Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Applicant's submission filed on April 3, 2026 was received and has been entered. Claims 1-11 and 21 are in the application and pending examination. Claim 3 was amended. Claims 12-15 and 17- 20 have been previously withdrawn. Claim 16 is considered withdrawn based on its amendment.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Election/Restrictions
Amended claim 16 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claim 16 was previously directed to a non-transistory computer readable storage medium has been amended to recite a method. Method claims were withdrawn following the election with traverse on August 29, 2023 and petition decision on August 13, 2024.
Since applicant has received an action on the merits for the previously presented invention (Rejection mailed May 14, 2025), this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 16 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Drawings
The previous objection to the drawings under 37 CFR 1.83(a) are withdrawn based on the amendment to the claims.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “spray mechanism” in claim 1 and “feed mechanism” in claim 2.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Interpretation
The phrase “without causing the polymer to readily flow” in claim 6 is considered to be definite based on the skill of ordinary artisan in the art of electrode coatings as the specification. The phrase “without causing the polymer to readily flow” is not defined by the claim, but the examiner is considering the specification ( paragraphs 35, 61) to provide a standard for ascertaining the requisite degree (i.e. softened but not flowing), and that one of ordinary skill in the art would be reasonably apprised of the scope of the invention.
Claim Objections
The previous objection to claim 3 is objected to because of the following informalities: claim 3 recites: a thermoplastic material, a thermoset material, “ is withdrawn based on the amendment to claim 3.
Claim Rejections - 35 USC § 103
The previous rejection of claims 1-5, 9-11, 16, and 21 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US 20010042506 A1 to Hogan et al (hereinafter Hogan) and US Pat. Pub. No. 20070099072 A1 to Hennige et al (hereinafter Hennige) and US Pat. Pub. No. 20110117437 A1 to Watanabe et al (hereinafter Watanabe) and US Pat. Pub. No. 20110143019 to Mosso et al (hereinafter Mosso) is maintained.
Regarding claim 1, Hogan teaches a system for applying a dry, solvent-free ceramic-based material to an electronic substrate, the system comprising: a spray mechanism (nozzle) configured to apply, via a dry dispersion application. (See Hogan, Abstract, Figs. 1-9B, paragraphs 2, 32, 38, 41-42, 51, 53, 56, 72, 74-75, 81, 83.)
Additionally, Hogan teaches spraying coating material (i.e. viscous materials without solvent, paragraph 32) onto the substrate surface where at between 2 and 20 pound-force per square inch (psi). (See Hogan, Abstract, Figs. 1-9B, paragraphs 2-3, 5, 32, 38, 41-42, 47, 51, 53, 56, 72, 74-75, 81, 83.)
Hogan does not explicitly teach a system for applying a dry, solvent-free ceramic-based separator to an electrode, the system comprising: a spray mechanism configured to apply, via a dry dispersion application, a separator layer comprising a binder and an electrically non-conductive separator material to an electrode by spraying the binder and the electrically non-conductive separator material onto the electrode.
Hennige is directed to forming a separator for use in electric batteries. (See Hennige, Abstract, paragraphs 3, 10, 36, 41, 45, 53, 61.)
Hennige teaches a system for applying a ceramic-based separator (separator) to an electrode ( , the system comprising: a spray mechanism (paragraph 45), a separator layer (separator) comprising a binder (polymer ) and an electrically non-conductive separator material (ceramic oxide of Zr, Si, Zr, or Al ) to an electrode by spraying the binder and the electrically non-conductive separator material onto the electrode. (See Hennige, Abstract, paragraphs 36, 45, 56, 58, 61, and 71.)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include a system for applying a dry, solvent-free ceramic-based separator to an electrode, the system comprising: a spray mechanism configured to apply, via a dry dispersion application, a separator layer comprising a binder and an electrically non-conductive separator material to an electrode by spraying the binder and the electrically non-conductive separator material onto the electrode
, because Hennige teaches this coating approach improves the physical properties of the coating, reducing the possibility of spalling of the inorganic coating off the carrier and separator failure. (See Hennige, Abstract, paragraphs 3, 10, 36, 41, 45, 53, 61, 71.)
Hogan does not explicitly teach an electrically non-conductive separator material capable of being applied to an electrode via dry dispersion application comprising one or more ceramic powders having a particle size in a range from 1 to 25 mm.
