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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
`
`17/045,271
`
`10/05/2020
`
`Shin HARAGUCHI
`
`094704-0077
`
`1071
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`ZHANG, HAIXTA
`
`1723
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/3 1/2023
`
`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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Office Action Summary
`
`Application No.
`17/045,271
`Examiner
`HAIXIA ZHANG
`
`Applicant(s)
`HARAGUCHI etal.
`Art Unit
`AIA (FITF) Status
`1723
`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 06/12/2023.
`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)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*
`1-12 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 4-6,8 and 11 is/are withdrawn from consideration.
`[) Claim(s)__ is/are allowed.
`Claim(s) 1-3,7,9-10 and 12 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)C) The specification is objected to by the Examiner.
`11)M The drawing(s) filed on 10/05/2020 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)() 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 beenreceived 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)
`
`(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 Date10/05/2020and06/30/2022.
`U.S. Patent and Trademark Office
`
`3)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230821
`
`

`

`Application/Control Number: 17/045,271
`Art Unit: 1723
`
`Page 2
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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, is being examined under the
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`first inventor to file provisions of the AIA.
`
`DETAILED ACTION
`
`Information Disclosure Statement
`
`1.
`
`The information disclosure statement (IDS) submitted on 10/05/2020 and
`
`06/30/2022 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the
`
`information disclosure statement is being considered by the examiner.
`
`Election/Restrictions
`
`2.
`
`Applicant’s election of Species | (shown in Figs. 1-3), claims 1-3, 7, 9-10 and 12
`
`(claims 4-6 directed to Fig. 10) in the reply filed on 06/12/2023 is acknowledged.
`
`Because applicant did not distinctly and specifically point out the supposederrors in
`
`the restriction requirement, the election has been treated as an election without
`
`traverse (MPEP § 818.01(a)).
`
`Claim Rejections - 35 USC § 102
`
`3.
`
`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 madein this Office action:
`
`A person shall be entitled to a patent unless —
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an
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`application for patent published or deemed published under section 122(b), in which the patent or
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`

`

`Application/Control Number: 17/045,271
`Art Unit: 1723
`
`Page 3
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`application, as the case may be, names another inventor and waseffectively filed before the effective
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`filing date of the claimed invention.
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`4.
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`Claims 1-3, 7, 9-10 and 12 are rejected under 35 U.S.C. 102(a)(2) as being
`
`anticipated by Fujikawaet al. (“Fujikawa”, US 20100227217 A1).
`
`5.
`
`Regarding claim 1, Fujikawa teaches a battery comprising: a battery can
`
`having a cylindrical portion, a bottom wall closing one end of the cylindrical portion, and
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`an open rim continuing to the other end of the cylindrical portion; an electrode body
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`housedin the cylindrical portion; a sealing body fixed to the open rim so asto seal an
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`opening defined by the open rim; and anelectrically insulating film disposed on at least
`
`part of at least an inner wall of the battery can (Fujikawa, Figs. 1-2 and 6-7, [0032],
`
`[0037], [0045], [0046], [0048], [0097], e.g., a cylindrical lithium ion secondary battery; a
`
`battery case 6 has a bottom, a side wall, and an upper opening; in the interior of the
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`battery case 6, an electrode assembly sandwiched by an upper insulating plate 15a
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`and a lower insulating plate 15b, and a non-aqueous electrolyte are accommodated;
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`the upper opening of the battery case 6 is sealed with a sealing plate 7 (which is being
`
`interpreted as sealing body), and a gasket8 is disposed between the opening-edge
`
`portion of the battery case 6 and the sealing plate 7; the electrode assembly is
`
`configured by windingafirst electrode 1 and a second electrode 2 with a separator 3
`
`interposed therebetween; a first highly-resistive layer 14a (electrically insulating film) is
`
`formed between the opening-edge portion of the battery case 6 and the gasket8; as
`
`such, even when the gasket8 is broken, the battery case 6 and the sealing plate 7 are
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`kept insulated by virtue of the first highly-resistive layer 14a; all of the highly-resistive
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`layers are electrically insulating layers),
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`

