DETAILED ACTION
Claims 60-68, 70, and 74-88 are presented, wherein claims 60, 68, and 70 are currently amended; claims 65-68, 70, 74, and 76-85 plus the subject matter of Species A.2-7, B.2-7 (including e.g. claims 70-71), C.2-6 (including e.g. claims 65-71 and 74), and D.2-5 are withdrawn; plus, claims 87-88 are newly added. Claims 1-59, 69, and 71-73 are cancelled.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Newly added claim 87 is objected to because of the limitation “a porosity” (emphasis added) should be “the porosity,” or equivalent. Appropriate correction is respectfully required.
Newly added claim 88 is objected to because of the limitation “a maximum average thickness” (emphasis added) should be “the maximum average thickness,” or equivalent. See claim 86, from which newly added claim 88 depends. Appropriate correction is respectfully required.
Newly added claim 88 is objected to because of the limitation “a maximum total thickness” (emphasis added) should be “the maximum total thickness,” or equivalent. Appropriate correction is respectfully required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 87-88 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding newly added claim 87, which depends from newly amended independent claim 60, the limitation “the membrane has a porosity of at least 65%” (emphasis added) is outside the scope of the newly added limitation to independent claim 60, “the membrane has a porosity of 40% to 60%” (emphasis added), so it is not clear as to how the instantly claimed porosity and that of independent claim 60 should be interpreted.
For purposes of examination, said limitation is interpreted as provided infra.
Regarding newly added claim 88, the limitation “each layer comprises a maximum average thickness of 33%, 32%, 31 %, 30%, 29%, 28%, or less than 28% of a total average thickness of the membrane” is not clear whether it (1) further defines a first option of a plurality of options of claim 86, wherein the other options are still capable of satisfying the claims—i.e. the first options remains one option of a plurality of options (noting the “or” conjunction see claim 86, at line 14), from which claim 88 depends; or, (2) to further define said microporous membrane of claim 86 so that said first option is required of said plurality of options of claim 86.
For purposes of examination, said limitation is interpreted as provided infra.
Claims 87 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding newly added claim 87, which depends from newly amended independent claim 60, the limitation “the membrane has a porosity of at least 65%” (emphasis added) it outside the scope of the newly added limitation to independent claim 60, “the membrane has a porosity of 40% to 60%” (emphasis added).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claims 60-64, 75, and 86 plus newly added claims 87-88 are rejected under 35 U.S.C. 103 as obvious over Xiao et al (WO 2017/083633, published May 17, 2017, citations to US 2018/0323417).
Regarding newly amended independent claim 60, Xiao teaches an improved microporous membrane, which may be used as a battery separator membrane,
said microporous membrane may comprise one or more co-extruded “multi-layer membranes” (also annotated as “M”) of like polymers or co-polymers that may be laminated to other co-extruded multi-layer membranes (“M”),
wherein said “multi-layer membranes” (“M”) may be “made up of one or more microlayers or nanolayers of PP” (“PP” being polypropylene) that are composed of—for example—“PP/PP” and “PP homopolymer/PP homopolymer,” such as two coextruded microlayers,
wherein identical or similar PP homopolymers, copolymers, molecular weights, blends, mixtures, or the like layers, microlayers, nanolayers, or membranes, may be used in many different combinations and subcombinations to form layers, sub-layers, membranes, or sub-membranes,
wherein additives, agents, fillers, and/or particles may be added or used and may form layers, microlayers, nanolayers, or membranes; or, blends, mixtures, and/or the like thereof, used in combination with one or more PP layers or membranes,
wherein said separator may include “3 or more layers of individual coextruded microlayers or nanolayers,”
wherein said microlayers or nanolayers may include various additives in one or more layers; or, additives may be applied to outside microlayers to affect surface characteristics, examples including calcium stearate, lithium stearate, and/or siloxane,
wherein a total thickness of said separator may be less than “about 30 µm,”
wherein an outer polymer surface or layer composed of PP “with a higher molecular weight (MW)…may have improved puncture strength,”
wherein said microporous membrane “may surprisingly exhibit increased strength performance…when compared to known battery separators of the same (or greater) thickness…and also may exhibit improved Gurley as well as other improvements, such as improved puncture strength and so forth,”
wherein some relevant portions of the specification are reproduced below for ease of reference:
[0013] Also, identical, similar, distinct, or different PP or PE or PE+PP polymers, homopolymers, copolymers, molecular weights, blends, mixtures, co-polymers, or the like layers, microlayers, nanolayers, or membranes, may be used in many different combinations and subcombinations to form layers, sub-layers, membranes, or sub-membranes. For example, identical, similar, distinct, or different molecular weight PP, PE, and/or PP+PE polymers, homopolymers, co-polymers, multi-polymers, blends, mixtures, and/or the like may be used in each layer or membrane or in each individual layer, microlayer, nanolayer, or membrane. As such, constructions may include various combinations and subcombinations of PP, PE, PP+PE, PP1, PP2, PP3, PE1, PE2, PE3, PP1+PP2, PE1+PE2, PP1+PP2+PP3, PE1+PE2+PE3, PP1+PP2+PE, PP+PE1+PE2, PP1/PP2, PP1/PP2/PP1, PE1/PE2, PE1/PE2/PP1, PE1/PE2/PE3, PP1+PE/PP2, or other combinations or constructions. For example, inventive membrane or separator properties can be improved, modified or optimized by, for example, adjusting the outer layer or membrane surface by using a particular polymer, blend, molecular weight polymer, and/or the like in just the outer layer or membrane surface. As a non-limiting example, an outer PE or PP+PE surface or layer may have improved pin removal (lower COF), a higher molecular weight (MW) polymer surface or layer (PP or PE) may have improved puncture strength, a PP or PP+PE surface or layer may have improved oxidation resistance, expensive raw materials (expensive polymers) can be used in limited layers to reduce cost, and/or the like. Further, although it may be preferred that each of the layers or microlayers or nanolayers be polyolefin (PO) such as PP or PE or PE+PP blends, mixtures, co-polymers, or the like, it is contemplated that other polymers (PY), additives, agents, materials, fillers, and/or particles (M), and/or the like may be added or used and may form layers, microlayers, nanolayers, or membranes such as different outer or surface layers that may be used in combination with one or more PP or PE or PE+PP layers or membranes, and that coatings (CT) or nonwovens (NW) may be added.
