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 .
The Applicant’s amendment filed on June 2, 2025 was received. Claims 1,10,19 were amended. Claim 2 was canceled. The text of those sections of Title 35 U.S.C. code not included in this action can be found in the prior office actions.
Claim Rejections - 35 USC § 112
The rejections of claims 1-4,7-13,15-19,21-23 under 35 U.S.C. 112(a) as failing to comply with the written description requirements are withdrawn because the support for the recitations “the polymer fibers comprise one or more neat polymer fibers” can be found in Figure 5B and paragraph 122 of the instant specification.
Claim Rejections - 35 USC § 103
Claims 1,3,4,7-10,12,13,15-19, 21-23 remain rejected under 35 U.S.C. 103 as being unpatentable over Dushatinski et al. (US 20190123324 A1) in view of Bando et al. (JP 2009256534 A) (a machine translation can be found in the attachment of an earlier office action). The rejections are restated below to address the amendment.
Regarding claim 1, Dushatinski teaches a separator for a secondary battery, which is formed of a single layer of porous sheet 46 as shown in Fig. 4. The porous single sheet (46) includes a polymer matrix (45) and boron nitride nanotubes (42) which are embedded in the polymer matrix (46), wherein the polymer matrix comprises a plurality of polymer fibers and the polymer coating forms a polymer matrix (46). See para. 3,6,20 and Fig. 4. Dushatinski et al. further teach the polymer coated BNNTs may be formed by electrospinning, among other methods, but Dushatinski is silent as to whether the polymer fibers comprise one or more neat polymer fibers. However, it is the position of the examiner that properties of the said polymer fibers, including surface smoothness/roughness, are inherent, given that both Dushatinski and the present application utilize the same manufacturing process. As shown in Figures 2(A) and 2(B), the network of BNNTs (21) is embedded in the polymer matrix (20). See para. 17,25. Dushatinski further teaches that the boron nitride nanotubes have an average external diameter of 1.5 to 6 nm and beyond. The average length of the nanotubes ranges from a few hundreds of nm to hundreds of micrometers. See para. 22. As a result, the aspect ratio of the BNNTs is in the range of 10 to 5000.
Dushatinski et al. do not explicitly disclose the tensile strength of the resulting BNNT/polymer composites. Nevertheless, Dushatinski recognizes that the properties of the separator are tunable depending on gas stoichiometry, mat density, porosity and thickness. See para. 14,27,30. Therefore, it would have been within the skill of the ordinary artisan to adjust the mat density, porosity and thickness of the resulting BNNT/polymer separator to yield desirable tensile strength. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Dushatinski et al. do not explicitly disclose the claimed range for the parts by weight of boron nitride nanotubes included in the porous sheet. Bando teaches a separator for a battery formed of a porous sheet (“solid electrolyte composite membrane”) comprising a polymer matrix (“perfluorocarbon sulfonic acid resin”) and boron nitride nanotubes embedded therein. See sections “Tech-Problem” and “Tech-Solution” on p. 3. Specifically, Bando teaches that the sheet includes 0.01-100 parts by weight, more preferably 0.1-80 parts by weight, of boron nitride nanotubes based on 100 parts by weight of polymer (“resin”), (see “Tech-Solution” on p. 3 and 45 on p. 5). Bando teaches that boron nitride nanotubes contribute insulating properties and mechanical strength, and also that the amount of boron nitride nanotubes must be limited in order to ensure uniform dispersion in the resin for a uniform resin composition (para 5 on p. 5). Further, Bando teaches an example in having 20 parts boron nitride nanotubes based on 100 parts by weight of polymer (“Nafion”), (see Example 1 on p. 8). Therefore, it would be obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form the porous sheet of Dushatinski to have the claimed amount of 2-20 parts by weight boron nitride nanotubes per 100 parts by weight polymer, since Bando teaches a wider range of 0.1-80 parts boron nitride nanotubes per 100 parts by weight polymer as a suitable proportion of boron nitride nanotubes. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 3, Dushatinski teaches the separator for a secondary battery herein the polymer of the polymer matrix is selected from a group including polyvinylidene fluoride (PVdF), polymethylmethacrylate, cellulose acetate, acrylonitrile-styrenebutadiene copolymer, polyimide, polyester resin, epoxy resin and other materials. See para. 16.
Regarding claim 4, Dushatinski teaches the separator for a secondary battery wherein the polymer of the polymer matrix is selected from a group including polyvinylidene fluoride. See para. 16.