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`Application/Control Number: 17/045,271
`Art Unit: 1723
`
`Page 4
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`6.
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`the sealing body including a sealing plate and a gasket disposed at a peripheral
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`portion of the sealing plate (Fujikawa, Figs. 1-2 and 6-7, [0045], [0047], e.g., The upper
`
`opening of the battery case 6 is sealed with a sealing plate 7, and a gasket8 is
`
`disposed between the opening-edge portion of the battery case 6 and the sealing plate
`
`7; the sealing plate 7 includes a valve member 9, a terminal cap 11 andafilter 12 (at
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`least one of which is being interpreted as a sealing plate)),
`
`
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`7. the electrically insulating film has a first portion covering at least part ofafirst
`
`region of the inner wall corresponding to between an end of the gasket on the
`
`electrode body side and an end of the electrode body on the gasketside (Fujikawa,
`
`Figs. 1-2 and 6-7, [0048], e.g., a first highly-resistive layer 14a is formed between the
`
`opening-edge portion of the battery case 6 and the gasket 8; as such, even when the
`
`gasket 8 is broken, the battery case 6 and the sealing plate 7 are kept insulated by
`
`virtue of the first highly-resistive layer 14a).
`
`8.
`
`Regarding claim 2, Fujikawa teaches wherein 80 area%or more ofthe first
`
`region is covered with the first portion (Fujikawa, Figs. 6-7, [0048], e.g., a first highly-
`
`resistive layer 14a is formed between the opening-edge portion of the battery case 6
`
`and the gasket 8; as such, even when the gasket 8 is broken, the battery case 6 and
`
`the sealing plate 7 are kept insulated by virtue of the first highly-resistive layer 14a; (as
`
`shownin Figs. 6-7, 80 area%or more ofthe first region is covered with the first
`
`portion)).
`
`9.
`
`Regarding claim 3, Fujikawa teaches wherein the electrically insulating film
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`further includes a second portion entirely covering a second region of the inner wall in
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`the open rim, the second region facing the gasket; and the second portion is
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`

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`Application/Control Number: 17/045,271
`Art Unit: 1723
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`Page 5
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`continuous with the first portion (Fujikawa, Figs. 6-7, [0048], e.g., a first highly-resistive
`
`layer 14a is formed between the opening-edge portion of the battery case 6 and the
`
`gasket 8; as such, even when the gasket8 is broken, the battery case 6 and the
`
`sealing plate 7 are kept insulated byvirtue of the first highly-resistive layer 14a; (as
`
`shownin Figs. 6-7, the electrically insulating film (first highly-resistive layer 14a) further
`
`includes a second portion entirely covering a second region of the inner wall in the
`
`open rim, the second region facing the gasket)).
`
`10.
`
`Regarding claim 7, Fujikawa teaches wherein: the battery can has a
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`constricted portion interposed between the gasket and the electrode body; andthe first
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`portion is formed at least on a surface of the constricted portion, the surface facing a
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`periphery of the end of the electrode body on the gasketside (Fujikawa, Figs. 6-7,
`
`[0048], e.g., a first highly-resistive layer 14a is formed between the opening-edge
`
`portion of the battery case 6 and the gasket 8; as such, even when the gasket8 is
`
`broken, the battery case 6 and the sealing plate 7 are kept insulated by virtue of the
`
`first highly-resistive layer 14a; (as shownin Figs. 6-7, the battery can has a constricted
`
`portion interposed between the gasket and the electrode body; and the first portion is
`
`formed at least on a surface of the constricted portion, the surface facing a peripheryof
`
`the end of the electrode body on the gasket side)).
`
`11.
`
`Regarding claim 9, Fujikawa teaches wherein the gasket is compressed in a
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`radial direction of the opening, between an end surface of the peripheral portion and
`
`the open rim (Fujikawa, Figs. 1-2 and 6-7, [0053], [0082], [0143], e.g., the opening-
`
`edge portion of the battery case is clamped onto the sealing plate with the gasket
`
`interposed therebetween, whereby a cylindricallithium ion secondary battery is
`
`

