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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`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, VA22182
`
`KOROVINA, ANNA
`
`1729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/13/2023
`
`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*
`____ 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`5a) Of the above claim(s) __ is/are withdrawn from consideration.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) 1-8 is/are rejected.
`(J Claim(s) _ is/are objected to.
`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) The drawing(s) filed on
`is/are: a)C] 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)2) 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)L) All
`1. Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.4.) 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)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20231207
`
`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 STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 08 September 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) 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)(2) 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
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`underthe first inventor to file provisions of the AIA.
`
`2.
`
`In view of the appealbrief filed on 08 September 2023, PROSECUTION IS
`
`HEREBY REOPENED. A newgroundofrejection is set forth below.
`
`To avoid abandonmentof the application, appellant must exercise one of the
`
`following two options:
`
`(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply
`
`under 37 CFR 1.113 (if this Office action is final); or,
`
`(2) initiate a new appealbyfiling a notice of appeal under 37 CFR 41.31 followed
`
`by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and
`
`appeal brief fee can be applied to the new appeal. If, however, the appeal fees setforth
`
`in 37 CFR 41.20 have beenincreased since they were previously paid, then appellant
`
`mustpaythe difference between the increased fees and the amountpreviously paid.
`
`A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by
`
`signing below:
`
`/ULA C RUDDOCK/
`Supervisory Patent Examiner, Art Unit 1729
`
`Responseto Arguments
`
`3.
`
`The previous 103 rejections are withdrawnin favor of a new ground of rejection
`
`based on newly foundart (Takada). Applicant's arguments with respect to the claims
`
`have been considered but are moot because the new groundof rejection does notrely
`
`

`

`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 3
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`on any reference applied in the prior rejection of record for any teaching or matter
`
`specifically challenged in the argument.
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`Claim Rejections - 35 USC § 103
`
`4.
`
`The text of those sections of Title 35, U.S. Code not included in this action can
`
`be found in a prior Office action.
`
`5.
`
`Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue et
`
`al. (JP 2009-295474) in view of Takada (JP 2013-110100), Shiozaki (US
`
`2016/0190566), and lida (US 2015/0303484), hereinafter Inoue, Takada, Shiozaki and
`
`lida (only Takada is new).
`
`Regarding Claims 1-2 and 8, |noue teaches a secondarybattery (15)
`
`comprising a negative electrode, an electrolyte and a secondarybattery positive
`
`electrode, see e.g., Fig. 9, and paras. [0016], [0042] and [0060]. The secondary battery
`
`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) anda
`
`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)).
`
`Inoue doesnot explicitly teach irregularities in the current collector having an
`
`average deptof 0.6 um or more(or 2.0 um or less) or whether projections of the
`
`irregularities of the positive electrode current collector penetrate an interface between
`
`the intermediate layer and the positive electrode mixture layer and projectinto the
`
`positive electrode mixture layer. However, Takada teachesan electrode with a current
`
`

`

`Application/Control Number: 17/585,919
`Art Unit: 1729
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`Page 4
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`collector 3a, on which an intermediate layer 3b and active material layer (not shown) are
`
`formed, Fig. 5. When the intermediate layer 3b is applied as a uniform layer, the
`
`resulting electrode is thick, [0007]. However, the electrode is made thinner when the
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`intermediate layer(i.e., 1b) is placed in irregularities formed on the current collector; the
`
`irregularities having a depth of 0.6 um or more and 2.0 um or less (e.g., 0.3 um to 3
`
`um)), see e.g., (0008-0010, 0026, 0034], Figs. 1-2. In view of the foregoing, it would be
`
`obvious to one having ordinary skill in the art the current collector includesirregularities
`
`having a depth of 0.6 um or more (or 2.0 um or less), with the expectation of sufficiently
`
`adhering the intermediate layer, as suggested by Takada [0034]; moreover, it would be
`
`obvious to one having ordinary skill in the art the intermediate layer is inserted in the
`
`irregularities of the current collector with the expectation of making a thinner electrode,
`
`as suggested by Takada [0010], [0026], [0029].
`
`The combination of Inoue with Takada suggests the current collector includes
`
`irregularities (i.e., peaks and valleys, represented by a thick dot-dash line on current
`
`collector 1a in annotated in Fig. 1(b) of Takada below, where the peaks are considered
`
`projections of the current collector) and the intermediate layer of Inoue is place in the
`
`valleys of the irregularities of the current collector with the expectation of reducing
`
`electrode thickness.
`
`

`

`Page 5
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`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`
`
`Up to this point, the combination of Inoue and Takada suggests a surface of the
`
`intermediate layer (thin dashedline) is coplanar with a surface of the current collector
`
`(thick dotted line) , see annotated Fig. 2 of Takada below; hence, whenthe active
`
`material is placed on the current collector, a surface of the active material layer (thick
`
`line), a surface of the intermediate layer (thin dashed line), and a surface of the current
`
`collector (thick dotted line) are all coplanar, having a coplanarinterface (thick dashed
`
`line) between the intermediate layer (1b) and active material layer (2), see annotated
`
`Fig. 2 of Takada below.
`
`

