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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 23, 2025 has been entered.
Summary
The Applicant’s arguments and claim amendments received on October 23, 2025 have been entered into the file. Currently, claim 1 is amended; and claims 2 and 8 are cancelled; resulting in claims 1, 3-7, and 9-15 pending for examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1, and by dependency claims 3-7 and 9-15, are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the claim recites “wherein a weight average molecular weight is 100,000 to 500,000” in line 8. This limitation is indefinite as it is not clear what the molecular weight is referring to. There are multiple components recited in claim 1 and the molecular weight is not directed to a particular component. Based on the remarks filed on October 23, 2025 and paragraph [24] of the specification stating that the weight average molecular weight of the copolymer is 100,000 to 500,000, the limitation in claim 1 is expected to refer to the copolymer. For the purposes of examination, the claim is interpreted as limiting the weight average molecular weight of the copolymer to 100,000 to 500,000.
Regarding claims 3-7 and 9-15, these claims are rejected based on their dependency on claim 1.
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, 3-7, and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Shon, et al. (US 2017/0149039 A1).
Regarding claims 1 and 4-5, Shon teaches an electrode-composite separator for a lithium battery including a separator and a coating film disposed on a surface of the separator (¶ [0041], Ln. 1-6). The separator may be a polyolefin-based porous membrane (porous substrate) (¶ [0100], Ln. 1-4). The coating film includes at least one selected from an inorganic particle, an organic-inorganic particle, and a copolymer (binder) (¶ [0041], Ln. 6-10). The copolymer includes an electrolyte-insoluble repeating unit and a repeating unit represented by Formula 1 (¶ [0041], Ln. 6-10), wherein Formula 1 is a vinyl acetate unit (¶ [0060], Ln. 1-2) and the electrolyte-insoluble repeating unit maybe be a repeating unit resulting from polymerization of at least one selected from an acrylic acid ester monomer and a methacrylic acid ester monomer (humidification phase separable polymer) (¶ [0061], Ln. 1-5).
Shon teaches that the copolymer used may be represented by Formula 4b below (a block copolymer). As boxed in the formula below, Formula 4b contains the claimed structure of Chemical Formula 1.
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Shon teaches that in Formula 4b, n, m, and p may each independently be in a range of 0.01 to 0.99 and the sum of n, m, and p is 1 (¶ [016], Ln. 1-3). Specifically, m may be about 0.1 to 0.5 and p may be about 0.1 to 0.7 (¶ [0078], Ln. 1-7). Therefore, Shon teaches a ratio range of m:p of 10:70 to 50:10, which overlaps with the claimed range for the m:n ratio. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05 (I)).
Shon teaches that the copolymer has a weight average molecular weight of 400,000 to 1,000,000 Daltons (¶ [0075], Ln. 1-3), overlapping the claimed range of 100,000 to 500,000. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05 (I)).
Regarding claim 3, Shon teaches all of the limitations of claim 1 above and further teaches that the electrolyte-insoluble repeating unit (humidification phase separable polymer) may be represented by Formula 2 or both Formula 2 and Formula 3, included below (¶ [0065], Ln. 1-4).
In this case, the electrolyte-insoluble repeating unit (humidification phase separable polymer) included in the boxed section of Formula 4b above is represented by Formula 3, wherein R5 is hydrogen and R6 is a methyl group (¶ [0065], Ln. 7-8). Shon teaches that the glass transition temperature of the repeating unit represented by Formula 3 is 30-40 °C (¶ [0074], Ln. 1-5), within the claimed range of 100 °C or less. Shon further teaches that the glass transition temperature of the repeating unit represented by Formula 1 (vinyl acetate unit) is 15-35 °C, within the claimed range of 10-60 °C (¶ [0059], Ln. 1-5).
Regarding claim 6, Shon teaches all of the limitations of claim 1 above. Shon does not expressly teach that the vinyl acetate has an adhesive force of 200 gf/25mm or more under conditions of 60 °C and 6.5 MPa, however, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use vinyl acetate with an adhesive force of 200 gf/25mm or more under conditions of 60 °C and 6.5 MPa. One would be motivated to use vinyl acetate with a high adhesive force with respect to the separator in order to effectively adhere the separator to the electrodes.
