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 .
Response to Arguments
The following is in response to the applicant’s remarks filed 11/5/25.
The applicant submits that the previous rejection is improper as the cited references do not teach or provide sufficient motivation to arrive at the claimed limitation for crystallinity. Specially, the applicant argues that the crystallinity is a not a product by process limitation, has not been established as a result effective variable, and has insufficient basis to be considered to be an inherent property.
The examiner respectfully disagrees. However, in an effort to expedite prosecution the rejection under 35USC102 relying on inherency has been withdrawn. The rejection under 35USC103, previously presented, which states that Tanaka in view of Yen would arrive at the claimed values of crystallinity by means of routine optimization is maintained. Then, the action is made final.
Regarding the product by process assertion, the previous rejection does not state crystallinity itself is a product by process limitation, but merely that the current claim language which defines a first and second crystallinity at different points in a manufacturing method is. However, the examiner agrees with the applicant that the value of the final crystallinity does not require process limitations. The purpose of the rejection is to indicate that a measure of the crystallinity at an intermediate step in a process does not provide a patentable distinction over prior which teaches the crystallinity of the final product. Then, the instant application as claimed does not provide a patentable distinction over the combination of Tanaka in view of Yen which teaches the final crystallinity. While product by process may not have been the correct choice of wording the intermediate/final product position relies on the same principle that the method and intermediate products before arriving at the claimed final product do not patentably distinguish from the prior art barring evidence to the contrary.
The instant specification teaches that the purpose of the crystallinity measurements as claimed is a method to determine a change in crystallinity between an initial and an end product [0044] wherein claim 1 is directed at the measurement of an intermediate product . Similarly, claims 2 and 3 which are directed solely at the difference between the initial (intermediate product) and final crystallinity would again not appear to distinguish over the structure of the final product barring evidence to the contrary. Further, it is clear in the prior art that both elongation rate and crystallinity are known result effective variables with regard to polyolefin separators. “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process or different intermediate product, the burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed final product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983). Then, for a reference to teach the limitation, the reference needs only to teach or provide an obviousness rationale for the final product.
Regarding the argument for a result effective variable, Yen teaches that crystallinity impacts the resulting mechanical and resistance properties of the separator [0056], [0060], [0069]. Then, is clear that crystallinity is a known variable which achieves a recognized result. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
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 – 13 and 20 are rejected under 35 U.S.C. 103 as obvious over Tanaka, US20220298314A1, and Yen, US20130029126A1.
Regarding claim 1, Tanaka teaches a battery separator [0001], comprising: a polyolefin-based porous separator [0001], wherein the polyolefin-based porous separator comprises polyethylene resin [0016],
an elongation rate of the polyolefin-based porous separator in a machine direction (MD) direction is greater than 120%, an elongation rate in a transversal direction (TD) direction is greater than 120% (70 – 150%) [0035](examples 7 and 8)[table 1]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05 I]
Tanaka does not teach the polyolefin-based porous separator, crystallinity at a first-time temperature rise of polyethylene that is measured by using a differential scanning calorimeter is less than 65%, and crystallinity at a second-time temperature rise is less than 55%.
However, the crystallinity of the separator at intermediary steps during the method of manufacturing are considered to be product by process limitations. The patentability of the claim relies only on the product and is not further limited by the process steps [MPEP 2113 I].
Yen teaches a battery separator [0001] comprising a polyolefin-based separator [0018] comprising polyethylene [0043], [0045], and that the crystallinity of the separator is a result effective variable which determines the resulting mechanical and resistance properties of the separator [0056], [0060], [0069]. Then, it would have been obvious to one of ordinary skill in the art to arrive at a claimed value for crystallinity as a matter of routine optimization.
Regarding claim 2, combined Tanaka teaches the battery separator according to claim 1.
Combined Tanaka does not teach wherein a difference between the crystallinity at the first-time temperature rise and the crystallinity at the second-time temperature rise is less than 12%.
However, the crystallinity of the separator at intermediary steps during the method of manufacturing are considered to be product by process limitations. The patentability of the claim relies only on the final product and not the process steps [MPEP 2113 I].
Regarding claim 3, combined Tanaka the battery separator according to claim 1.
Combined Tanaka does not teach wherein a difference between the crystallinity at the first-time temperature rise and the crystallinity at the second-time temperature rise is greater than or equal to 12% and less than 18%.