Regarding claim 7, Dushatinski teaches the separator for a secondary battery as described in Paragraph 3 above. However, Dushatinski does not explicitly disclose the bulk density of the boron nitride nanotubes included in the separator. As evidenced in the American Elements (https://web.archive.org/web/20200927055808/https://www.americanelements.com/boron-nitride- nanotubes-10043-11-5, cited with the action of 06/26/2023), the density of boron nitride nanotubes is 1.9-2.1 g/cm3, which overlaps the claimed density of 2.0-2.2 g/cm3. See page. 2.
Regarding claim 8, Dushatinski teaches the separator for a secondary battery, but does not provide any measurements of thermal shrinkage. Nevertheless, Dushatinski does teach that the boron nitride nanotubes form a scaffold in the separator. See Abstract, para. 3,6,22. Dushatinski describes the separator as a BNNT scaffolding supporting a polymer coating. See para. 9, Figures 2A and 4. The BNNT scaffolding gives the composite separator improved mechanical properties and stiffness ([0018]). Given the thermal stability of BNNTs, the BNNT scaffolding inherently shows essentially no thermal shrinkage at the relatively low temperatures of 170 °C and 200 °C. Although the polymer may show some degradation, the general size of the separator is inherently preserved due to the BNNT scaffold, thus necessarily and inherently disclosing the claimed ranges of the thermal shrinkage.
Assuming for the sake of argument that the claimed thermal shrinkages are not inherent to the separator of Dushatinski, it would have been obvious to form the separator to have thermal shrinkage properties in the claimed ranges. The thermal stability of the separator is enhanced by the addition of BNNTs ([0007]). As thermal shrinkage is an indicator of thermal stability, it would have been obvious to form the separator with a thermal shrinkage in the claimed range in order to achieve the enhanced thermal stability made possible by the addition of BNNTs. “[W]here 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.” The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. See MPEP § 2144.05, Il.
Regarding claim 9, Dushatinski teaches the separator for a secondary battery wherein the separator has a tunable porosity, including the porosity level and pore size distribution, See para. 6,14, but does not explicitly disclose that the separator has a density in the claimed range of 0.3 g/cm3 to 0.7 g/cm3. As the separator mechanical strength and ion channeling are variables that can be modified, among others, by adjusting the density and porosity of the separator, with density decreasing as pore size is increased, the precise density of the separator would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention (see para. 6,14). As such, without showing unexpected results, the claimed density of the separator cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the pore sizes and corresponding density of the separator of Dushatinski to the claimed range in order to obtain the desired mechanical strength and ion channeling. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 10, Dushatinski teaches a separator for a secondary battery, which is formed of a single layer of porous sheet 46 as shown in Fig. 4. The porous single sheet (46) includes a polymer matrix (45) and boron nitride nanotubes (42) which are embedded in the polymer matrix (46), wherein the polymer matrix comprises a plurality of polymer fibers and the polymer coating forms a polymer matrix (46). See para. 3,6,20 and Fig. 4. Dushatinski et al. further teach the polymer coated BNNTs may be formed by electrospinning, among other methods, but Dushatinski is silent as to whether the polymer fibers comprise one or more neat polymer fibers. However, it is the position of the examiner that properties of the said polymer fibers, including surface smoothness/roughness, are inherent, given that both Dushatinski and the present application utilize the same manufacturing process. As shown in Figures 2(A), the network of BNNTs (21) is embedded in the polymer fibers (20) along the fiber length direction. See para. 17,25. Dushatinski further teaches that the boron nitride nanotubes have an average external diameter of 1.5 to 6 nm and beyond. The average length of the nanotubes ranges from a few hundreds of nm to hundreds of micrometers. See para. 22. As a result, the aspect ratio of the BNNTs is in the range of 10 to 5000.
