www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`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, VA22182
`
`LEONARD, MICHELLE TURNER
`
`1724
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/11/2024
`
`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*
`1-10 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`5a) Of the above claim(s) _ is/are withdrawn from consideration.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) 1-10 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* 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.
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`) ) ) )
`
`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)[¥) 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
`1.1.) 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)
`
`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)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240215
`
`Application No.
`Applicant(s)
`16/973,622
`Yoshii, Kazuhiro
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`MICHELLE LEONARD
`1724
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 02 February 2024.
`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) 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)(2) 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: 16/973,622
`Art Unit: 1724
`
`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
`
`inventor to file provisions of the AIA.
`
`Status of the Application
`
`Claims 9 and 10 are added. Claims 1-10 are pendingin the application and examined.
`
`Continued Examination Under 37 CFR 1.114
`
`A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR
`
`1.17(e), was filed in this application after final rejection. Since this application is eligible for continued
`
`examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the
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`finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's
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`submission filed on February 2, 2024 has been entered.
`
`Affidavit/Declaration
`
`The Declaration of Kazuhiro Yoshii dated February 2, 2024 has been considered.
`
`Claim Rejections - 35 USC § 103
`
`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-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
`
`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
`
`under either status.
`
`

`

`Application/Control Number: 16/973,622
`Art Unit: 1724
`
`Page 3
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
`
`set forth 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 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.
`
`103 are summarized as follows:
`
`1. Determining the scope and contentsofthe prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`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.
`
`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
`
`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 effectivefiling dates of each claim that
`
`was not commonly ownedas of 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.
`
`Claims 1-4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kurokietal.
`
`[JP2009181756, dated August 13, 2009, as provided in the IDS dated March 3, 2021], hereinafter
`
`Kuroki, in view of Fukumoto et al. [US 2009/0325074-A1, dated December 31, 2009], hereinafter
`
`Fukumoto,andin further view of Watanabeet al. [US 2013/0244116-A1, dated September 19, 2013,
`
`as provided in the IDS dated March 3, 2021], hereinafter Watanabe, with evidence by Nagaokaetal.
`
`

`

`Application/Control Number: 16/973,622
`Art Unit: 1724
`
`Page 4
`
`[US 2017/0139336-A1, dated May 18, 2017], hereinafter Nagaoka, and with further evidence by
`
`Cottrell, Introduction to Metallurgy (2nd Edition, 1975).
`
`RegardingClaim 1, Kuroki discloses a non-aqueous electrolyte [Kuroki 0016] secondary battery
`
`[Kuroki 0001] comprising: a positive electrode [Kuroki 0009]; a negative electrode [Kuroki 0009] ; a heat-
`
`resistant layer formed on at least any one of the positive electrode and the negative electrode [Kuroki
`
`0009]; and a non-aqueous electrolyte [Kuroki 0016]; wherein the heat-resistant layer includes heat-
`
`resistant particles having at least a surface including a metal compound [Kuroki 0017], the heat-resistant
`
`layer has an average thickness in the range of 0.5 um to 5 um [Kuroki 0065 (example 1), 4 um; 0075
`
`(example 2), 3 um; 0078-0082 {examples 5-9), 4 um]; the heat-resistant layer has a porosity of 25% to
`
`55% [Kuroki 0032, 0065 (example 1), 54%; 0078-0080 (examples 5-7), 39%, 43%, 50%], and a plurality of
`
`exposed portions in which an electrode located under the heat-resistant layer is partially exposed are
`
`present on a surface of the heat-resistant layer [Kuroki 0027]. Kuroki discloses the exposed portion
`
`defects should be avoided to improve the safety of the battery cell [Kuroki 0027-0028] and does not
`
`characterize a permissible level of this defect and is, therefore, silent to a maximum length for each of
`
`the exposed portions is 3 um or more and 30 um or less.
`
`Fukumoto discloses the presence of exposed portions in a heat-resistant layer [Fukumoto 0005,
`
`Table 1]. In Table 1, Fukumoto discloses a summary on whether the exposed portions are present in the
`
`column marked Coating Property *8. Examples marked P in Table 1 had a streak (exposed portion as
`
`defined in Fukumoto 0005) present that was 1.0 mm or longer. Examples marked N did not have a
`
`streak 1.0 mm (1000 um) or larger. Fukumoto discloses the presence of these defects should be reduced
`
`for lithium ion secondary battery packs having high heat resistance stability [Fukumoto 0007]. Given
`
`that Kuroki and Fukumoto both disclose the presence of the exposed regions [Kuroki 0027-0028,
`
`Fukumoto 0005], and the need to minimize such defects [Kuroki 0028, Fukumoto 0007], one of ordinary
`
`skill in the art would expect there to be an overlap in the maximum length of exposed portions in the
`
`

