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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/975,829
`
`08/26/2020
`
`Fumiharu Niina
`
`P200800US00
`
`6904
`
`WHDA,LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA22182
`
`KRONE, TAYLOR HARRISON
`
`1728
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/14/2023
`
`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*
`1-3 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`5a) Of the above claim(s) _ is/are withdrawn from consideration.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) 1-3 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.
`
`) ) ) )
`
`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)7) 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
`1.1.) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.1.) 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)
`
`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 20231204
`
`Application No.
`Applicant(s)
`16/975,829
`Niinaet al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`TAYLOR H KRONE
`1728
`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 November 2023.
`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: 16/975,829
`Art Unit: 1728
`
`Page 2
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`DETAILED ACTION
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`Notice ofPre-AIA or AIA Status
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`The presentapplication, filed on or after March 16, 2013, is being examined underthe
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`first inventorto file provisions of the AIA.
`
`Continued Examination Under 37 CFR 1.114
`
`A request for continued examination under 37 CFR 1.114, includingthe fee set forth in
`
`37 CFR 1.17(e), was filed in this application after final rejection. Since this applicationis
`
`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 finality of the previous Office action has been withdrawn pursuantto
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`37 CFR 1.114.
`
`Applicant's submission filed on November 2, 2023, has been entered. Claims 1-3 remain
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`pendingin the application.
`
`Response to Arguments
`
`Applicant's arguments filed on August, 25, 2023, have been fully considered.
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`Applicantasserts that the combination of references does not provide for the embodiment
`
`of the invention as presented in amended claim 1. Additionally, applicant asserts that cited prior
`
`art is silent on the useofa silicon based active material as a secondary negative electrode active
`
`material. However, applicant’s arguments are unpersuasive in view of newly cited reference
`
`SHINOMIYA‘336, where a negative electrode active material other than graphite(i.e., the
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`primary negative electrode active material; [0028]) may also be contained, such as silicon (Si)
`
`(i.e., a secondary negative electrode active material; [0037]). Therefore, the broadest reasonable
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`interpretation of amended claim | is met by modified TOSHIRO, as presented below in the
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`rejection of claim 1.
`
`

`

`Application/Control Number: 16/975,829
`Art Unit: 1728
`
`Page 3
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`Claim Rejections - 35 USC § 103
`
`In the eventthe determination ofthe status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (oras subject to pre-AJA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new groundof rejection if the prior art
`
`relied upon, andthe rationale supporting the rejection, would be the same undereitherstatus.
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`The followingis a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
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`rejections set forth in this Office action:
`
`A patent fora 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 obviousbefore the effective
`filing date of the claimed invention to a person having ordinary skill 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 backgroundfor determining obviousness under 35
`
`U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contents of the priorart.
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`2. Ascertaining the differences betweenthe prior art and the claimsat issue.
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`3. Resolving the level of ordinary skill in the pertinentart.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
`
`This application currently namesjoint inventors. In considering patentability of the
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`claims the examiner presumesthat the subject matter of the various claims was commonly
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`ownedas of the effective filing date of the claimed invention(s) absent any evidenceto the
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`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly owned asof the effective filing date
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`of the later invention in order for the examinerto consider the applicability of 35 U.S.C.
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`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
`
`

