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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
`
`17/275,289
`
`03/11/2021
`
`Takafumi Tsukagoshi
`
`P210187US00
`
`5155
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`FREEMAN, EMILY ELIZABETH
`
`1724
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/20/2023
`
`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):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Application No.
`Applicant(s)
`17/275 ,289
`Tsukagoshi etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`EMILY E FREEMAN
`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
`
`1)C Responsive to communication(s) filed on
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)C) 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\() 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*
`1-8 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) 1-8 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C} 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)C2 The specification is objected to by the Examiner.
`11)M The drawing(s) filed on 03/11/2021 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)[VM. 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.{¥] Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`
`Paper No(s)/Mail Date10/06/2022,12/08/2021,and04/05/2021.
`U.S. Patent and Trademark Office
`
`3)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230913
`
`

`

`Application/Control Number: 17/275,289
`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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`1.
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`The present application, filed on or after March 16, 2013, is being examined underthe
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`first inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 102
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`2.
`
`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-AIA 35 U.S.C. 102 and 103)is incorrect, any correction of the
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`statutory basis (i.e., changing from AIA to pre-AlA) for the rejection will not be considered a new
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`ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would
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`be the same under either status.
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`3.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`basis for the rejections underthis section made in this Office action:
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`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 effectivefiling date of the claimed
`invention.
`
`4.
`
`Claims 1-5 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Mineoet al. (WO 2013118627 A1) (disclosed by Applicant on IDS dated 04/05/2021).
`
`e Regarding Claim 1, Mineo discloses a separator comprising: a resin substrate
`
`(microporous resin film, 29a), a first heat-resistant layer (heat resistant porous layer,
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`29b) covering the first surface (upper surface of microporous resin film, 29a) of the resin
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`substrate (microporous resin film, 29a): a second heat-resistant layer (heat resistant
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`porous layer, 29b) covering part of a second surface (lower surface of microporous resin
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`film, 29a) of the resin substrate (microporous resin film, 29a) (Figure 5, [0055]). Mineo
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`further discloses a non-covered region (non-formed portion, 29C) on the second surface
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`(lower surface of microporous resin film, 29a) of the resin substrate (microporous resin
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`film, 29a), the non-covered region (non-formed portion, 29C) not being covered with the
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`

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`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 3
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`second heat-resistant layer (heat resistant porous layer, 29b) and being in
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`communication with an edge of the resin substrate (microporous resin film, 29a) (Figure
`
`5, [0055]). Mineo further discloses thatthe first heat-resistant layer (heat resistant
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`porous layer, 29b) may cover the whole first surface (upper surface of microporous resin
`
`film, 29a) of the resin substrate (microporous resin film, 29a) [0062]. Mineo further
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`disclosesthat the first heat-resistant layer (heat resistant porous layer, 29b) and the
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`second heat-resistant layer (heat resistant porous layer, 29b) each include inorganic
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`particles (ceramic) and a binder [0033-0036]. Mineo further discloses that a contentof
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`the binder in each heat-resistant layer (heat resistant porous layer, 29b) is between 0.5
`
`mass% and 15 mass% [0036]. As such, it would be understood bythe skilled artisan that
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`the content of the inorganic particles (ceramic) in each heat-resistant layer (heat
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`resistant porous layer, 29b) is between 85 mass% and 99.5 mass%.
`
`e Regarding Claim 2, Mineo further discloses that the binder may be polwvinylidene
`
`fluoride [0036].
`
`e Regarding Claim 3, Mineo further discloses that the non-covered region (non-formed
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`portion, 29C) includes a lateral non-covered region (non-formed portion, 29C) extending
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`from one lateral edge to the other lateral edge of the resin substrate (microporous resin
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`film, 29a) (see Figure 5).
`
`e Regarding Claim 4, Mineo further discloses that the form of the non-covered region
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`(non-formed portion, 29C)is linear (see Figure 5).
`
`e Regarding Claim 5, Mineo further discloses that the resin substrate (microporous resin
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`film, 29a) has a substantially square shape [0017]. Mineo further discloses that the width
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`of the resin substrate (microporous resin film, 29a) may have a width between 2 mm and
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`15 mm [0019]. As such, the skilled artisan would appreciate that the area of the resin
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`substrate (microporous resin film, 29a) (and first surface and second surface) may be
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`