…
[0015] In one embodiment of the invention, a multi-layer membrane may be extruded in the form of a PE homopolymer/PE homopolymer, or PP homopolymer/PP homopolymer, or one or more layers of such a multi-layer membrane may include a blend of two polymers, such as a blend of PEs/homopolymer PE, and so forth.
[0016] The microlayer membrane precursors may be bonded together via lamination or adhesion. The possibly preferred battery separators described herein may exhibit a total thickness of less than about 30 μm, less than about 25 μm, less than about 20 μm, less than about 16 μm, less than about 15 μm, less than about 14 μm, or less than about 10 μm, less than about 9 μm, less than about 8 μm, or less than about 6 μm (depending on the number of layers) and may surprisingly exhibit increased strength performance, as defined by reduced splittiness or reduced propensity to split, when compared to known battery separators of the same (or greater) thickness, especially when compared to known dry process battery separators of the same (or greater) thickness. The improvement in splitting or splittiness may be quantified by a test method disclosed herein as Composite Splittiness Index (CSI) and the novel or improved separators described herein may have an improvement in the CSI, and also may exhibit improved Gurley as well as other improvements, such as improved puncture strength and so forth.
…[0051] In accordance with at least selected embodiments, aspects or objects, the present application or invention may be directed to: a battery separator or separator membrane that comprises one or more co-extruded multi-layer membranes laminated or adhered to another polymer membrane and/or to another co-extruded multi-layer membrane, and/or such separators that may provide improved strength, for example, improved puncture strength, particularly at a certain thickness, and/or may exhibit improved shutdown and/or a reduced propensity to split.…
[0053] In accordance with at least certain embodiments, aspects or objects, the present application or invention may be directed to: a battery separator or separator membrane that comprises one or more co-extruded multi-layer microlayer and/or nanolayer membranes co-extruded, laminated or adhered to another polymer membrane and/or to another co-extruded multi-layer membrane, and/or such separators that may provide improved strength, for example, improved puncture strength, particularly at a certain thickness, and/or may exhibit improved shutdown and/or a reduced propensity to split.
…[0061] In accordance with at least selected embodiments, a battery separator or separator membrane comprises one or more co-extruded multi-microlayer membranes optionally laminated or adhered to another polymer membrane. The separators described herein may provide improved strength, for example, improved puncture strength, particularly at a certain thickness, and may exhibit improved shutdown and/or a reduced propensity to split.
(e.g. ¶¶ 0009-13, 15-16, 23, 50-51, and 53, emphasis added), reading on “microporous membrane,” said microporous membrane comprising:
said microporous membrane may comprise one or more co-extruded “multi-layer membranes” (also annotated as “M”) of like polymers or co-polymers that may be laminated to other co-extruded multi-layer membranes (“M”),
wherein said “multi-layer membranes” (“M”) may be “made up of one or more microlayers or nanolayers of PP” (“PP” being polypropylene) that are composed of—for example—“PP/PP” and “PP homopolymer/PP homopolymer,” such as two coextruded microlayers,
wherein identical or similar PP homopolymers, copolymers, molecular weights, blends, mixtures, or the like layers, microlayers, nanolayers, or membranes, may be used in many different combinations and subcombinations to form layers, sub-layers, membranes, or sub-membranes
(e.g. supra), noting the scope of the teaching of said one or more co-extruded multi-layer membranes M laminated to other co-extruded multi-layer membranes M includes four co-extruded multi-layer membranes M, each co-extruded multi-layer membrane M directly laminated to its adjacent co-extruded multi-layer membranes M;
noting that in a laminate of four such membranes, the first and fourth M membranes correspond with the claimed “outer layers” and the second and third M membranes correspond with the claimed “two…inner layers,”
severably establishing a prima facie case of obviousness of the claimed limitations, “two outer layers” and “two or more inner layers,” see also e.g. MPEP § 2144.05(I), reading on the limitation “two outer layers, each outer layer comprising a polyolefin;” and, the previously amended limitations “two or more inner layers, each inner layer comprising a polyolefin” and “each of the outer layers is laminated to an inner layer and each of the inner layers is laminated to at least one other inner layer,”
wherein the scope of the teaching of said “multi-layer membranes” (“M”) may be “made up of one or more microlayers or nanolayers of PP” includes two microlayers or nanolayers of PP, establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.05(I), reading on the previously amended, previously added limitation “each inner layer and each outer layer comprises at least two co-extruded sublayers.”
