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 .
Claim Objections
In claim 1, line 5, the phrase “…a, a”, or b is zero or one” should be replaced with “… a, a”, and b are zero or one”.
(M1)x” and “Formula (1d’) should be further separated in claim 8 so as to make clear that Applicant is defining a Formula (1d’) as being (M1)x”.
Claim 12 is objected to because a “siloxane” necessarily contains at least two of the units T1 and so “m would have a minimum value of 2.
Each of R1 through R,”’ is obviously a monovalent group and, therefore, cannot be said to represent an alkylene, cycloalkylene, or arylene alkylene.
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.
Claims 1-23, 26-27, and 32-33 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.
The peculiar shorthand nomenclature on which Applicant relies to structurally define various permutations of the surface modifying agent makes it very difficult to ascertain the intended scope of the claims. For instance, whereas the Examiner had earlier posited that moieties Z were supposed to connote monovalent structural groups attached to Y in formula (1c), thus eliciting the question of how Z could be attached to Y where Y appeared to define an organosilicon residue for which all valencies are satisfied, it is now understood that Z may instead represent, and likely was always intended to represent, a polymer where “i” is greater than one (this as opposed to a group where, if “i” > 1, than there were a plurality of groups Z each attached to a different silicon atom). Applicant’s chosen means of representing the claimed agents, therefore, really leaves them subject to wide interpretation.
Consider a scenario wherein “h” is zero in formula (1c) so the only source of silicon atoms is those in the groups R of formula 1 (either of a or a” would have to be non-zero in this case otherwise the claimed modifier would not be silicon-based), it is apparently Applicants intent that, if “i” > 0, than Z connotes a polyurethane if Z is “urethane”, a polyurea if Z is “urea”, a polyamide if Z is “amide”, etc. At the same time, Z can be such things as aromatic/aliphatic (fluorinated) hydrocarbons. Would it be Applicants’ intent that, in these instances, Z is actually supposed to symbolize a polyolefin such as polyethylene, polystyrene, and PTFE? In general, the Examiner would contend that, if Z was not supposed to signify groups on individual silicon atoms of the silane/siloxane residue Y, it would have been far more clear to have defined Z as the different polymer segments.
Claims 1 and 27 are both further problematic insofar as there is mentioned immediately following formula (1d), a variable “l” for which there is no antecedent basis either in formula (1d) or any of the other preceding formulae.
Claim 7 is rejected because there is no antecedent basis offered in claim 1 for polysiloxane-polycarbonate copolymer. Indeed, “carbonate” is only mentioned in association with the groups R1, R1’, and R1” and, whereas the Examiner now understands (Z)I to likely represent oligomeric/polymeric segments, no such presumption should be made of the groups mentioned where defining R1, R1’, and R1”. Indeed, a distinction between an ether group and a polyalkylene oxide is made when defining these substituents so the same might be expected if they were to symbolize a polycarbonate chain.
In claim 14, it cannot be ascertained whether Applicant is allowing that R9 is either an ether group or the alkoxy group that immediately follows or if, instead, they are intimating that -O-(CH2)b’CH3 is an ether group. If the latter, the Examiner contends that, in the context in which it is defined, - O-(CH2)b’CH3 would be considered by the skilled artisan to be an alkoxy group. (Applicant doesn’t have the benefit of being their own lexicographer here because alkoxy is mentioned separately of ether in association with R9.)
Insofar as claim 17 has been amended to recite a coated electrochemical substrate, as opposed to a composition, the intended meaning of this claim is now in doubt. What would it mean for a substrate to have 0.1 to 10 wt% of a surface modifying agent? For the purpose of evaluating claim 17 against the prior art, it has been presumed that the claimed range alludes to the weight contribution of the modifying agent relative to the weight of the coating composition.
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.
Claim 18 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. Claim mandates that if a is one, than both a” and b are zero and also that if a” is one, than both a and b are zero. However, because two of these are zero, and in light of the manner in which a and a” were initially defined, there would be one valence on silicon that is unsatisfied. Applicant remedies this by adding a fourth group R’” but the totality of the description of claim 1 does not contemplate a group R”’. Accordingly, not only is claim 18 not further limiting of claim 1, but there is also no proper antecedent basis in claim 1 for the recitation of R’”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 11, 12, 17,19-23, and 32-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jung et al., U.S. Patent Application Publication No. 2016/0293920.
