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 .
The Applicant’s amendments were received on 6/5/26. Claim 1 has been amended. Claims 11-14 are new.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office Action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/1/26 is being considered by the examiner.
Claim Rejections - 35 USC § 103
The rejection under 35 U.S.C. 103 as being unpatentable over Yoon et al. (KR20160127473) in view of Jun et al., on claim 1, 4-10 are maintained. The rejection is further modified in view of the Applicant’s amendments.
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.
Claim(s) 1, 4-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Yoon et al. (KR20160127473) in view of Jun et al. (KR100454716).
Regarding claim 1, the Yoon et al. reference a porous separator substrate comprising a polymer material (polymer-based substrate). A porous adhesive layer on a least one surface of the porous substrate. The porous adhesive layer comprises inorganic particles and a binder resin. The binder resin comprise a mixture of polymer acetate and an acrylic binder resin in the amount of 5:5 or 50wt% to 50wt% (“The acrylic copolymer is obtained by polymerizing the above-mentioned acrylic monomers and an acetate group-containing monomer such as vinyl acetate in a weight ratio 5:5”). The acrylic binder resin is said to have a low glass transition temperature of 30°C or less but is silent in specifying low glass transition is less than -50°C to -25°C . However, the Jun et al. reference discloses acrylic binders with low transition glass -40, -26, -10, -6, 10, 19 ° C are known, specifically, low transition glass of less than 0°C such as -20°C ±5°C, the strength of the tape decreases rapidly, making the tape itself difficult to form. On the contrary, when the glass transition temperature is high, it is difficult to form the laminate due to the decrease in adhesiveness. Therefore, it would have been obvious to one of the ordinary skill in the art at the time of the invention to choose the instantly claimed value through process optimization, since it has been held that the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable values involve only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
As a result, the Jun et al. reference does disclose -25°C, which is in range of the claimed invention. In the event that the combination does not teach the glass transition temperature with sufficient specificity, it would have been indeed obvious, absent a showing of criticality and unexpected results.
Regarding claim 4, the Yoon reference discloses the inorganic particles to comprise at least one selected from the group consisting of Al2O3
Regarding claim 5, the Yoon reference discloses the inorganic particles have a particle diameter of 100 nm to 1000 micron.
Regarding claim 6, the Yoon reference discloses the porous coating layer comprises the binder resin and the inorganic particles at a weight ratio of 50:50 to1:99 (80-90 wt% of inorganic particles).
Regarding claim 7, the Yoon et al. reference discloses the claimed invention above and incorporated herein. The Yoon et al. reference discloses the inorganic oxide (ceramic) porous layer is a dispersion but is silent in disclosing the porous coating further comprises a dispersing agent. However, the Jun et al. reference discloses a dispersant added to make two to three dimensional shape ceramic laminate for uniform properties with high packing density by inhibiting agglomeration of ceramic and evenly dispersing it (under Dispersant of Jun et al.). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate dispersant with ceramic coatings disclosed by the Jun et al. reference for the ceramic coating layer disclosed by the Yoon et al. reference to prevent nonuniform agglomerate that can cause deterioration quality.
Regarding claim 8, the Yoon et al. reference discloses a method for manufacturing the separator for the electrochemical device as defined in claim 1 comprising forming a porous coating layer by coating a slurry (dispersion) for forming the porous coating layer comprising an acetone solvent, a binder resin and inorganic particles onto the at least one surface of the porous separator substrate (Example 1; Preparation Example). The Yoon et al. reference is silent in disclosing the solvent is an aqueous solvent comprising water, however, in another disclosure of Yoon, acetone and water are equivalent solvents. Therefore, it would have been obvious to one of ordinary skill in the art before the effective of the invention since the Yoon et al. reference teaches that acetone and water can be used as a solvent. A patent claim can be proved obvious merely by showing that the combination of elements was obvious to try. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. KSR v. Teleflex
Regarding claim 9, the Yoon et al. reference discloses the manufacturing of the separator with the porous coating layer to comprise a slurry (dispersion) with a solid content from 1-40 wt % (Example 1; Preparation Example).
Regarding claim 10, the Yoon reference discloses an electrode assembly for an electrochemical device comprising a negative electrode, a positive electrode and a separator interposed between the negative electrode and the positive electrode, wherein the separator is the same as defined in claim 1.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoon et al. (KR20160127473) in view of Jun et al. (KR100454716) in further view of Lee et al. (WO2015076611).