Regarding claim 7, Shon teaches all of the limitations of claim 1 above. While it is acknowledged that the humidification phase separable polymer being phase-separated at a temperature of 25 °C to 80 °C and a relative humidity of 40% to 80% is not expressly recited by Shon, the reference teaches the claimed composition, including a block copolymer having the claimed structure of Formula 1 with similar glass transition temperatures. The phase separation at a temperature of 25 °C to 80 °C and a relative humidity of 40% to 80% would be implicitly achieved by a separator with the same copolymer composition and properties. The instant specification has not provided adequate teachings that the claimed property is only obtainable with the claimed material.
As evidence that the claimed property is inherent to the separator taught by Shon, the reference teaches a separator with substantially the same composition and properties as the claimed separator. Paragraph [76] of the instant specification indicates that the acrylate-based binder is manufactured through copolymerization of a monomer having a low glass transition temperature and a monomer having a high glass transition temperature in a predetermined ratio.
With respect to the composition, Shon teaches that the copolymer used may be represented by Formula 4b below. As boxed in the formula below, Formula 4b contains the claimed structure of Chemical Formula 1.
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With respect to the copolymerization of a monomer having a low glass transition temperature and a monomer having a high glass transition temperature in a predetermined ratio, Shon teaches the copolymerization of the electrolyte-insoluble repeating unit (humidification phase separable polymer) (represented by Formula 2 or both Formula 2 and Formula 3 (¶ [0065], Ln. 1-4)) and the vinyl acetate unit (represented by Formula 1), wherein the repeating unit represented by Formula 1 may have a low glass transition temperature (¶ [0066], Ln. 1-3) and the repeating unit represented by Formula 3 may have a high glass transition temperature (¶ [0071], Ln. 5-7).
Therefore, Shon teaches a copolymer with substantially the same composition and properties, and thus would achieve the claimed phase separation at a temperature of 25 °C to 80 °C and a relative humidity of 40% to 80%.
Regarding claim 9, Shon teaches all of the limitations of claim 1 above and further teaches that Al2O3 (inorganic material) is added to the coating film at 500 parts by weight based on 100 parts by weight of the block copolymer in Example 1 (¶ [0180], Ln. 4-6), resulting in a composition ratio of Al2O3 (inorganic material) to copolymer of approximately 83:17, within the claimed range of 60:40 to 90:10.
Regarding claim 10, Shon teaches a lithium battery comprising a positive electrode, negative electrode, and composite separator including a separator and coating film disposed between the positive and negative electrode (¶ [0103], Ln. 1-5), wherein the separator meets the limitations of claim 1.
Regarding claims 11-14, Shon teaches all of the limitations of claim 10 above. Shon additionally teaches that the coating film may be formed on both surfaces of the separator (¶ [0104], Ln. 1-9) and that the separator with the coating film is shown to have improved bonding strength to the positive electrode (¶ [0230], Ln. 9-13). Shon does not expressly teach that the film facing the positive electrode and the film facing the negative electrode have different constituents. Additionally, Shon does not expressly teach that the copolymer is only present in the film facing the positive electrode. Shon does not expressly teach that the composition ratio of the constituents in the film is different between the film facing the positive electrode and the film facing the negative electrode, or that the film facing the positive electrode comprises a larger amount of the copolymer than the film facing the negative electrode.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the coating film of Shon to have different constituents and copolymer compositions for the side facing the positive electrode and the side facing the negative electrode. One of ordinary skill in the art would recognize that while the coating film composition of Shon increases bonding strength of the separator to the positive electrode, alternate compositions of coating film could be used to bond the separator to the negative electrode, including coating films with a lower amount of copolymer, or no copolymer. It would be obvious to select a coating film based on the composition of the electrode. One would be motivated to modify the coating film of Shon to have different constituents and copolymer compositions for the side facing the positive electrode and the side facing the negative electrode in order to effectively bind the separator to the electrodes.
