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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/6/2026 has been entered.
Response to Amendment
The Amendment filed April 6th 2026 has been entered. Claims 1, 2, 5-7, 10, 12-16 remain pending in the application. Claim 11 was cancelled by the Applicant.
Applicant’s amendment to Claim 1 has overcome the previous 103 rejection of the claims. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Wang et al. US 2021/0280947 A1. New rejections follow.
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2, 5-7, 10, 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. US 2021/0242534 A1 in further in view of Hu et al. US 20190237732 A1 and Wang et al. US 2021/0280947 A1.
Regarding Claim 1, Kim discloses a composite separator (functional separator comprising a carbon coating on a base separator) [0006-0007], that comprises:
A porous substrate (base separator that is a porous polymer film) [0019]
A multidimensional heterogeneous material-containing composite layer (conductive carbon layer) formed on the surface of the porous substrate
Kim discloses a conductive carbon layer on the surface of the base separator [0017], wherein the conductive carbon layer comprises second inorganic particles (a metal oxide) [0017] and further comprises a one-dimensional inorganic material (carbon nanotubes) [0021]
Kim discloses that the composite layer (conductive carbon layer with metal oxide) comprises 10-80 parts by weight metal oxide relative to 100 parts by weight of the total conductive carbon layer [0030], thus Kim discloses that the composite layer comprises 10-80wt% second inorganic particles (metal oxide) and 20-90wt% of one-dimensional inorganic material (carbon nanotubes as the conductive carbon), which overlaps with the claimed range. In regards to the weight percentages of the composite layer, the Examiner directs Applicant to MPEP 2144.05 I. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Accordingly, it would have been obvious to one of ordinary skill in the art to have selected the overlapping ranged disclosed by Kim because selection of the overlapping portion or ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05 I.
Kim further discloses that the composite layer does not contain any binder [0028]
Kim discloses that the inorganic particles are a metal oxide [0029-0030]
Kim discloses that there can optionally be an intermediate layer between the base separator and the conductive carbon layer [0028], similar to the claimed inorganic particle layer, however is silent as to that layer comprising first inorganic particles and a first organic binder.
Hu discloses a porous substrate and inorganic particle layer (“porous basement membrane” [0008]) for a composite separator. The porous basement membrane comprises,
a porous substrate layer (“a polymer membrane” [0031], [0074])
and an inorganic layer containing first inorganic particles and a first organic binder [“a ceramic layer located on a surface of the polymer membrane” [0031], “the ceramic layer of the ceramic membrane contains an inorganic particle layer” [0074], “the ceramic layer contains ceramic particles and a binder” [0032], “binder may be at least one of polyacrylate…” [0040]).
Hu discloses that having a porous basement membrane comprised of two layers, further comprising a polymer layer and a ceramic layer in contact with an outer coating layer, improves the high-temperature and thermal shrinkage resistance of the battery cell [0031-0033], and that having the ceramic layer specifically including inorganic particles improves the bonding of a coating layer to the ceramic layer and improves the peeling strength of the battery, which further improves the thermal shrinkage resistance [0074]. Hu additionally discloses that having a base material comprised of a ceramic coating on a polymer membrane enhances the compatibility of the coating layer to the base material [0038], and thus the electrode plate is not deformed easily [0038].
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Kim’s base separator with the two-layered “porous basement membrane” of Hu to achieve a separator with a porous substrate and an inorganic particle layer (from Hu), and a multi-dimensional heterogenous material-containing composite layer (from Kim) for a battery with improved thermal shrinkage resistance, enhanced compatibility between layers, and improved prevention of delamination.
Modified Kim discloses that the one-dimensional inorganic material in the composite layer is carbon nanotubes [0021] which would be in the form of nanowires or nanofibers, however Kim is silent as to the one-dimensional inorganic material being a nanowire or nanofiber of one of the specific materials in Claim 1.
Wang discloses a separator for a lithium battery wherein the separator comprises a separator body with a coating [Abstract], similar to that of Kim. Wang further discloses that the separator body comprises a porous polymer substrate [0052] similar to the porous substrate of modified Kim (with the modification of Hu), and the coating comprises one-dimensional inorganic material (nanowire) [0038] such as carbon nanotubes [0040] as well as inorganic particles (ceramic powder) [0038] such as metal oxides [0041], similar to the one-dimensional inorganic material and inorganic particles of Kim. Additionally, Wang discloses that suitable alternatives to carbon nanotubes include silver nanowire [0040]. Thus Wang discloses that the one-dimensional inorganic material is a nanowire formed of metal.
Wang discloses that a separator such as this had good thermal stability, puncture resistance, and electrolyte wettability, and only experiences a small increase in thickness and weight [0056].
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the present invention to replace the nanotubes of Kim with the nanowires of Wang in the separator of modified Kim to achieve a battery separator with good thermal stability, puncture resistance, electrolyte wettability, and with only a small increase in thickness and weight.
Additionally, as Wang teaches that carbon nanotubes and silver metal nanowires are suitable alternatives to each other [0040], it would have been obvious to one of ordinary skill in the art prior to the effective filing date to substitute one known nanowire material, i.e. carbon of Kim, for another nanowire material, i.e. silver of Wang, with reasonable expectation of success. The simple substitution of one nanowire material for another to obtain predictable results is not patentable. See KSR International Co v. Teleflex Inc., 127 S. Ct. 1727,82 USPQ2d 1385 (2007); MPEP 2143 B.