Regarding claim 2, the Yoon et al. reference discloses the claimed invention above and incorporated herein. The Yoon et al. reference discloses that binder additions to acrylic copolymers may include PVDF and PVAc. The Yoon reference specifies that the molecule weight of PVDF is 300,000-1,700,000. The Lee reference discloses that adding binders to the acrylic copolymer that also include PVDF and PVAc. The Lee reference discloses if two or more binders are added, the molecular weight of each binder should be the same. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate the same MW of PVDF for PVAc to be added to the acrylic copolymers as disclosed by the Lee et al. reference for the acrylic copolymers that can comprise PVDF with molecular weight of 300,000-1,700,000 for PVAc as disclosed by the Yoon et al. reference. A patent claim can be proved obvious merely by showing that the combination of elements was obvious to try. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. KSR v. Teleflex
As a result, the modified Yoon reference discloses adding a PVAc binder with molecular weight of 300,000-1,700,000 but doesn’t specify 150,000-850,000. For the MW range that incorporates150,000-850,000, it is anticipated by the modified Yoon reference. For the range that is outside of the claimed range, it is the Examiner’s position that the amounts in question are so close that it is a prima facie obviousness that one skilled in the art would have expected them to have the same properties Titanium Metals Corp. v. Banner, 227 USPQ 773
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Yoon et al. (KR20160127473) in view of Jun et al. (KR100454716) in further view of Azuma (JP2002-182019).
Regarding claim 11, the Yoon et al. reference discloses the claimed invention above and further incorporated herein. The Yoon et al. reference discloses acrylic binders comprises methyl methylacrylate binders with many other copolymers but is silent in disclosing methyl methylacrylate and 2-ethylhexyl acrylate, however, the Azuma reference discloses acrylic based binders comprising 2-ethylhexyl acrylate and methylmetharylate provides excellent physical properties with good adhesive strength, therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide acrylic binders comprising 2-ethylhexyl acrylate and methyl metharylate disclosed by the Azuma reference for acrylic binder of the Yoon et al. reference in order to provide improved adhesive strength to binders used in the separator.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Yoon et al. (KR20160127473) in view of Jun et al. (KR100454716) in further view of Min et al. (WO2015076611).
Regarding claim 12, the Yoon et al. reference discloses the claimed invention above and further incorporated herein. The Yoon et al. reference discloses the acrylic to polyvinyl acetate can be 5:5 but is silent in disclosing the 10-30 wt% to 70-90 wt% respectively. However, the Min reference discloses the acrylic to polyvinyl acetate binders can be ratios of 5:5 or 70 wt%. Thus, it would have been obvious to substitute the wt% for the very same purposes. A patent claim can be proved obvious merely by showing that the combination of elements was obvious to try. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. KSR v. Teleflex
In addition, it would have been indeed obvious absent a showing of criticality and unexpected results.
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Yoon et al. (KR20160127473) in view of Jun et al. (KR100454716) in further view of Won et al. (CA2810168).
Regarding claims 13-14, the Yoon et al. reference discloses the claimed invention above and further incorporated herein. The Yoon et al. reference discloses Al2O3 in a binder for coating a porous separator but silent in disclosing ATH or Al(OH)3, however, the Won et al. reference discloses inorganic fillers such as Al2O3 or Al(OH)3 used with organic binder to one surface of a porous membrane. It would have been obvious to substitute Al(OH)3 for Al2O3. The substitution of known equivalent structures involves only ordinary skill in the art. In re Fout 213 USPQ 532 (CCPA 1982); In re Susi 169 USPQ 423 (CCPA 1971); In re Siebentritt 152 USPQ 618 (CCPA 1967); In re Ruff 118 USPQ 343 (CCPA 1958). When a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. KSR v. Teleflex
Response to Arguments
Applicant's arguments filed 6/5/26 have been fully considered but they are not persuasive.
The Applicants argue
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However, the Jun et al. reference discloses different Tg are known, which include Tg of Yoon. In addition, it doesn’t appear that Tg range of -50 to -25°C is of any significance for the claimed invention. The Applicant’s comparative examples comprise
acrylic binder with Tg of under -40°C. Again, it would have been indeed obvious, absent a showing of criticality and unexpected results. In addition, the “expected results” aren’t claimed and therefore it appears the Applicants can also claim the comparative example with unwanted results.
The Applicants argue, “
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The Yoon et al. reference does disclose the ratio of the claimed invention. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e.,specific compositional design or control of physical properties) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HELEN OI CONLEY whose telephone number is (571)272-5162. The examiner can normally be reached 8:30 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Smith can be reached on 5712728760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Helen Oi K CONLEY/Primary Examiner, Art Unit 1752
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