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
Claim 3 is amended.
Claims 1, 2, 4 are cancelled.
Claims 9, 10, 11 are new.
Response to Amendment
Applicant’s amendments filed on 6/5/2026 have been entered.
The affidavit under 37 CFR 1.132 filed 6/5/2026 is insufficient to overcome the rejection of claim 3 based upon Kaneko in view of Madabusi as set forth in the last Office action because:
Updated table 1 in the affidavit shows test results for only one type of polycarbonate polyol relative to one type of polyolefin polyol. The amended claim 3 includes multiple species of polycarbonate polyol and polyolefin polyol, and the prior art of Kaneko in view of Madabusi suggests using chemicals as described in rejection of Claim 3 below. Applicant has not provided data that directly compares the claimed invention to the closest subject matter that exists in prior art. In other words, the data shown is not commensurate in scope with the claim. Applicant has only shown data for one species tested instead of the entirety of the species recited in claim 3.
Claim Rejections - 35 USC § 103
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.
Claim 3, 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko et al (JP 2017195072A; machine translation) in view of Madabusi et al (US 20160181626 A1).
Regarding Claim 3, and Claim 10,
Kaneko teaches an aqueous polyurethane resin dispersion for a secondary battery separator (Paragraph 0001), comprising a polyurethane resin dispersed in water (Paragraph 0008), the polyurethane resin being obtained by reacting a polyol, a polyisocyanate compound, and a chain extender (Paragraph 0008), wherein the polyol contains a polycarbonate polyol and a polyolefin polyol (Paragraph 0010). Kaneko describes the use of Eternacoll UH-100 as the other polycarbonate polyol used (Paragraph 0043). Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the Eternacoll in the polyol mixture as well which contains a polycarbonate polyol and a polyolefin polyol. Kaneko also describes the use of polyolefin polyol such as polybutadiene polyol with two or more hydroxyl groups (Paragraph 0009) such as NISSO PB-G, Poly BD, EPOL. The instant specification also refers to the use of Eternacoll UH-100 as a suitable polycarbonate polyol for the claimed invention in Paragraph 0031, and the use of polybutadiene (Paragraph 0032; "polyolefin polyol" as used herein refers to a polymer or copolymer of a diolefin having 4 to 12 carbon atoms, such as butadiene) including NISSO PB-G, EPOL and Poly BD. Hence, Kaneko teaches the claimed polyols.
Kaneko does not teach a polyol with a content of polycarbonate polyol is 13 parts by mass or more and 50 parts by mass or less relative to 100 parts by mass of a total content of the polycarbonate polyol and the polyolefin polyol.
However, Madabusi teaches an ionically conductive separator comprising polyurethane from a polyol with a polycarbonate backbone (Paragraph 0026). Madabusi also teaches that the polyol may comprise a mixture of polycarbonate polyols with other polyols such as polyethylene glycol, polypropylene glycol, polytetramethylene glycol etc (Paragraph 0041). Olefins are unsaturated hydrocarbons that contain one or more double caron-carbon bonds in their molecules. These examples fit the category of polyolefin polyol, and furthermore Madabusi does not limit the polyols to be used to the examples stated. Madabusi teaches that typically, at least 50% or more, based on the total weight of all polyols in the mixture, is one or more polycarbonate polyols (Paragraph 0041). 50% of the total weight of all polyols is within the claimed range. See MPEP 2144.05. Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the claimed content ratio in the polyols in order to make a battery separator that maintains dimensional stability (Paragraph 0023), and reduce swelling in the presence of organic solvents (Paragraph 0026).
Regarding Claim 5 and Claim 7,
Kaneko teaches the use of aqueous polyurethane resin dispersion per Claim 3 in a secondary battery separator (Paragraph 0005).
Regarding Claim 6 and Claim 8,
Kaneko teaches a secondary battery comprising a positive electrode, a negative electrode, an electrolyte, and a separator according to Claim 5, Claim 7 (Paragraph 0005).