`

`Application/Control Number: 16/973,622
`Art Unit: 1724
`
`Page 5
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`heat-resistant layer in Kuroki and/or Fukumoto’s prior arts and the instant application, or if the range of
`
`exposedportions in Kuroki and/or Fukumoto’s prior arts do not overlap the claimed range, one of
`
`ordinary skill in the art would expect the rangesto beclose. In the case where the claimed ranges
`
`“overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousnessexists. 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. MPEP 2144.05 It would have been obvious to one of ordinaryskill in the
`
`art to combine Kuroki and Fukumoto’s teachings for reducing or limiting the presence of the exposed
`
`portion defects in Kuroki’s heat-resistant layer in the non-aqueous electrolyte secondary battery since
`
`both are working on safe batteries for high temperature environments [Kuroki 0001, Fukumoto 0002].
`
`Kuroki does not disclose the metal ions in the metal compound havean electronegativity of 13.5
`
`or more. Nagaoka provides an equation for calculating a metal ion’s electronegativity. The
`
`electronegativity X of each metal oxide as a metal ion is determined by the following Expression (1):
`
`X=(1+2Z)*Xo
`
`(where Z represents the number of charges and Xo is Pauling’s electronegativity) [Nagaoka
`
`0058].
`
`Kuroki Example 9 discloses titanium dioxide, TiO2, [Kuroki 0082] for the heat-resistant particle
`
`metal compound. Referencing Cottrell’s Introduction to Metallurgy, the electronegativity of titanium is
`
`1.6. The number of charges of titanium in titanium oxide, TiOz, is 4. The calculated electronegativity (X)
`
`of titanium ions is (1 + 2*4)*1.6 = 14.4, which is greater than 13.5. Though Kuroki does not recite the
`
`electronegativity of the titanium oxide’s titanium ions is greater than 13.5, an inherent feature need not
`
`be recognized at the relevant time per MPEP 2112.
`
`Kuroki is silent to the heat-resistant layer has an average surface roughness(Ra) of 0.35 um or
`
`less. Watanabe discloses example 10 [Watanabe 0163] with an average surface roughness(Ra) of 0.3
`
`um [Watanabe 0029, 0230-0233, Table 2]; for the heat-resistant layer deposited on the active material
`
`

`

`Application/Control Number: 16/973,622
`Art Unit: 1724
`
`Page 6
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`[abstract]. (In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art"
`
`a prima facie case of obviousness exists. MPEP 2144.05 |) It would have been obvious to one of ordinary
`
`skill in the art, before the effective filing date of the present invention, to use Kuroki’s non-aqueous
`
`electrolyte secondary battery with a heat-resistant layer combined with Watanabe’s disclosure of
`
`average surface roughnessfor the of 0.3 um for the heat-resistant layer with a reasonable expectation
`
`of success because Watanabe teachesthat the low surface roughnessis important for peeling strength
`
`[Watanabe 0233] and to prevent a reduction in the load characteristics of the battery [Watanabe 0029].
`
`Regarding Claim 2, modified Kuroki discloses the non-aqueous electrolyte secondary battery
`
`according to claim 1, wherein the heat-resistant particles have an averageparticle size of 0.05 um to 1
`
`uum [Kuroki 0022].(Kuroki discloses a preferred range of 0.25 um to 1 um and provides motivation:
`
`larger particles reduce battery capacity and result in difficulty forming a thin heat-resistant layer and
`
`smaller particles require additional binder and result in layer deterioration risk [Kuroki 0022].) In the
`
`case wherethe claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case
`
`of obviousness exists. (MPEP 2144.05 I)
`
`Regarding Claim 3, modified Kuroki discloses the non-aqueous electrolyte secondary battery
`
`according to claim 1, wherein the metal compound corresponds to an oxide, a hydroxide, or an
`
`oxyhydroxide including at least any one of Ti, Sn, W, Nb, Mo, and Si [Kuroki 0017, 0082, Table 1, Table 2;
`
`Watanabe 0054].
`
`(Kuroki discloses titanium oxide in Example 9 [Kuroki 0017, 0082, Table 1, and Table
`
`2], silica [Kuroki 0017], tin oxide [Kuroki 0017], and others [Kuroki 0017]. Watanabediscloses titanium
`
`oxide,silica, and tin oxide [Watanabe 0054].)
`
`

