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
`
`17/585,919
`
`01/27/2022
`
`Yuji Oura
`
`P191345US01
`
`9464
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`KOROVINA, ANNA
`
`1729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/04/2023
`
`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)
`
`

`

`
`
`Disposition of Claims*
`____ is/are pending in the application.
`) © Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`O Claim(s) _ is/are allowed.
`Claim(s) 1-8 is/are rejected.
`(0 Claim(s) _ is/are objected to.
`CC 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)C) The drawing(s) filed on
`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)CZ) 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)C] Some**
`a)L) All
`1.2 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)
`
`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 20230329
`
`Application No.
`Applicant(s)
`17/585 ,919
`Ouraetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ANNA KOROVINA
`1729
`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 17 March 2023.
`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.
`
`

`

`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Response to Remarks
`
`2.
`
`Claims 1-8 are pending and consideredin the present Office action. No
`
`amendments have been made to the claims; only arguments have been provided in the
`
`Remarks (17 March 2023). Applicant's arguments are not persuasive and the rejections
`
`are maintained. Please see the Response to Arguments section below for more details.
`
`Responseto Arguments
`
`3.
`
`Applicant argues it would not be obvious to modify the current collector of Inoue
`
`(incorporating a plurality of irregularities on the current collector), as suggested by
`
`Sugie, because Inoue teaches away from such a suggestion. Specifically, applicant
`
`states Inoue criticizes background art which improves the adhesion between the active
`
`material layer and the current collector through a roughening of the current collector
`
`surface; the main criticism appears to be that when the thicknessof the current collector
`
`is thin and the surface roughnessis large, the ratio of depth of the surface unevenessto
`
`the total thickness of the metal foil becomes large such that repeated charging and
`
`discharging lead to an accumulation of mechanical fatigue, thereby causing cracks and
`
`breaks and reduced battery capacity, [0006] of Inoue. In view of the foregoing, applicant
`
`concludes, it would not be obvious to apply roughening to the current collector in Fig. 1
`
`

`

`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 3
`
`of Inoue, as suggested by Sugie. Applicant’s arguments are not persuasive for the
`
`following reasons.
`
`Prior art references are relevant as prior art for all they contain. "The use of
`
`patents as references is not limited to what the patentees describe as their own
`
`inventions or to the problems with which they are concerned. They are part of the
`
`literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33,
`
`216 USPQ 1038, 1039 (Fed. Cir. 1983). A reference may be relied upon forall thatit
`
`would have reasonably suggested to one having ordinaryskill in the art,
`
`including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d
`
`804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also
`
`Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215
`
`(Fed. Cir. 2005). Disclosed examples and preferred embodiments do not
`
`constitute a teaching awayfrom a broader disclosure or nonpreferred
`
`embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or
`
`obvious composition does not becomepatentable simply becauseit has been
`
`described as somewhatinferior to some other product for the same use." In re
`
`Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Furthermore, "[t]he
`
`prior art’s mere disclosure of more than one alternative does not constitute a
`
`teaching away from any of these alternatives because such disclosure does not
`
`criticize, discredit, or otherwise discourage the solution claimed...." In re Fulton,
`
`391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). MPEP 2123.
`
`Moreover, the “criticism” elaborated on by Inoue appears to be applicable to a
`
`system comprising only a current collector and active material layer; in contrast, the
`
`