Regarding claim 15, Shon teaches all of the limitations of claim 10 above. While it is acknowledged that a force of adhesion between the separator and the positive electrode of 50 gf/25mm or more under conditions of 60 °C and 6.5 MPa is not expressly recited by Shon, the reference teaches a separator and positive electrode with substantially the same compositions. A force of adhesion between the separator and the positive electrode of 50 gf/25mm or more under conditions of 60 °C and 6.5 MPa would be implicitly achieved by a separator and positive electrode with substantially the same compositions. The instant specification has not provided adequate teachings that the claimed property is only obtainable with the claimed material.
As evidence that the claimed property is inherent to the separator taught by Shon, the reference teaches a separator and positive electrode with substantially the same compositions as the separator and positive electrode as the instant specification. Paragraph [43] of the instant specification indicates that the substrate of the separator is a porous substrate that may include a polyolefin-based resin such as polyethylene, polypropylene, polybutene, polyisobutylene, or polymethylpentene. Paragraph [95] of the instant specification indicates that the positive electrode active material may be a lithium nickel oxide, lithium manganese oxide, lithium copper oxide, or vanadium oxide. Paragraphs [96]-[97] add that the conductive material may be graphite, carbon black, conductive fiber, metallic powder, conductive whisker, or a conductive metal oxide, and the binder may be polyvinylidene fluoride, polyvinyl alcohol, CMC, starch, hydroxypropyl cellulose, regenerated cellulose, polyvinyl pyrrolidone, tetrafluoroethylene, polyethylene, polypropylene, EPDM, sulfonated EPDM, styrene butylene rubber, or fluoro rubber.
With respect to the substrate, Shon teaches that the separator may be a polyolefin-based porous membrane such as polyethylene, a polypropylene, a polybutylene, and a polypentene (¶ [0100], Ln. 1-11).
With respect to the positive electrode, Shon teaches that the positive electrode active material may include at least one selected from lithium cobalt oxide, lithium nickel cobalt manganese oxide, lithium nickel cobalt aluminum oxide, lithium iron phosphorous oxide, and lithium manganese oxide (¶ [0144], Ln. 1-5). Shon additionally teaches that the conductive agent may be graphite, a carbon-based material such as carbon black, conductive fibers, a metal powder, conductive whiskers, or a conductive metal oxide (¶ [0152], Ln. 1-12) and the binder may be polyvinylidene fluoride, polyvinyl alcohol, carboxymethyl cellulose (CMC), starch, hydroxypropyl cellulose, reproduced cellulose, polyvinylpyrrolidone, tetrafluoroethylene, polyethylene, polypropylene, EPDM, sulfonated EPDM, styrene butylene rubber, fluorine rubber, and polyamide-imide (PAI) (¶ [0151], Ln. 6-11).
Therefore, Shon teaches a separator and positive electrode with substantially the same compositions, and thus would achieve the claimed force of adhesion between the separator and the positive electrode of 50 gf/25mm or more under conditions of 60 °C and 6.5 MPa.
Response to Arguments
Response-Claim Rejections – 35 U.S.C. 112
The previous rejections of claims 3-4 and 6-7 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention are overcome by the Applicant’s amendments to claim 1 in the response filed October 23, 2025. However, in light of the amendment to claim 1, new issues under 35 U.S.C. 112(b) are presented in the office action above.
Response-Claim Rejections – 35 U.S.C. 103
Applicant’s arguments filed have been fully considered but they are not persuasive. In light of the amendments to claim 1, the previous rejection of claim 1 under 35 U.S.C. 103 over Shon, et al. (US 2017/0149039 A1) is modified above. Any arguments with respect to the reference that are still deemed valid will be addressed herein.
With respect to the argument that the reference does not teach a copolymer having a weight average molecular weight of 100,000 to 500,000, this argument is not persuasive. The Applicant argues that Shon does not provide any specific examples using a copolymer with a molecular weight within the claimed range nor a motivation to modify the prior art to arrive at the claimed limitation, however, Shon teaches that the copolymer has a weight average molecular weight of 400,000 to 1,000,000 Daltons (¶ [0075], Ln. 1-3), overlapping the claimed range of 100,000 to 500,000. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05 (I)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (See MPEP 2123 (II)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH J JACOBSON whose telephone number is (703)756-1647. The examiner can normally be reached Monday - Friday 8:00am - 5:00pm.
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/SARAH J JACOBSON/Examiner, Art Unit 1785
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785