DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 3, 2025 has been entered.
Claims 1-2, 5-21 are pending. Claims 9-20 are withdrawn.
The rejection of claims 1-2, 5-8, 21 under 35 U.S.C. 103 as being unpatentable over Nagao in view of Ahn et al is withdrawn.
The rejection of claims 1-2, 5-7, 21 under 35 U.S.C. 103 as being unpatentable over Acharya et al is withdrawn in view of Applicant’s amendment.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 5-8, 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 21-24 of copending Application No. 17/595,091 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
US Application No. 17/595,091 claims a polymer composite comprising porous network structure and a plurality of thermally conductive particles, a plurality of intumescent particles and optionally a plurality of endothermic particles distributed into the polymeric network structure in the amount of 15-99wt% of the composite; a density of at least 0.3 g/cm3 or porosity of at least 5%; polymer selected from polyurethane, polyester, polyamide, polyether, polycarbonate, polyimide, polysulfone, polyethersulfone, polyphenylene oxide, polyacrylate, poly(meth)acrylate, polyacrylonitrile, polyolefin, styrene or styrene based polymers, chlorinated polymers, chlorinated polymers; electrically conductive particles selected from boron nitride, aluminum trihydrate, silicon carbide, silicon nitride, metal oxide, metal nitrides, carbon black, graphite, graphene, aluminum, copper, nickel, silver, platinum, gold, intumescent particles include sodium silicate, endothermic particles including sodium bicarbonate, calcium sulfate dihydrate, aluminum trihydrate, magnesium sulfate octahydrate, ammonium oxalate, sodium metasilicate pentahydrate, sodium silicate, a crystalline wax; intumescent particles comprising sodium silicate. It is clear that all of the elements of application claims # 17/595,091. The difference between the instant claims and application claims # 17/595,091 lies in the fact that the application claims # 17/595,091 is more specific. Since the instant claims is anticipated by application claims # 17/595,091, it is not patentably distinct from and a patent to the genus would improperly extend the right to exclude granted by a patent to the species should the genus issue as patent after the species.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 5-8, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Nagao (US Patent Application 2018/0233726 (already of record)) in view of Takamori et al (US Patent Application 2012/0015231) in view of Yoneda et al (Development of microporous PE films to improve lithium ion batteries).
Regarding claims 1-2, 5-8, 21, Nagao et al teaches a heat-resistant porous layer for a separator for a battery comprising a binder resin, zinc oxide particles and one or more heat resistant filler selected from metal hydroxide and a metal oxide other than zinc oxide (which satisfies claimed conductive particles) (Paragraph 75). Nagao further teaches a phase separated network structure (Paragraphs 183, 232). Nagao further teaches heat resistant fillers such as aluminum hydroxide (Paragraph 140). Nagao further teaches the content of zinc oxide and heat-resistant filler in the amount of 30-85% by volume (which overlaps the claimed 75-98wt%; a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I). (Paragraph 1234). Nagao further teaches the porosity of the heat-resistant porous layer is in the range from 30-80% (Paragraph 162). Nagao further teaches the equation: ε={1−Ws/(ds·t)}×100, wherein Ɛ represents porosity, Ws represents weight basis, ds represents density and t represents membrane thickness; Nagao further teaches 0.5-6µm thickness, 1-10g/m2 weight (Paragraphs 156, 161, 163-164). Nagao further teaches forming the heat-resistant porous layer on both sides of a polyethylene microporous membrane layer (which satisfies claimed single, two and three adjoining layers) (Example 1). However, Nagao fails to specifically disclose ultra-high molecular weight polyethylene polymer matrix, semicrystalline polymer particles and the density of the composite.
In the same field of endeavor, Takamori et al teaches a separator comprises a heat resistant porous layer comprising a resin and one or more fillers. The material of the filler may be selected from an organic powder, inorganic powder or mixtures thereof, wherein the organic powder is preferably polytetrafluoroethylene powder (Paragraphs 5, 45-46).
In the same field of endeavor, Yoneda et al teaches a porous film including ultra high molecular weight polyethylene and particles for a separator of a battery (Abstract, Experimental Procedure). Yoneda et al further teaches a porosity from 40-49% (Table 4).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have provided polytetrafluoroethylene powder in Nagao in view of Takamori et al in order to provide heat resisting particles and properties to the film separation layer. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided ultra-high molecular weight polyethylene as the polymer matrix in Nagao in view of Yoneda et al in order to form to function as a microporous separator. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the density within the ranges instantly claimed in Nagao in view of Takamori et al and Yoneda et al because Nagao teaches ε={1−Ws/(ds·t)}×100, wherein Ɛ represents porosity, Ws represents weight basis, ds represents density and t represents membrane thickness; a thickness in the range of 0.5-6µm, weight in the range of 1-10g/m2 and porosity in the range of 40-49%, would overlap/satisfy a density within the claimed ranges. A thickness of 6µm, weight of 10g/m2 and porosity of 80%, satisfies a density of 8.3. A prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
Response to Arguments
Applicant’s arguments with respect to claims 1-2, 5-8, 21 have been considered but are moot in view of the new grounds of rejection.
With respect to Applicant’s arguments of unexpected results, the examples in the specification are of no probative value in determining patentability of claims since they do not involve a comparison of applicant’s invention with the closest applied prior art. See In re De Blawe, 222 USPQ 191 (Fed. Cir. 1984) and In re Fenn, 208 USPQ 470) CCPA 1981). Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 716.02(b) III and 716.02(e).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 March 6, 2026