DETAILED ACTION
Notice of Pre-AIA or AIA Status
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 Amendment
In response to the amendment received January 6, 2026:
Claims 20-23, 39, 41, 43, and 47-49 are pending with claims 20-23 withdrawn as being drawn to an unelected invention.
The previous claim objection is withdrawn in light of the amendment.
The previous 112 rejections are withdrawn in light of the amendment.
The core of the previous prior art rejection is maintained with slight changes made in light of the amendment. All changes are necessitated by the amendment. Thus, the action is final.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 39-41, 43, and 48-49 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0259505 (Lee ‘505) as evidenced by and in view of WO 2014/092334A1/US 2015/0140404 (Yoo et al.), WO 2013/12490 (Amin-Sanayei et al.), and WO 2014/119941 (Lee ‘941). (Note: US 2015/0140404 is relied upon as the translation for WO 2014/092334A1, as they pertain to the same PCT. Both the US and WO versions of the references are applicable to the claimed invention with different dates applicable.)
As to claim 39, Lee ‘505 teach a separator for a lithium battery comprising a porous or microporous substrate [9] (para 0026); and
a coating layer (coating [7]) formed on at least one surface of the porous or microporous substrate,
wherein the coating layer is formed from an aqueous coating slurry consisting essentially of water (one of eight set forth in para 0037),
ceramic particles (barium titanate, BaTiO3, exemplified (para 0054), others, such as Al2O3 set forth (para 0029)),
a water-soluble binder (such as polyethylene oxide, polyvinyl pyrrolidone, and carboxy methyl cellulose (para 0013)) (note: Yoo et al. is relied upon to as an evidentiary reference to show that polyethylene oxide, polyvinyl pyrrolidone, and carboxy methyl cellulose are all water soluble (para 0035)), and
one or more water-insoluble polymeric binders (polyvinlidene fluoride co-cholorotrifluoro ethylene (PVDF-CTFE) exemplified, other similar PVDF-based polymers, like polyvinylidene fluoride-co-hexafluoropropylene, set forth (para 0013, 0054))
wherein the weight ratio of ceramic particles to first polymeric binder (water-insoluble binder) ranges from 50:50 to 99:1 (para 0036) (see also fig. 1) (overlaps claimed ratio), wherein the amount of inorganic particles to the first binder polymer (water-insoluble binder) is a result effective variable that effects pore size/porosity and peeling resistance. Lee ‘505’s water-insoluble polymeric binders include a copolymer of polyvinylidene fluoride and hexafluoropropylene (polyvinylidene fluoride-co-hexafluoropropylene acknowledged; see para 0013, 0035, 0054);
wherein the aqueous coating slurry does not contain any non-aqueous solvent (as Lee ‘505 sets forth singular solvents, including water, through an acknowledgement of mixtures as a separate embodiment, and also acknowledges that the second binder polymer can use the same solvent as the first binder polymer (see para 0037, 0041)).
Thus, as Lee ‘505 sets forth singular solvents, including water, through an acknowledgement of mixtures as a separate embodiment, and also acknowledges that the second binder polymer can use the same solvent as the first binder polymer (see para 0037, 0041) and does not require the use of any other materials beyond the ceramic particles, water-soluble binder, and one or more water-insoluble polymer binders, Lee ‘505 renders obvious the claimed consisting of language.
For clarity’s sake Lee ‘505 teaches of having a first and second binder polymer with options that are water insoluble and water soluble listed (para 0013). Thus, at the very least, the use of as water soluble and water insoluble binder in combination is at the very least obvious.
Additionally, Yoo et al. at this point can additionally be relied upon to provide further motivation (in addition to the general teaching encompassed by Lee ‘505) as to why the first and second binders should be a combination of a water insoluble binder (PVDF-based polymers) with a water soluble binder (polyethylene oxide, polyvinyl pyrrolidone, and carboxy methyl cellulose) (para 0031, 0035). Specifically, the combination of these two types of binders lead to good dispersibility of inorganic particles, good rheology of the coating fluid, as well as good adhesive strength between the inorganic particles and substrate (para 0040, lines 9-26). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to combine a water insoluble binder (PVDF-based polymers) with a water soluble binder (polyethylene oxide, polyvinyl pyrrolidone, and carboxy methyl cellulose) in order to achieve good dispersibility of inorganic particles, good rheology of the coating fluid, as well as good adhesive strength between the inorganic particles and substrate.
