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 .
Status of Claims
The examiner acknowledges the amendments to claims 1 and 7. The examiner also notes that claim 26, which was present in the previous claim set is not included in the amended claim set filed on 7/30/2026. As there is no indication that this claim has been canceled, it will remain pending here. Claims 1-26 are pending.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-25 are rejected under 35 U.S.C. 103 as being unpatentable over McEneany (US 20190338097, US Patent Application Reference 1 from IDS dated 9/1/2022) in view of Nagou (US 5,238,735).
Regarding Claims 1, 2, 7, and 9,
McEneany teaches a thermoplastic composition that contains a siloxane polymer which results in a porous membrane (Abstract). McEneany also teaches that the siloxane polymer may be of any variety and be of molecular weight of 100,000 or more (Paragraph 42) and additionally may be substituted with alkyl, aryl, and hydroxyl groups (Paragraph 42), meeting the requirements of the instant claims. As the compound is a siloxane polymer, the Z group is oxygen (Paragraph 42). McEneany additionally teaches a linear organosiloxane which would be comprised of M and D units, reading upon the form of formula II of the instant claim.
With regard to the use of the film for electrochemical applications, McEneany discloses a variety of uses (Paragraph 106), however does not disclose the use for electrochemical applications. Nagou teaches a porous composition/film that includes a polyolefin and siloxane (Abstract, Col. 1, lines 9-11; Column 2 Lines 23-44) that can be used as part of a battery separator (Column 5, Lines 9-10). As the composition of Nagou is broadly similar to that of McEneany, it would necessarily follow that a film of the composition of McEneany could also serve as part of a battery separator. Additionally, a battery separator is a membrane used in an electrochemical application. It would therefore have been obvious prior to the effective filing date of the instant application to have used the composition of McEneany as a battery separator film as taught in Nagou because Nagou teaches that compositions of this type provide good performance when serving as separator membranes in an electrochemical cell.
McEneany teaches that the composition should contain a matrix polymer as discussed in regard to claims 3-6 in amounts of 60 to 99% by weight (Paragraph 33) and also teaches that the amount of siloxane should be between 0.05 and 20% by weight (Paragraph 41) which overlaps with the ranges of the instant claim. One of ordinary skill in the art, seeking to manufacture a film with strength and porosity in a range suitable for use as a battery separator, would logically adjust the incorporation amounts of each component in order to obtain the desired outcome. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Finally, McEneany teaches that the siloxane component may be used with a carrier resin which includes polymers such as polyolefins, polyesters, and polyamides (Paragraph 55), which reads upon a masterbatch made with a thermoplastic resin.
Regarding Claims 3-5,
McEneany teaches that the matrix polymer may be polyolefins and also includes any polymer suitable for the purpose (Paragraph 33). McEneany also teaches the use of several types of polyethylene, meeting the requirements of claim 4, where the substituents of formula III are all H. McEneany also teaches that other polyolefins may be used (Paragraph 34) and on this basis, the substitution pattern of claim 5 where each carbon has a hydrogen and alkyl chain attached would be possible, such as polybutene. Because McEneany teaches the use of other olefins, it would therefore have been obvious prior to the effective filing date to have used any polyolefin for use in the composition.
Regarding Claim 6,
McEneany teaches that in addition to polyolefins, polyesters, styrenic polymers, and polyamides may be used as well as any other suitable polymer (Paragraph 33).
Regarding Claim 8,
McEneany teaches that other polymers such as acrylates and methacrylates (Paragraph 64), fillers, stabilizers, and other materials to enhance processability and mechanical properties may be used (Paragraph 67).
Regarding Claim 10,
McEneany teaches that the drawing process is used to form pores in the material (Paragraph 86), but is silent on the porosity of the material. Nagou teaches that porosity of the material is preferably between 35 and 80% (Column 4, Lines 4-8), which overlaps with the range of the instant claim. One of ordinary skill in the art, seeking to adjust the permeability of the membrane to the desired level for use in a battery, would logically adjust the porosity of the barrier material in order to obtain the desired characteristics. It would therefore have been obvious prior to the effective filing date of the instant application to have selected range from Nagou for use with the composition of McEneany as well as to have selected the overlapping portion of the ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claims 11 and 12,
McEneany teaches that the composition may be used in a laminate with multiple layers (Paragraph 94). As discussed previously in regard to claims 1-3, McEneany in view of Nagou teaches a battery separator. As a result, the composition of McEneany is capable of serving as a layer in an electrochemical film because Nagou teaches that the composition can be used as a battery separator film and both compositions comprise a polyolefin polymer containing a siloxane polymer that has been stretched to induce pore formation. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claims 13-16 and 18,
McEneany teaches that the polymeric material can sustain blended temperature from 180 °C to about 320 °C (Paragraph 69) however, it is silent on the dimensional stability, flammability, and tear strength of the material, though the strain at break and modulus are tested (Paragraph 113). The composition of McEneany in view of Nagou is comprised of the same components as that of the instant application, it would necessarily follow that the properties of the materials would also be similar. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 17,
McEneany is silent on the water vapor transmission rate. However, Nagou teaches a variety of examples (1-25, table 3) in which the water permeation rate is within the range of the instant claim. Because the composition of McEneany and the composition of Nagou are compositions that comprise a polyolefin polymer containing a siloxane polymer that has been stretched to induce pore formation, it would logically follow that the water permeation rates would be similar when the porosity is similar. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claims 19 and 20,
As discussed above, in regard to claims 1-3, the composition of McEneany is broadly similar to that of Nagou, which teaches the use of the material as a battery separator. It would logically follow that if the material can be used as a battery separator, the composition would necessarily be part of an electrochemical device.