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`Application/Control Number: 17/045,271
`Art Unit: 1723
`
`Page 6
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`fabricated; the terminal member is inserted into the through hole provided in the center
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`of the sealing plate and fixed by clamping with the gasket, inner insulating member,
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`and connector plate interposed therebetween; the first highly-resistive layer is disposed
`
`between the sealing plate and the gasket; the opening-edge portion of the battery case
`
`was clamped onto the sealing plate with a gasket madeof polypropylene interposed
`
`therebetween, to seal the opening-edge portion of the battery case (along with Figs. 1
`
`and 6, which is being interpreted as the gasket is compressed in a radial direction of
`
`the opening, between an end surface of the peripheral portion and the open rim)).
`
`12.
`
`The product-by-limitations of claim 9 as written does not distinguish the product
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`of the instant application from the product of Fujikawa. Fujikawa teaches all of the
`
`positively recited structure of the claimed apparatus or product. The determination of
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`patentability is based upon the apparatus structure itself. The patentability of a product
`
`or apparatus does not depend on its method of production or formation.
`
`If the product
`
`in the product-by-processclaim is the same asor obvious from a productof the prior
`
`art, the claim is unpatentable even though the prior product was madeby a different
`
`process. (see MPEP § 2119).
`
`13.
`
`Regarding claim 10, Fujikawa teaches wherein the open rim has a projection
`
`protruding inward in the radial direction, and the gasket is compressedin the radial
`
`direction by the projection (Fujikawa, Figs. 1-2 and 6-7, [0053], [0082], [0143], e.g., the
`
`opening-edge portion of the battery case is clamped onto the sealing plate with the
`
`gasketinterposed therebetween, wherebya cylindricallithium ion secondary battery is
`
`fabricated; the terminal member is inserted into the through hole provided in the center
`
`of the sealing plate and fixed by clamping with the gasket, inner insulating member,
`
`

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`Application/Control Number: 17/045,271
`Art Unit: 1723
`
`Page 7
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`and connector plate interposed therebetween; the first highly-resistive layer is disposed
`
`between the sealing plate and the gasket; the opening-edge portion of the battery case
`
`was clamped onto the sealing plate with a gasket madeof polypropylene interposed
`
`therebetween, to seal the opening-edge portion of the battery case (along with Figs. 1-
`
`2 and 6-7, which is being interpreted as the open rim has a projection protruding
`
`inward in the radial direction, and the gasket is compressedin the radial direction by
`
`the projection)).
`
`14.
`
`The product-by-limitations of claim 10 as written does notdistinguish the product
`
`of the instant application from the product of Fujikawa. Fujikawa teaches all of the
`
`positively recited structure of the claimed apparatus or product. The determination of
`
`patentability is based upon the apparatus structure itself. The patentability of a product
`
`or apparatus does not depend on its method of production or formation.
`
`If the product
`
`in the product-by-processclaim is the same asor obvious from a productof the prior
`
`art, the claim is unpatentable even though the prior product was madeby a different
`
`process. (see MPEP § 2119).
`
`15.
`
`Regarding claim 12, Fujikawa teaches wherein in a height direction of the
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`battery can, the open rim is smaller in outer diameter at a lowermostposition in contact
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`with the gasket, than the cylindrical portion (Fujikawa, Figs. 1 and 6, [0032], [0037],
`
`[0048], e.g., cylindrical lithium ion secondary battery; a first highly-resistive layer 14ais
`
`formed between the opening-edge portion of the battery case 6 and the gasket8; (as
`
`shownin Figs. 1 and 6, in a height direction of the battery can, the open rim is smaller
`
`in outer diameter at a lowermostposition in contact with the gasket, than the cylindrical
`
`portion)).
`
`

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`Application/Control Number: 17/045,271
`Art Unit: 1723
`
`Page 8
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to HAIXIA ZHANG whosetelephone number is (571)272-
`
`5697. The examiner can normally be reached Monday and Tuesday9-5.
`
`Examiner interviews are 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:/Avww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Milton Cano can be reached on 313-446-4937. The fax phone number for
`
`the organization wherethis 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 Center is
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
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`center for more information about Patent Center and
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`https:/Awww.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
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`
`

`

`Application/Control Number: 17/045,271
`Art Unit: 1723
`
`/HAIXIA ZHANG/
`Primary Examiner, Art Unit 1723
`
`Page 9
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`