`

`Application/Control Number: 16/973,622
`Art Unit: 1724
`
`Page 7
`
`Regarding Claim 4, modified Kuroki discloses the non-aqueous electrolyte secondary battery
`
`according to claim 1, wherein the heat-resistant particles each correspond to an oxide, a hydroxide, or
`
`an oxyhydroxide including at least any one ofTi, Sn, W, Nb, Mo, and Si [Kuroki 0017, 0082, Table 1, Table
`
`2; Watanabe 0054].
`
`(Kuroki discloses titanium oxide in Example 9 [Kuroki 0017, 0082, Table 1, and Table
`
`2], silica [Kuroki 0017], tin oxide [Kuroki 0017], and others [Kuroki 0017]. Watanabe discloses titanium
`
`oxide,silica, and tin oxide [Watanabe 0054].)
`
`Regarding Claim 6, modified Kuroki discloses the non-aqueous electrolyte secondary battery
`
`according to claim 1, wherein a sum of lengths of the exposed portions is 20% or less based on a length
`
`of an entire surface of the electrode, in any cross section of the electrode [Kuroki 0027]. (Kuroki
`
`discloses the presence of these defects, such as stripes or streaks [Kuroki 0027], but does not
`
`characterize a permissible level of the defects. Kuroki suggests they should be avoided to improve the
`
`safety of the battery cell [Kuroki 0027-0028]. Given Kuroki’s teachings about minimizing the exposed
`
`regions, it would have been obvious to one ofordinaryskill in the art that the level of exposed regions
`
`presentin Kuroki’s prior art would be near 0% in which case there would be overlap with the instantly
`
`claimed range. If the range of exposed portions in Kuroki prior art does not overlap the claimed range,
`
`one of ordinary skill in the art would expect the ranges to be close. In the case where the claimed ranges
`
`“overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousnessexists. 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. MPEP Per MPEP 2144.05, in the case where the claimed ranges “overlap
`
`or lie inside ranges disclosed by the prior art" a prima facie case of obviousnessexists.
`
`Regarding Claim 7, modified Kuroki discloses the non-aqueous electrolyte secondary battery
`
`according to claim 1, wherein the negative electrode comprises a negative electrode current collector
`
`

`

`Application/Control Number: 16/973,622
`Art Unit: 1724
`
`Page 8
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`and a negative electrode active material layer formed on the negative electrode current collector
`
`[Kuroki 0015, 0041], wherein the heat-resistant layer is formed on an entire surface of the negative
`
`electrode active material layer [Kuroki 0044]. Should it be considered that the prior art is silent to the
`
`term “entire”, it would have been obvious to one of ordinary skill in the art to form the heat-resistant
`
`layer over the entire surface to convey heat resistance for the entire electrode.
`
`Claims 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kuroki et al.
`
`[JP2009181756, dated August 13, 2009, as provided in the IDS dated March 3, 2021], hereinafter
`
`Kuroki, in view of Fukumoto et al. [US 2009/0325074-A1, dated December 31, 2009], hereinafter
`
`Fukumoto,andin further view of Watanabeet al. [US 2013/0244116-A1, dated September 19, 2013,
`
`as provided in the IDS dated March 3, 2021], hereinafter Watanabe, with evidence by Nagaokaet al.
`
`[US 2017/0139336-A1, dated May 18, 2017], hereinafter Nagaoka, and with further evidence by
`
`Cottrell, Introduction to Metallurgy (2nd Edition, 1975), as applied to Claim 1 above, and in further
`
`view of Imanari et al. [US 2011/0151327-A1, dated June 23, 2011], hereinafter Imanari.
`
`Regarding Claim 5, modified Kuroki discloses the non-aqueous electrolyte secondary battery
`
`according to claim 1 but does not disclose wherein the heat-resistant particles each have a polyhedron
`
`shape, a needle shape, or a necking shape. Imanari discloses needle shape heat-resistant particles
`
`[0084-0086]. It would have been obvious to one of ordinaryskill in the art, before the effectivefiling
`
`date of the present invention, to use modified Kuroki’s non-aqueous electrolyte secondary battery with
`
`a heat-resistant layer with the needle-shaped heat-resistant particles disclosed by Imanari with a
`
`reasonable expectation of success because Imanari teachesvariety in particle shape, including needle-
`
`shaped,is acceptable for layer performance [0086].
`
`

