DETAILED ACTION
Response to Amendment/Arguments
Claims 1, 2, 4, 16, 17, 19, 21, 22, 47, and 65-73 are currently pending. Claims 3, 5-15, 18, 20, 23-46, and 48-64 are cancelled. New claims 71-73 have been added. No claim has been amended.
Applicant's arguments filed 2/5/26 have been fully considered but they are not persuasive.
The Applicant argues that “First, contrary to the position of the Office, there is evidence that a coating embodiment would require a higher binder content than that of a free-standing sheet that would be readily apparent to a skilled artisan in the field. As an initial matter, it is common knowledge that a coating is distinct from a free-standing sheet because it must be adhered to a substrate. Consequently, a coating would require both adhesion of the coating to the substrate in addition to inter-particle adhesion of the particles in the coating itself (cohesion), as opposed to a free-standing sheet, which would merely require the latter. It is well-understood that a binder in a composition is largely responsible for ensuring both "adhesion to the substrate and cohesion within the film." Thus, it is a simple logical step to conclude that coatings which have more adhesive demands than free-standing counterparts would require more of the binder responsible for this adhesion.
Notwithstanding, Applicant submits that this conclusion is also supported by extrinsic evidence. For instance, available literature in the art describes "that a higher surface melamine concentration is found on coatings than on free-standing films. ,,,3 Importantly, melamine is a recognized and widely-used industrial binder and adhesive, and this increased melamine coating effect "was confirmed for all types of coatings irrespective of binder chemistry."⁴⁴ Moreover, Applicant reiterates that D1 itself provides evidence of this higher-binder content coating expectation. D1 teaches that the coating embodiment comprises a comparatively lower carbon (and thereby, comparatively higher binder) content than the free-standing sheet embodiment. To this end, D1 discloses that its coating embodiment-distinct from its carbon sheet embodiment relied on by the Office-has "a concentration selected from the group consisting of: 1-80% w/w; 2-60% w/w; and 2-30% w/w." [0044-0046, 0096-0101]. This necessarily leads into a discussion of the Office's improper conclusion that the sheet and coating embodiments of D1 are identical as "functional equivalents." Specifically, whether functional equivalents or not, the Office errs by assuming that because the carbon is a functional equivalent (providing conductivity), the binder concentration required to achieve that function must also be identical. Thus, for at least these reasons, Applicant submits that the Office's mistaken reliance on the free-standing sheet of D1 fails to establish a prima facie case of obviousness”.
In response, the Office first points out that Whear ‘529 (D1) specifically teaches that a binder may be part of the coating (carbon additive coating), not just a free standing sheet. So, even if D1 teaches an aqueous slurry (coating solution) that includes 80 wt% of carbon, the amount of carbon in the coating (without the addition of a binder) would be 100% after the slurry is dried. Nothing in the teachings of D1 requires or even suggests a higher binder content in a carbon coating as opposed to a carbon sheet. In fact, based upon the teaching of increasing the amount of carbon material in the carbon sheet and the corresponding decreasing amount of binder in the carbon sheet disclosed in para. [0066] of D1, one of ordinary skill in the art would have expected a lower binder content in the coating. As previously stated, there is no evidence of criticality of the claimed binder content of 1 to 5% by weight in claim 1. In fact, independent claim 66 recites “the acrylic binder is 1% to 15% by weight” and the 85% by weight of the carbon and 15% by weight of the binder taught by D1 still reads on the claim. As disclosed in pg. 46 of the specification of the present application, “The above values are used for exemplary purposes only. ... In addition, the coating may have an acrylic binder of, for example, approximately 0.5% by weight to approximately 15% by weight”. Since there is no data showing the Dynamic Charge Acceptance of an acetylene black cell having a separator incorporating an acetylene black coating having greater than 5% by weight of acrylic binder, one of ordinary skill in the art would not be able to determine whether there is unexpected results of the range of 1% to 5% by weight of acrylic binder. The Office further points out that Whear ‘529 discloses in para. [0073], “Thus, it may be important that the carbon-coated separator caused the cell to gain charge acceptance ... as well as retaining these properties through-out cycling”. Since Whear ‘529 teaches the same improved property of increased charge acceptance as the present invention, any increase in the Dynamic Charge Acceptance would have been expected by one of ordinary skill in the art. Absent evidence of unexpected results of the claimed 1% to 5% by weight of acrylic binder or 1% to 15% by weight of acrylic binder, the Office maintains the contention where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454. 456, 105 USPQ 233, 235 (CCPA 1955)).