Hennige teaches an electrically non-conductive separator material … comprising one or more ceramic powders having a particle size in a range from 1 to 25 mm. (See Hennige, Abstract, paragraphs 8, 14, 36, 48, 53, 56-58, and 68.)
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include an electrically non-conductive separator material … comprising one or more ceramic powders having a particle size in a range from 1 to 25 mm, because Hennige teaches the use of these elements with particle size improves the physical properties of the separate reducing possibility of spalling of the inorganic coating off the carrier and separator failure. (See Hennige, Abstract, paragraphs 8, 14, 36, 48, 56-58, and 68.)
Hogan does not explicitly teach a binder comprising a thermoplastic or thermoset material capable of being applied to an electrode via dry dispersion application.
Watanabe is directed to a secondary battery including a separator.
Watanabe teaches a binder comprising a thermoplastic or thermoset material. (See Watanabe, Abstract, paragraphs 33, 40, 43, 80-81, 90, 93, and 180.)
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include a binder comprising a thermoplastic or thermoset material, because Watanabe teaches the use of this material is effective for forming a heat resistant layer with the separator. (See Watanabe, Abstract, paragraphs 33, 40, 43, 80-81, 90, 93, and 180.)
Hogan does not explicitly teach a binder …capable of being applied to an electrode via dry dispersion application.
Watanabe teaches the binder used in the separator layer is similar to the binder used in the positive electrode and the negative electrode. (See Watanabe, Abstract, paragraphs 33, 40, 43, 80-81, 85, 90, 93, 102-103, 106-107, 110, 130, 134, 138, 180, and 197.)
Watanabe teaches a binder used in the negative and positive electrode is a paste. (See Watanabe, Abstract, paragraphs 33, 40, 43, 80-81, 85, 90, 93, 102-103, 106-107, 110, 130, 134, 138, 180, and 197.) Examiner is a considering a paste equivalent to a material capable of being applied to an electrode via dry dispersion application
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include a binder ... capable of being applied to an electrode via dry dispersion application, because Watanabe teaches a paste an art recognized equivalent material element of a battery which is capable of being applied to an electrode via dry dispersion application. (See Watanabe, Abstract, paragraphs 33, 40, 43, 80-81, 85, 90, 93, 102-103, 106-107, 110, 130, 134, 138, 180, and 197 .)
It has been held that an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F. 2d 297, 213 USPQ 532 (CCPA 1982).
While features of an apparatus or system may be recited either structurally or functionally, claims directed to an apparatus or system must be distinguished from the prior art in terms of structure rather than function. >In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). As the references and the claimed structure are patentably indistinguishable in terms of structure, the apparatus of the prior art is reasonable expected to be able to perform the claimed functionality (a spray mechanism configured to apply… the electrically non-conductive separator material onto the electrode at between 2 and 20 pound-force per square inch (psi) ).
Hogan does not explicitly teach a first heater configured to heat the electrode and/or the separator layer to adhere the separator layer to the electrode, the first heater comprising a radiant heater.
Mosso teaches a first heater configured to heat the electrode and/or the separator layer to adhere the separator layer to the electrode, the first heater comprising a radiant heater. (See Mosso, Abstract, paragraphs 30, 43, 62, and 72.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a first heater configured to heat the electrode and/or the separator layer to adhere the separator layer to the electrode, the first heater comprising a radiant heater, the first heater comprising a radiant heater through routine experimentation, because Mosso teaches radiant heater structure may apply heat for bonding the separator to the web. (See Mosso, Abstract, paragraphs 30, 43, 62, and 72.)
Intended use language is located in the preamble of claim 1 (for applying a dry, solvent-free ceramic-based separator to an electrode). A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Hogan in view of Hennige and Watanabe and Mosso is capable of the intended use and as a result meets the claim limitation.
Claim 1 recites an intended use clause (i. e. configured to apply… configured to heat the electrode and/or the separator layer to adhere). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Hogan in view of Hennige and Watanabe and Mosso is capable of the intended use and as a result meets the claim limitation.
Regarding claim 2, Hogan does not explicitly teach comprising a feed mechanism configured to provide the electrode to an application region.