`

`Application/Control Number: 16/975,829
`Art Unit: 1728
`
`Page 4
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`Claims 1, 2, and 3 are rejected under 35 U.S.C. 103 as being unpatentable over
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`TOSHIRO (JP2012015051) in view of ABDELSALAM (US20150280221), ABE ‘167
`
`(US20170155167), and SAWA (US20160204431), and further in view of SHINOMIYA ‘336
`
`(US 20200119336).
`
`Regarding Claim 1, TOSHIROteaches a nonaqueouselectrolyte secondary battery
`
`comprising a positive electrode containing a positive electrode active material (a positive
`
`electrode having a positive electrode active material; bottom of page 25 of the English translation
`
`of TOSHIRO), a negative electrode (a negative electrode; middle of page 24 of the English
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`translation of TOSHIRO) including a negative electrode mix layer (the negative electrode layer
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`comprising at least two layers to form a multilayer structure; top of page 25 of the English
`
`translation of TOSHIRO),
`
`wherein the positive electrode active material contains a titanium lithium complex oxide
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`(a lithium composite oxide with the general formula: Li, Niy Mn, Coq-y-z-w) Aw O2 wherein A may
`
`be a transition metal such as Ti; where 1.0<x< 1.02, y>z,0<z<0.4,0<w<0.01; see top of
`
`page 26 of the English translation of TOSHIRO) that hasalattice shrinkage in a chargedstate of
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`98.5% or less. The composition disclosed in TOSHIRO above overlaps with the composition
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`disclosed in paragraph [0019] of the instant application’s specification for the titanium lithium
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`complex oxide of claim 1. In Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773
`
`(Fed. Cir. 1985), the court said that it was immaterial what properties the alloys had or who
`
`discovered the properties because the composition is the same and thus must necessarily exhibit
`
`the properties. Thus, the limitation that the titanium complex oxide has a lattice shrinkage in a
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`chargedstate of 98.5% orless is an inherent property of the composition cited in the
`
`specification and does notfurther impart any structure to the claim. See MPEP 2112.01 I:
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`

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`Application/Control Number: 16/975,829
`Art Unit: 1728
`
`Page 5
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`“Where the claimed andpriorart products are identical or substantially identical in structure or
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`composition, or are produced by identical or substantially identical processes, a prima facie case
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`of either anticipation or obviousness has been established” Un re Best, 562 F.2d 1252, 1255, 195
`
`USPQ 430, 433 (CCPA 1977)).
`
`Moreover, TOSHIROteaches that the negative electrode mix layer includes a first layer
`
`and a secondlayer disposed successively from the negative electrode collector (the negative
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`electrode layer comprising at least two layers to form a multilayer structure; top of page 25 of the
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`English translation of TOSHIRO) andthat each of the first layer and secondlayer contains a
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`carbon-based negative electrode active material (the layer closest to the current collector contains
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`crystalline carbon andthe layer farther away from the current collector contains amorphous
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`carbon; top of page 25 of the English translation of TOSHIRO).
`
`TOSHIROis deficient in explicitly disclosing that the negative electrode mix layer
`
`contains a polyacrylic acid ora salt thereof.
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`ABDELSALAMdiscloses that the negative electrode mix layer contains a polyacrylic
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`acid ora salt thereof (a suitable binder for a composite anode layer containingsilicon is a
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`polyacrylic acid ora salt of polyacrylic acid; paragraph [0141] of ABDELSALAM).
`
`Advantageously, using polyacrylic acid as a binderallows for the expansion of the silicon during
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`charging and discharging (paragraph [0141] of ABDELSALAM). Accordingly, prior to the
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`effective filing date of the claimed invention, one of ordinaryskill in the art, in seeking to allow
`
`for the expansion ofsilicon during charging and discharging, would have foundit obvious to
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`utilize a polyacrylic acid bindora salt thereof as suggested by ABDESALAMinthe nonaqueous
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`secondarybattery as taught by TOSHIRO.
`
`

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`Application/Control Number: 16/975,829
`Art Unit: 1728
`
`Page 6
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`Modified TOSHIRO does not explicitly teach that a ratio (B/A) of the D-band/G-band
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`ratio (B) of the Raman spectrum ofthe second layer to the D-band/G-bandratio (A) of the
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`Ramanspectrum ofthefirst layer is 2 to 10 and that the carbon-based negative electrode active
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`material contained in the secondlayer includes an amorphous carbon anda graphite -based
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`carbon, wherein the amorphouscarbonis configured to be chemically and/or physically bonded
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`to a surface of the graphite-based carbon. However, modified TOSHIRO does vary the carbon
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`content of the amorphous carbon mixture layer with the crystalline graphite carbon mixture
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`layer, such that the negative electrode mixture layer farther from the negative electrode current
`
`collector has a higher content of the amorphouscarbon, while the contentof the crystalline
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`carbon at the layer closest to the negative electrode collectoris higher than that of the amorphous
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`carbon (abstract). As such, varying the amount of amorphous carbon correspondsto the peak
`
`intensity ratio of D-band/G-band, whereby a higherratio correspondsto a larger amount of
`
`amorphous carbon (paragraph [0023] of the instant application).
`
`Additionally, ABE ‘167 explicitly teaches a negative electrode active material with a
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`graphite B and graphite A, such thatthe lithium ion receptivity can be increased (paragraph
`
`[0058]). The graphite B is comprised of graphite particles as base particles whose surface are
`
`coated with an amorphous carbon. The graphite carbon particles and the amorphous carbon
`
`particles are containedin a single layer corresponding to the second layer, wherebyit is the
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`examiner’s position that the graphite carbon and amorphouscarbon are chemically and/or
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`physically bonded together by a vapor phase method through thermolysis of a hydrocarbon gas
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`such as propaneor acetylene carbon, thereby makingit into carbon to be deposited onto the
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`surface of graphite (paragraph [0056] of ABE ‘167), which correspondstothe instant
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`application’s disclosure of the amorphous carbon being fixed or bonded to the surface of
`
`