Dushatinski et al. do not explicitly disclose the tensile strength of the resulting BNNT/polymer composites. Nevertheless, Dushatinski recognizes that the properties of the separator are tunable depending on gas stoichiometry, mat density, porosity and thickness. See para. 14,27,30. Therefore, it would have been within the skill of the ordinary artisan to adjust the mat density, porosity and thickness of the resulting BNNT/polymer separator to yield desirable tensile strength. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Dushatinski et al. do not explicitly disclose the claimed range for the parts by weight of boron nitride nanotubes included in the porous sheet. Bando teaches a separator for a battery formed of a porous sheet (“solid electrolyte composite membrane”) comprising a polymer matrix (“perfluorocarbon sulfonic acid resin”) and boron nitride nanotubes embedded therein. See sections “Tech-Problem” and “Tech-Solution” on p. 3. Specifically, Bando teaches that the sheet includes 0.01-100 parts by weight, more preferably 0.1-80 parts by weight, of boron nitride nanotubes based on 100 parts by weight of polymer (“resin”), (see “Tech-Solution” on p. 3 and 45 on p. 5). Bando teaches that boron nitride nanotubes contribute insulating properties and mechanical strength, and also that the amount of boron nitride nanotubes must be limited in order to ensure uniform dispersion in the resin for a uniform resin composition (para 5 on p. 5). Further, Bando teaches an example in having 20 parts boron nitride nanotubes based on 100 parts by weight of polymer (“Nafion”), (see Example 1 on p. 8). Therefore, it would be obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form the porous sheet of Dushatinski to have the claimed amount of 2-20 parts by weight boron nitride nanotubes per 100 parts by weight polymer, since Bando teaches a wider range of 0.1-80 parts boron nitride nanotubes per 100 parts by weight polymer as a suitable proportion of boron nitride nanotubes. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 12, Dushatinski teaches the separator for a secondary battery according to claim 10, wherein a polymer of the polymer matrix is selected from a group including polyvinylidene fluoride (PVdF), polymethylmethacrylate, cellulose acetate, acrylonitrile-styrenebutadiene copolymer, polyimide, polyester resin, epoxy resin and other materials. See para. 16.
Regarding claim 13, Dushatinski teaches the separator for a secondary battery wherein a polymer of the polymer matrix is selected from a group including polyvinylidene fluoride. See para. 16.
Regarding claim 15, Dushatinski teaches the separator for a secondary battery wherein the boron nitride nanotubes can have an average external diameter of 1.5 to 6 nm and beyond with the expectation that they would be viable candidates for the boron nitride nanotubes (see para. 22). Dushatinski further teaches an average length of a few hundreds of nm to hundreds of micrometers (see para. 22). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have utilized the encompassed portion of the taught range with a reasonable expectation that such a selection would arrive at a successful scaffold, thus rendering obvious an aspect ratio in the range of 10 to 5000 for the same reasons. Further, it would be obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected boron nitride nanotubes with an aspect ratio in the claimed range of 100 to 500, which falls in the lower end of the prior art range of Dushatinski. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 16, Dushatinski teaches the separator for a secondary battery as described in Paragraph 3 above. However, Dushatinski does not explicitly disclose the bulk density of the boron nitride nanotubes included in the separator. As evidenced in the American Elements (https://web.archive.org/web/20200927055808/https://www.americanelements.com/boron-nitride- nanotubes-10043-11-5, cited with the action of 06/26/2023), the density of boron nitride nanotubes is 1.9-2.1 g/cm3, which overlaps the claimed density of 2.0-2.2 g/cm3. See page. 2.
Regarding claim 17, Dushatinski teaches the separator for a secondary battery, but does not provide any measurements of thermal shrinkage. However, Dushatinski does teach that the boron nitride nanotubes form a scaffold in the separator (See Abstract, para. 3,6,22). Dushatinski describes the separator as a BNNT scaffolding supporting a polymer coating (See para. 9, Figures 2A and 4). The BNNT scaffolding gives the composite separator improved mechanical properties and stiffness. See para. 18. Given the thermal stability of BNNTs, the BNNT scaffolding inherently shows essentially no thermal shrinkage at the relatively low temperatures of 170 °C and 200 °C. Although the polymer may show some degradation, the general size of the separator is inherently preserved due to the BNNT scaffold, thus necessarily and inherently disclosing the claimed thermal shrinkage.
Assuming for the sake of argument that the claimed thermal shrinkages are not inherent to the separator of Dushatinski, it would have been obvious to form the separator to have thermal shrinkage properties in the claimed ranges. The thermal stability of the separator is enhanced by the addition of BNNTs ([0007]). As thermal shrinkage is an indicator of thermal stability, it would have been obvious to form the separator with a thermal shrinkage in the claimed range in order to achieve the enhanced thermal stability made possible by the addition of BNNTs. “[W]here 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.” The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. See MPEP § 2144.05, Il.