Mosso teaches a feed mechanism configured to provide the electrode to an application region. (See Mosso, Abstract, paragraphs 1, 4, 9, 32, 67-69, 76-79.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a feed mechanism configured to provide the electrode to an application region, because Mosso teaches this structure would allow the deposition to occur on the substrate at the desired throughput. (See Mosso, Abstract, paragraphs 1, 4, 9, 32, 67-69, 76-79.)
Regarding claim 3, Hogan does not explicitly teach the binder consists of a thermoplastic material, a thermoset material, or a combination thereof.
Watanabe teaches a binder used in the negative and positive electrode is a thermoplastic material. (See Watanabe, Abstract, paragraphs 33, 40, 43, 80-81, 85, 90, 92-93, 102-103, 106-107, 110, 130, 134, 138, 180, and 197.)
It would have been obvious to one of ordinary skill in the art at the time the invention was made to the binder consists of a thermoplastic material, a thermoset material, or a combination thereof, as an art recognized equivalent binder composition. (See Watanabe, Abstract, paragraphs 33, 40, 43, 80-81, 85, 90, 93, 102-103, 106-107, 110, 130, 134, 138, 180, and 197.)
Regarding claim 4, Hogan does not explicitly teach the binder comprises polypropylene or polyethylene.
Hennige teaches polypropylene or polyethylene can be used and be identical to the material of the carrier. (See Hennige, Abstract, paragraphs 36, 45, 56, 58, 61, 66, 71.)
It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute different fibers, polymer, polymer blends, carrier, through routine experimentation, with a reasonable expectation of success, to the select the proper composition for the separator and shut down layer material, as a result-effective variable, in order to provide the optimal heating temperature for drying (i.e. as low as 50 C) and optimal melting temperature in order to provide the optimal shutdown effect and reduce the possibility of separator failure. (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1969)). (See Hennige, Abstract, paragraphs 3, 10, 36, 41, 45, 61, 66, 71.)
Regarding claim 5, Hogan does not explicitly teach a second heater positioned to heat a first surface of the electrode opposite a second surface of the electrode facing the spray mechanism.
Mosso teaches a second heater positioned to heat a first surface of the electrode opposite a second surface of the electrode facing the spray mechanism. (See Mosso, Abstract, paragraph 56.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a second heater positioned to heat a first surface of the electrode opposite a second surface of the electrode facing the spray mechanism, because Mosso teaches this structure would allow the deposition to occur on the substrate on a first side while heating occurs on an opposite side to control temperature uniformity. (See Mosso, Abstract, paragraphs 1, 4, 9, 32, 56, 67-69, 76-79.)
Regarding claim 9, Hogan does not explicitly teach the one or more ceramic powders comprises alumina.
Hennige teaches a system for applying a ceramic-based separator (separator) to an electrode ( the system comprising: a spray mechanism configured to apply, via a dry dispersion application (spraying). (See Hennige, Abstract, paragraphs 36, 45, 56-57, 58, 61, and 76)
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have the one or more ceramic powders comprises alumina, because Hennige teaches this would enable the physical properties of the separator to be improved. (See Hennige, Abstract, paragraphs 3, 10, 36, 41, 45, 61, 66, 71.)
Regarding claim 10, Hogan does not explicitly teach the binder comprises polyvinylidene fluoride (PVDF).
Watanabe teaches the binder comprises polyvinylidene fluoride (PVDF). (See Watanabe, Abstract, paragraphs 33, 81, 90, 92-93, 102, 180.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the binder comprises polyvinylidene fluoride (PVDF), as an art recognized equivalent form of a binder. (See Watanabe, Abstract, paragraphs 33, 81, 90, 92-93, 102, 180.)
Regarding claim 11, Hogan does not explicitly teach the spray mechanism is configured to apply, via a dry dispersion application, a dry, solvent-free ceramic-based separator layer comprising 2 to 30 percent binder by weight.
Hennige teaches different amount of polymers and polymer blends may be used in the composition. (See Hennige, Abstract, paragraphs 3, 10, 36, 41, 45, 61, 66, 71.)
It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute different fibers, polymer, polymer blends, carrier, through routine experimentation, with a reasonable expectation of success, to the select the proper composition for the separator and shut down layer material, as a result-effective variable, in order to provide the optimal heating temperature for drying (i.e. as low as 50 C) and optimal melting temperature in order to provide the optimal shutdown effect and reduce the possibility of separator failure. (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1969)). (See Hennige, Abstract, paragraphs 3, 10, 36, 41, 45, 61, 66, 71.)
