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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
`
`17/277, 754
`
`03/19/2021
`
`SHUN AOTA
`
`083710-3464
`
`7169
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`ALHAWAMDEH, NADERJ
`
`2831
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`10/03/2023
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`ELECTRONIC
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`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.
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`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
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`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-4 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 1and3-4 is/are rejected.
`Claim(s) 2 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:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)M The drawing(s) filed on 3/19/2021 is/are: a)¥) accepted or b)C) 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)() None ofthe:
`b)( Some**
`a) All
`1.4] Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.2.) 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
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230926
`
`Application No.
`Applicant(s)
`47/277,754
`AOTA, SHUN
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`NADER J ALHAWAMDEH
`2831
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1) Responsive to communication(s) filed on 3/19/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/277,754
`Art Unit: 2831
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013,
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`is being examined
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`under the first inventor to file provisions of the AIA.
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a)(2) the claimed invention was described in a patent issued under section 151, orinan
`application for patent published or deemed published undersection 122(b), in which the
`patentor application, as the case may be, namesanother inventor and waseffectively filed
`before the effectivefiling date of the claimed invention.
`
`Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by
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`Abe et al. (US. 2020/0370701).
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`In Regards to Claim 1:
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`Abe teaches a heat-insulating sheet (11) comprising:
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`a fiber sheet (12) having spaces therein; and silica xerogel (21) held in the
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`spacesofthe fiber sheet (12), wherein the heat-insulating sheet (11) includesafirst
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`region (22) and located at a peripheral portion of the heat- insulating sheet (11) and a
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`second region (13) surrounded bythe first region (22), and
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`a compression rate of the second region (13) of the heat-insulating sheet (11) in
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`response to a pressure of 1 MPa applied to the second region (13) is smaller than a
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`compression rate of the first region (22) of the heat-insulating sheet (11) in response to
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`a pressure of 1 MPa applied to the first region (22) (Paragraph 35, a pressure is applied
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`to a part of heat insulation sheet 11 with a die to form low compressible region 13 at the
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`

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`Application/Control Number: 17/277,754
`Art Unit: 2831
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`Page 3
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`part.
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`In this process, thick region 22 is formedin the region of heat insulation
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`sheet 11 to which the pressure is not applied. This process provides heat insulation
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`sheet 11 including thick region 22 and low compressible region 13 which is thinner than
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`thick region 22 and which has a compressibility equal to or smaller than 0.5% upon
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`having a pressure of 0.7 MPa applied to low compressible region 13. The pressure
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`applied to heat insulation sheet 11 with the die may be larger than 0.7 MPa and may, for
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`example, be 1 MPa).
`
`In Regards to Claim 3:
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`Abe teaches the heat-insulating sheet according to claim 1, wherein the second
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`region (13) includes a geometric center of gravity of the heat-insulating sheet (11).
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`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
`
`A patent fora claimed invention may notbe obtained, notwithstanding thatthe claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior artare such that the claimed invention as a whole would have
`been obvious beforethe effective filing date of the claimed inventionto a person having
`ordinaryskillin the art to which the claimed invention pertains. Patentability shall notbe
`negated by the manner in whichthe invention was made.
`
`Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Abeetal.
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`(US. 2020/0370701) in view of Abe Yuuchi (WO 2018/110055 A1)(US.2019/0190098
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`A1 used as English Translated).
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`In Regards to Claim 4:
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`Abe dose not teach a secondary battery, comprising: a case; a plurality of battery
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`cells fixed in the case; and a heat-insulating sheet disposed between the plurality of
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`

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`Application/Control Number: 17/277,754
`Art Unit: 2831
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`Page 4
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`battery cells, wherein the heat-insulating sheet comprises the heat-insulating sheet
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`according to claim 1.
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`Abe Yuuichi teaches a secondary battery (1001), comprising:
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`a case (31); a plurality of battery cells (14) fixed in the case (31); and a heat-
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`insulating sheet (11) disposed between the plurality of battery cells (14), wherein the
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`heat-insulating sheet (11) comprises the heat-insulating sheet (11) according to claim 1.
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`However,
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`It would have been obvious before the effective filing date of the
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`claimed invention to a person having ordinary skill in the art to use Abe Yuuichi's
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`teaching of the use of the secondary battery as a modification in the Abe heat insulation
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`sheet in order to producing the heat insulation sheet, and a secondary battery including
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`the heat insulation sheet (Abe Yuuichi, Paragraph 1).
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`Allowable Subject Matter
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`1.
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`Claim 2 is objected to as being dependent upon a rejected base claim, but would
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`be allowable if rewritten in independent form including all of the limitations of the base
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`claim and anyintervening claims.
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`The prior art of record fails to teach or fairly suggest these limitation as
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`substantially described in claim 2, these limitations,
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`in combination with remaining
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`limitations of claim 2, are neither taught nor suggested by the prior art of record.
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`Conclusion
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`Anyinquiry concerning this communication or earlier communications from the
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`examiner should be directed to NADER J ALHAWAMDEH whosetelephone number is
`
`(571)270-0571. The examiner can normally be reached Monday-Friday 9Am - 6Pm
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`EST.
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`

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`Application/Control Number: 17/277,754
`Art Unit: 2831
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`Page 5
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`
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`
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`
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`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Abdullah A Riyami can be reached on (571)270-3119. The fax phone
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`numberfor the organization where this application or proceeding is assigned is 571-
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`273-8300.
`
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`
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`
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`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/NADER J ALHAWAMDEH/
`Patent Examiner, Art Unit 2831
`/ABDULLAH A RIYAMI/
`Supervisory Patent Examiner, Art Unit 2831
`
`