Regarding Claim 9,
Kaneko teaches the use of Eternacoll UH-100 as the other polycarbonate polyol used (Paragraph 0043). The instant specification states that Eternacoll-UH 100 is a 1,6- hexanediol based polycarbonate polyol (Paragraph 0055). This is the same as the claimed species of carbonate polyol of 1,6-hexanediol. Hence, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the Eternacoll/carbonate polyol of 1,6-hexanediol in the polyol mixture which contains a polycarbonate polyol and a polyolefin polyol.
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Kaneko does not teach the content of the polycarbonate polyol is 13 parts by mass or more and less than 50 parts by mass relative to 100 parts by mass of the total content of the polycarbonate polyol and the polyolefin polyol. Kaneko does not provide specific ranges for the amount of polyols added into the mixture, but overall based on Kaneko it would not have been obvious to one of ordinary skill in the art to limit the amount of polycarbonate polyol as claimed.
Madabusi teaches that at least 50% or more, based on the total weight of all polyols in the mixture, is one or more polycarbonate polyols (Paragraph 0041). This range does not overlap with the claimed range. Claim 11 overcomes Madabusi because it removes the overlapping or shared endpoint.
Similarly, other prior art references do not teach the combination of features taught in claim 11 (dependent on claim 1). Takigawa et al (US 20120238659 A1) teaches an aqueous polyurethane resin dispersion with polycarbonate polyol but does not teach the claimed parts by mass.
Makino et al (US 20190157710 A1) teaches a solid electrolyte with polymers such as NISSO, KRASOL, EPOL, ETERNACOLL in a non-aqueous solvent. Hence, it does not read on the claim related to an aqueous resin dispersion.
Takahashi et al (US 20160181616A1) teaches a binder for an electrode with similar polymer constituents, but does not teach the claimed weight range for the polycarbonate diol (Paragraph 0031).
Kelch et al (US 20180201815 A1) teaches a polyurethane composition used as adhesive in construction, manufacturing industry. Hence, it would not have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine Kelch with Kaneko since Kelch belongs in non-analogous field of art. The instant invention provides a secondary battery having low internal resistance and good output characteristics. Similarly, Zhao et al (US 20170369750 A1) teaches a polyurethane dispersion for coatings and adhesives for low VOC emissions, and are environmentally friendly, homogenous, age resistant adhesives. Zhao is also related to a non-analogous field of art.
Response to Arguments
Applicant's arguments filed 6/5/2026 have been fully considered but they are not persuasive.
Applicant argues that Kaneko in view of Madabusi fails to disclose or suggest the claimed features of amended claim 3 (Applicant’s remarks has a typo stated claim 1 is amended. Claim 1 is cancelled). Applicant does not specifically state which limitations remain unmet by Kaneko in view of Madabusi. Examiner points to rejection of Claim 3 above which cites teachings from Kaneko and Madabusi which when applied in combination read on the features of claim 1.
Argument that criticality related to claimed range is not obvious in Kaneko and Madabusi (related to the Table 1 shown in 132 Declaration) has been addressed in section above. The declaration is not sufficient based on MPEP 716.02.
Applicant argues that Kaneko’s Table 1 fails to disclose or suggest advantageous properties of the present invention. Examiner disagrees with this argument because the prior art has proper motivation to adjust the composition and thus, the properties may not be unexpected. As explained in rejection of Claim 3 above, Madabusi provides a mass ratio of 50% for the polycarbonate polyols in order to make a battery separator that maintains dimensional stability (Paragraph 0023), and reduce swelling in the presence of organic solvents (Paragraph 0026).
References of Interest
Examiner notes below references that are pertinent to this area
Noda et al (US 20220403097 A1)
Jiang et al (US 20170173535 A1)
Yang et al (US 20160285063 A1)
Maruoka et al (JP 2015006964 A)
Hiroshi et al (US 2022/0332910 A1)
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.
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/SUHANI JITENDRA PATEL/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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