Regarding claim 21, Hogan teaches spraying the binder and electrically non-conductive separator material onto the electrode at between 2 and 20 pound-force per square inch (psi). (See Hogan, Abstract, Figs. 1-9B, paragraphs 2, 32, 38, 41-42, 51, 53, 56, 72, 74-75, 81, 83.)
Further regarding claim 21, Hogan does not explicitly teach a radiant heater configured to heat the electrode and/or the separator layer to adhere the separator layer to the electrode.
Mosso teaches a radiant heater configured to heat the electrode and/or the separator layer to adhere the separator layer to the electrode. (See Mosso, Abstract, paragraphs 30, 43, 62, and 72.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a radiant heater configured to heat the electrode and/or the separator layer to adhere the separator layer to the electrode, the first heater comprising a radiant heater, because Mosso teaches radiant heater structure may apply heat for bonding the separator to the web. (See Mosso, Abstract, paragraphs 30, 43, 62, and 72.)
Regarding claim 21, Hogan does not explicitly teach a non-transitory computer readable storage medium having stored thereon a computer program comprising instructions which when executed by a computer cause a processor to: cause the spray mechanism to apply the dry, solvent-free ceramic-based separator layer to the electrode via the dry dispersion application by spraying the binder and the electrically non-conductive separator material onto the electrode at between 2 and 20 pound-force per square inch (psi); and cause the radiant heater to heat the electrode and/or the dry, solvent-free ceramic-based separator layer to adhere the separator layer to the electrode.
Mosso teaches a non-transitory computer readable storage medium (software) having stored thereon a computer program comprising instructions which when executed by a computer cause a processor (226). (See Mosso, Abstract, paragraphs 1, 4, 9, 32, 67-69, 84-85.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a non-transitory computer readable storage medium having stored thereon a computer program comprising instructions which when executed by a computer cause a processor to: cause the spray mechanism to apply the dry, solvent-free ceramic-based separator layer to the electrode via the dry dispersion application by spraying the binder and the electrically non-conductive separator material onto the electrode at between 2 and 20 pound-force per square inch (psi); and cause the radiant heater to heat the electrode and/or the dry, solvent-free ceramic-based separator layer to adhere the dry, solvent-free ceramic-based separator layer to the electrode, because Mosso teaches a controller (226) is useful to control process condition timing and monitoring. (See Mosso, Abstract, paragraphs 1, 4, 9, 32, 67-69, 76-79, 84-86.)
The previous rejection of claim 6 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US 20010042506 A1 to Hogan et al (hereinafter Hogan) and US Pat. Pub. No. 20070099072 A1 to Hennige et al (hereinafter Hennige) and US Pat. Pub. No. 20110117437 A1 to Watanabe et al (hereinafter Watanabe) and US Pat. Pub. No. 20110143019 to Mosso et al (hereinafter Mosso) as applied to claim 1 and further in view of US Pat. Pub. No. 20130273407 A1 to EnerDel (hereinafter EnergDel) is maintained.
Regarding claim 6, Hogan does not teach the first heater is configured to heat the binder without causing the polymer to readily flow.
EnerDel teaches the first heater is configured to heat the binder without causing the polymer to readily flow. (See Enerdel, Abstract, paragraphs 46, 51, 54, and 92.) Examiner is considering plastic deformation in paragraph 54 without melting to be equivalent to heat the binder without causing the polymer to readily flow.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention wherein the first heater is configured to heat the binder without causing the polymer to readily flow, because Enerdel teaches plastic deformation allows the particles to firmly attach to the substrate and to each other to form a suitably porous or solid heat-resistant coating on the substrate that is substantially uniform in thickness and particle distribution. (See Enerdel, Abstract, paragraphs 46, 51, 54, and 92.)
The previous rejection of claims 7-8 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US 20010042506 A1 to Hogan et al (hereinafter Hogan) and US Pat. Pub. No. 20070099072 A1 to Hennige et al (hereinafter Hennige) and US Pat. Pub. No. 20110117437 A1 to Watanabe et al (hereinafter Watanabe) and US Pat. Pub. No. 20110143019 to Mosso et al (hereinafter Mosso) as applied to claim 1 is maintained.