Lee ‘505 does not specifically teach (a) each of the one or more water-insoluble polymer binders have a melt temperature less than 100°C, (b) that the water-soluble binder comprises polyvinyl alcohol or polyacrylic acid, (c) the ratio of water-soluble binder to water-insoluble binder is 1:10, (d) that the molecular weight or the water-insoluble binder is greater than 300,000, and (e) that the separator exhibits an MD shrinkage after 1 hour at 130 degrees C of less than 10% and a transverse (TD) shrinkage after 1 hour at 130 degrees C of less than 7%.
With respect to (a), Amin-Sanayei et al. teaches waterborne slurries in separator coatings (as an improvement to organic-solvent based binder compositions) (p 2, line 10-p3, line 10). Amin-Sanayei et al. teaches PVDF-based compositions, specifically PVDF-based copolymers, have advantageously low melting temperatures, so that lower film forming temperature can be used; specifically a copolymer of PVDF and HPF (hexafluoropropene) can be applied in certain amounts to also ensure dimensional stability (p 3, lines 5-25; p 6, lines 4-8). Accordingly, Amin-Sanayei et al. provide the general teach of using PVDF-based copolymers, specifically PVDF-HPF copoplymer, wherein the specific blend of the copolymer affects things such as a lower melting temperature to provide a lower film forming temperature and dimensional stability (p 3, lines 5-25; p 6, lines 4-8). Since Amin-Sanayei et al. recognize that PVDF-HPF copolymers (at different ratios) affect things such as a melt temperatures (wherein the lower the melt temperature the better, as it would provide a layer that would require lower film forming temperatures) and dimensional stability (p 3, lines 5-25; p 6, lines 4-8), having a melt temperature of less than 100ºC is seen to be the discovery of an optimum/workable range of melt temperature, which is held by the Office to be obvious; see MPEP 2144.05(II). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have the binder be a PVDF-HPF copolymer with a melt temperature of less than 100ºC, as Amin-Sanayei et al. generally teach of lowering the melt temperature to lower the film forming temperature, which is seen to be the discovery of an optimum/workable range of melt temperature; additionally it would further be obvious to lower the melt temperature of the binder as low as possible (i.e less than 100ºC), as this would yield a product that is easier to form, since film forming would be at a lower temperature and would require less energy to form.
With respect to (b), Yoo et al. teach of water-soluble binders including polyvinyl alcohol, polyethylene oxide, polyvinyl pyrrolidone, and carboxy methyl cellulose (para 0035). Substituting one known water-soluble binder known in the art for another water water-soluble binder known in the art (substituting polyethylene oxide, polyvinyl pyrrolidone, and carboxy methyl cellulose (in both Lee ‘505 (para 0013) and Yoo et al. (para 0035)) with polyvinyl alcohol (in Yoo et al. (para 0035)) would yield the predictable result of acting as a water-soluble binder (as the substituted components and their functions as water soluble binders were known in the art). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to substitute polyvinyl alcohol for polyethylene oxide, polyvinyl pyrrolidone, or carboxy methyl cellulose as the substitution of one water soluble binder for another water soluble binder, both known in the art, would yield the predictable result of acting as a water soluble binder. “When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id . at ___, 82 USPQ2d at 1396.” See MPEP §2141(I).
With respect to (c), Yoo et al. teach the combination of a first water-insoluble binder (i.e. PVDF-based copolymer (para 0031)) with a third water-soluble binder (polyvinyl alcohol rendered obvious in (b) above (para 035)). Yoo et al. further teaches that a preferable weight ratio of the first binder (water-insoluble binder): third binder (water soluble binder) is 100:0 to 5:95, wherein having a third binder is preferred to improve dispersibility of inorganic particles and to regulate rheology of the coating solution (para 0040, lines 9-19).
Accordingly, translating the order of the weight ratio to the claimed order – Yoo et al.’s teaching has a water-soluble binder to water-insoluble binder at a ratio of 0:100 to 95:5, with a preference for including the water-soluble binder for dispersibility and rheology regulation purposes.
This overlaps the claimed ratio of 1:10, thus rendering the claimed ratio obvious. “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. 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)” See MPEP §2144.05(I).