Jung teaches the formulation of a coating for a polyethylene-based separator comprising an alicyclic epoxy-functional silsesquioxane of unspecified geometry. That is to say, all attempts to ascertain the structure of Flex9H failed and thus it is not known whether or not this product acquires a ladder structure such as is depicted in Formula (1-o-iii) of claim 16, a polyhedral cage structure such as is depicted in Formula (1-o-x) of claim 16 or a disorganized/random arrangement of RSiO3/2 (R= epoxy functional) units. The epoxysilsesquioxane is combined with PVDF, an acetone dispersion of aluminum oxide, and a sulfonium salt cationic initiator that a skilled artisan will recognize as a source of acid to crosslink the epoxy groups. According to Table 1, the resulting coated film exhibits 5% or less shrinkage in both the machine and transverse direction when subjected to a temperature of 200° C over a span of 10 minutes.
The epoxy-functional silsesquioxane, whatever form it takes, is regarded as correlating with the claimed silicon-based modifier where a and a” equal zero, W is Y1Z0 where Y is (T1)m, “m” is an integer greater than zero, and R9 in formula (1h) is an epoxy radical as is defined in association with R1 (or R1’ or R1”).
Whereas claim 11 stipulates that Z connotes “urethane”, it remains true that “i” can be zero in which case there are no urethane groups. That is, claim 11 merely defines what Z represents, when it is present. It does not stipulate a non-zero value for “i".
As for claim 17, the silsesquioxane makes up 30% of the solution into which it is dissolved. According to [0141], 2.31% of the silsesquioxane solution is added in preparing the coating and therefore the amount of the silicon-based modifier as a fraction of the total is .231 x .3 = 0.069 (100) = 6.9%.
Regarding claim 22, the polymer(s) of the separator coating serve to bind the alumina particles to the polyethylene film surface.
As for claim 23, electrolyte solutions comprising an organic solvent and lithium salt are mentioned in [0127-0129].
Allowable Subject Matter
Claims 2-10, 13-16, 18, and 26 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Claim 27 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Most of these claims stipulate that the silicon modifying agent is other than the epoxy-functional silsesquioxane on which the prior art rejection is based. As for claim 16, it is possible that the commercial product used in Example 1 is either a ladder polymer or a polyhedral silsesquioxane, in which case claim 16 would be anticipated. As for claim 26, while the Examiner was tempted to invoke a position of inherency, it is acknowledged that there are other components present in the separator coating, PVDF for instance, for which the impacts on electrolyte uptake are unknown. Hence, while it is possible that the prior art coated substrate is in possession of this attribute, the Examiner simply couldn’t verify.
Of interest is an article entitled “Surface Modification of Polyolefin Separators for Lithium Ion Batteries to Reduce Thermal Shrinkage with Thickness Increase” authored by Zhao et al. and published in the Journal of Energy Chemistry (2015) 24, 138-144. Zhao discloses an approach for preparing a MQ silicone resin layer on a polyolefin separator by first grafting to the polyolefin methacryloxypropyltrimethoxysilane followed by pretreating the separator surface with hydrochloric acid which promotes a subsequent hydrolysis/condensation reaction between the surface attached silyl groups and TEOS where the former is the source of covalently bonded M units and the latter the source of Q (SiO4/2) units. When the polyolefin film was left to sit following immersion in a 30% TEOS solution, thermal shrinkage over an hour at 150° C fell to 4.6%. See the subject matter under Experimental, Figure 1, and Table 1. Although it is possible, or even likely, that this coated product would also exhibit similarly small shrinkage when subject to 200° C for 3 minutes, the Examiner is unable to confirm that this condition would necessarily be met. Likewise, KR 2016/0048420 teaches separator membranes treated with a silane mixture that furnishes a siloxane coating and low shrinkage is once more an objective of the invention but, as before, shrinkage is record after subjecting to different conditions and it is unclear how it might be verified that comparable outcomes would be observed if the baking temperature was the same as indicated in the claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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March 16, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765