Regarding previously added limitation “the microporous membrane exhibits a puncture strength increase compared to a membrane having the same structure but not having at least two lamination interfaces,” Xiao teaches said microporous membrane “may surprisingly exhibit increased strength performance…when compared to known battery separators of the same (or greater) thickness…and also may exhibit improved Gurley as well as other improvements, such as improved puncture strength and so forth,” wherein
said microporous membrane may comprise one or more co-extruded “multi-layer membranes” (also annotated as “M”) of like polymers or co-polymers that may be laminated to other co-extruded multi-layer membranes,
wherein said “multi-layer membranes” (“M”) may be “made up of one or more microlayers or nanolayers of PP” (“PP” being polypropylene) that are composed of—for example—“PP/PP” and “PP homopolymer/PP homopolymer,” such as two coextruded microlayers,
wherein identical or similar PP homopolymers, copolymers, molecular weights, blends, mixtures, or the like layers, microlayers, nanolayers, or membranes, may be used in many different combinations and subcombinations to form layers, sub-layers, membranes, or sub-membranes,
wherein additives, agents, fillers, and/or particles may be added or used and may form layers, microlayers, nanolayers, or membranes; or, blends, mixtures, and/or the like thereof, used in combination with one or more PP layers or membranes,
wherein said separator may include “3 or more layers of individual coextruded microlayers or nanolayers,”
wherein said microlayers or nanolayers may include various additives in one or more layers; or, additives may be applied to outside microlayers to affect surface characteristics, examples including calcium stearate, lithium stearate, and/or siloxane,
wherein a total thickness of said separator may be less than “about 30 µm,”
wherein an outer polymer surface or layer composed of PP “with a higher molecular weight (MW)…may have improved puncture strength”
(e.g. supra), but does not expressly teach said previously added limitation “the microporous membrane exhibits a puncture strength increase compared to a membrane having the same structure but not having at least two lamination interfaces.”
However, Xiao teaches a substantially identical microporous membrane (e.g. supra, compared with the instant specification, at e.g. ¶¶ 0033, 53, 67, 114, and 154), establishing a prima facie case of obviousness of the claimed limitation, see also e.g. MPEP § 2112.01; and/or, the teaching of said co-extruded multi-layer membranes M laminated to other co-extruded multi-layer membranes M improving puncture strength reads on the claimed relative relationship “exhibits a puncture strength increase compared to”—or alternatively is sufficiently close to said claimed relative relationship to establish a prima facie case of obviousness of the claimed relative relationship, see also e.g. MPEP § 2144.05(I).
Regarding the newly added limitation “the membrane has a porosity of 40% to 60%,” Xiao teaches said microporous membrane for use as a battery separator membrane having various improvements, including improved porosity, and further includes examples that include porosity of e.g. 42%, 40%, and 40.15% (e.g. ¶¶ 0009, 14, 56, and 69 plus e.g. Tables 1 and 4), establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.05(I); and/or, differences in porosity do not patentably distinguish the instant invention from the art, noting that there does not appear to be patentable significance to the claimed porosity, see e.g. MPEP § 2144.04(IV)(A/B), see further instant specification, at e. ¶0066, reproduced below for ease of reference:
[0066] The porosity of the microporous multilayer membrane can be any porosity not inconsistent with the goals of this disclosure. For example, any porosity that could form an acceptable battery separator is acceptable. In some embodiments, the porosity of the membrane or membrane can be from 10 to 60%, from 20 to 60%, from 30 to 60%, or from 40 to 60%. Sometimes the porosity of the membrane may be 65% or more or 70% or more. It is not so limited as long as the membrane functions as a battery separator.
(Instant specification, at e.g. ¶0066, emphasis added.); and/or, Xiao teaches porosity is important as said improvement of its microporous membrane for use as said battery separator membrane (e.g. supra), so it would have been obvious to a person of ordinary skill in the art to optimize the porosity since Xiao teaches it is a result-effective variable that improves functioning of said battery separator membrane, see also e.g. MPEP § 2144.05(II), reading on said newly added limitation.
Regarding claims 61-63, Xiao teaches the microporous membrane of claim 60, wherein said “multi-layer membranes” (“M”) may be “made up of one or more microlayers or nanolayers of PP” (“PP” being polypropylene) that are composed of—for example—“PP/PP” and “PP homopolymer/PP homopolymer,” such as two coextruded microlayers, wherein identical or similar PP homopolymers, copolymers, molecular weights, blends, mixtures, or the like layers, microlayers, nanolayers, or membranes, may be used in many different combinations and subcombinations to form layers, sub-layers, membranes, or sub-membranes (e.g. supra), reading on “the each of the outer layers comprises a polypropylene…” (claim 61), “each outer layer comprises a polypropylene…” (claim 62), and “the each of the plurality of inner layers comprises a polypropylene…” (claim 63).
Regarding claim 64, Xiao teaches the microporous membrane of claim 60, wherein the scope of the teaching of said “multi-layer membranes” (“M”) may be “made up of one or more microlayers or nanolayers of PP” includes two microlayers or nanolayers of PP, reading on “there are two…inner layers.”