However, the crystallinity of the separator at intermediary steps during the method of manufacturing are considered to be product by process limitations. The patentability of the claim relies only on the final product and not the process steps [MPEP 2113 I].
Regarding claim 4, combined Tanaka the battery separator according to claim 1.
Further, Tanaka teaches wherein a temperature of closing a pore of the polyolefin-based porous separator is less than or equal to 140° C (shutdown temperature of 135 or lower) [0018].
Regarding claim 5, combined Tanaka the battery separator according to claim 1.
Further Yen teaches wherein a polyethylene resin raw material for preparing the polyolefin-based porous separator comprises polyethylene resin with crystallinity that is less than 50% (30%) [0019].
Regarding claim 6, combined Tanaka the battery separator according to claim 1.
Further, Tanaka teaches wherein the polyolefin-based porous separator further comprises heat-resistant resin (polypropylene) [0059], and a melting point of the heat-resistant resin is higher than a melting point of the polyethylene resin (inherent property of PP).
Regarding claim 7, combined Tanaka teaches the battery separator according to claim 6.
Further, Tanaka teaches wherein the heat-resistant resin comprises one or more of polypropylene, poly 1-butene, poly 1-pentene, poly 1-hexene, poly 4-methyl-1-pentene, poly 1-octene, polyvinyl acetate, polymethyl methacrylate, polystyrene, [0052], [0059].
Regarding claim 8, combined Tanaka the battery separator according to claim 1.
Further, Tanaka teaches wherein in the polyolefin-based porous separator, a mass proportion of the polyethylene resin is greater than or equal to 70% (90% or less) [0017].
Regarding claim 9, combined Tanaka the battery separator according to claim 1.
Further, Tanaka teaches wherein the polyolefin-based porous separator is a single-layer structure or a multi-layer structure (single layer) [0042] (multilayer) [0104].
Regarding claim 10, combined Tanaka the battery separator according to claim 1.
Further, Tanaka teaches wherein a thickness of the polyolefin-based porous separator is 1 μm to 14 μm (10 μm or less) [0019].
Regarding claim 11, combined Tanaka the battery separator according to claim 1.
Further, Tanaka teaches wherein porosity of the polyolefin-based porous separator is 20% to 60% (25 – 70%) [0029].
Regarding claim 12, combined Tanaka the battery separator according to claim 1.
Further, Tanaka teaches wherein an air permeability value of the polyolefin-based porous separator is greater than or equal to 50 sec/100 cc [0032].
Regarding claim 13, combined Tanaka the battery separator according to claim 1.
Further, Tanaka teaches wherein the battery separator further comprises a separator coating layer that is disposed on a surface on one side or two sides of the polyolefin-based porous separator (coating layers) [0105].
Regarding claim 20, Tanaka teaches a battery, comprising a positive electrode, a negative electrode, and a separator and an electrolyte that are located between the positive electrode and the negative electrode [0001], [0003], [0025],
the battery separator [0001], comprising: a polyolefin-based porous separator [0001], wherein the polyolefin-based porous separator comprises polyethylene resin [0016],
an elongation rate of the polyolefin-based porous separator in a machine direction (MD) direction is greater than 120%, an elongation rate in a transversal direction (TD) direction is greater than 120% (70 – 150%) [0035] (examples 7 and 8)[table 1]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05 I]
Tanaka does not teach for the polyolefin-based porous separator, crystallinity at a first-time temperature rise of polyethylene that is measured by using a differential scanning calorimeter is less than 65%, and crystallinity at a second-time temperature rise is less than 55%.
However, the crystallinity of the separator at intermediary steps during the method of manufacturing are considered to be product by process limitations. The patentability of the claim relies only on the product and not the process steps [MPEP 2113 I].
Yen teaches a battery separator [0001] comprising a polyolefin-based separator [0018] comprising polyethylene [0043], [0045], and that the crystallinity of the separator is a result effective variable which determines the resulting mechanical and resistance properties of the separator [0056], [0060], [0069]. Then, it would have been obvious to one of ordinary skill in the art to arrive at a claimed value for crystallinity as a matter of routine optimization.
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 PATRICK M GREENE whose telephone number is (571)270-1340. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached at (571)270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK MARSHALL GREENE/Examiner, Art Unit 1724
/MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724