`

`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 4
`
`system usedto reject the claims (e.g., Fig. 1, as shown in the Remarks, page 4/7)
`
`includes an intermediate layer (3) in addition to the current collector (1) and active
`
`material layer (4). That is, the system criticized by Inoue is structurally different from the
`
`system usedto reject the claims; applicant has failed to elaborate how the criticism is
`
`applicable to the system used to reject the claims comprising an intermediate layer.
`
`Additionally, the criticism detailed by Inoue suggests cracking is a function of particular
`
`parametersof the current collector (ratio of depth of the surface of unevennessto the
`
`total thickness of the current collector). Applicant has failed to elaborate how the
`
`criticism is applicable to the system usedto reject the claims (e.g., Fig. 1) with emphasis
`
`on the parameters(i.¢., ratio) of the current collector of Fig. 1 of Inoue that would lead
`
`one of ordinary skill in the art away from the modification suggested by Sugie.
`
`Considering the system usedto reject the claims (e.g., Fig.
`
`1 of Inoue) is structurally
`
`different from the system being criticized by Inoue (only includes a current collector and
`
`an active material layer), and the system used to reject the claims does not appearto
`
`include features (i.e., parameters) thought to cause the cracking, applicant’s arguments
`
`that Inoue teaches away from the suggestion of Sugie is unpersuasive.
`
`4.
`
`Applicant argues the modification of Inoue with a roughened current collector
`
`would contradict the operational principle of Inoue's endeavor, rendering it
`
`unsatisfactory for its intended purpose, but fails to elaborate on what exact operational
`
`principle is unsatisfactory or how the current collector is unsatisfactory for its intended
`
`purpose. Thus, applicant’s arguments are unpersuasive. Further, Minami teaches a
`
`roughenedcurrent collector in which binder penetrates into uneven surfaces, and the
`
`

`

`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 5
`
`active material layer directly contacts both the binder and current collector; the
`
`aforementioned structure results in increased adhesion between the current collector
`
`and active material layer, and prevents peeling of the active material layer from the
`
`current collector, [0031] and Fig.1. As evidenced by Minami, the modification of the
`
`current collector of Inoue, as suggested by Suie (roughened currentcollector), would
`
`NOT contradict the operational principle of the current collector, or render it
`
`unsatisfactory for its intended purpose.
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`The text of those sections of Title 35, U.S. Code not included in this action can
`
`be found in a prior Office action.
`
`6.
`
`Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue et
`
`al. (JP 2009-295474) in view of Sugie (JP2000-269095), Shiozaki (US 2016/0190566)
`
`and lida (US 2015/0303484), hereinafter Inoue, Sugie, Shiozaki andlida (all of record).
`
`Regarding Claims 1 and8, Inoue teaches a secondary battery (15) comprising
`
`a negative electrode, an electrolyte and a secondary battery positive electrode, see e.g.,
`
`Fig. 9, and paras. [0016], [0042] and [0060]. The secondarybattery positive electrode
`
`comprises a positive electrode current collector (1), an intermediate layer (3) provided
`
`on the positive electrode current collector (see e.g., Fig. 3) and a positive electrode
`
`mixture layer (4) provided on the intermediate layer (3) and including a positive
`
`electrode active material (see e.g., paras. [0016], and [0035]); at least one of projections
`
`of the irregularities of the positive electrode current collector penetrates an interface
`
`

`

`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 6
`
`between the intermediate layer and the positive electrode mixture layer and projects into
`
`the positive electrode mixture layer (paras. [0017]-[0018)).
`
`Regarding Claims 1 and2, |noue teaches the intermediate layer is provided on
`
`the current collector but does not teach the positive electrode current collector has a
`
`plurality of irregularities on a surface thereof, wherein an average depth of the plurality
`
`of irregularities of the positive electrode current collector is 0.6 um or more and 2
`
`micrometers or less. However, Sugie teachesirregularities (1a) on a surface of the
`
`current collector having an average depth between 0.5 um to 2 micrometers enhances
`
`adhesion between the current collector and layers thereon, see e.g., para. [0010]-
`
`[0012]. It would be obvious to one having ordinary skill in the art the current collector of
`
`Inoue hasirregularities having an average depth between 0.5 um to 2 um, as suggested
`
`by Sugie, with the expectation of enhanced adhesion between the current collector and
`
`layers thereon.
`
`Regarding Claims 1, 4, 6 and 7, Inoue teachesthe intermediate layer consists
`
`of a binder, but does not teach the intermediate layer consists of a binder and inorganic
`
`material particles (i.e., metal oxide, metal nitride, metal fluoride) having higher
`
`resistance(i.e., resistivity of 10'* OQ cm or more) than the positive electrode active
`
`material, wherein a median particle diameter of the inorganic material particles is 0.2 um
`
`or more and 1.0 um or less. However, Shiozaki teachesthe inclusion of inorganic
`
`material particles (e.g., manganese oxide, silicon dioxide, titanium dioxide, aluminum
`
`oxide) having higher resistance than the positive electrode active material in the
`
`intermediate layer between the active material layer and current collector offers heat
`
`generation preventing effects; specifically, the intermediate layer having the heat
`
`

