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www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/414,521
`
`06/16/2021
`
`Tatsuya Akira
`
`P210522US00
`
`6748
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`TALBOT, BRIAN K
`
`ART UNIT
`1715
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/11/2022
`
`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.and 3-14 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`is/are withdrawn from consideration.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 and 3-14 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) 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://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) The drawing(s)filed on 6/16/21 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)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) 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 7/9/21.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220106
`
`Application No.
`Applicant(s)
`17/414,521
`Akiraet al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`BRIAN K TALBOT
`1715
`Yes
`
`
`
`-- The MAILING DATEofthis 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) Responsive to communication(s) filed on 6/16/21.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) 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: 17/414,521
`Art Unit: 1715
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined under
`
`the first inventorto file provisions of the AIA.
`
`2.
`
`The amendmentfiled 6/16/21 has been considered and entered. Claim 2 has been
`
`canceled. Claim 14 has been added. Claims 1 and 3-14 remain in the application.
`
`Claim Rejections - 35 USC § 112
`
`3.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—Thespecification shall conclude with one or more claims particularly pointing
`out anddistinctly 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-AIA), second paragraph:
`The specification shall conclude with one or more claimsparticularly pointing out and distinctly
`claiming the subject matter which the applicant regardsas his invention.
`
`4.
`
`Claims 4-6,8-10 and 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-
`
`AIA), second paragraph,as being indefinite for failing to particularly point out and
`
`distinctly claim the subject matter which the inventoror a joint inventor (or for
`
`applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
`
`Regarding the claims the term “the roll to roll method” lacks antecedentbasis.
`
`

`

`Application/Control Number: 17/414,521
`Art Unit: 1715
`
`Page 3
`
`Claim Rejections - 35 USC § 102 or 103
`
`5.
`
`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 statutory basis 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 undereither status.
`
`6.
`
`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 personshall be entitled to a patent unless —
`
`(a)(2) the claimed invention wasdescribed 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, namesanother inventor and waseffectively filed before the effective filing date of the
`claimed invention.
`
`7.
`
`Claims 1,3-5 and 11-13 are rejected under 35 U.S.C. 102(a)(2) as being clearly
`
`anticipated by or in the alternative, under 35 U.S.C. 103 as being unpatentable over
`
`Kimuraet al. (2015/0280208).
`
`Kimuraet al. (2015/0280208) teaches a method and apparatus for manufacturing
`
`negative electrode for lithium secondary battery comprising preparing a slurry electrode
`
`composition, applying the composition and hotpressing followed bya slitting step
`
`(abstract and Fig. 1). Kimuraetal. (2015/0280208) teaches preparing the electrode
`
`slurry, applying the slurry to a current collector, drying the slurry to remove solvent,
`
`compression-molding the dried slurry at 200-400C [0069]-[0077],[0097].
`
`

`

`Application/Control Number: 17/414,521
`Art Unit: 1715
`
`Page 4
`
`Under 102(a)(2) the claim recites one surface of electrode transported to thefirst
`
`
`firing roll and then heated and a secondsurface transported to a secondfiring roll and
`
`heated. This is met as the “one surface (leading edge top surface) is transported to
`
`peripheral surface of the first upper firing roller (2) and a second surface (bottom surface
`
`trailing edge) is transported to peripheral of the second lowerfiring roller (2) and there
`
`would be time between the contacting of the rollers thereby meeting the claimed “and
`
`then”.
`
`Under 35 USC 103 the claim recites one surface of electrode transported to the
`
`
`first firing roll and then heated and a second surface transported to a secondfiring roll
`
`and heated. Kimuraet al. (2015/0280208) teaches doing this contacting simultaneously
`
`and the Examinertakes the position that one skilled in the art would have had a
`
`reasonable expectation of achieving similar success regardless of whether the electrode is
`
`consecutively contacted with firing rollers or simultaneously contacted absent a showing
`
`of unexpected results garnered directly therefrom.
`
`Regarding claim 3, the compression-moldingrollers, 1.e. firing rollers is performed
`
`under inert atmosphere in nitrogen to avoid oxidation thereof [0095].
`
`Regarding claim 4, the application process for applying the mixture is done in a
`
`roll-to-troll process [0010].
`
`Regarding claim 5, the drying process is performedinaroll-to-roll process
`
`[0076],[0010].
`
`Regarding claim 11 and 12, a slitting process is performed after the compression-
`
`molding process. While the Examiner acknowledges Kimuraet al. (2015/0280208)fails
`
`