Regarding previously amended, previously added claim 75, Xiao teaches the microporous membrane of claim 60, wherein said microporous membrane “may surprisingly exhibit increased strength performance…when compared to known battery separators of the same (or greater) thickness…and also may exhibit improved Gurley as well as other improvements, such as improved puncture strength and so forth,” wherein
said microporous membrane may comprise one or more co-extruded “multi-layer membranes” (also annotated as “M”) of like polymers or co-polymers that may be laminated to other co-extruded multi-layer membranes,
wherein said “multi-layer membranes” (“M”) may be “made up of one or more microlayers or nanolayers of PP” (“PP” being polypropylene) that are composed of—for example—“PP/PP” and “PP homopolymer/PP homopolymer,” such as two coextruded microlayers,
wherein identical or similar PP homopolymers, copolymers, molecular weights, blends, mixtures, or the like layers, microlayers, nanolayers, or membranes, may be used in many different combinations and subcombinations to form layers, sub-layers, membranes, or sub-membranes,
wherein additives, agents, fillers, and/or particles may be added or used and may form layers, microlayers, nanolayers, or membranes; or, blends, mixtures, and/or the like thereof, used in combination with one or more PP layers or membranes,
wherein said separator may include “3 or more layers of individual coextruded microlayers or nanolayers,”
wherein said microlayers or nanolayers may include various additives in one or more layers; or, additives may be applied to outside microlayers to affect surface characteristics, examples including calcium stearate, lithium stearate, and/or siloxane,
wherein a total thickness of said separator may be less than “about 30 µm,”
wherein an outer polymer surface or layer composed of PP “with a higher molecular weight (MW)…may have improved puncture strength”
(e.g. supra), but does not expressly teach the limitations “the membrane has an increased or improved elasticity at or above 150° C. compared to a PP/PE/PP tri-layer microporous membrane having the same thickness, Gurley, porosity, and/or layer composition make-up as the membrane; the membrane has an increased or improved puncture resistance compared to a PP/PE/PP tri-layer microporous membrane having the same thickness, Gurley, porosity, and/or layer composition make-up as the membrane; the membrane has an increased or improved machine direction tensile at break compared to a PP/PE/PP tri-layer microporous membrane having the same thickness, Gurley, porosity, and/or layer composition make-up as the membrane; and the membrane has an increased or improved TD elongation compared to a PP/PE/PP tri-layer microporous membrane having the same thickness, Gurley, porosity, and/or layer composition make-up as the membrane.”
However, Xiao teaches a substantially identical microporous membrane (e.g. supra, compared with the instant specification, at e.g. ¶¶ 0016, 33, 89, 94-96, 114, and 118), establishing a prima facie case of obviousness of the claimed limitations, see also e.g. MPEP § 2112.01
Regarding previously added claim 86, Xiao teaches the microporous membrane of claim 60, wherein said microlayers or nanolayers may include various additives in one or more layers; or, additives may be applied to outside microlayers to affect surface characteristics, examples including calcium stearate, lithium stearate, and/or siloxane (e.g. supra), reading on “the membrane further comprises an additive, wherein the additive comprises a functionalized polymer, an ionomer, a cellulose nanofiber, an inorganic particle, a lubricating agent, a nucleating agent, a cavitation promoter, a fluoropolymer, a cross-linker, a x-ray detectable material, a polymer processing agent, a high temperature melt index (HTMi) polymer, an electrolyte additive, an energy dissipative non-miscible additive, or any combination thereof” (compared with instant specification, at e.g. ¶¶ 0052, 73-77, and 165); and/or,
said total thickness of said separator may be less than “about 30 µm” (e.g. supra), establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 244.05(I), reading on “the microporous membrane has a maximum average thickness ranging from 1 to 50 microns;” and/or,
the process limitations “the membrane has been machine direction stretched;” “the membrane has been transverse direction stretched;” “the membrane has been machine direction stretched and transverse direction stretched;” and/or “the microporous membrane has been transverse direction stretched and calendered” severably do not patentably distinguish the instant invention from the art, noting that the taught membrane is “microporous,” compared with the teachings in the instant specification, at e.g. ¶¶ 0013, 21, 94-96, and 123, see further e.g. MPEP § 2113;” plus, the process limitation “the membrane has been…calendered” does not patentably distinguish the instant invention from the art, see also instant specification, at e.g. ¶¶ 0094-97, 118-120, and 124.
Xiao reading on “the microporous membrane has a maximum average thickness ranging from 1 to 50 microns; each layer comprises a maximum average thickness of 33%, 32%, 31%, 30%, 29%, 28%, or less than 28% of a total average thickness of the membrane; the membrane has been machine direction stretched; the membrane has been transverse direction stretched; the membrane has been machine direction stretched and transverse direction stretched; the microporous membrane has been transverse direction stretched and calendered; the membrane further comprises an additive, wherein the additive comprises a functionalized polymer, an ionomer, a cellulose nanofiber, an inorganic particle, a lubricating agent, a nucleating agent, a cavitation promoter, a fluoropolymer, a cross-linker, a x-ray detectable material, a polymer processing agent, a high temperature melt index (HTMi) polymer, an electrolyte additive, an energy dissipative non-miscible additive, or any combination thereof; or the membrane further comprises an additive, wherein the additive is a coating on the first outer layer, the second outer layer, or both the first and second layers.”
Regarding newly added claim 87, Xiao teaches the microporous membrane of claim 60, wherein said Xiao teaches said microporous membrane for use as a battery separator membrane having various improvements, including improved porosity (e.g. supra), wherein differences in porosity do not patentably distinguish the instant invention from the art, noting that there does not appear to be patentable significance to the claimed range, see e.g. MPEP § 2144.04(IV)(A/B), see further instant specification, at e. ¶ 0066, reproduced below for ease of reference.
[0066] The porosity of the microporous multilayer membrane can be any porosity not inconsistent with the goals of this disclosure. For example, any porosity that could form an acceptable battery separator is acceptable. In some embodiments, the porosity of the membrane or membrane can be from 10 to 60%, from 20 to 60%, from 30 to 60%, or from 40 to 60%. Sometimes the porosity of the membrane may be 65% or more or 70% or more. It is not so limited as long as the membrane functions as a battery separator.
(Instant specification, at e.g. ¶0066, emphasis added.); and/or, Xiao teaches porosity is important as said improvement of its microporous membrane for use as said battery separator membrane (e.g. supra), so it would have been obvious to a person of ordinary skill in the art to optimize the porosity since Xiao teaches it is a result-effective variable that improves functioning of said battery separator membrane, see also e.g. MPEP § 2144.05(II), reading on the limitation “the membrane has a porosity of at least 65%.”