Additionally, at the very least, Yoo et al. sets forth that the ratio of water-soluble binder to water-insoluble binder is a result effective variable, as if the amount is too low (i.e. having none), it affects dispersibility of inorganic particles and rheology of the coating solution; and if the amount is too high, the viscosity may become too thick, thus affecting dispersibility and adhesive strength between the inorganic particles and the substrate (para 0040, lines 9-26). It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the ratio of water-soluble binder to water-insoluble binder is 1:10, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
With respect to (d), Lee ‘941 teach that the PVDF-based binder should have a weight average molecular weight of 500,000-1,500,000 (g/mol) (para 0056) (overlaps claimed range, thus renders it obvious). (“In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. 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)” See MPEP §2144.05(I).) The motivation for having a PVDF-based binder with a weight average molecular weight of 500,000-1,500,000 (g/mol) is that this molecular weight improves adhesion of a coating layer and a polyolefin base film (porous/microporous substrate) to prevent shrinking due to heat (para 0056). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) for having a PVDF-based binder with a weight average molecular weight of 500,000-1,500,000 (g/mol) is that this molecular weight improves adhesion of a coating layer and a polyolefin base film (porous/microporous substrate) in order to prevent shrinking due to heat.
With respect to (e): Lee et al.’s invention is drawn towards reducing shrinkage of the separator specifically cited with being related to the molecular weight of a PVDF binder and amount of ceramic particles in the coating (para 0056, 0060). Additionally, Lee ‘941 teaches that their final structure results in both the MD (machine direction) and TD (transverse direction) have a shrinkage of less than 4% left at 105 degrees C for 1 hour (claim 8; para 0050). The motivation for having less than 4% MD and TD thermal shrinkage after being left at 105 degrees C for 1 hour is to provide a separator with high resistance to thermal shrinkage, which improves shape maintenance and stability of a battery using the separator. Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have a shrinkage of less than 4% left at 105 degrees C for 1 hour (claim 8; para 0050) to provide a separator with high resistance to thermal shrinkage, which improves separator shape maintenance and stability of a battery using the separator.
Note: Although this is not the exact conditions provided by the claim (less than 10% MD and less than 7% TD under 130 degrees C after 1 hour), the teaching would at least be expected or obvious.
Regarding expectation – The reasons regarding expectation are that the conditions are similar (same time, 25 degrees different), and Lee et al.’s teaching is shrinkage of less 4% in both the TD and MD direction (less than the claimed amounts).
Regarding obviousness - Alternately, if it is shown that the claimed conditions provides a shrinkage in the TD and MD direction outside of the claimed range, any differences would be small and obvious. It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)) Also see MPEP §2144.05(I). Additionally, at the very least, Lee ‘941 provides the general teaching that MD and TD shrinkage should be minimized (and thus the same would be true to the claimed test parameters) in order to have a separator with high resistance to thermal shrinkage and a battery with improved shape maintenance and stability (see para 0050-0051).
As to claim 40, Lee ‘505 teach that coating is porous (para 0036 mentions presence of porosity).
As to claim 41, Lee ‘505 teaches of maintaining a desired pore size of the coating (not too small; para 0036).
However, Lee ‘505 do not specify the pore size, such that the coating is microporous.
However, Yoo et al. teach of a similar product (coated substrate), wherein a pore size of 0.001-10 µm (microporous) (para 0043). The motivation for having a pore size of 0.001-10 µm (microporous coating) is to properly fill the coating/separator with electrolyte while preserving necessary mechanical properties (para 0043). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have a coating with a pore size of 0.001-10 µm (microporous coating) in order to properly fill the coating/separator with electrolyte while preserving necessary mechanical properties. Additionally, Yoo et al. set forth that the pore size (of the coating) is a result effective variable – as it affects the ability to hold electrolyte for ion conductivity (poorer with smaller pores) as well as mechanical strength (poorer with larger particles). It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the coating layer microporous, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
As to claim 43, Lee ‘505 teach the separator of claim 39 (see the rejection to claim 39 above for full details, incorporated herein but not reiterated herein for brevity’s sake. Additionally, Lee ‘505 teach its use in a lithium ion battery comprising electrodes and an electrolyte (para 0049-0051).
As to claim 48, Lee ‘505 teaches the polymeric binder is polyvinylidene fluoride (PVDF) homopolymer, a copolymer of PVDF, or a mixture there of (polyvinlidene fluoride co-cholorotrifluoro ethylene (PVDF-CTFE) exemplified, other similar PVDF-based polymers, like polyvinylidene fluoride-co-hexafluoropropylene) (para 0013, 0054).