`

`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 7
`
`generation preventing function consists of binder and inorganic material particles, see
`
`e.g., Battery B2, paras. [0027]-[0030], [0053], [0064]. It would be obvious to one having
`
`ordinary skill in the art the intermediate layer of Inoue consists of a binder and inorganic
`
`material particles having higher resistance than the positive electrode active material
`
`with the expectation of heat generation preventing effects. Moreover, lida utilizes
`
`inorganic material particles (e.g., silica, alumina, titanium oxide, etc.) to achieve similar
`
`safety functions with respect heat generation; specifically, an intermediate layer
`
`including inorganic material particles is provided on the current collector to achieve a
`
`PTC characteristic (temperature resistance, hence preventing heat generation) during
`
`abnormal heat generation, thereby providing a safety function, wherein an average
`
`particle diameter of the inorganic particles in the intermediate layer is between 0.001 to
`
`10 micrometers, see e.g., paras. [0013], [0015], [0045], [0073]-[0074]. It would be
`
`obvious to one having ordinary skill in the art the average particle diameter of the
`
`inorganic material particles of Inoue, as modified by Shiozaki, is between 0.2 um to 1.0
`
`um with the expectation of heat generation preventing effects (i.e., temperature
`
`resistance), hence improved safety, as suggested bylida.
`
`Further regarding Claim 7, "[p]roducts of identical chemical composition can not
`
`have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655,
`
`1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
`
`Therefore, if the prior art teaches the identical chemical structure, the properties
`
`applicant discloses and/or claims are necessarily present. See MPEP 2112.01. The
`
`inorganic particles suggestedin the prior art (e.g., aluminum oxide, silicon oxide, etc.)
`
`are structurally/chemically identical to thoselisted in the instant published disclosure
`
`

`

`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 8
`
`(see €.g., para. [0033]); thus, the prior art inherently teaches the claimed property(i.e.,
`
`resistivity of 10’ Q cm or more).
`
`Regarding Claim 3, as detailed above, Inoue was modified by Shiozaki and lida
`
`to teach the inclusion of inorganic material particles having a median particle diameter
`
`between 0.2 um to 1.0 um with the expectation of heat generation preventing effects
`
`(i.e., temperature resistance), hence improved safety. Additionally, the current collector
`
`of Inoue was modified by Sugie to teach the irregularities of the current collector having
`
`a depth of 0.6 um or more, with the expectation improved adhesion between the current
`
`collector and layers thereon. In view of the foregoing, the prior art suggests a ratio of
`
`median particle diameter of the inorganic particles to the average depth of the
`
`irregularities of the current collector is between 5:20 (i.e., 0.25) to 5:6 (i.e., 0.83); for
`
`example, 0.5 um/1pm = 0.5), as claimed. In the case where the claimed ranges "overlap
`
`or lie inside ranges disclosed bythe prior art" a prima facie case of obviousnessexists.
`
`In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d
`
`1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness
`
`exists where the claimed ranges or amounts do not overlap with the prior art but are
`
`merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227
`
`USPQ 773, 779 (Fed. Cir. 1985). See also MPEP 2144.05.
`
`Regarding Claim 5, Inoue doesnot explicitly disclose a length of recesses of the
`
`current collector in contact with the intermediate layer with respect to a length of the
`
`projections of the current collector in contact with the active material is 0.8 or more and
`
`1.8 or less. However, such a feature appearsto be the result of routine experimentation
`
`and/or optimization; a known result-effective variable would be motivation for a person
`
`