`

`Application/Control Number: 17/414,521
`Art Unit: 1715
`
`Page 5
`
`to teach a laser for slitting, the Examiner takes the position that using a laser for slitting is
`
`well known and any knownslitting process would result in the desired shape of the
`
`electrode absent a showingto the contrary.
`
`Regarding claim 13, the negative electrode material include carbon or graphite
`
`[0054]-[005].
`
`Claim Rejections - 35 USC § 103
`
`8.
`
`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 statutory basis 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 undereither status.
`
`9.
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basisforall
`
`obviousnessrejections set forth in this Office action:
`
`A patent for a claimed invention maynot 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 mannerin which the invention was made.
`
`10.
`
`Claim 61s rejected under 35 U.S.C. 103 as being unpatentable over Kimuraetal.
`
`(2015/0280208) in combination with JP-2005/276444.
`
`Features detailed above concerning the teachings of Kimuraet al. (2015/0280208)
`
`are incorporatedhere.
`
`

`

`Application/Control Number: 17/414,521
`Art Unit: 1715
`
`Page 6
`
`Kimuraet al. (2015/0280208) fails to teach forming the coating on both sides of
`
`the current collector and drying after application thereof.
`
`JP-2005/276444 teaches a similar process whereby electrode is formedin a roll-to-
`
`roll process and application of one side followed by a drying step is performedthen this
`
`is done for the other side by application and drying step (abstract and Fig. 3).
`
`Therefore it would have been obvious for one skilled in the art before the effective
`
`filing date of the claimed invention to have modified Kimuraet al. (2015/0280208)
`
`processto perform the coating/drying steps on both sides of a current collector as
`
`evidenced by JP-2005/276444 with the expectation of achieving similar success.
`
`11.
`
`Claim 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kimuraet
`
`al. (2015/0280208) in combination with Kojimaet al. (2014/0231721).
`
`Features detailed above concerning the teachings of Kimuraet al. (2015/0280208)
`
`are incorporatedhere.
`
`Kimuraet al. (2015/0280208) fails to teach a rolling step between the drying and
`
`firing steps.
`
`Kojimaet al. (2014/0231721) teaches forming positive electrode by applying
`
`slurry to collector, drying at 80C to removesolvent, roll pressing after drying and then
`
`heating and curing in durance at 170C (abstract and [0088]).
`
`Therefore it would have been obvious for one skilled in the art before the effective
`
`filing date of the claimed invention to have modified Kimuraet al. (2015/0280208)
`
`processto includea rolling/pressing step following the drying and before the firing as
`
`

`

`Application/Control Number: 17/414,521
`Art Unit: 1715
`
`Page 7
`
`evidenced by Kojimaetal. (2014/0231721) with the expectation of achieving similar
`
`success.
`
`Regarding claims 9 and 10, the claims recite winding and collecting the dried
`
`electrodes prior to performing a rolling step instead of doing it continuously.
`
`While the Examiner acknowledgesthis fact, the Examiner takes the position that
`
`one skilled in the art would have had a reasonable expectation of achieving similar
`
`success regardless of whether or not the dried electrodes were immediately pressed or
`
`wound/collected before pressing absent a showing of unexpectedresults to the contrary.
`
`12.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to BRIAN K TALBOTwhosetelephone numberis
`
`(571)272-1428. The examiner can normally be reached Mon-Thurs 6:30-5PM - Fri OFF.
`
`Examinerinterviewsare 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, Timothy H Meekscan be reached on 571-272-1423. The fax phone number
`
`for the organization where this application or proceeding 1s 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,
`
`

`

`Application/Control Number: 17/414,521
`Art Unit: 1715
`
`Page 8
`
`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 CustomerService Representative, call 800-786-9199 (IN USA
`
`OR CANADA)or 571-272-1000.
`
`/BRIAN K TALBOT/
`Primary Examiner, Art Unit 1715
`
`

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