`

`Application/Control Number: 16/975,829
`Art Unit: 1728
`
`Page 7
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`graphite-based carbon (paragraphs [0033] & [0034] of the instant application). Further, ABE
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`‘167 teaches that the R value is a peak strength ratio of the peak strength at 1340 to 1370 cm"!
`
`with respectto the peak strength at 1570 to 1590 cm"! by meansof an argon ion laser Raman
`
`spectrum (paragraph [0056] of ABE ‘167), which correspondsto the instant application’s
`
`disclosure of the peak intensity ratio of D-band/G-band being used as an indicator of the amount
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`of amorphouscarbon (paragraph [0023] of the instant application). It is preferable, that the R
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`value is 0.3 or morein orderto secure sufficient quantity of the coating by the amorphous carbon
`
`((0056] of ABE ‘167). Accordingly, prior to the effective filing date of the claimed invention,
`
`one of ordinary skill in the art, would have optimized, by routine experimentation, the amount of
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`amorphous carbon in eachlayer, corresponding to the D-band/G-bandratio, in order to secure
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`sufficient quantity of the coating by amorphous carbonin the secondlayerof the negative
`
`electrode mix layer. “[W]here the general conditions of a claim are disclosed in the priorart, itis
`
`not inventive to discover the optimum or workable ranges by routine experimentation.” See Jn re
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`Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value
`
`of aknownresult effective variable, without producing any new or unexpectedresults, is within
`
`the ambit of a person of ordinary skill in the art. See Jn re Boesch, 205 USPQ 215 (CCPA 1980)
`
`(see MPEP § 2144.05, II.).
`
`Modified TOSHIROis deficient in disclosing a nonaqueouselectrolyte and that a
`
`concentration of the polyacrylic acid or a salt thereof in the first layer is higher than a
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`concentration of the polyacrylic acid orasalt thereof in the second layer.
`
`SAWAdiscloses a negative electrode used in a nonaqueouselectrolyte secondary battery
`
`(paragraph [0014] of SAWA). SAWAfurther discloses that the percentage of a binderin the
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`vicinity of a negative electrode current collector is 2.5 times or morethe percentage of the binder
`
`

`

`Application/Control Number: 16/975,829
`Art Unit: 1728
`
`Page 8
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`in a position away from the negative electrode current collector (paragraph [0003] of SAWA).
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`Advantageously, concentrating muchof the binder closeto the interface of the current collector
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`improves the adhesion between the second mix layer and the current collector (paragraph [002 1]
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`of SAWA). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill
`
`in the art, in seeking to improve the adhesion between the second mix layer and the current
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`collector, would have foundit obvious to vary the concentration of the binder suchthatthe
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`concentration of the binderin the first mix layer is higher than the concentration of the binder in
`
`the second mix layer as suggested by SAWAin the nonaqueouselectrolyte secondary battery as
`
`taught by modified TOSHIRO.
`
`Modified TOSHIRO does not explicitly disclose that the carbon-based negative electrode
`
`active material is a primary negative electrode active material constituting a highest
`
`concentration in eachofthe first layer and the secondlayer, the negative electrode mix layer
`
`further including a silicon compoundas a secondary negative electrode active material in
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`addition to the carbon-based negative electrode active material, and the silicon compoundis
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`either (1) contained onlyin thefirst layer, or (i) contained in a higher concentration in thefirst
`
`layer than in the secondlayer.
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`SHINOMIYA ‘336 discloses a nonaqueous electrolyte secondary battery having
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`excellent discharge load characteristics and excellent long-term cycle characteristics (abstract).
`
`The negative electrode 30 includes the negative electrode current collector 31 and at least one
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`negative electrode mixture layer 32 formed on the negative electrode current collector 31
`
`({0027]). The negative electrode mixture layer 32 includes a first mixture layer 33 primarily
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`composedof carbon-coated graphite 35 and a second mixture layer 34 primarily composed ofa
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`graphite 36 (i.e., the graphite constitutes the highest concentration in each of the first and second
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`

