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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
`
`17/414,521
`
`06/16/2021
`
`Tatsuya Akira
`
`P210522US00
`
`6748
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`TALBOT,BRIAN K
`
`1715
`
`07/06/2023
`
`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)
`
`

`

`Office Action Summary
`
`Application No.
`17/414,521
`Examiner
`BRIAN K TALBOT
`
`Applicant(s)
`Akira et al.
`Art Unit
`1715
`
`AIA (FITF) Status
`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) Responsive to communication(s)filed on 5/2/23.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J 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.
`
`Disposition of Claims*
`1.and 3-16 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) 1 and 3-16 is/are rejected.
`1) Claim(s)__is/are objectedto.
`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://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)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)1) 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... 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)
`
`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)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230630
`
`

`

`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 5/2/23 has been considered and entered. Claim 2 has been
`
`canceled. Claims 1 and 3-16 remain in the application.
`
`3,
`
`Thetext of those sections of Title 35, U.S. Code not included in this action can be
`
`found in a prior Office action.
`
`Claim Rejections - 35 USC § 103
`
`4.
`
`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.
`
`5.
`
`Claims 1,3-5 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Kimuraet al. (2015/0280208) in combination with Bolandiet al. (2012/0219841).
`
`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
`
`

`

`Application/Control Number: 17/414,521
`Art Unit: 1715
`
`Page 3
`
`(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].
`
`Kimuraet al. (2015/0280208) fails to teach a firing process includinga first and
`
`secondroll whereby the electrode is fired while the electrode covers more than 50% of an
`
`area of the peripheral of the first and secondrollers.
`
`Bolandiet al. (2012/0219841) teaches a similarroll to roll process whereby a
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`electroactive material is applied in a roll to roll process in forming electrode layers
`
`wherebyheating rollers are utilized to heat the coating on the substrate whereby the
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`rollers are covered by the coated substrate by at least 180 degrees and up to 300 degrees
`
`or more of the circumference of the heated roller which would equate to more than 50%
`
`coverage as claimed (Figs. 8,11 and [0098]-[0099]).
`
`Therefore, it would have been obviousfor one skilled in the art before the
`
`effective filing date of the claimed invention to have modified Kimuraetal.
`
`(2015/0280208) roll to roll process to utilize the heater rollers whereby the substrate
`
`wraps around more than 50 % ofthe heater rollers surface as evidenced by Bolandiet al.
`
`(2012/0219841) tom produce a more even and uniform heating of the coated substrate.
`
`Regarding claim 3, the compression-moldingrollers,1.e. firing rollers is performed
`
`underinert 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].
`
`

`

`Application/Control Number: 17/414,521
`Art Unit: 1715
`
`Page 4
`
`Regarding claim 5, the drying process is performedin a roll-to-roll process
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`[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
`
`to teach a laser for slitting, the Examinertakes 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].
`
`6.
`
`Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kimuraetal.
`
`(2015/0280208) in combination with Bolandiet al. (2012/0219841) further in
`
`combination with JP-2005/276444.
`
`Features detailed above concerning the teachings of Kimuraet al. (2015/0280208)
`
`in combination with Bolandiet al. (2012/0219841) are incorporated here.
`
`Kimuraet al. (2015/0280208) in combination with Bolandiet al. (2012/0219841)
`
`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).
`
`

`

`Application/Control Number: 17/414,521
`Art Unit: 1715
`
`Page 5
`
`Therefore, it would have been obviousfor one skilled in the art before the
`
`effective filing date of the claimed invention to have modified Kimuraet al.
`
`(2015/0280208) in combination with Bolandiet al. (2012/0219841) process to 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.
`
`7.
`
`Claim 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kimuraet
`
`al. (2015/0280208) in combination with Bolandiet al. (2012/0219841) in combination
`
`with Kojimaet al. (2014/0231721).
`
`Features detailed above concerning the teachings of Kimuraet al. (2015/0280208)
`
`in combination with Bolandiet al. (2012/0219841) are incorporated here.
`
`Kimuraet al. (2015/0280208) in combination with Bolandi et al. (2012/0219841)
`
`fails to teach a rolling step between the drying andfiring steps.
`
`Kojimaet al. (2014/0231721) teaches forming positive electrode by applying
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`slurry to collector, drying at 80C to removesolvent, roll pressing after drying and then
`
`heating and curing in a furance 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 Kimuraetal.
`
`(2015/0280208) in combination with Bolandiet al. (2012/0219841) process to include a
`
`rolling/pressing step following the drying and before the firing as evidenced by Kojimaet
`
`al. (2014/0231721) with the expectation of achieving similar success.
`
`

`

`Application/Control Number: 17/414,521
`Art Unit: 1715
`
`Page 6
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`Regarding claims 9 and 10, the claims recite winding and collecting the dried
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`electrodes prior to performinga 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.
`
`8.
`
`Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kimuraetal.
`
`(2015/0280208) in combination with Bolandiet al. (2012/0219841) in combination with
`
`Broschetal. (2005/0236732).
`
`Kimuraet al. (2015/0280208) in combination with Bolandi et al. (2012/0219841)
`
`fail to teach the heating rollers to have a portion of the exposed dry coating film on one
`
`heating roller while on the other heating roller have the other side of the dry coating film
`
`exposed, i.e. opposite sides exposed while on heatingrollers.
`
`Broschetal. (2005/0236732) teaches a method and apparatus for making positive
`
`electrode films for batteries whereby the use of heating rollers (78/80) are knownto be
`
`arranged wherebyoneside of the coating film is exposed while the other side of the
`
`coating film is on the peripheral surface of the roller and then reversing the side of the
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`coating film exposed andin contact with the peripheral surface for the subsequent heated
`
`roller (abstract, Fig. 8 and [0054).
`
`Therefore, it would have been obviousfor one skilled in the art before the
`
`effective filing date of the claimed invention to have modified Kimuraetal.
`
`