`

`Application/Control Number: 16/973,622
`Art Unit: 1724
`
`Page 9
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`Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kurokiet al.
`
`[JP2009181756, dated August 13, 2009, as provided in the IDS dated March 3, 2021], hereinafter
`
`Kuroki, in view of Fukumotoetal. [US 2009/0325074-A1, dated December 31, 2009], hereinafter
`
`Fukumoto,andin further view of Watanabeet al. [US 2013/0244116-A1, dated September 19, 2013,
`
`as provided in the IDS dated March 3, 2021], hereinafter Watanabe, with evidence by Nagaokaetal.
`
`[US 2017/0139336-A1, dated May 18, 2017], hereinafter Nagaoka, and with further evidence by
`
`Cottrell, Introduction to Metallurgy (2nd Edition, 1975), as applied to Claim 1 above, and in further
`
`view of Kasamatsu etal. [US 2008/0070107A1, dated March 20, 2008], hereinafter Kasamatsu.
`
`Regarding Claim 9, modified Kuroki discloses the non-aqueous electrolyte secondary battery
`
`according to claim 1, wherein the metal compound corresponds to an oxide ofTi, Si, and others [Kuroki
`
`0017, 0082, Table 1, Table 2; Watanabe 0054] but does not disclose wherein the metal compound
`
`corresponds to an oxide, a hydroxide, or an oxyhydroxide including at least any one of W, Nb and Mo.
`
`Kasamatsu discloses a heat-resistant layer [Kasamatsu 0059] for a separator for a non-aqueous
`
`electrolyte secondary battery [Kasamatsu abstract] using metal oxide particles asfiller particles
`
`[Kasamatsu 0057]. Kasamatsu discloses titanium oxide, silicon oxide and dioxide, and tungsten oxide
`
`amongothers [Kasamatsu 0057]. Therefore tungsten oxide is an art recognized equivalent for use as a
`
`metal compound for heat-resistant particles for a heat-resistant layer. See MPEP 2144.07. It would have
`
`been obvious to one of ordinary skill in the art before the effective filing date to substitute Kasamatsu’s
`
`art recognized tungsten oxide as an equivalent metal compound for heat-resistant particles for a heat-
`
`resistant layer in place of Kuroki’s titanium oxide or Watanabe’s titanium oxideor silica with an
`
`expectation of success as tungsten oxide would perform the same function as titanium oxide or silica.
`
`Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kurokiet al.
`
`[JP2009181756, dated August 13, 2009, as provided in the IDS dated March 3, 2021], hereinafter
`
`

`

`Application/Control Number: 16/973,622
`Art Unit: 1724
`
`Page 10
`
`Kuroki, in view of Fukumoto et al. [US 2009/0325074-A1, dated December 31, 2009], hereinafter
`
`Fukumoto,andin further view of Watanabeet al. [US 2013/0244116-A1, dated September 19, 2013,
`
`as provided in the IDS dated March 3, 2021], hereinafter Watanabe, with evidence by Nagaokaetal.
`
`[US 2017/0139336-A1, dated May 18, 2017], hereinafter Nagaoka, and with further evidence by
`
`Cottrell, Introduction to Metallurgy (2nd Edition, 1975).
`
`Regarding Claim 8, Kuroki discloses an electrode structure comprising: an electrode for use as a
`
`positive electrode or a negative electrode of a non-aqueous electrolyte secondary battery [Kuroki Fig. 1,
`
`0009, 0015]; and a heat-resistant layer formed on the electrode [Kuroki 0016]; wherein the heat-
`
`resistant layer includes heat-resistant particles having at least a surface including a metal compound
`
`[Kuroki 0017], the heat-resistant layer has an average thicknessin the range of 0.5 um to 5 um [Kuroki
`
`0065 (example 1), 4 um; 0075 (example 2), 3 um; 0078-0082 {examples 5-9), 4 um], the heat-resistant
`
`layer has a porosity of 25% to 55% [Kuroki 0032, 0065 (example 1), 54%; 0078-0080 (examples5-7),
`
`39%, 43%, 50%], and a plurality of exposed portions in which an electrode located under the heat-
`
`resistant layer is partially exposed are present on a surface of the heat-resistant layer [Kuroki 0027-
`
`0028]. Kuroki discloses the defects should be avoided to improve the safety of the battery cell [Kuroki
`
`0027-0028] and does not characterize a permissible level of this defect and is, therefore, silent to a
`
`maximum length for each of the exposed portions is 3 um or more and 30 um or less.
`
`Fukumoto discloses the presence of exposed portions in a heat-resistant layer [Fukumoto 0005,
`
`Table 1]. In Table 1, Fukumoto discloses a summary on whether the exposed portions are present in the
`
`column marked Coating Property *8. Examples marked P in Table 1 had a streak (exposed portion as
`
`defined in Fukumoto 0005) present that was 1.0 mm or longer. Examples marked N did not have a
`
`streak 1.0 mm (1000 um) or larger. Fukumoto discloses the presence of these defects should be reduced
`
`for lithium ion secondary battery packs having high heat resistance stability [Fukumoto 0007]. Given
`
`that Kuroki and Fukumoto both disclose the presence of the exposed regions [Kuroki 0027-0028,
`
`