Regarding newly added claim 88, Xiao teaches the microporous membrane of claim 86, wherein said total thickness of said separator may be less than “about 30 µm,”
wherein said microporous membrane may comprise one or more co-extruded “multi-layer membranes” (also annotated as “M”) of like polymers or co-polymers that may be laminated to other co-extruded multi-layer membranes (“M”),
wherein said “multi-layer membranes” (“M”) may be “made up of one or more microlayers or nanolayers of PP” (“PP” being polypropylene) that are composed of—for example—“PP/PP” and “PP homopolymer/PP homopolymer,” such as two coextruded microlayers noting the scope of the teaching of said one or more co-extruded multi-layer membranes M laminated to other co-extruded multi-layer membranes M includes four co-extruded multi-layer membranes M, each co-extruded multi-layer membrane M directly laminated to its adjacent co-extruded multi-layer membranes M
(e.g. supra), but does not expressly teach the limitation “each layer comprises a maximum average thickness of 33%, 32%, 31 %, 30%, 29%, 28%, or less than 28% of a total average thickness of the membrane.”
However, Xiao teaches each of said four co-extruded PP layers have identical/ substantially composition and processing, so it would have been obvious to a person of ordinary skill in the art to design each of said four co-extruded PP layers (i.e. identical/ substantially composition and processing) with equal thickness, in order to ensure each of said four layers have identical/substantially identical properties, thereby simplifying the design and manufacturing of said microporous membrane.
As a result, each of said four layer would have a thickness of 25% of a total thickness of said microporous membrane, each layer severably establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.05(I), reading on said limitation; and/or, differences in size/proportion do not patentably distinguish the instant invention from the art since it is within the ambit of a person of ordinary skill in the art to design each layer to be of equivalent thickness and there does not appear to be patentable significance to the claimed proportions, see e.g. MPEP § 2144.04(IV)(A), see also instant specification, at e.g. ¶¶ 0011-12, 40, and 60.
Response to Arguments
Applicant’s arguments filed June 8, 2026 have been fully considered but they are not persuasive.
First, the applicant alleges the following.
As an initial matter, Applicant respectfully takes issue with the Office’s reasoning that Xiao teaches or renders obvious the presently claimed, highly specific membrane architecture. The pending independent claims require, inter alia, a multilayer microporous membrane comprising two outer layers and two or more inner layers, with defined lamination relationships between the layers, and further require that each inner layer and each outer layer comprises at least two co-extruded sublayers. Thus, because claim 60 recites two outer layers and at least two inner layers laminated in the recited relationships, the membrane necessarily comprises at least four laminated layers and therefore at least three lamination interfaces between adjacent layers.
The Office Action relies on Xiao’s disclosure that a “multi-layer membrane” may be made up of “one or more” microlayers or nanolayers and provides examples such as PP/PP or PP homopolymer/PP homopolymer. However, Xiao’s permissive disclosure that certain membranes may include microlayers or nanolayers is not a disclosure that every membrane-level layer in the final laminated stack—i.e., each claimed inner layer and each claimed outer layer—necessarily comprises at least two co-extruded sublayers, as required by the claims. The Office appears to equate Xiao’s optional microlayer content of certain sub-membranes with Applicant’s affirmative, universal requirement that every inner layer and every outer layer has at least two co-extruded sublayers. That mismatch between an optional disclosure and an all-layers requirement is a substantial distinction. This limitation aligns with the invention’s layered/co-extruded architecture rather than a peripheral feature, and Xiao’s cited language is not an express teaching of the same.
Indeed, Xiao’s disclosure is best characterized as a broad, permissive “laundry list” of possible materials and possible layer combinations. Applicant submits that this type of disclosure does not provide the requisite teaching, motivation, or reasonable expectation of success to arrive at the presently claimed specialized architecture. In particular, Xiao’s generalized discussion that various laminates and microlayer/nanolayer constructions may be employed does not direct a person of ordinary skill in the art to select (i) a laminated membrane stack meeting Applicant’s specific outer/inner lamination relationships, while simultaneously imposing (ii) the universal constraint that each membrane-level layer in that stack comprises at least two co-extruded sublayers, and while further necessarily arriving at (iii) a structure having at least three lamination interfaces (as shown above). The Office’s reasoning effectively assembles Applicant’s claimed architecture by picking and choosing from Xiao’s numerous possibilities with the benefit of Applicant's disclosure as a blueprint. Such reconstruction is precisely the type of impermissible hindsight that § 103 forbids.
Moreover, Xiao does not provide a reason why a skilled artisan would have been motivated to depart from the architectures it actually discloses in favor of Applicant’s more specialized, multi-interface architecture. To the extent Xiao discloses specific exemplified laminate constructions, Applicant notes that Xiao’s explicitly described laminates are directed to different design tradeoffs than those captured by Applicant’s claims. Xiao does not teach that increasing the laminated layer count and lamination-interface count to the level necessarily required by Applicant’s claimed outer/inner structure (i.e., at least three lamination interfaces when there are at least two inner layers) should be combined with an across-the-board requirement of ≥2 co-extruded sublayers per membrane-level layer. Nor does Xiao teach that such a highly constrained architecture would be expected to produce the particular performance improvements recited by Applicant’s claims. In other words, even if Xiao generally contemplates that membranes may be laminated and may include microlayers, Xiao provides no teaching that would lead a skilled artisan to the specific claimed architecture as a matter of routine design choice.
