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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
`
`17/274,853
`
`03/10/2021
`
`Yuji Oura
`
`P210193US00
`
`3485
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA22182
`
`LL AIQUN
`
`1766
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/12/2023
`
`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)
`
`

`

`Office Action Summary
`
`Application No.
`171274,853
`Examiner
`AIQUN LI
`
`Applicant(s)
`Ouraetal.
`Art Unit
`1766
`
`AIA (FITF) Status
`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 11/28/2023.
`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.
`
`Disposition of Claims*
`1-18 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 7-9 is/are withdrawn from consideration.
`() Claim(s)__is/are allowed.
`Claim(s) 1-6 and 10-18 is/are rejected.
`[ Claim(s)
`is/are objected to.
`Claim(s) 1-18 are subject to 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:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)C) The specification is objected to by the Examiner.
`11) The drawing(s) filed on 3/10/2021 is/are: a)(¥) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)(¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`__c)LJ None ofthe:
`b)LJ Some**
`a)¥) All
`1.1 Certified copies of the priority documents have been received.
`2.1) 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 4/15/2021,3/20/2023.
`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/Control Number: 17/274,853
`Art Unit: 1766
`
`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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`Election/Restrictions
`
`2.
`
`Applicant’s election of speciesI, claims 1-6 and 10-18 in the reply filed on 28 November 2023is
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`acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the
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`restriction requirement, the election has been treated as an election without traverse (MPEP §
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`818.01(a)).
`
`Claims 7-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being
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`drawnto a nonelected species.
`
`Claim Rejections - 35 USC § 112
`
`3.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out
`and distinctly claiming the subject matter which the inventor or a joint inventor regards as the
`invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`4.
`
`Claims 6, 10, 11, 13 and 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
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`matter which the inventor or a joint inventor (or for applications subject to pre-AlA 35 U.S.C. 112, the
`
`applicant), regards as the invention.
`
`Claims 6, 13 and 14 improperly recite the Markush group inthe form of “selected from A, B
`
`and C”, which renders the claim indefinite because it is unclear which membersof the group are part of
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`

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`Application/Control Number: 17/274,853
`Art Unit: 1766
`
`Page 3
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`the claimed invention. A proper Markush groups may berecited as
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`"...selected from the group
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`consisting of A, B and C" or "...selected from A, B or C." See MPEP § 2173.05(h).
`
`Claim 10 recites “a main component”. The term “main”in claim 10 is a relative term which
`
`renders the claim indefinite. The term “main” is not defined by the claim, the specification does not
`
`provide a standard for ascertaining the requisite degree, and one of ordinaryskill in the art would not be
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`reasonably apprised of the scope of the invention.
`
`5.
`
`The following is a quotation of 35 U.S.C. 112(d):
`
`(d) REFERENCE IN DEPENDENT FORMS. —Subject to subsection (e), a claim in dependent form shall
`contain a reference to a claim previously set forth and then specify a further limitation of the subject
`matter claimed. A claim in dependent form shall be construed to incorporate by reference all the
`limitations of the claim to which it refers.
`
`The following is a quotation of pre-AlA 35 U.S.C. 112, fourth paragraph:
`
`Subject to the following paragraph [i.e., the fifth paragraph of pre-AlA 35 U.S.C. 112], a claim in
`dependent form shall contain a reference to a claim previously set forth and then specify a further
`limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate
`by reference all the limitations of the claim to which it refers.
`
`6.
`
`Claims 15-17 are rejected under 35 U.S.C. 112(d) or pre-AlA 35 U.S.C. 112, 4th paragraph, as
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`being of improper dependent form for failing to furtherlimit the subject matter of the claim upon which
`
`it depends,or for failing to include all the limitations of the claim upon which it depends. Claim 15
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`recites “ an intermediate layer between the current collector and the mixture layer, wherein the
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`intermediate layer is arranged so as to be in contact with a surface of the current collector”, however,
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`independent claim 1 requires “ a mixture layer formed on at least one surface of the current collector’,
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`thus the intermediate layer recited in claim 15 fails to include all the limitations of claim 1. Applicant
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`may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the
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`claim(s) in independentform, or present a sufficient showing that the dependent claim(s) complies with
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`the statutory requirements.
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`

