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 .
Status of Application
Applicant’s amendments and remarks filed 4/7/2026 have been acknowledged. Claims 1-11 and 13 are pending.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7, 9-11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0247036 to Siters et al., in view of WO 2019/198500 to Kiyama (English equivalent US 2021/0036290 used for citation).
Regarding claims 1-5, Siters et al. teaches a nonwoven fiber mat (pasting mat) for lead acid batteries ([0050]; [0052]; [0064]; [0069]) consisting of a glass fiber having an average diameter in the micron range at, for example, about 80 to about 99 weight percent and a binder at, for example, about 1 to about 20 weight percent, wherein the thickness of the mat is about 200 microns to about 700 microns ([0060-66]). Furthermore, Siters et al. teaches that the thin mat has a tensile strength of, e.g. 2.6 lbs./in (about 14.2 N/10mm2) (Table 16).
Siters et al. does not expressly teach that the binder is a heat-fusible binder fiber.
Kiyama teaches a porous body of lead acid batteries that corresponds to the claimed pasting mat ([0001-4]) and teaches that the porous body comprises a glass fiber having an average diameter in the micrometer range, i.e. a microglass fiber ([0017]; [0063]; [0064]), and a sheath-core type binder fiber that is heat-fusible (abstract; [0066]; [0068]; [0071-73]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a heat-fusible binder fiber in place of the binder in Siters et al., because Kiyama teaches when the porous body is used as a membrane of a battery separator, the sheath or melting component of the core/sheath type binder fiber stays in the periphery of the core so an increase in the electrical resistance due to clog-up of pores of the porous body is inhibited, while the core remains in a fibrous state in the porous body so that a strong three-dimensional network structure can be formed, which leads to an increase in strength ([0070]). Although the prior arts do not expressly teach the claimed thickness and bonding strength under the specific conditions per claims 1-4 and the claimed tensile strength per claim 5, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed properties because the prior arts render obvious the claimed pasting mat consisting of the same fibers and the properties are expected to follow the same composition.
Regarding claim 6, Kiyama teaches that the sheath-core type binder fiber or heat-fusible binder fiber is an organic fiber having a core/sheath structure with a sheath of, e.g. polyesters or polyolefins having a melting point of lower than 200°C, which may be amorphous or crystalline ([0072-74]).
Regarding claim 7, Kiyama teaches that the sheath-core type binder fiber or heat-fusible binder fiber has a fineness of 2.2 dtex (Example 1).
Regarding claim 9, Kiyama teaches that the sheath-core type binder fiber or heat-fusible binder fiber is contained in an amount of 10 to 80 parts by weight relative to 100 parts by weight of the porous body ([0109]). This range overlaps with the taught range of Siters et al. ([0066]).
Regarding claims 10 and 11, Siters et al. teaches that the microglass fiber has an average diameter of, for example, less than 0.5 micron or less than 0.6 micron ([0050]; [0066]).
Regarding claim 13, the prior arts render obvious a lead acid battery comprising the pasting mat for lead acid batteries according to claim 1 (Siters [0050]; [0060-66]; Kiyama [0001])
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Siters et al. and Kiyama as applied to claim 1 above, in view of JP 2002-75433 to Hisama et al. (machine translation provided for citation).
Regarding claim 8, Siters et al. does not expressly teach that the porous body or pasting mat for use as a separator is a wound body wound with a pressure of 5 kPa or more applied.
Hisama et al. also relates to a separator mainly made of nonwoven glass fiber and teaches that rolls of glass mat separators 9 and 10 are provided as a wound body (Fig. 1; [0016]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have turned the fiber mats of Siters et al. into a wound body as demonstrated by Hisama et al. so that the rolls of material are arranged in a machine for further lead acid battery plate manufacturing (Fig. 1; [0016]). The skilled artisan would have applied pressure to form the wound body and obtained expected results of a desired tightness in the wound body by adjusting the applied pressure.
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 1-11 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 13 of copending Application No. 18/557,181 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because, besides “consisting of” and “comprising”, the only difference in the claims is that the thickness in the conflicting claim 1 is 0.02 mm or more and less than 0.1 mm, where the upper end point of 0.1 mm is the same as the lower limit of the present claim 1. The reference application renders obvious the claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 5-9, 11, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-9 and 11 of copending Application No. 17/801,504 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the “separator for valve-regulated lead acid batteries” and “heat-fusible organic fiber” of claim 1 of the copending application reads on the claimed “pasting mat for lead acid batteries” and “heat-fusible binder fiber” of the present claim 1, respectively, where differences include the term “comprising” vs. “consisting of”, the lower limit of the thickness range in the conflicting claim 1 being the same as the upper limit of the counterpart of the present application, and the bonding strength ranges overlapping. The conflicting claim 1 also includes limitation of the present claim 6. The ranges of claims 2, 3, 6, and 8 in the conflicting application overlap with those in claims 2, 3, 7, and 9 of the present application, respectively. Claims 4, 7, 9, and 11 of the conflicting application match claims 5, 8, 11, and 13 of the present application, respectively. The reference application renders obvious the claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 4/7/2026 have been fully considered but they are not persuasive. Applicant argued on Pages 6-7 of the remarks that, firstly, Siters does not disclose “a heat-fusible binder fiber” required by claim 1 and, secondly, paragraph [0066] of Siters allows ingredients other than the glass fibers and the binder and discloses embodiments having no binder.
While the Examiner acknowledges the first point, the Siters clearly supports a composition consisting of the glass fibers and the binder, making up 100 weight percent of the composition in paragraphs [0060-66]. One of ordinary skill in the art would not have been limited by the certain examples pointed out by Applicant per the second point.
Applicant continued to argue on Page 8 and summarized on Page 9 that Kiyama teaches a wet papermaking process using the sheath-core type binder fiber and there is no suggestion or motivation in the art to use such binder in Siters’ manufacturing process. Applicant asserted that modification of the references would require a complete change in the manufacturing process used in Siters et al. and it would seem that such a modification would produce a product not suitable for its intended purposes, or could be considered to change the principle of operation of the Siters et al. reference.
The Examiner respectfully disagrees. Applicant pointed to Example 1 of Siters and argued that it was not a wet papermaking process and involves drying at 60 to 65°C ([0082]). However, that Example essentially describes a wet papermaking process, involving transferring a suspension to a sheet mold above a mesh screen and allowing it to drain and deposit a thin mat of material, which is then dried. As the rejection of claim 1 explains, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used Kiyama’s sheath-core type binder fiber as the binder in the Siters’ composition, so that the sheath or melting component of the core/sheath type binder fiber stays in the periphery of the core so an increase in the electrical resistance due to clog-up of pores of the porous body is inhibited, while the core remains in a fibrous state in the porous body so that a strong three-dimensional network structure can be formed, which leads to an increase in strength ([0070]). Once incorporated, the skilled artisan would have adjusted the drying temperature to obtain the benefits of such binder. As a result, modification of the references would require, essentially, a swap of the binder and adjusting the drying step accordingly. The product would have been suitable for its intended purpose as a separator mat and there would not have been a change in the principle of operation of the Siters reference as argued by Applicant.
Therefore, the claims remain rejected.
Conclusion
THIS ACTION IS MADE FINAL. 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 HENG M CHAN whose telephone number is (571)270-5859. The examiner can normally be reached 9 am - 5:30 pm on Monday, 9 am - 3 pm on Tuesday, and 9 am to 1 pm on Wednesday and Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia Ridley can be reached at 571-272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Heng M. Chan/Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725
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