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`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 4
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`between 4 mm? and 225 mm”. Mineofurther discloses that the width of the non-covered
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`region (non-formed portion, 29C) is 5 mm or less [0020].
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`As such, the skilled artisan would appreciate that there are many possible
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`embodiments wherein the area of the non-covered region (non-formed portion, 29C)is
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`between 5% and 20% of the area of the second surface (lower surface of microporous
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`resin film, 29a) of the resin substrate (microporous resin film, 29a). For example, if the
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`width of the resin substrate (microporous resin film, 29a) (and therebythe first surface
`
`and second surface) is 10 mm, the area of the second surface (lower surfaceof
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`microporous resin film, 29a) is 100 mm7?. Furthermore, if the width of the non-covered
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`region (non-formed portion, 29C) is 1 mm and the length of the non-covered region (non-
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`formed portion, 29C) is 10 mm, the area of the non-covered region (non-formedportion,
`
`29C)is 10 mm”, which is 10% of the area of the second surface (lower surface of
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`microporous resin film, 29a).
`
`e Regarding Claim 7, Mineo further discloses a non-aqueous electrolyte secondary
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`battery (1) comprising an electrode laminate (10”) which comprises: a positive electrode
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`(23a), a negative electrode (23b), and a separator according to Claim 1 (see above)
`
`being disposed between the positive electrode (23a) and the negative electrode (23b)
`
`(Figures 11 and 12, [0098, 0107)).
`
`e Regarding Claim 8, Mineo further discloses that the first heat-resistant layer (heat
`
`resistant porous layer, 29b) faces the positive electrode (23a) (see Figure 11).
`
`Claim Rejections - 35 USC § 103
`
`5.
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`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 effectivefiling date of the claimed invention to a person having
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`

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`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 5
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`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.
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`6.
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`The factual inquiries for establishing a background for determining obviousness under
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`35 U.S.C. 103 are summarizedasfollows:
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`1. Determining the scope and contents of the 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 pertinentart.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`7.
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`This application currently namesjoint inventors. In considering patentability of the claims
`
`the examiner presumesthat the subject matter of the various claims was commonly owned as
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`of the effectivefiling date of the claimed invention(s) absent any evidenceto the contrary.
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`Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective
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`filing dates of each claim that was not commonly ownedasofthe effectivefiling date of the later
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`invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any
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`potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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`8.
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`Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Mineoet al. (WO
`
`2013118627 A1) (disclosed by Applicant on IDS dated 04/05/2021), as applied to Claim 1
`
`above, andfurtherin view of Leeet al. (US 2021/0242538 A1).
`
`In Regards to Claim 6 (Dependent Upon Claim 1):
`
`Mineo discloses the separator of Claim 1 as set forth above.
`
`Mineois deficient in disclosing that the non-covered region includesa lateral non-
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`covered region being oblique relative to the lateral direction of the resin substrate and extending
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`from one lateral edge to the otherlateral edge.
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`Lee discloses a separator (100) comprising a porous polymersubstrate (140), wherein
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`an electrode adhesive layer (110) is coated on the surface of the porous polymer substrate
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`

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`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 6
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`(140) (Figure 1, [0026, 0034]). Lee further discloses that the electrode adhesive layer (110) may
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`be applied to the porous polymersubstrate (140) in a pattern such that the porous polymer
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`substrate (140) contains uncoated regions (120) (Figure 1, [0026, 0034]). Lee further discloses
`
`that the uncoated regions (120) may be present on the surface of the porous polymer substrate
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`(140) in a direction whichis oblique relative to the lateral direction of the porous polymer
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`substrate (140) (see Figure 1).
`
`Therefore, it would be obvious to one of ordinary skill in the art at the time ofthe filing of
`
`the invention to select for the non-covered region of Mineo, the arrangement of the uncoated
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`regions of Lee wherein the uncoated region is positioned oblique relative to the lateral direction
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`of the substrate, as is it knownin the art as a suitable arrangementfor a layer having a non-
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`covered region to be placed on a substrate for a separator, as taught by Lee. By making such a
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`selection, all of the limitations of Claim 6 are met.
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`Conclusion
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`9.
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`Anyinquiry concerning this communication or earlier communications from the examiner
`
`should be directed to EMILY E FREEMANwhosetelephone numberis (571)272-1498. The
`
`examiner can normally be reached Monday- Friday 8:30AM-5:00PM.
`
`Examiner interviews are available via telephone, in-person, and video conferencing
`
`using a USPTO supplied web-basedcollaboration tool. To schedule an interview, applicant is
`
`encouraged to use the USPTO AutomatedInterview Request(AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`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 numberfor the
`
`organization where this application or proceeding is 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 Centeris available
`
`to registered users. To file and manage patent submissions in Patent Center, visit:
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`

`

`Application/Control Number: 17/275,289
`Art Unit: 1724
`
`Page 7
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`
`/E.E.F./
`Examiner, Art Unit 1724
`/BRIAN R OHARA/
`Examiner, Art Unit 1724
`
`