As to claim 49, Lee ‘505 teaches the cop0olymer of PVDF comprises PVDF and/or vinylene fluoride (VF2) copolymerized with one or more of hexafluoropropylene (HFP or [-CF(CF3)-CF2-]), chlorotrifluoroethylene (CTFE), and tetrafluoroethylene (TFE) (polyvinlidene fluoride co-cholorotrifluoro ethylene (PVDF-CTFE) exemplified, other similar PVDF-based polymers, like polyvinylidene fluoride-co-hexafluoropropylene) (para 0013, 0054).
Claim(s) 47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee ‘505 as evidenced by and in view of Yoo et al., Amin-Sanayei et al., and Lee ‘941, as applied to claim 39 above, further in view of US 2008/0118827 (Call et al.)
As to claim 47, Yoo et al. do not teach the separator has an ASTM Gurley value of about be about 5 to 300 seconds.
However, Call et al. teach that separators operable in lithium ion batteries have an ASTM Gurley values of 5-100 seconds or 10-60 seconds (para 0007). The motivation having a separator with an ASTM Gurley values of 5-100 seconds or 10-60 seconds is to provide a separator that is appropriate for use in lithium ion batteries (para 0007). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have a separator with an ASTM Gurley values of 5-100 seconds or 10-60 seconds in order to provide a separator that can be properly used in lithium ion batteries. (The range in the prior art overlaps the claimed range (about 5 to 300 seconds), and thus renders the claimed range obvious. “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. 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)” See MPEP §2144.05(I)).)
Response to Arguments
Applicant's arguments filed January 6, 2026 have been fully considered but they are not persuasive.
Applicant expresses appreciation that the claimed binder ratio in an aqueous setting is not taught by the prior art, because Yoo et al. teaches that a first binder (water-insoluble), a second binder (water-soluble), and an optional third binder (water-soluble) (which does not fit the claimed aqueous coating slurring consisting essentially of water, ceramic particles, a singular water-soluble binder, and one or more potential water-insoluble polymeric binders), due to the second binder being mandatory (thus yielding a potential plurality of water-soluble binders, not contemplated by the instant application).
Examiner respectfully disagrees. The argument is not commensurate in scope with the rejection of record. Specifically, the materials of the first and third binders of Yoo et al. are drawn to the binder materials in Lee ‘505, and the teaching of Yoo et al. teach as to why one of ordinary skill in the art would want to choose a specific combination of the binders of Lee ‘505. Thus, the argument is piecemeal analysis that fails to take the combination into account (as it focuses on Yoo et al. alone, without considering the combination with Lee ‘505). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Thus, the argument is not persuasive, and the rejection of record is maintained.
Applicant argues that since Yoo et al. uses two water insoluble binders, the sum of the second and third binders would need to be taken into account regarding the weight ratio (thus yielding a higher water-soluble binder : water-insoluble binder ratio). Again, the argument is not commensurate in scope with the rejection of record. Specifically, the materials of the first and third binders of Yoo et al. are drawn to the binder materials in Lee ‘505, and the teaching of Yoo et al. teach as to why one of ordinary skill in the art would want to choose a specific combination of the binders of Lee ‘505, as well as the desired ratio of the first binder to the third binder (overlaps claimed range. Thus, the argument is piecemeal analysis that fails to take the combination into account (as it focuses on Yoo et al. alone, without considering the combination with Lee ‘505). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Thus, the argument is not persuasive, and the rejection of record is maintained.
With respect to the arguments regarding the 103 rejections, Applicant argues that the prior art used to render obvious the rejected claims (Amin-Sanayei and Lee ‘491) do not cure the deficiencies of the specific references relied upon to regarding the independent claim (Lee ‘505 and Yoo et al.). Applicant does not argue how the combination is not proper. Therefore, the Examiner maintains the obviousness rejections and upholds the rejection to the independent claim, as above.
Applicant argues that the dependent claims are distinct from the prior art of record for the same reason as the independent claim.
Examiner respectfully disagrees. The rejection with respect to the independent claim has been maintained, and thus the rejections to the dependent claims are maintained as well.
Conclusion
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 MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) 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 of this final action.
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/EUGENIA WANG/Primary Examiner, Art Unit 1759