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`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 6
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`
`
`
`
`
`
`In view of the foregoing, the irregularities (i.e., peaks/projections) of the current collector
`
`do not penetrate an interface between the active material layer and intermediate layer,
`
`and the projections of the current collector do not project into the active material layer
`
`given the surface of each layer is coplanar. However, Inoue suggests roughening the
`
`intermediate layer; roughening of the intermediate later forms irregularities on the
`
`intermediate layer surface and allowsthe active material layer (4) to penetrate into the
`
`intermediate layer, thereby improving adhesion, see e.g., [0018-0019], [0057] and Figs.
`
`A roughening of the surface of the intermediate layer forms irregularities (i.e., peaks and
`
`valleys) on the surface of the intermediate layer (see Fig. 1 of Inoue); the valleys in the
`
`intermediate layer extend below the surface of the intermediate layer (hence below the
`
`surface of the current collector since both are coplanar) such that active material
`
`extends therein and forms a newinterface betweenthe active material layer and
`
`

`

`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 7
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`intermediate layer (see “interface” in another annotated Fig. 2 of Takada below, whichis
`
`highlighted by the solid line across the bottom of the valleys of the intermediate layer).
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`A roughening of the intermediate layer, as suggested by Inoue, is obvious in view of
`
`improved adhesion, and results in projections of the current collector to penetrate the
`
`interface betweenthe intermediate layer and the active material layer and the
`
`projections of the current collector project into the active material layer.
`
`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
`
`

`

`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 8
`
`intermediate layer between the active material layer and currentcollector offers heat
`
`generation preventing effects; specifically, the intermediate layer having the heat
`
`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
`
`ordinaryskill 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 diameterof 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
`
`

`

`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 9
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`inorganic particles suggestedin the prior art (e.g., aluminum oxide, silicon oxide, etc.)
`
`are structurally/chemically identical to thoselisted in the instant published disclosure
`
`(see e.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 andlida
`
`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 Takadato teachtheirregularities of the current collector
`
`having a depth of 0.6 um or more, with the expectation of sufficiently adhering the
`
`intermediate layer and minimizing electrode thickness. 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 by theprior art" a prima facie caseof
`
`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, |noue doesnotexplicitly disclose a length of recesses of the
`
`current collector in contact with the intermediate layer with respect to a length of the
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`projections of the current collector in contact with the active material is 0.8 or more and
`
`

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`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 10
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`1.8 or less. However, such a feature appears to be the result of routine experimentation
`
`and/or optimization; a known result-effective variable would be motivation for a person
`
`of ordinary skill in the art to experiment to reach another workable product, MPEP
`
`2144.02, Il.
`
`Inoue was modified by Takadato 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 teachesincreasing the contact area between the current collector and
`
`active material layer, which results from lower coverageof the intermediate layer,is
`
`desirable from the view point of battery performance (higher capacity retention and
`
`

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`Application/Control Number: 17/585,919
`Art Unit: 1729
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`Page 11
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`higher low temperature discharge capacity) due to smaller electrical contact resistance
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`(paras. [0018], and [0054]-[0057] and Table 1, see Example 3 comparedto
`
`Comparative Examples 1-2). That is, Inoue has realized the coverage of the
`
`intermediate layeris a result effective variable with respect to adhesion strength(i.e.,
`
`moreor less intermediate layerfills 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 ordinaryskill 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 recessesin 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.
`
`6.
`
`Claims 3 is rejected under 35 U.S.C. 103 as being unpatentable over Inoue,
`
`Takada, Shiozaki andlida, further in view of Takeuchi (WO2012128274, of record),
`
`Takeuchi.
`
`The features of claim 3 are obvious over Inoue, Takada, 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
`
`

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`Application/Control Number: 17/585,919
`Art Unit: 1729
`
`Page 12
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`93-140, 207-215, 231-238, and 264-270. The particles have a particle size smaller than
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`the roughening of the current collector, such that the particlesfill the recesses of the
`
`roughened surface and more effectively cut current due to an increasein 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 diameterof 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, Takada, Shiozaki andlida, from the view point of increasing
`
`electrical resistance to improvesafety.
`
`Conclusion
`
`7.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ANNA KOROVINA whosetelephone numberis
`
`(571)272-9835. The examiner can normally be reached M-Th 7am - 6 pm.
`
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`supervisor, Ula Ruddock can be reached on 5712721481. The fax phone numberfor
`
`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 Centeris
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`

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`Application/Control Number: 17/585,919
`Art Unit: 1729
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`Page 13
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`
`/ANNA KOROVINA/
`Examiner, Art Unit 1729
`
`/ULA C RUDDOCK/
`Supervisory Patent Examiner, Art Unit 1729
`
`