [0027]. Given Kuroki’s teachings,it
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`would have been obvious to one ofordinaryskill in the art, before the effective filing date of the present
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`invention, to reduce the inclusion of these defects for battery cell performance. (MPEP 2143)
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`Regarding Claim 7, modified Kuroki discloses the non-aqueous electrolyte secondary battery
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`according to claim 1, wherein the negative electrode comprises a negative electrode current collector
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`and a negative electrode active material layer formed on the negative electrode current collector [0015,
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`0041], wherein the heat-resistant layer is formed on an entire surface of the negative electrode active
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`

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`Application/Control Number: 16/973,622
`Art Unit: 1724
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`Page 6
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`material layer [0044]. Should it be considered that the prior art is silent to the term “entire”, it would
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`have been obvious to one ofordinaryskill in the art to form the heat-resistant layer over the entire
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`surface to convey heat resistance for the entire electrode.
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`Regarding Claim 8, modified Kuroki discloses an electrode structure comprising: an electrode for
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`use as a positive electrode or a negative electrode of a non-aqueous electrolyte secondary battery [Fig.
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`1, [0009, 0015]; and a heat-resistant layer formed on the electrode [0016]; wherein the heat-resistant
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`layer includes heat-resistant particles having at least a surface including a metal compound [0017], the
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`heat-resistant layer has an average thicknessin the range of 0.5 um to 5 um [0065 (example 1), 4 um;
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`0075 (example 2), 3 um; 0078-0082 {examples 5-9), 4 um], the heat-resistant layer has a porosity of 25%
`
`to 55% [0032, 0065 (example 1), 54%; 0078-0080 (examples 5-7), 39%, 43%, 50%], the heat-resistant
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`layer has an average surface roughness (Ra) of 0.35 um or less [Watanabe, 0029, 0163, 0230-0233] , and
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`metal ions in the metal compound havean electronegativity of 13.5 or more [Kuroki example 9, 0082; as
`
`described above].
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`Claims 5 is rejected under 35 U.S.C. 103 as being unpatentable over modified Kuroki as applied
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`to Claim 1 above, and further in view of Imanari et al. [US 2011/0151327-A1, dated June 23, 2011],
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`hereinafter Imanari.
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`Regarding Claim 5, modified Kuroki does not disclose the non-aqueous electrolyte secondary
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`battery according to claim 1, wherein the heat-resistant particles each have a polyhedron shape,a
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`needle shape, or a necking shape. Imanari discloses needle shape heat-resistant particles [0084-0086]. It
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`would have been obvious to one ofordinaryskill in the art, before the effective filing date of the present
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`invention, to use modified Kuroki’s non-aqueous electrolyte secondary battery with a heat-resistant
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`layer with the needle-shaped heat-resistant particles disclosed by Imanari with a reasonable expectation
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`

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`Application/Control Number: 16/973,622
`Art Unit: 1724
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`Page 7
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`of success because Imanari teachesvariety in particle shape, including needle-shaped, is acceptable for
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`layer performance [0086].
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to Michelle T Leonard whose telephone number is (571)270-1681. The examiner can
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`normally be reached Mon-Fri 8-5 EST.
`
`Examiner interviewsare available via telephone, in-person, and video conferencing using a
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Miriam Stagg can be reached on (571)270-5256. The fax phone number for the organization wherethis
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`application or proceedingis assigned is 571-273-8300.
`
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`
`/MICHELLE T LEONARD/
`Examiner, Art Unit 1724
`/BRIAN R OHARA/
`
`

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`Application/Control Number: 16/973,622
`Art Unit: 1724
`
`Examiner, Art Unit 1724
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`Page 8
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