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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in India on 3/6/2020. It is noted, however, that applicant has not filed a certified copy of the IN202021009736 application as required by 37 CFR 1.55.
Status of Claims
The examiner acknowledges the amendments made to claims 6 and 12. Claims 1-25 are pending.
Claim Rejections - 35 USC § 112
The examiner notes that the applicant has amended claim 6 to depend upon claim 1 and amended claim 12 to depend upon claim 9. These amendments have corrected the issues find with these claims. Therefore, the 112 rejections for claims 6 and 12 have been withdrawn.
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, 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.
Finally, McEneany teaches that the siloxane component may be used with a carrier resin (Paragraph 55), which reads upon a masterbatch.
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 7,
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.
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.
Response to Arguments
Applicant's arguments filed 9/19/2025 have been fully considered but they are not persuasive for the following reasons.
On pages 1 and 2, the applicant states that there would be no reason to combine McEneany and Nagou and that McEneany does not speak to use of the composition as an electrochemical film. In regard to McEneany being silent on the use of the composition in an electrochemical film, the examiner points out that while the preamble does state that this is the intended use of the composition, no further description is provided in the claim to enumerate any structural changes to the material that would result in making the material fit for purpose (see MPEP 2112.02.II) and as such, any material meeting the requirements as presented in the claims would therefore be capable of serving this function. However, the examiner also notes that McEneany refers to the nanopores that are present in the composition (Abstract, Paragraphs 3-5) in addition to stating that the material is useful in fluid transfer and storage (Paragraph 106). Nagou speaks to the microporous films and their use as battery separators (Column 1, Lines 8-11) and later notes resins including silicones for use in this capacity (Column 2, Lines 35-44). Further, Nagou notes that larger pore sizes result in higher permeability to both liquids and gases (Column 4, Lines 37-40), which would be undesirable in battery separator applications. Because Nagou specifically points out the usage of porous films with smaller pores for use as battery separators and McEneany teaches forming pores of typically under 1 micron (but up to 5 microns, in some embodiments) for the composition as well as its usage in fluid storage and transport, an ordinarily skilled artisan would in fact have reason to have combined the two teachings to improve upon the transport characteristics of the film.
Also on page 1, the applicant states that McEneany in view of Nagou does not teach the use of a silicone masterbatch. The examiner notes that as the claims describe primarily a composition, provided the compositions contain the same components, any order of mixing would have been obvious (See MPEP 2144.04.IV.C). As a masterbatch is just a mixture of components, this would read upon an addition of some of the components as a group. Indeed, the applicant in the specification discloses that all components, including the masterbatch, are combined and mixed before being shaped into the final form, and the ordinarily skilled artisan would not expect that the addition of components individually or in groups would have any substantial effect upon the final composition.
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 ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.J.B./Examiner, Art Unit 1765 /HEIDI R KELLEY/ Supervisory Patent Examiner, Art Unit 1765