`

`Application/Control Number: 16/973,622
`Art Unit: 1724
`
`Page 11
`
`Fukumoto 0005] and the need to minimize such defects [Kuroki 0028, Fukumoto 0007], one of ordinary
`
`skill in the art would expect there to be an overlap in the maximum length of exposed portions in the
`
`heat-resistant layer in Kuroki and Fukumoto’s prior arts and the instant application, or if the range of
`
`exposed portions in Kuroki and Fukumoto’s prior arts do not overlap the claimed range, one of ordinary
`
`skill in the art would expect the ranges to be close. In the case where the claimed ranges "overlap or lie
`
`inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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. MPEP 2144.05 It would have been obvious to one of ordinaryskill in the art to
`
`combine Kuroki and Fukumoto’s teachings for reducing or limiting the presence of the exposed portion
`
`defects in Kuroki’s heat-resistant layer in the non-aqueous electrolyte secondary battery since both are
`
`working on safe batteries for high temperature environments [Kuroki 0001, Fukumoto 0002].
`
`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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`X=(1+2Z)*Xo
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`(where Z represents the number of charges and Xo is Pauling’s electronegativity) [Nagaoka
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`0058].
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`Kuroki Example 9 discloses titanium dioxide, TiO2, [Kuroki 0082] for the heat-resistant particle
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`metal compound. Referencing Cottrell’s Introduction to Metallurgy, the electronegativity of titanium is
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`1.6. The number of charges of titanium in titanium oxide, TiOz, is 4. The calculated electronegativity (X)
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`of titanium ions is (1 + 2*4)*1.6 = 14.4, which is 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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`

`

`Application/Control Number: 16/973,622
`Art Unit: 1724
`
`Page 12
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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 [Watanabe 0163] with an average surface roughness(Ra) of 0.3
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`um [Watanabe 0029, 0230-0233, Table 2]; for the heat-resistant layer deposited on the active material
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`[abstract]. (In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art"
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`a prima facie case of obviousness exists. MPEP 2144.05 |) It would have been obvious to one of ordinary
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`skill in the art, before the effective filing date of the present invention, to use Kuroki’s non-aqueous
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`electrolyte secondary battery with a heat-resistant layer combined with Watanabe’s disclosure of
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`average surface roughnessfor the of 0.3 um for the heat-resistant layer with a reasonable expectation
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`of success because Watanabeteachesthat the low surface roughnessis important for peeling strength
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`[Watanabe 0233] and to prevent a reduction in the load characteristics of the battery [Watanabe 0029].
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`Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kuroki et al.
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`[JP2009181756, dated August 13, 2009, as provided in the IDS dated March 3, 2021], hereinafter
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`Kuroki, in view of Fukumoto et al. [US 2009/0325074-A1, dated December 31, 2009], hereinafter
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`Fukumoto,andin further view of Watanabeet al. [US 2013/0244116-A1, dated September 19, 2013,
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`as provided in the IDS dated March 3, 2021], hereinafter Watanabe, with evidence by Nagaokaetal.
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`[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), as applied to Claim 8 above, and in further
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`view of Kasamatsu etal. [US 2008/0070107A1, dated March 20, 2008], hereinafter Kasamatsu.
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`Regarding Claim 10, modified Kuroki discloses the electrode structure according to claim 8,
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`wherein the metal compound corresponds to an oxideofTi, Si, and others [Kuroki 0017, 0082, Table 1,
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`Table 2; Watanabe 0054] but does not disclose wherein the metal compound corresponds to an oxide, a
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`hydroxide, or an oxyhydroxide including at least any one of W, Nb and Mo. Kasamatsu discloses a heat-
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`resistant layer [Kasamatsu 0059] for a separator for a non-aqueous electrolyte secondary battery
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`