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`Application/Control Number: 17/274,853
`Art Unit: 1766
`
`Page 4
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`Claim Rejections - 35 USC § 102
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`7.
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`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
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`basis (i.e., changing from AIA to pre-AlA) for the rejection will not be considered a new ground of
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same
`
`under either status.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis
`
`for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale,
`or otherwise available to the public before the effective filing date of the claimed invention.
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an application
`for patent published or deemed published under section 122(b), in which the patent or application, as
`the case may be, names another inventor and was effectively filed before the effective filing date of
`the claimed invention.
`
`8.
`
`Claims 1-3, 6, 10-14 and 18 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by
`
`US 2015/0303484 (Lida), which is listed in Applicant’s information disclosure statement.
`
`Regarding claims 1 and 6, Lida teaches a positive electrode for a secondary battery comprises a
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`current collector (Figure 1, [0083] and [0116]), and a mixture layer formed on the surface of the current
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`collector (Figure 5), wherein the mixture layer comprises inorganic particles such as silica and alumina
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`([109 in Figure 5 and [0073]), which meets the claimed inorganic particles, a conductive material (111
`
`in Figure 5 and [0071]), and a binder material that binds the inorganic particles and the conductive
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`material together to form a coating on the current collector([0062], [0079] and 107 in Figure 5), which
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`meets the particulate aggregate.
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`Regarding claim 2, Lida teaches that the aggregate is present in the direction of a surface of the
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`current collector from a thickness direction of the conductive layer (Figure 1).
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`

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`Application/Control Number: 17/274,853
`Art Unit: 1766
`
`Page 5
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`Regarding claim 3, Lida exemplifies the conductive layer coated onto the current collector has a
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`thickness of 2um ([0054] and [0091]), and the active material layer has a thickness of 601m ([0117]),
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`thus the conductive layer is about 3.2 volume % calculated by the examiner based on a volume ratio of
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`(2/62), which meets the claimed amount.
`
`Regarding claims 10-11, Lida teaches the inorganic particles such as silica are present in about
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`30 volume %([0076]), the conductive material such as carbon black is about 20 volume% ([0078]), and
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`the binder such as polyethylene is about 50 volume% ([0071]), thus the inorganic particles are present
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`in an amountof about 46% by mass estimated by the examiner based on a densityofsilica of 2.6 g/cm?,
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`carbon black of about 2 g/ cm?, and polyethylene of about 1 g/cm?, which meets the claimed amount
`
`by mass.
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`Regarding claim 12, Lida teaches the particle size of the inorganic particles is 0.01, 0.1 or 0.5,
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`etc. ([(0074]), which meets the claimed size range.
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`Regarding claim 13, Lida teaches that the conductive material includes carbon black, etc.
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`([0077]), which meets the claimed conductive agent.
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`Regarding claim 14, Lida teaches that the mixture layer comprises acrylic acid copolymers
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`([0065]), which meets the acrylic resin.
`
`Regarding claim 18, Lida teachesa lithium secondary battery comprises the positive electrode,
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`a negative electrode and an electrolyte ([0017], [0019] and [0121)).
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`Claim Rejections - 35 USC § 103
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`9.
`
`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
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`

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`Application/Control Number: 17/274,853
`Art Unit: 1766
`
`Page 6
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`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
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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:
`
`1. Determining the scope and contentsofthe prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`10.
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`Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Lida.
`
`Regarding claim 4, Lida teaches that the particle size of the inorganic particles can be 1 um
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`([0074]), thus the aggregate of the binder, the inorganic particles and the nonconductive particles is
`
`greater than 1 um, which overlaps with the claimed size range.
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`One ofordinaryskill in the art at the time the invention was made would have found it obvious
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`to include aggregate at the instantly claimed size range since it has been held that in the case where the
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`claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness
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`exists.
`
`In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.1.
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`Generally, differences in ranges will not support the patentability of subject matter
`
`encompassed bythe prior art unless there is evidence indicating such rangesis critical. See MPEP
`
`2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ
`
`233, 235 (CCPA 1955) and /n re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
`
`Regarding claim 5, a person of ordinaryskill in the art would have been motivated to adjust the
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`size of the aggregate of the binder, the inorganic particles and the nonconductive particles of Lida
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`

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`Application/Control Number: 17/274,853
`Art Unit: 1766
`
`Page 7
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`relative to the median diameter of the positive electrode active material in order to obtain a workable
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`product.It is noted that no criticality has been demonstrated in the specification with regard to the
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`particle size recited in the claims.
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`Conclusion
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`11.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to AIQUN LI whose telephone number is (571)270-7736. The examiner can normally
`
`be reached Monday-Friday 9:00 am -4:00 pm.
`
`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,
`
`Randy Gulakowski can be reached on 571-2721302. The fax phone number for the organization where
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`this application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from
`
`Patent Center. Unpublished application information in Patent Center is available to registered users. To
`
`file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.Visit
`
`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
`
`https://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For additional
`
`questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like
`
`assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or
`
`571-272-1000.
`
`

`

`Application/Control Number: 17/274,853
`Art Unit: 1766
`
`/AIQUN LI/
`Ph.D., Primary Examiner, Art Unit 1766
`
`Page 8
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