The Applicant further argues that “the Office’s inherency argument to supply the presently claimed limitations regarding the weight distribution of the nucleation additive coating is unfounded. While Applicant appreciates the Office's recognition that the nucleation additive coating is not inherent to the thickness of the coating⁵, Applicant strongly disagrees to the Office's newly provided reasoning to support this inherency conclusion. Specifically, "the Office takes the position that the weight distribution of the nucleation additive coating is still inherent to [D1]/[D2]/[D3] carbon additive coating." According to the Office, "[t]his is because the combination of [D1], [D2], and [D3] teaches the same carbon additive coating comprising acetylene black ([D3]) and acrylic binder ([D1], 1% to 5% optimized by routine experimentation based upon 87% carbon and 13% binder), and thickness ([D2], 5 µm to 60 µm, optimized for improved charge acceptance and wettability as the present invention.”.
In response, even if the weight distribution of the nucleation additive coating is not inherent to the thickness of the coating, the Office takes the position that the weight distribution of the nucleation additive coating is still inherent to Whear ’529/Whear ‘461/Furukawa carbon additive coating. According to D1, “In one particular embodiment, a carbon sheet containing about 87% carbon may be used in conjunction”. This disclosure in addition to the teaching of adding a binder to the carbon, would necessarily result in 13% by weight of the binder which would at least read on the 1% to 15% by weight of the binder recited in claim 66. In addition, Whear ‘461 teaches a thickness of 5 um to 75 um (which is very close to the range of 5 um to 60 um of the present invention). So, the combination of Whear ‘529 (D1), Whear ‘461 (D2), and Furukawa (D3) teaches the same carbon additive coating comprising the same amounts of acetylene black and acrylic binder as the present invention, with the same thickness (optimized for improved charge acceptance and wettability) as the present invention. Therefore, a carbon additive coating having the same composition and thickness as the present invention would necessarily have the same weight distribution of from 0.1 to 0.5 mg/cm2.
Therefore, upon further consideration, claims 1, 2, 4, 16, 17, 19, 21, 22, 47, and 65-73 are rejected under the following new and previously stated 103 rejections.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 2, 4, 16, 17, 19, 21, 22, 47, and 65-68 are rejected under 35 U.S.C. 103 as being unpatentable over Whear et al (US 2015/0318529) in view of Whear et al (WO 2017/062461), and further in view of Furukawa et al (US 2014/0127565).
Regarding claims 1, 2, 16, 22, 47, and 65-68, Whear ‘529 discloses a vehicle comprising a flooded lead acid battery comprising:
an aqueous electrolyte including sulfuric acid and water;
a positive electrode;
a negative electrode; and
a separator between the positive electrode and the negative electrode, the separator comprising:
a battery separator (porous membrane) that may be made of polyolefin such as polyethylene or polypropylene that is laminated to a nonwoven layer/mat (fibrous mat) that is comprised of synthetic fiber or cellulosic fiber; and a carbon additive coating (nucleation additive coating) that is applied to the battery separator, the carbon additive coating comprising a carbon additive (nucleation additive) such as carbon black and a binder that may be part of the coating, wherein acrylates (acrylic binder) is an example of the binder; wherein the thickness of the carbon coating may be adjusted to meet the design parameters of the electrode plate spacing in the battery, the coating thickness may be adjusted from sub-micron to several hundred microns; wherein the carbon additive coating may include more than 85% carbon material which corresponds to 15% or less of a binder (acrylic binder); wherein the battery separator (porous membrane) has a cross-ribbed shape ([0003],[0006],[0012],[0031],[0043],[0048],[0057],[0066], [0068],[0093],[0101]). Whear ‘529 further teaches that the carbon material enables the separator to exhibit improved properties ([0031], [0065-0066], and suggests that the binder is present simply to providing binding properties to the carbon additive coating ([0057],[0115]).