`

`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 9
`
`of ordinary skill in the art to experiment to reach another workable product, MPEP
`
`2144.02, Il.
`
`Inoue was modified by Sugie to teach a plurality of irregularities on the surface of
`
`the current collector wherein an average depth of the plurality of irregularities is 0.6 um
`
`or more and 2 micrometers or less to enhanced adhesion between the current collector
`
`and layers thereon. (see e.g., the rejection of claim 1). Further, Inoue teaches
`
`completely or partially covering the current collector with the intermediate layer effects
`
`the adhesion of the active material layer thereon and battery performance (e.g.,
`
`capacity retention after 500 cycles, low temperature discharge capacity), see e.g., Table
`
`1. That is, when the intermediate layer completely covers the current collector, no part
`
`of the current collector is exposed to the active material layer, thereby making the length
`
`of projections in contact with the active material layer zero, while the length of the
`
`recess in contact with the intermediate is equal to the entire depth of the irregularity,
`
`and leads to high adhesion, but decreased low temperature discharge capacity
`
`compared to an example with no resin layer (see e.g., Comparison examples 1 and 2 in
`
`Table 1). On the other hand, only partially covering the current collector with the
`
`intermediate layer (e.g., 5 % to 80%, Examples 1-4 in Table 1) allows the surface of the
`
`current collector to be partially exposed, and directly contacting with active material
`
`layer. Inoue teaches increasing the contact area between the current collector and
`
`active material layer, which results from lower coverage of the intermediate layer, is
`
`desirable from the view point of battery performance (higher capacity retention and
`
`higher low temperature discharge capacity) due to smaller electrical contact resistance
`
`(paras. [0018], and [0054]-[0057] and Table 1, see Example 3 comparedto
`
`

`

`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 10
`
`Comparative Examples 1-2). That is, Inoue has realized the coverage of the
`
`intermediate layer is a result effective variable with respect to adhesion strength(i.e.,
`
`moreor less intermediate layer fills the recesses (irregularities) of the current collector),
`
`and contact area between the current collector and active material layer is a result
`
`effective variable with respect to battery performance (capacity retention and low
`
`temperature discharge). It would be obvious to one having ordinary skill in the art to
`
`modify the length of the projections of the current collector in contact with the active
`
`material with respect to the length of the recesses in contact with the intermediate layer
`
`with the expectation of effecting the surface area contact of the current collector with the
`
`active material and adhesion strength between the current collector and active material
`
`layer, thereby effecting battery performance.
`
`7.
`
`Claims 3 is rejected under 35 U.S.C. 103 as being unpatentable over Inoue,
`
`Sugie, Shiozaki and lida, further in view of Takeuchi (WO2012128274, of record),
`
`Takeuchi.
`
`The features of claim 3 are obvious over Inoue, Sugie, Shiozaki and lida, as
`
`detailed above; they are further supported by Takeuchi. Specifically, Takeuchi teaches
`
`a current collector 3 with irregularities thereon (see Fig. 4 which shows concave
`
`recesses and convexportions); the current collector includes an intermediate layer
`
`(PTC layer 2) comprising particles (12, 13) on the irregularities of the current collector
`
`and an active material layer (1) on the intermediate layer (2), see e.g., Fig. 4 and lines
`
`93-140, 207-215, 231-238, and 264-270. The particles have a particle size smaller than
`
`the roughening of the current collector, such that the particles fill the recesses of the
`
`

`

`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 11
`
`roughened surface and moreeffectively cut current due to an increase in electrical
`
`resistance when the battery temperature rises, thereby improving safety, see e.g., lines
`
`137-140, 152-0162, and 239-252. In view of the foregoing, Takeuchi supports the ratio
`
`of the particle diameter of the inorganic particles to the average depth of the
`
`irregularities of the current collector is between 5:20 (i.e., 0.25) to 5:6 (i.e., 0.83), as
`
`suggested by Inoue, Sugie, Shiozaki and lida, from the view point of increasing
`
`electrical resistance to improve safety.
`
`Conclusion
`
`8.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`A shortenedstatutory period for reply to this final action is set to expire THREE
`
`
`
`MONTHS from the mailing date of this action. In the eventafirst reply is filed within
`
`TWO MONTHS ofthe mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortenedstatutory period, then the
`
`shortenedstatutory period will expire on the date the advisory action is mailed, and any
`
`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 MONTHS from the mailing date ofthis final action.
`
`9.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ANNA KOROVINA whosetelephone number is
`
`(571)272-9835. The examiner can normally be reached M-Th 7am - 6 pm.
`
`

`

`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 12
`
`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:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Ula Ruddock can be reached on 5712721481. The fax phone number for
`
`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 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-
`
`center for more information about Patent Center and
`
`https:/Awww.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 Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/ANNA KOROVINA/
`Examiner, Art Unit 1729
`
`/ULA C RUDDOCK/
`Supervisory Patent Examiner, Art Unit 1729
`
`