`

`Application/Control Number: 16/975,829
`Art Unit: 1728
`
`Page 9
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`mixture layers; [0028]). Additionally, in the negative electrode mixture layer 32, a negative
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`electrode active material other than graphite may also be contained, such as silicon (Si) (i.e., a
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`secondary negative electrode active material; [0037]). The silicon contained in the negative
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`electrode mixture layer 32 may be containedin only the first mixture layer 33 or the second
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`mixture layer 34, but may also be containedin both layers in different concentrations ([0037]).
`
`Therefore, prior to the effective filing date of the claimed invention, it would have been obvious
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`to a person of ordinary skill in the art, in seeking to provide a battery having excellent discharge
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`load and long-term cycle characteristics, to further modify the negative electrode of the
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`nonaqueous electrolyte battery, as taught by modified TOSHIRO, suchthat the carbon -based
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`negative electrode active material is a primary negative electrode active material constituting a
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`highest concentration in each of the first layer and the secondlayer, the negative electrode mix
`
`layer further including a silicon compoundas a secondary negative electrode active material in
`
`addition to the carbon-based negative electrode active material, and the silicon compoundis
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`either (1) contained onlyin thefirst layer, or (i) contained in a higher concentration in thefirst
`
`layer than in the secondlayer, as suggested by SHINOMIYA‘336.
`
`Regarding Claim 2, modified TOSHIROteaches the nonaqueous electrolyte secondary
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`battery according to Claim 1, wherein the thickness of the first mix layer is preferably 10 um or
`
`less and the thickness of the second mix layer is 10 um or more (paragraphs [0026] & [0027] of
`
`SAWA). Thelimitation of claim 2 is met, for example, whenthe first mix layer is 10 um, the
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`second mix layer is 10 um, andthe total negative electrode mix layeris a total of 20 um.
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`Therefore, the second mix layer is 50% of the thickness of the negative electrode mix layer
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`whichis within the range of 20% to 70%.
`
`

`

`Application/Control Number: 16/975,829
`Art Unit: 1728
`
`Page 10
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`Asset forth in MPEP 2144.05, in the case where the claimed range “overlaporlie inside
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`ranges disclosed bythe priorart,” a prima facie case of obviousness exists (In re Wertheim, 541
`
`F.2d 257, 191 USPQ 90(CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.
`
`Cir. 1990)).
`
`Regarding Claim 3, modified TOSHIROteaches the nonaqueous electrolyte secondary
`
`battery according to Claim 1, wherein the second layer contains no polyacrylic acid norsalt
`
`thereof (the percentage of a binderin the vicinity of a negative electrode current collector is 2.5
`
`times or more the percentage of the binderin a position away from the negative electrode current
`
`collector (paragraph [0003] of SAWA). Moreover, modified TOSHIROteaches that the amount
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`of the binder in the first mix layer and the second mix layer may be appropriately adjusted
`
`depending on the amountor type of active material particles used in each layer, such that the
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`second layer could contain no polyacrylic acid norsalt thereof (paragraph [0039] of SAWA).
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to TAYLOR H KRONEwhosetelephone numberis (57 1)270-5064.
`
`The examiner can normally be reached Mondaythrough Friday from 8:30 AM - 5:30 PM EST.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicantis
`
`encouragedto use the USPTO Automated Interview Request (AIR)at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, MATTHEW T MARTINcan be reached on 571-270-7871. The fax phone number
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`for the organization wherethis application or proceedingis assigned is 571-273-8300.
`
`

`

`Application/Control Number: 16/975,829
`Art Unit: 1728
`
`Page 11
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`
`/TAYLOR HARRISON KRONE/
`Examiner, Art Unit 1728
`
`/MATTHEW T MARTIN/
`Supervisory Patent Examiner, Art Unit 1728
`
`