However, Whear ‘529 does not expressly teach an acrylic binder that is 1% to 5% by weight of the nucleation additive coating (claim 1); or an acrylic binder that is 1% to 15% by weight of the nucleation additive coating (claim 66).
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the encompassed portion of the ranges with a reasonable expectation that the carbon additive coating would be successful (MPEP 2144.05 I). It would have also been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the relative amounts of carbon and binder to arrive at the claimed ranges in order to achieve a desired balance between the improved properties provided by carbon and the binding properties provided by the binder for the carbon additive coating of Whear ‘529 (MPEP 2144.05 II). The examiner notes that there does not appear to be any evidence of criticality of the claimed amount of acrylic binder of record.
However, Whear ‘529 does not expressly teach a ribbed porous membrane that has a porosity of at least 50%; a fibrous mat that is one of the group consisting of: an AGM separator, a pasting paper, a scrim, a membrane, and combinations thereof; a nucleation additive coating having a weight distribution of from 0.1 to 0.5 mg/cm2 and a thickness from 5 microns to 60 microns (claim 1); a nucleation additive coating having a weight distribution of 0.35 mg/cm2 and a thickness of 10 microns (claim 65); a porous membrane that is an AGM separator or is adjacent to an AGM separator (claim 16); a ribbed porous membrane that has a porosity of at least 65%; a fibrous mat that is one of the group consisting of: an AGM separator, a pasting paper, a scrim, a membrane, and combinations thereof; a nucleation additive coating having a weight distribution of from 0.1 to 0.5 mg/cm2 and a thickness from 5 microns to 60 microns (claim 66); wherein the nucleation coating further comprises a particulate filler (claims 67 and 68).
Whear ‘461 discloses a pasting paper or an AGM separator that is a substrate for a laminate structure battery separator; a porous membrane that has a porosity of about 60% (pg. 26, lines 21-22) (pg. 19, lines 6-7); a coating (nucleation additive coating) applied to a microporous battery separator membrane (porous membrane) at a thickness of 5 um to 75 um (pg. 46, lines 10-19); wherein the coating includes material such as silica (particulate filler) (pg. 42, lines 3-8).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Whear ‘529 separator to include a pasting paper or an AGM separator in place of the nonwoven layer; a porous membrane that has a porosity of about 60%; a coating that has a thickness of 5 um to 75 um and includes a particulate filler such as silica in order to provide a multilayer or composite battery separator which has excellent oxidation resistance and is stable in a lead acid battery system as well as improved charge acceptance and wettability (Abstract and pg. 6, lines 8-10). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Whear ‘529/Whear ‘461 separator to include a nucleation additive coating having a thickness from 5 microns to 60 microns because it has been held that the discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 205 USPQ 215 (CCPA 1980). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454. 456, 105 USPQ 233, 235 (CCPA 1955)). Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Whear ‘529/Whear ‘461 separator to include a porous membrane that has a porosity of at least 65% because even if the range of prior art and the claimed range do not overlap, obviousness may still exist if the ranges are close enough that one of ordinary skill in the art would not expect a difference in properties (In re Woodruff 16 USPQ 2d 1934 (Fed. Cir. 1990)).
However, Whear ‘529 as modified by Whear ‘461 does not expressly teach a nucleation additive coating comprising a nucleation additive, wherein the nucleation additive comprises acetylene black (claim 1).