Regarding claim 7, Hogan does not explicitly teach comprising a set of rollers or mandrels configured to compress and calender the dry, solvent-free ceramic-based separator layer to a desired uniform thickness, density, porosity, and tortuosity after the electrode has been heated by the first heater.
Watanabe teaches forming webs of electrode material including PVDF material to a desired thickness.
Watanabe teaches a set of rollers (31) or mandrels configured to compress and calendar a web including electrodes and PVDF binder to a desired uniform thickness, density, porosity, and tortuosity after the electrode has been heated by the first heater. (See Watanabe, Abstract, paragraph 3, 19-20, 89-90, 112-114 145-155, Figs. 2-4 and 7-8.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to comprising a set of rollers or mandrels configured to compress and calendar the separator layer to a desired uniform thickness, density, porosity, and tortuosity after the electrode has been heated by the first heater, because Watanabe teaches rollers can be used to produce a web shaped electrode with the desired thickness. (See Watanabe, Abstract, paragraph 3, 19-20, 89-90, 112-114 145-155, Figs. 2-4 and 7-8.)
Regarding claim 8, Hogan does not explicitly teach after passing through the set of rollers, the dry, solvent-free ceramic-based dry, solvent-free ceramic-based separator layer has a uniform thickness of less than 25um.
Watanabe teaches a set of rollers (31) or mandrels configured to compress and calendar a web including electrodes and PVDF binder to a desired uniform thickness, density, porosity, and tortuosity after the electrode has been heated by the first heater. (See Watanabe, Abstract, paragraph 3, 19-20, 89-90, 112-114 145-155, Figs. 2-4 and 7-8.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have after passing through the set of rollers, the dry, solvent-free ceramic-based separator layer has a uniform thickness of less than 25u m, because Watanabe teaches rollers can be used to produce a web shaped electrode with the desired thickness. (See Watanabe, Abstract, paragraph 3, 19-20, 89-90, 112-114 145-155, Figs. 2-4 and 7-8.)
It has been held that the shape or configuration is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape (orientation, alignment, dimensions, or configuration) is significant. In this case, no evidence to the significance of the shape (orientation, alignment, dimensions, or configuration) is provided and the shape (orientation, alignment, dimensions, or configuration) is considered an obvious matter of design choice based on other known (orientation, alignment, or configuration) in the art. (See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) )
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
The previous rejection of claims 1-6, 9-11, 16, and 21 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US Pat. Pub. No. 20130273407 A1 to EnerDel (hereinafter EnergDel) and US Pat. Pub. No. 20110143019 to Mosso et al (hereinafter Mosso) and US 20010042506 A1 to Hogan et al (hereinafter Hogan) and US Pat. Pub. No. 20110311855 A1 to Peng et al (hereinafter Peng) and US Pat. Pub. No. 20070099072 A1 to Hennige et al (hereinafter Hennige) and US Pat. Pub. No. 20110117437 A1 to Watanabe et al (hereinafter Watanabe) is withdrawn based on Applicant’s arguments.
The previous rejection of claims 7-8 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US Pat. Pub. No. 20130273407 A1 to EnerDel (hereinafter EnergDel) and US Pat. Pub. No. 20110143019 to Mosso et al (hereinafter Mosso) and US 20010042506 A1 to Hogan et al (hereinafter Hogan) and US Pat. Pub. No. 20110311855 A1 to Peng et al (hereinafter Peng) and US Pat. Pub. No. 20070099072 A1 to Hennige et al (hereinafter Hennige) and US Pat. Pub. No. 20110117437 A1 to Watanabe et al (hereinafter Watanabe) as applied to claim 1 is withdrawn based on Applicant’s arguments.
Double Patenting
The previous rejection of claim 1 on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No 11,394,085 B2 (U.S. Patent App. No 17/304,862) to Eskra et al. ( “hereinafter Eskra” ) and US Pat. Pub. No. 20070099072 A1 to Hennige et al (hereinafter Hennige) and US Pat. Pub. No. 20110117437 A1 to Watanabe et al (hereinafter Watanabe) is maintained.