Applicant further emphasizes that Xiao describes a large number (i.e. around 100) of possible membrane constructions across, for example, paragraphs [0010]-[0011] and [0039]-[0056], yet none is disclosed as the presently claimed architecture in which (a) the membrane includes two outer layers and at least two inner layers laminated in the particular relationships recited, thereby necessarily providing at least three lamination interfaces, and (b) each membrane-level inner and outer layer comprises at least two co-extruded sublayers. The fact that Xiao provides an extensive catalogue of possibilities but does not disclose Applicant’s particularized combination underscores that Xiao is not teaching Applicant’s architecture; rather, the Office’s mapping depends on hindsight selection from Xiao’s broad field of disclosed options.
(Remarks, at 8:3-10:2, emphasis in the original.)
In response, the examiner respectfully notes that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. See e.g. MPEP § 2123(I). Further, “It is well established that a reference is good for all it fairly teaches a person having ordinary skill in the art, even when the teaching is a cursory mention.” In re Mills, 470 F.2d 649, 651 (CCPA 1972).
Here, the examiner respectfully incorporates by reference relevant portions of the prior and instant Office actions, noting that findings are proper and further guided by the taught inventive concept of e.g. an improved puncture strength.
Since a prima facie case of obviousness has been established, the burden of going forward shift to the applicant.
It appears that the applicant is alleging unexpected results. However, an argument of counsel is insufficient to overcome a prima facie showing of obviousness. Since a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments or evidence to rebut the prima facie case. See e.g., In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented by way of an affidavit or declaration under 37 CFR 1.132. However, arguments of counsel cannot take the place of factually supported objective evidence. See e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). See also MPEP § 2145.
The showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. MPEP § 716.02(d). Absent such showing, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” MPEP § 2144.05.
Furthermore, the unexpected property or result must actually be unexpected and of statistical and practical significance. MPEP § 716.02(a).
Here, no such data has been specifically alleged yet.
Second, the applicant alleges the following.
Notwithstanding the foregoing, Applicant further submits that the amended claims are patentable for the additional reason that Xiao fails to disclose the presently claimed architecture in conjunction with the presently claimed porosity requirement. As amended, the claims require a porosity of 40-60%. The Office Action does not identify a disclosure in Xiao of a membrane meeting the claims' structural requirements (including the particular laminated architecture and the all-layers co-extruded sublayer requirement) and also exhibiting porosity within the claimed range by the claimed metric.
(Remarks, at 10:3, emphasis in the original.)
In response, the examiner respectfully refers supra.
Third, the applicant alleges the following.
Further, even assuming arguendo that one could attempt to modify Xiao’s exemplified embodiments to satisfy Applicant’s presently claimed multi-layer architecture (including the recited outer/inner lamination relationships and the all-layers co-extruded sublayer requirement), such structural modifications would be expected to materially influence porosity as measured by the claimed metric. Porosity is a microstructure-dependent property affected by, for example, layer count, layer thickness distribution, interface formation, densification during lamination, and any post-processing such as stretching and/or calendering. Xiao does not teach or suggest how a person of ordinary skill would maintain a porosity within the claimed range while making the substantial architectural changes necessary to arrive at Applicant’s claimed structure. Thus, the Office Action’s reliance on Xiao does not establish that the claimed porosity (by the claimed metric) would be present in a membrane modified to meet Applicant's architecture, and any assertion that the claimed porosity would be preserved would amount to unsupported speculation or, at best, routine experimentation and optimization-insufficient to supply the missing teachings required for a prima facie case.
(Remarks, at 10:4-11:1.)
In response, the examiner respectfully refers supra.
Fourth, the applicant alleges the following.
Further still, Applicant also notes that the Office Action itself acknowledges that Xiao does not expressly teach the limitation that “the microporous membrane exhibits a puncture strength increase compared to a membrane having the same structure but not having at least two lamination interfaces.” While Xiao contains generalized statements regarding improved strength and/or puncture strength, such statements do not disclose the specifically claimed comparator or the required relationship tying the puncture improvement to the presence of at least two lamination interfaces in an otherwise same-structure membrane. Accordingly, Xiao’s generalized discussion cannot supply this expressly missing limitation. Because the Office Action concedes the limitation is not expressly taught, the rejection necessarily depends on an inherency or “substantially identical” theory; however, inherency cannot supply this limitation absent a showing that Xiao necessarily and inevitably achieves the claimed comparative puncture increase, which Xiao does not disclose.
That is, to the extent the Office Action relies on “substantially identical” reasoning or suggests that the claimed performance characteristics are inherent in Xiao, such inherency necessarily fails in view of these very real structural distinctions recited in the claims and not taught by Xiao. Inherency requires that a claimed property necessarily and inevitably flows from the prior art disclosure; it is not enough that the property might be obtainable by modification, selection, or optimization from among many possibilities. Here, the claims require a specific layered and laminated architecture in which each membrane-level inner and outer layer includes at least two co-extruded sublayers, and in which the layers are laminated in the particular relationships recited. Xiao does not disclose that architecture, and thus Xiao cannot be presumed to necessarily and inevitably produce the same microstructure as Applicant’s membrane.
This point is particularly acute for properties such as porosity, Gurley/air resistance, puncture resistance, tensile properties, elongation, and dielectric breakdown. These properties are functions of pore morphology, pore size distribution, tortuosity, layer thickness distribution, and densification history—each of which is materially affected by the membrane’s actual multi-layer architecture and how the layers are formed and laminated. Because Xiao does not teach the claimed “all-layers” co-extruded sublayer architecture and does not disclose the claimed laminated layer relationships in combination with the claimed porosity metric and range, the Office cannot properly presume that Xiao inherently exhibits the claimed performance characteristics or that any such characteristics would necessarily and inevitably be present.