Regarding Claims 21-23,
The composition of the material of McEneany is broadly similar to that of the instant application, both in method of manufacture as well as the components contained. As such, the material would be expected to have broadly similar properties. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). As such, if the materials of the instant application would serve satisfactorily under the conditions of the instant claims, it would logically follow that the material of McEneany would perform similarly.
Regarding Claim 24,
McEneany teaches that the composition can be melt processed in an extruder (Paragraph 68) which can then be drawn in one or multiple stages and in a variety of ways, including biaxially (Paragraph 85), a process which results in the formation of pores (Paragraph 86).
Regarding Claim 25,
The properties of the film as taught by McEneany and Nagou are discussed above in regard to claims 13-16.
Regarding Claim 26,
McEneany teaches that the siloxane polymer when used with a thermoplastic carrier resin can make up between 20 and 80% by weight of the mixture (Paragraph 55), which is contained within the range of the instant claim.
Response to Arguments
Applicant's arguments filed 7/30/2026 have been fully considered but they are not persuasive for the following reasons.
On page 1 of the applicant’s remarks, the applicant argues that McEneany in view of Nagou does not teach the use of a silicone masterbatch and that the examiner is incorrect that a masterbatch only constitutes an “order of mixing”. The examiner disagrees. One of ordinary skill in the art would typically define a masterbatch to be a mixture of components that is premixed often to incorporate compounds that are used in small amounts, such as additives and colorants, in a batch that can be subsequently divided for use in multiple product batches, thus reducing the error in amounts by allowing for a mass of these low incorporation compounds to be increased over what is included in any single product batch. Indeed, the applicant’s own specification would agree with this interpretation, as the applicant states “the term silicone-masterbatch refers to a mixture of silicone and thermoplastic resin” (Paragraph 54). This would imply that the masterbatch is indeed nothing more than a mixture of some of the components and as such, this would logically lead to the ordinarily skilled artisan to conclude that the use of a masterbatch is only a change in the order of mixing. Thus, because McEneany teaches the required components, McEneany would teach the composition regardless of the use, or not, of a masterbatch, as any change to the order of mixing is prima facie obvious. See MPEP 2144.04.IV.C.
On page 2, the applicant argues that McEneany does not teach linear siloxanes. The examiner disagrees, as McEneany explicitly describes the use of linear siloxanes (Paragraph 49) in addition to stating that any variety of ultrahigh molecular weight siloxane can be used (Paragraph 42). While the applicant argues what McEneany teaches as used typically, the examiner points out that a typical compound does not constitute the totality of the teachings, particularly in light of the Paragraph 42, which does not place a requirement on the use of an MQ resin, which McEneany teaches as an example, but not as a requirement.
Also on page 2, the applicant argues that McEneany teaches a fibrous material and not a film. The examiner disagrees. Indeed, McEneany mentions that the composition is useful in not only fibers, but also films and molded articles (Paragraph 3) and speaks specifically to the presence of nanopores (Paragraph 3) and also teaches that the composition can be used as a layer in an article and speaks of laminating it onto another film (Paragraph 94). As such, McEneany does teach the composition’s use as a film.
On pages 2 and 3, the applicant argues that McEneany and Nagou are differing compositions and thus there is no motivation to combine. However, the examiner argues that Nagou teaches compositions that are primarily composed of a polyolefin polymer, used as separator films, and teaches the importance of the amount of pores in the film for this purpose. The compositions of McEneany are also primarily composed of a polyolefin polymer and contain pores. One of ordinary skill in the art would note these similarities and logically see that the compositions of McEneany could incorporate the teachings about pore level from Nagou. Further, while the applicant points to Nagou’s use of synthetic resin and its particle size, the examiner notes that even though it is not being suggested that there would be no reason why such resin particles could not be included. In addition, as separator films are known in the art to contain pores in order to facilitate the separation and McEneany teaches a film that contains such pores and is even primarily composed of a polymer known to be used as a separator film, it would logically follow that such use could be envisioned by the ordinarily skilled artisan.
Finally, on page 3 the applicant discusses the properties of the obtained films. The examiner notes that the applicant is not arguing that the properties are unexpected. The examiner also notes that there does not appear to be any argument nor presentation to suggest that these properties are anything other than the logical outcome from utilizing the composition described by the applicant. As such, because McEneany in view of Nagou teaches compositions that meet the limitations of the claims that these properties would necessarily follow the composition and would therefore be present.
As such, the rejection is maintained.
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 ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