Regarding Claim 2, modified Kim discloses that the multi-dimensional heterogenous material-containing composite layer (conductive carbon layer) is coated on the surface of the modified base separator, and is thus the outermost layer [0020].
Regarding Claim 5, modified Kim discloses, with the modification of Hu, that the first inorganic particles (ceramic particles) are comprised of metal oxides [Hu 0028].
Regarding Claim 6, as previously mentioned regarding claims 1 & 5, Kim discloses that the second inorganic particles (metal oxide) comprise metal oxide wherein the metal is one of aluminum, magnesium, titanium, cerium, or zinc [Kim 0030], thus Kim discloses that the second inorganic particles (metal oxide) is one of aluminum oxide, magnesium oxide, titanium oxide, cerium oxide, or zinc oxide. Additionally, Hu discloses that the first inorganic particles (ceramic particles) are comprised of “Al2O3, SiO2, BaSO4, TiO2, CuO, MgO, ZrO2 …” [Hu 0028], and further discloses that the inorganic particles within the ceramic layer specifically comprise “at least one of Al2O3…SiO2…CuO, MgO…ZrO2…” [Hu 0036].
Regarding Claim 7, Hu discloses that within the inorganic particle layer (“ceramic layer”), the content of the first binder is 2-8 parts by weight relative to the first inorganic particles (“ceramic particles”) of 100 parts by weight [0035]. Hu discloses that all other components of the inorganic particle layer are contained in a content of 0.8-4.3 parts by weight [0035]. Therefore, if when the first inorganic particles are contained in a content of 100 parts by weight (ex. 100g), the first binder is contained in a content of 2-8 parts by weight (ex. 2-8g), and all other components at contained in a content of 0.8-4.3 parts by weight (ex. 0.8-4.3g), the overall inorganic layer would be 102.8-112.3g, with the first binder contained in a content of 1.9-7.1wt% and the first inorganic particles would be contained in a content of 89-97.3wt%, reading on the limitations of Claim 7.
Regarding Claim 10, modified Kim is relied upon for the reasons given above in addressing Claim 1, with the modification of Wang’s nanowires to teach the one-dimensional inorganic material. Wang discloses that the nanowires, in one example, have a diameter of 1-100nm and a length of 0.1-100µm [0059], which reads directly on the claimed ranges. Thus, modified Kim discloses the limitations of Claim 10.
Regarding Claim 12, modified Kim, as modified above by Wang with regards to Claim 1, discloses that the one-dimensional inorganic material is silver (Ag).
Regarding Claim 13, modified Kim discloses, with the modification of Hu, that the porous substrate (“polymer layer”) is formed of one of “including a polypropylene (PP) membrane, a polyethylene (PE) membrane, a PE/PP/PE three-layered membrane, and the like.” [Hu 0031].
Regarding Claim 14, modified Kim is relied upon for the reasons given above in addressing Claim 1, however is silent as to the specific thickness of the composite separator.
Wang discloses a composite separator (separator body with a coating) [0038], and further discloses that the separator body (similar to modified Kim’s porous separator with an inorganic particle layer as modified by Hu) has a thickness of 3-20 µm [0053], and the coating (similar to modified Kim’s composite layer) has a thickness of 0.01-1 µm [0054], thus Wang discloses that the overall thickness of the composite separator is 3.01-21 µm, which overlaps with the claimed range. In regards to the thickness of the composite separator, the Examiner directs Applicant to MPEP 2144.05 I. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Accordingly, it would have been obvious to one of ordinary skill in the art to have selected the overlapping ranged disclosed by Wang because selection of the overlapping portion or ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05 I.
As mentioned with regards to Claim 10 above, Wang discloses that a separator such as this had good thermal stability, puncture resistance, and electrolyte wettability, and only experiences a small increase in thickness and weight [0056].
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the present invention to incorporate the thickness of the composite separator as suggested by Wang in the separator of modified Kim to achieve a battery separator with good thermal stability, puncture resistance, electrolyte wettability, and with only a small increase in thickness and weight.
Regarding Claim 15, Kim discloses a lithium secondary battery that comprises the composite separator previously disclosed, [0002, 0037], a cathode (“positive electrode” [0037]), and an anode (“negative electrode” [0037]), and an electrolyte solution [0037, 0055].
Regarding Claim 16, as previously stated regarding Claim 15, Kim discloses a lithium secondary battery [0002, 0037].
Response to Arguments
Applicant argues that none of the cited references discloses or suggests a composite separator comprising the limitations of amended claim 1. Examiner respectfully points out that as stated in the rejection above, Kim in view of Hu and Wang in combination do disclose a composite separator comprising the limitations of amended claim 1. Kim discloses a composite separator comprising a composite layer on a porous substrate. Hu provided the motivation to modify the porous substrate of Kim to have an intermediate inorganic particle layer on a porous substrate for the benefit of improved thermal shrinkage resistance, enhanced compatibility between layers, and improved prevention of delamination. Thus Kim in view of Hu disclose the three layers as claimed. Additionally Wang provides the motivation to substitute silver metal nanowires for the nanotubes of Kim for the benefit of good thermal stability, puncture resistance, electrolyte wettability, and with only a small increase in thickness and weight, and discloses that silver and carbon would be suitable alternatives to each other in this context. Thus Kim in further view of Wang disclose the one-dimensional inorganic material of Claim 1. Accordingly, for the reasons stated above, this argument is unpersuasive.
Conclusion
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/A.E.G./Examiner, Art Unit 1726
/DANIEL P MALLEY JR./Primary Examiner, Art Unit 1726
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