Accordingly, Xiao neither expressly teaches nor renders obvious the presently claimed combination of structural requirements, and any inherency-based rationale as to claimed performance necessarily fails in light of these structural distinctions. Therefore, Applicant submits that, for at least these reasons, independent claim 60 is patentable over the prior art. As a result, the remaining pending claims, each dependent upon claim 60 in some capacity, are thus patentable as well. Accordingly, Applicant respectfully requests that all prior art rejections to the pending claims be withdrawn.
(Remarks, at 11:2-12:2, emphasis in the original.)
In response, the examiner respectfully notes that the argument is not commensurate with the scope of the instant Office action, that of the instant specification, and that of the art.
The MPEP provides under § 2112.01 that a property may be found to be prima facie obviousness by establishing the claimed and prior art products are “substantially identical.”
Further, the MPEP provides under § 2112(V) that once a showing is made that the reference is substantially identical, the burden of going forward shifts to the applicant.
Here, the prior and instant Office actions established a proper showing that the claimed and prior art products are “substantially identical,” relevant portions incorporated herein, shifting the burden of going forward to the applicant.
Regarding the scope of the instant specification, all discussions of “puncture strength” and “porosity” are reproduced below to illustrate what was taught, and indicating what was not taught, in the instant specification.
SUMMARY
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[0016] The multilayered membrane can show improved physical properties compared to a similar tri-layer membrane. For example, in some embodiments, the multilayered membrane can have an increased or improved elasticity at or above 150° C. compared to, for example, a PP/PE/PP tri-layer microporous membrane or a (PP/PP/PP)/(PE/PE/PE)/(PP/PP/PP) multilayer “trilayer” microporous membrane having the same thickness, Gurley, porosity, and/or layer composition make-up as the membrane. In some embodiments, the multilayered membrane can have an increased or improved puncture resistance compared to, for example, a PP/PE/PP tri-layer microporous membrane or a (PP/PP/PP)/(PE/PE/PE)/(PP/PP/PP) multilayer “trilayer” microporous membrane having the same thickness, Gurley, porosity, and/or layer composition make-up as the membrane. The membrane has an increased or improved machine direction tensile at break compared to, for example, a PP/PE/PP tri-layer microporous membrane or a (PP/PP/PP)/(PE/PE/PE)/(PP/PP/PP) multilayer “trilayer” microporous membrane having the same thickness, Gurley, porosity, and/or layer composition make-up as the membrane. In some instances, the multilayered membrane has an increased or improved TD elongation compared to, for example, a PP/PE/PP tri-layer microporous membrane or a (PP/PP/PP)/(PE/PE/PE)/(PP/PP/PP) multilayer “trilayer” microporous membrane having the same thickness, Gurley, porosity, and/or layer composition make-up as the membrane.
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BRIEF DESCRIPTION OF THE DRAWINGS
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[0033] FIG. 8 is a graph showing puncture strength as a function of In (BW*Thickness) for exemplary membranes described herein.
DETAILED DESCRIPTION
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[0053] In addition, particular polymers, co-polymer or polymer or co-polymer blends can be used in the outermost layers (such as a first outer layer and a second outer layer or the outermost sublayer or any other sublayer of these first and second outer layers) of the multilayer membrane to improve the properties thereof or the properties of a battery separator or battery comprising the same. For example, adding an ultra-high molecular weight polymer or co-polymer in the outermost layer can improve puncture strength.
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[0066] The porosity of the microporous multilayer membrane can be any porosity not inconsistent with the goals of this disclosure. For example, any porosity that could form an acceptable battery separator is acceptable. In some embodiments, the porosity of the membrane or membrane can be from 10 to 60%, from 20 to 60%, from 30 to 60%, or from 40 to 60%. Sometimes the porosity of the membrane may be 65% or more or 70% or more. It is not so limited as long as the membrane functions as a battery separator.
[0067] The microporous multilayer membrane or membrane can have a puncture strength, uncoated, of 200 gf or more, 210 gf or more, 220 gf or more, 230 gf or more, 240 gf or more, 250 gf or more, 260 gf or more, 270 gf or more, 280 gf or more, 290 gf or more, 300 gf or more, 310 gf or more, 320 gf or more, 330 gf or more, 340 gf or more, 350 gf or more, or as high as 400 gf or more. In some embodiments, puncture strength may be lower than 200 gf, especially for thinner membranes, and in some embodiments, the puncture may be as high as 500 gf or higher.
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[0089] In some embodiments, the membrane or membrane has or exhibits increased or improved puncture strength compared to a tri-layer microporous membrane or a three layer (trilayer) multilayer microporous membrane. For example, the puncture strength may be above 250 g, above 260 g, above 270 g, above 280 g, above 290 g, above 300 g, or above 310 g. In preferred embodiments the puncture is greater than or equal to 300 g or greater than or equal to 310 g. The multilayer membrane described herein may also have improved MD shrinkage at 120° C. for 1 hour compared to a tri-layer microporous membrane or a three layer (trilayer) multilayer microporous membrane. For example, MD shrinkage at 120° C. for 1 hour may be less than 25%, less than 24%, less than 23%, less than 22%, less than 21%, or less than 20%. In preferred embodiments it is less than 24% or less than 20%. It can be less than 15%. The multilayer membrane described herein may also have improved MD tensile @ break. For example, the MD tensile at break may be greater than 900 kg/cm<2>, or greater than 1,000 kg/cm<2 >or greater than 1,100 kg/cm<2>. These properties are of the membrane itself, i.e., without a coating or other treatment. In some embodiments, these properties may be exhibited in a TD stretched product.