`

`Application/Control Number: 17/414,521
`Art Unit: 1715
`
`Page 7
`
`(2015/0280208) in combination with Bolandiet al. (2012/0219841) process to include
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`heating roller situated whereby while one side is exposed the other side it on the
`
`peripheral surface of the roller and reversing this alignment for the subsequentheating
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`roller whereby that which was exposedis now onthe peripheral while that which was on
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`the peripheral is now exposed with the expectation of producing the electrode pattern.
`
`9.
`
`Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kimuraetal.
`
`(2015/0280208) in combination with Bolandiet al. (2012/0219841) in combination with
`
`Songet al. (5,935,643) or Steinfort et al. (2004/0083589).
`
`Kimuraet al. (2015/0280208) in combination with Bolandi et al. (2012/0219841)
`
`fail to teach drying station and the firing station to be intervened bytherolling station,
`
`1.e. drying, rolling then firing in that order.
`
`Songet al. (5,935,643) teaches a method for manufacturing electrode for fuel cell
`
`whereby the coating is applied, drying is performed,rolling takes place next and then a
`
`sintering step followsthe rolling step (abstract, Fig. 1 and col. 4, lines 24-45).
`
`Steinfort et al. (2004/0083589) teaches a method for the producing electrode
`
`componentsfor electrochemical cells whereby the process steps include depositing the
`
`coating, drying, rolling and firing steps are performed whereby drying is performed
`
`before rolling and firing is performed after rolling (abstract and [0045]-[0046]).
`
`Therefore, it would have been obvious for one skilled in the art before the
`
`effective filing date of the claimed invention to have modified Kimuraetal.
`
`(2015/0280208) in combination with Bolandiet al. (2012/0219841) process to utilize
`
`

`

`Application/Control Number: 17/414,521
`Art Unit: 1715
`
`Page 8
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`consecutive processing steps of drying, rolling and firing as evidenced by Songetal.
`
`(5,935,643) or Steinfort et al. (2004/0083589) with the expectation of achieving the
`
`desired electrode.
`
`Response to Amendment
`
`10.
`
`Applicant's arguments filed 5/2/23 have been fully considered but they are not
`
`persuasive.
`
`Applicant argued one would no combine Kimuraet al. (2015/0280208) in
`
`combination with Bolandiet al. (2012/0219841) as the Examiner has done as Kimuraet
`
`al. (2015/0280208) uses pinch rollers and Bolandiet al. (2012/0219841) uses heated
`
`rollers and these are different structures and functions.
`
`The Examinerdisagrees. Bolandiet al. (2012/0219841) teaches benefits of
`
`wrapping the coated substrate including improving drying rate, reducing process time and
`
`efficient evaporation of the solvent which all would be applicable in the Kimuraetal.
`
`(2015/0280208) process and therefore would be suggestive to be combineable.
`
`Applicant argued the prior art failed to teach the placementofthe rolling station
`
`being placed between the drying station and the firing station, 1.e. drying, rolling and
`
`firing in that order, 1.e. performing the rolling and firing steps separately and notat the
`
`same time as Kimuraetal. (2015/0280208).
`
`

`

`Application/Control Number: 17/414,521
`Art Unit: 1715
`
`Page 9
`
`While the Examiner acknowledgesthe fact that Kimuraetal. (2015/0280208)
`
`teachesrolling and firing at the same time would provide advantages associated
`
`therewith, both Songet al. (5,935,643) or Steinfort et al. (2004/0083589) teach
`
`advantages of having these separated and also teach successfully doing so in the same
`
`method of forming electrodes and hence would be suggestive of as an alternative to doing
`
`them simultaneously but that separating these would also produce the desired electrode.
`
`In addition, it has been well settled in general, the transposition of process steps or the
`
`splitting of one step into two, where the processes are substantially identical or equivalent
`
`in terms of function, mannerand result, was held to be not patentably distinguish the
`
`processes. Ex parte Rubin, 128 USPQ 440 (Bd.Pat. App. 1959)
`
`Further, it has been held that selection of any order of performing processstepsis
`
`prima facie obviousin the absence of new or unexpected results, see MPEP 2144.04,
`
`section C, and also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), and In re
`
`Gibson, 39 F.2d 975, SUSPQ 230 (CCPA 1930).
`
`11.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of
`
`time policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHSfrom the mailing date of this action. In the eventa first reply is filed within
`
`TWO MONTHSofthe mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTHshortenedstatutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`

`

`Application/Control Number: 17/414,521
`Art Unit: 1715
`
`Page 10
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the
`
`advisory action. In no event, however, will the statutory period for reply expire later than
`
`SIX MONTHSfrom the mailing date of this final action.
`
`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
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
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`
`(AIR)at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerbytelephone are unsuccessful, the examiner’s
`
`supervisor, Timothy H Meeks can be reached on 571-272-1423. The fax phone number
`
`for the organization where this application or proceeding is assigned 1s 571-273-8300.
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`

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`Application/Control Number: 17/414,521
`Art Unit: 1715
`
`Page 11
`
`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
`
`