`

`Application/Control Number: 16/973,622
`Art Unit: 1724
`
`Page 13
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`[Kasamatsu abstract] using metal oxide particles asfiller particles [Kasamatsu 0057]. Kasamatsu
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`discloses titanium oxide,silicon oxide and dioxide, and tungsten oxide among others [Kasamatsu 0057].
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`Therefore tungsten oxide is an art recognized equivalent for use as a metal compound for heat-resistant
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`particles for a heat-resistant layer. See MPEP 2144.07. It would have been obvious to oneof ordinary
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`skill in the art before the effective filing date to substitute Kasamatsu’s art recognized tungsten oxide as
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`an equivalent metal compound for heat-resistant particles for a heat-resistant layer in place of Kuroki’s
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`titanium oxide or Watanabe’s titanium oxide or silica with an expectation of success as tungsten oxide
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`would perform the same function as titanium oxide or silica.
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`Response to Arguments
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`The Declaration under 37 CFR 1.132 filed February 2, 2024 is insufficient to overcome the
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`rejection of Claims 1-8 based upon 35 U.S.C. 103 as set forth in the last Office action because: the
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`unexpected results regarding the criticality of range of the exposed portion are not commensurate in
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`scopewith the claims nor do they provide objective evidence of nonobviousnessover the prior art.
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`Regarding arguments about the evidence provided demonstratesthe criticality of controlling the
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`range of maximum length for each of the exposed portions to “3 um or more and 30 um or less”, the
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`Examiner respectfully does not find the evidence in Modified Table 1 establishes "that the differences in
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`results are in fact unexpected and unobvious and of both statistical and practical significance." (See
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`MPEP 716.02 (b))
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`Specifically, the Examiner regards the argument that the data supports the improvementto
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`suppressinternal resistance of the battery is accomplished by limiting the maximum length for each of
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`the exposed portions to “3 um or more and 30 um or less” unpersuasive. As provided in Modified Table
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`1, Examples 5-14 all have an average thickness of the heat-resistant layer of 2 um and all additionally
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`demonstrate lower internal battery resistance than Examples 1-2, 4, and Comparative Examples 1-2,
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`

`

`Application/Control Number: 16/973,622
`Art Unit: 1724
`
`Page 14
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`which have an average thickness of the heat-resistant layer of 3 um or greater. Further, Example 2,
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`which has a thicker heat-resistant layer of 5 um, has worseinternal battery resistance than Example 1,
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`which has a thicker heat-resistant layer of 3 um, even though Example 2 has an exposed portion and
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`Example 1 has none, which is contrary to whatis claimed. Even further, Example 3, which has a thicker
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`heat-resistant layer of 0.5 um, has even lower internal battery resistance than Examples 1 and 2. The
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`skilled artisan knowsthat as the heat-resistant layer thickness increases so doesthe internal resistance
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`of the battery, as is evidenced by Fukumotoet al. [US2010/0227207A1, 0052], which can explain the
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`increased internal resistance of the battery for Examples 1-2, 4, and Comparative Examples 1-2 as
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`provided in Modified Table 1. Per MPEP 716.02(c), where the unexpected properties of a claimed
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`invention are not shownto have a significance equal to or greater than the expected properties, the
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`evidence of unexpected properties may not be sufficient to rebut the evidence of obviousness. To award
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`criticality of the claimed maximum length of exposed portions in the range of “3 um or more and 30 um
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`or less”, the Applicant should provide evidence that the increased internal resistance of the batteryis
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`not caused by the thicker heat-resistant layer. Per MPEP 716.02(d) Il, to establish unexpected results
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`over a claimed range, applicants should compare a sufficient number of tests both inside and outside
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`the claimed range to show the criticality of the claimed range.
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`Further, the Examiner regards the argumentthat the data supports the improvementto
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`suppress the temperature rise of the battery upon internal short is accomplished bylimiting the
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`maximum length for each of the exposed portions to 3 um or more and 30 um or less” unpersuasive. As
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`provided in Modified Table 1, Example 3 and Comparative Example 3 both have heat-resistant layers of
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`0.5 um in thickness and higher battery temperatures upon internal short. Another example with a
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`higher battery temperature upon internal short is Comparative Example 2, which has a s