Although the claims at issue are not identical, they are not patentably distinct from each other because Eskra recites a system for applying a dry, solvent-free ceramic-based separator to an electrode, the system comprising: a spray mechanism configured to apply, via a dry dispersion application, a dry, solvent-free ceramic-based separator layer comprising a binder and an electrically non-conductive separator material to an electrode by spraying the binder and the electrically non-conductive separator material onto the electrode at between 2 and 20 pound-force per square inch (psi); and a first heater configured to heat the electrode and/or the dry, solvent-free ceramic-based separator layer to adhere the dry, solvent-free ceramic-based separator layer to the electrode, the first heater comprising a radiant heater.
Eskra does not explicitly teach an electrically non-conductive separator material capable of being applied to an electrode via dry dispersion application comprising one or more ceramic powders having a particle size in a range from 1 to 25 mm.
Hennige teaches an electrically non-conductive separator material … comprising one or more ceramic powders having a particle size in a range from 1 to 25 mm. (See Hennige, Abstract, paragraphs 8, 14, 36, 48, 53, 56-58, and 68.)
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include an electrically non-conductive separator material … comprising one or more ceramic powders having a particle size in a range from 1 to 25 mm, because Hennige teaches the use of these elements with particle size improves the physical properties of the separate reducing possibility of spalling of the inorganic coating off the carrier and separator failure. (See Hennige, Abstract, paragraphs 8, 14, 36, 48, 56-58, and 68.)
Eskra does not explicitly teach a binder comprising a thermoplastic or thermoset material capable of being applied to an electrode via dry dispersion application.
Watanabe is directed to a secondary battery including a separator.
Watanabe teaches a binder comprising a thermoplastic or thermoset material. (See Watanabe, Abstract, paragraphs 33, 40, 43, 80-81, 90, 93, and 180 .)
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include a binder comprising a thermoplastic or thermoset material, because Watanabe teaches the use of this material is effective for forming a heat resistant layer with the separator. (See Watanabe, Abstract, paragraphs 33, 40, 43, 80-81, 90, 93, and 180 .)
Eskra does not explicitly teach a binder …capable of being applied to an electrode via dry dispersion application.
Watanabe teaches the binder used in the separator layer is similar to the binder used in the positive electrode and the negative electrode. (See Watanabe, Abstract, paragraphs 33, 40, 43, 80-81, 85, 90, 93, 102-103, 106-107, 110, 130, 134, 138, 180, and 197 .)
Watanabe teaches a binder used in the negative and positive electrode is a paste. (See Watanabe, Abstract, paragraphs 33, 40, 43, 80-81, 85, 90, 93, 102-103, 106-107, 110, 130, 134, 138, 180, and 197 .) Examiner is a considering a paste equivalent to a material capable of being applied to an electrode via dry dispersion application
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include a binder ... capable of being applied to an electrode via dry dispersion application, because Watanabe teaches a paste an art recognized equivalent material element of a battery which is capable of being applied to an electrode via dry dispersion application . (See Watanabe, Abstract, paragraphs 33, 40, 43, 80-81, 85, 90, 93, 102-103, 106-107, 110, 130, 134, 138, 180, and 197 .)
It has been held that an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F. 2d 297, 213 USPQ 532 (CCPA 1982).
Response to Arguments
Applicant's arguments filed April 3, 2026 have been fully considered but, with respect to the first set of rejections based on Hogan and Hennige they are not persuasive.
In the third paragraph of page 7 of the Remarks Section, Applicant argues that Hogan discloses an apparatus for spray-coating selected areas of a circuit board with a liquid coating material.
Paragraph 32 of Hogan cites that “other types of… viscous materials” may be sprayed. Examiner is considering “other types of… viscous materials” to be equivalent to the claim limitation of “a dry, dispersion application, a dry solvent-free layer”
"Though picked from a laundry list a prima facie case of obviousness exists over the claimed combination. See Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985) where it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious.”
In the fourth paragraph of page 7 of the Remarks Section, Applicant argues that modification of Hogan according to claim 1 would require substitution of materials and spray mechanism that would have been considered non-obvious to the person of ordinary skill in the art, because doing so would have been contrary to the atomization of a liquid taught by Hogan.
Examiner disagrees for the following reasons Hogan teaches the coating material may be used in conformal coating applications or in non-atomized applications. ( See Hogan, paragraphs 3, 5, 32, 47, 56.)
