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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/7/2026 has been entered.
Status of Claims
The examiner acknowledges the amendment to claim 1 and the addition of claim 26. 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, 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 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 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.
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 4/7/2026 have been fully considered but they are not persuasive for the following reasons.
On page 1, the applicant argues that a masterbatch is not just a difference in order of mixing. The examiner disagrees. One of ordinary skill in the art would recognize that a masterbatch is commonly employed to mix certain components in a more concentrated to fashion for ease of manufacture, as a larger batch of components which have a low incorporation amount in the final composition can be made using higher quantities and subsequently portioned out for use in multiple final compositions. However, this only constitutes a change in mixing order and does not chemically change the components in a way that would not occur otherwise. Additionally, the dictionary definition of a masterbatch is according to Merriam-Webster “a mixture that consists of rubber or plastic with one or more compounding ingredients in definite proportions but higher concentrations than in a normal mix and that is used for convenience in compounding”, which agrees with the definition that an ordinarily skilled artisan would have. Therefore, simply requiring a “masterbatch” does not constitute a change other than in mixing order, which would have been obvious as previously stated.
On page 2, the applicant argues the effects on the properties of the final composition by incorporating the masterbatch. However, the examiner points out that the improved qualities of the composition are not limitations of the independent claim and further, the comparative example listed by the applicant to demonstrate this property does not include a silicone resin. As the prior art cited in the rejection does contain this element, this does not constitute an apples-to-apples comparison and does not demonstrate that incorporation of the silicone through a masterbatch would result in differing properties from one where this component was not part of a masterbatch. Further, McEneany teaches that the siloxane can be used as a mixture with a thermoplastic carrier resin (Paragraph 55) which is added to a thermoplastic resin to result in the final composition, thus meeting the requirement of a “masterbatch” and, it would logically follow, also have the advantageous properties noted.
In summation, the applicant has not overcome the previous rejection, as the required elements are taught by McEneany in view of Nagou.
Conclusion
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
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