Furukawa et al discloses a coating layer for a lead-acid battery, comprising conductive carbon material such as carbon black, wherein the carbon black can be selected from at least one of acetylene black, furnace black, and ketjen black ([0008],[0014]).
Therefore, the invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention because the disclosure of Furukawa indicates that acetylene black is a suitable material for use as conductive carbon material for a lead-acid battery. The selection of a known material based on its suitability for its intended use has generally been held to be prima facie obvious (MPEP §2144.07). As such, it would be obvious to use acetylene black. In addition, the substitution of one known type of carbon black for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Examiner’s note: the Office takes the position that “a weight distribution of from 0.1 to 0.5 mg/cm2”, “a weight distribution of 0.35 mg/cm2”, and “the flooded lead acid battery displays a dynamic charge acceptance greater than a comparative flooded lead acid battery which includes a separator without a nucleation additive used” are inherent characteristics of the Whear ‘529/Whear ‘461/Furukawa battery because the combination of Whear ‘529, Whear ‘461, and Furukawa teaches the same carbon additive coating comprising acetylene black and acrylic binder with the same thickness as the present invention.
Regarding claim 4, Whear ‘529 does not expressly teach a polyethylene that is an ultra-high molecular weight polyethylene.
Whear ‘461 discloses a porous membrane that is made of a material such as an ultrahigh molecular weight polyethylene (pg. 26, lines 15-26).
Therefore, the invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention because the disclosure of Whear ‘461 indicates that ultrahigh molecular weight polyethylene is a suitable material for use as porous membrane. The selection of a known material based on its suitability for its intended use has generally been held to be prima facie obvious (MPEP §2144.07). As such, it would be obvious to use ultrahigh molecular weight polyethylene.
Regarding claims 17 and 19, Whear ‘529 does not expressly teach a porous membrane comprising a particle-like filler (claim 17); wherein the particle-like filler is selected from the group consisting of: dry finely divided silica, precipitated silica, amorphous silica, alumina, talc, and combinations thereof (claim 19).
Whear ‘461 discloses a microporous polymer layer (porous membrane) comprising an inert filler material (particle-like filler), wherein the filler is selected from dry, finely divided silica, alumina, talc (pg. 28, lines 8-10).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Whear battery separator to include a particle-like filler such as dry, finely divided silica, alumina, talc in order to eliminate stratification and provide oxidation resistance to the separator (Abstract and pg. 28, lines 18-19).
Regarding claim 21, Whear ‘529 also discloses a battery separator comprising a surfactant ([0046]).
Claims 69-72 are rejected under 35 U.S.C. 103 as being unpatentable over Whear ‘529 in view of Whear ‘461 and Furukawa et al as applied to claims 1 and 66 above, and further in view of Ketzer et al (US 2015/0099189).
However, Whear ‘529 as modified by Whear ‘461 and Furukawa et al does not expressly teach a fibrous mat that has a thickness of at least about 200 um, at least about 250 um, at least about 300 um, at least about 400 um, at least about 500 um, at least about 600 um, at least about 700 um, at least about 800 um, at least about 900 um, at least about 1 mm, or at least about 2 mm (claims 69 and 70); a fibrous mat that has a thickness of at least about 500 um, at least about 600 um, at least about 700 um, at least about 800 um, at least about 900 um, at least about 1 mm, or at least about 2 mm (claims 71 and 72).
Ketzer et al discloses a reinforcement mat (fibrous mat) that has a thickness of between 50 um and about 500 um ([0031],[0064]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Whear ‘529/Whear ‘461/Furukawa separator to include a fibrous mat that has a thickness of between 50 um and about 500 um in order to reduce the overall volume that the mat occupies, which allows an increase amount of electrolyte and/or active material past to be used within the lead-acid battery ([0031]). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Whear ‘529/Whear ‘461/Furukawa/Ketzer separator to include a fibrous mat that has a thickness of at least about 500 um because in a 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 USPQ 2d 1934 (Fed. Cir. 1990)). There is no evidence of criticality of the claimed thickness of the fibrous mat.