Regarding claim 18, Dushatinski teaches the separator for a secondary battery wherein the separator has a tunable porosity, including the porosity level and pore size distribution, See para. 6,14, but does not explicitly disclose that the separator has a density in the claimed range of 0.3 g/cm3 to 0.7 g/cm3. As the separator mechanical strength and ion channeling are variables that can be modified, among others, by adjusting the density and porosity of the separator, with density decreasing as pore size is increased, the precise density of the separator would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention (see para. 6,14). As such, without showing unexpected results, the claimed density of the separator cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the pore sizes and corresponding density of the separator of Dushatinski to the claimed range in order to obtain the desired mechanical strength and ion channeling. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 19, Dushatinski teaches a separator for a secondary battery, which is formed of a single layer of porous sheet 46 as shown in Fig. 4. The porous single sheet (46) includes a polymer matrix (45) and boron nitride nanotubes (42) which are embedded in the polymer matrix (46), wherein the polymer matrix comprises a plurality of polymer fibers and the polymer coating forms a polymer matrix (46). See para. 3,6,20 and Fig. 4. Dushatinski et al. further teach the polymer coated BNNTs may be formed by electrospinning, among other methods, but Dushatinski is silent as to whether the polymer fibers comprise one or more neat polymer fibers. However, it is the position of the examiner that properties of the said polymer fibers, including surface smoothness/roughness, are inherent, given that both Dushatinski and the present application utilize the same manufacturing process. As shown in Figure 2(A), the BNNTs (21) form a network in the polymer matrix (20) of polymer fibers. See para. 17,25. Dushatinski further teaches that the boron nitride nanotubes have an average external diameter of 1.5 to 6 nm and beyond. The average length of the nanotubes ranges from a few hundreds of nm to hundreds of micrometers. See para. 22. As a result, the aspect ratio of the BNNTs is in the range of 100 to 5000.
Dushatinski et al. do not explicitly disclose the tensile strength of the resulting BNNT/polymer composites. Nevertheless, Dushatinski recognizes that the properties of the separator are tunable depending on gas stoichiometry, mat density, porosity and thickness. See para. 14,27,30. Therefore, it would have been within the skill of the ordinary artisan to adjust the mat density, porosity and thickness of the resulting BNNT/polymer separator to yield desirable tensile strength. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Dushatinski et al. do not explicitly disclose the claimed range for the parts by weight of boron nitride nanotubes included in the porous sheet. Bando teaches a separator for a battery formed of a porous sheet (“solid electrolyte composite membrane”) comprising a polymer matrix (“perfluorocarbon sulfonic acid resin”) and boron nitride nanotubes embedded therein. See sections “Tech-Problem” and “Tech-Solution” on p. 3. Specifically, Bando teaches that the sheet includes 0.01-100 parts by weight, more preferably 0.1-80 parts by weight, of boron nitride nanotubes based on 100 parts by weight of polymer (“resin”), (see “Tech-Solution” on p. 3 and 45 on p. 5). Bando teaches that boron nitride nanotubes contribute insulating properties and mechanical strength, and also that the amount of boron nitride nanotubes must be limited in order to ensure uniform dispersion in the resin for a uniform resin composition (para 5 on p. 5). Further, Bando teaches an example in having 20 parts boron nitride nanotubes based on 100 parts by weight of polymer (“Nafion”), (see Example 1 on p. 8). Therefore, it would be obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form the porous sheet of Dushatinski to have the claimed amount of 2-20 parts by weight boron nitride nanotubes per 100 parts by weight polymer, since Bando teaches a wider range of 0.1-80 parts boron nitride nanotubes per 100 parts by weight polymer as a suitable proportion of boron nitride nanotubes. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claims 21-23, Dushatinski et al. disclose the separator in ion flow batteries is typically a porous electro spun or extruded olefin polymer-based sheet (i.e., neat polymer fibers without the boron nitride nanotubes). Olefin membranes allow for cell polarization between cathode and anode material. See para. 4. Dushatinski et al. also disclose the use of boron nitride nanotubes forming a network in a polymer matrix as separators. See Figures 2(A),2(B), para. 17, 25. Therefore, the invention as a whole would have been obvious a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the neat polymer fibers with the neat polymer fibers with embedded boron nitride nanotubes to be used as a separator material. It is prima facie obvious to combine two compositions, each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose. In re Kerkhoven, 205 USPQ 1069, 1072.
Response to Arguments
Applicant's arguments filed 6/17/25 have been fully considered but they are not persuasive. Applicant’s principal arguments are:
The claimed subject matter uses a polymer matrix as a substrate in which BNNTs are embedded, but Dushatinski used a BNNT scaffolding as a substrate in which the polymer is coated.
In the present application, BNNTs form a network within a polymer matrix to improve heat resistance and mechanical properties.
In response to Applicant’s arguments, please consider the following comments:
As shown in Figure 2(A) and (B) of Dushatinski, the expanded polymer (22) in the BNNT/polymer composite membrane due to heating results in a network of BNNTs in a polymer matrix (the predominant phase of the composite). See para. 17, 22.
Dushatinski also discloses the composite separator membrane with tunable porosity, wettability, dielectric strength, chemical resistance, and mechanical strength. See para. 27. The fact that applicant has recognized another advantage which would flow naturally form following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The burden is on Applicant to establish results that are unexpected and significant. See MPEP 716.02(a) and (b).
Conclusion
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.
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/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717