Examiner is considering conformal coatings in non-atomized applications to be equivalent to known solid coating techniques such as powder coating. (See US Pat. Pub. No. 20090155604 A1 to Haack et al, paragraph 56 and US Pat. Pub. No. 20040235984 A1 to Nicholl et al, US Pat. Pub. No. 2004023489 A1 to Batishko et al, paragraph 59, and WO 2015105972 A1 to Ranganathan et al, see paragraph 64.)
In the fourth paragraph of page 7 of the Remarks Section, Applicant argues that modification of Hogan does not teach a system including a radiant heater to adhere a dry, solvent-free ceramic-based separator layer to an electrode.
Mosso is used to address this limitation in the fifth paragraph of page 10 of the Office Action. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In the first to fourth paragraph of page 8 of the Remarks Section, Applicant’s Representative argues that the teachings in Hennige do not cure the defects in the teachings of Hogan. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In the fifth paragraph of page 8 of the Remarks Section, Applicant argues that modification of Watanabe does not disclose an electrically non-conductive separator material.
Examiner disagrees. Watanabe teaches the separator includes a heat resist layer made of filler (i.e. alumina, magnesia, etc.) and binder. (See Watanabe, paragraphs 81, 93. ) Both alumina and magnesia are known non-conductive materials. Further, Watanabe teaches the binder material may be made of the same material binder, but not does not say it is used by the same process as argued by the Applicant’s representative in paragraphs 103 and 107 of Watanabe. (See last paragraph of page 8, first paragraph of page 9 of the Remarks Section). Examiner is considering a skilled artisan of separator fabrication would be able to use the same binder as in the electrode, but would not be required to include the conductive portions of the electrode formulations. (See last paragraph of page 8, first paragraph of page 9 of the Remarks Section).
Examiner is considering within the skill of an ordinary artisan to formulate a heat resistant layer from known fillers and binders resulting in an electrically non-conductive separator material.
In the third to fourth paragraph of page 9 of the Remarks Section, Applicant’s Representative argues that Mosso does not teach applying a ceramic separator and other related limitations to the separator.
As stated above, Mosso is being used to teach the limitation of a system including a radiant heater to adhere a dry, solvent-free ceramic-based separator layer to an electrode.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In the fifth paragraph of page 9 of the Remarks Section, Applicant’s Representative argues that “no reason for the person of ordinary skill in the art to modify the teachings of Hogan, Hennige, and Watanabe to arrive at the present invention”.
Examiner disagrees.
As set forth above, the combination of references are being used to make a valid prima facie case of obviousness based on conventional elements used for their intended purpose in combination with other conventional elements within the skill of a person with ordinary skill in art.
The rejection of US Pat. Pub. No. 20130273407 A1 to EnerDel (hereinafter EnergDel) and US Pat. Pub. No. 20110143019 to Mosso et al (hereinafter Mosso) and US 20010042506 A1 to Hogan et al (hereinafter Hogan) and US Pat. Pub. No. 20110311855 A1 to Peng et al (hereinafter Peng) as applied to claim 1 and further in view of US Pat. Pub. No. 20110117437 A1 to Watanabe et al (hereinafter Watanabe) is withdrawn based on Applicant’s arguments and not teaching the limitation of “ an electrically non-conductive separator material capable of being applied to an electrode via dry dispersion application comprising one or more ceramic powders having a particle size in a range from 1 to 25 um.
In the fourth paragraph of page 13 of the Remarks Section, Applicant’s Representative argues that Hennige discloses a wet spray, as opposed to dry dispersion, application of materials.
Examiner is considering the dry solvent free application to be taught by the primary reference to Eskra.
Further, Hennige refers to WO 99/15262 for gel preparation. US Pat. Pub. No. 20020023874 A1 to Penth et al is being used as a translation for WO 99/15262. Penth teaches particle size and the carrier material can be adjusted. Suspensions in Penth are capable of being spread with a blade. (See Penth, paragraphs 18, 36, 89, 95, 98, 100.) Examiner is considering suspensions capable of being spread with a blade to be compatible with the dry, solvent free application of Eskra.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Peng teaches depositing particles in a spray at 20 psi. (See Peng, paragraph 124.)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARL V KURPLE whose telephone number is (571)270-3477. The examiner can normally be reached Monday-Friday 8 AM-5 PM.
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/KARL KURPLE/Primary Examiner
Art Unit 1717
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