Claim 73 is rejected under 35 U.S.C. 103 as being unpatentable over Whear et al (US 2015/0318529) in view of Whear et al (WO 2017/062461).
Whear ‘529 discloses a battery comprising:
an aqueous electrolyte including sulfuric acid and water;
a positive electrode;
a negative electrode; and
a separator between the positive electrode and the negative electrode, the separator comprising:
a battery separator (porous membrane) that may be made of polyolefin such as polyethylene or polypropylene that is laminated to a nonwoven layer/mat (fibrous mat) that is comprised of synthetic fiber or cellulosic fiber; and a carbon additive coating (nucleation additive coating) that is applied to the battery separator, the carbon additive coating comprising a carbon additive (nucleation additive) such as carbon black and a binder that may be part of the coating; wherein the thickness of the carbon coating may be adjusted to meet the design parameters of the electrode plate spacing in the battery, the coating thickness may be adjusted from sub-micron to several hundred microns; wherein the carbon additive coating may include more than 85% carbon material which corresponds to 15% or less of a binder ([0003],[0006],[0012],[0031],[0043],[0048], [0057],[0066],[0068],[0093],[0101]). Whear ‘529 further teaches that the carbon material enables the separator to exhibit improved properties ([0031], [0065-0066], and suggests that the binder is present simply to providing binding properties to the carbon additive coating ([0057],[0115]).
However, Whear ‘529 does not expressly teach a binder that is 1% to 5% by weight of the nucleation additive coating.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the encompassed portion of the ranges with a reasonable expectation that the carbon additive coating would be successful (MPEP 2144.05 I). It would have also been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the relative amounts of carbon and binder to arrive at the claimed ranges in order to achieve a desired balance between the improved properties provided by carbon and the binding properties provided by the binder for the carbon additive coating of Whear ‘529 (MPEP 2144.05 II). The examiner notes that there does not appear to be any evidence of criticality of the claimed amount of binder of record.
However, Whear ‘529 does not expressly teach a porous membrane that has a porosity of at least 50%; a fibrous mat that is one of the group consisting of: an AGM separator, a pasting paper, a scrim, a membrane, and combinations thereof; a nucleation additive coating having a weight distribution of from 0.1 to 0.5 mg/cm2 and a thickness from 5 microns to 60 microns.
Whear ‘461 discloses a pasting paper or an AGM separator that is a substrate for a laminate structure battery separator; a porous membrane that has a porosity of about 60% (pg. 26, lines 21-22) (pg. 19, lines 6-7); a coating (nucleation additive coating) applied to a microporous battery separator membrane (porous membrane) at a thickness of 5 um to 75 um (pg. 46, lines 10-19).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Whear ‘529 separator to include a pasting paper or an AGM separator in place of the nonwoven layer; a porous membrane that has a porosity of about 60%; a coating that has a thickness of 5 um to 75 um in order to provide a multilayer or composite battery separator which has excellent oxidation resistance and is stable in a lead acid battery system as well as improved charge acceptance and wettability (Abstract and pg. 6, lines 8-10). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Whear ‘529/Whear ‘461 separator to include a nucleation additive coating having a thickness from 5 microns to 60 microns because it has been held that the discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 205 USPQ 215 (CCPA 1980). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454. 456, 105 USPQ 233, 235 (CCPA 1955)).
Examiner’s note: the Office takes the position that “a weight distribution of from 0.1 to 0.5 mg/cm2” and “the battery displays a dynamic charge acceptance greater than a comparative battery which includes a separator without a nucleation additive used” are inherent characteristics of the Whear ‘529/Whear ‘461 battery because the combination of Whear ‘529 and Whear ‘461 teaches the same carbon additive coating comprising carbon and acrylic binder with the same thickness as the present invention.
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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/T.S.C/Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 5/1/2026
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