…[0094] The multilayer membrane can be stretched in a machine direction (MD) to make the multilayer membrane microporous. In some instances, the microporous multilayer membrane is produces by transverse direction (TD) stretching of the MD stretched microporous multilayer membrane. In addition to a sequential MD-TD stretching, the multilayer membrane can also simultaneously undergo a biaxial MD-TD stretching. Moreover, the simultaneous or sequential MD-TD stretched microporous multilayer membrane can be followed by a subsequent calendering step to reduce the membrane's thickness, reduce roughness, reduce percent porosity, increase TD tensile strength, increase uniformity, and/or reduce TD splittiness. In some embodiments, the multilayer membrane is TD stretched 1×, 2×, 3×, 4×, 5×, 6×, 7×, 8×, 9×, 10×, or more than 10×.
[0095] In an embodiment, a multilayer membrane can be manufactured using an exemplary process that includes stretching and a subsequent calendering step such as a machine direction stretching followed by transverse direction stretching (with or without machine direction relax) and a subsequent calendering step as a method of reducing the thickness of such a stretched membrane, for example, a multilayer porous membrane, in a controlled manner, to reduce the percent porosity of such a stretched membrane, for example, a multilayer porous membrane, in a controlled manner, and/or to improve the strength, properties, and/or performance of such a stretched membrane, for example, a multilayer porous membrane, in a controlled manner, such as the puncture strength, machine direction and/or transverse direction tensile strength, uniformity, wettability, coatability, runnability, compression, spring back, tortuosity, permeability, thickness, pin removal force, mechanical strength, surface roughness, hot tip hole propagation, and/or combinations thereof, of such a stretched membrane, for example, a multilayer porous membrane, in a controlled manner, and/or to produce a unique structure, pore structure, material, membrane, base film, and/or separator.
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V. Method of Making Multilayer Membranes
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[0113] In some embodiments, the co-extrusion is an air bubble co-extrusion method and the blow-up ration can be varied between 0.5 to 2.0, 0.7 to 1.8, or 0.9 to 1.5. Following co-extrusion using this blow-up ratio, the film can be MD stretched, MD stretched and then TD stretched (with or without MD relax) or simultaneously MD and TD stretched, as described in more detail below. The film can then be optionally calendered to further control porosity.
[0114] Co-extrusion benefits include but are not limited to increasing the number of layers (interfaces), which without wanting to be bound by any particular theory, is believed to improve puncture strength. Also, co-extrusion, without wishing to be bound by any particular theory, is believed to result in the observed DB improvement. Specifically, DB improvement can be related to the reduced PP pore size observed when a co-extrusion process is used. Also, co-extrusion allows for a wider number of choices of materials by incorporating blends in the microlayers. Co-extrusion also allows formation of thin tri-layer or multi-layer films (coextruded films). For example, a tri-layer co-extruded film having a thickness of 8 or 10 microns or thinner can be formed. Co-extrusion allows for higher MD elongation, different pore structure (smaller PP, larger PE). Co-extrusion can be combined with lamination to create desired inventive multi-layer structures. For, example, structures as formed in the Examples.
…
[0118] Other additional steps can include calendering. For example, in some embodiments the calendering step can be performed as a means to reduce the thickness, as a means to reduce the pore size and/or porosity, and/or to further improve the transverse direction (TD) tensile strength and/or puncture strength of the porous biaxially stretched membrane precursor. Calendering can also improve strength, wettability, and/or uniformity and reduce surface layer defects that have become incorporated during the manufacturing process e.g., during the MD and TD stretching processes. The calendered film or membrane can have improved coat ability (using a smooth calender roll or rolls). Additionally, using a texturized calendering roll can aid in improved coating adhesion to the film or membrane.
…[0154] Normalized puncture strength for Examples 1 to 7 is shown in FIG. 8. In FIG. 8, the “a” value is a normalized puncture strength value calculated as shown in the figure. From the results in FIG. 8, some conclusions are that the number of PP/PE interfaces had a strong influence on resulting strength of the Example. Compare Example 2 with 2 PP/PE lamination interfaces to Example 4 with 4 PP/PE lamination interfaces. Compare Example 4 with 4 lamination interfaces to Example 7 with 5 lamination interfaces. Compare Example 2 with Example 6. These have 2 and 5 lamination interfaces, respectively, but the same number of PP/PE lamination interfaces.
(Instant specification, at e.g. ¶¶ 0016, 33, 53, 66-67, 89, 95, 113-114, 118, and 154, emphasis added.)
Regarding the scope of the art, the examiner incorporates herein by reference the discussion supra, which provides some relevant portions of the Xiao art.
In light of the scope of the initial disclosure and that of Xiao, the examiner respectfully maintains a prima facie case of obviousness, shifting the burden of going forward to the applicant
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sakimoto et al (US 2018/0294455);
Song et al (US 2018/0043656);
Stokes et al (US 2017/0084898);
Zhang et al (US 2017/0033346);
Kikuchi et al (US 2016/0329609);
Adams, et al (US 2016/0329541);
Li et a (US 2016/0011127);
Humiston et al (US 2015/0266064);
Wei et al (US 2014/0287322);
Rhee et al (US 2012/0301698);
Okamoto (US 2012/0148901);
Zhang et al (US 2011/0223486);
Brant et al (US 2011/0206973);
Rhee et al (US 2011/0104468);
Rhee et al (US 2011/0064929);
Kikuchi et al (US 2009/0098450);
Kono et al (US 2008/0057389);
Masuda et al (US 2007/0178324);
Jones et al (US 2003/0035943);
Callahan (US 6602593); and,
Yu (US 6080507).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YOSHITOSHI TAKEUCHI whose telephone number is (571)270-5828. The examiner can normally be reached M-F, 8-4.
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://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TIFFANY LEGETTE-THOMPSON can be reached at (571)270-7078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YOSHITOSHI TAKEUCHI/Primary Examiner, Art Unit 1723
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