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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/13/2026 has been entered.
Status of the Claims
The amendment/remarks submitted 02/13/2026 have been entered and fully considered. Claims 1 and 5-10 are pending. Claims 2-4 are cancelled. Claims 1 and 8 are amended. Claims 1 and 5-10 are examined herein.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 5-8 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-13, and 16-19 of copending Application No. 17/917,156 in view of EP 2 830 125 A1 (“Niemöller” – machine translation cited herein).
The instant claims differ from those in the reference application in the recitation of a third binder resin is a polymer of a polymerization unit including polyfunctional acrylate monomer. Niemöller discloses a separator for an electrochemical cell comprising a porous layer which comprises at least one organic binder and at least one functionalized aluminum oxide hydroxide (Abstract). Niemöller discloses a crosslinking component can be added to the coating dispersion to reduce solubility of the binder in the electrolyte and improve mechanical properties of the separator. An example of a monomer of the crosslinking component includes trimethylolpropane triacrylate (pg. 14). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include trimethylolpropane triacrylate as taught by Niemöller to reduce solubility of the binder in the electrolyte and improve mechanical properties of the separator.
This is a provisional nonstatutory double patenting rejection.
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.
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, 5-7, and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/060310 A1 (“Jeong” – US 2021/0066692 A1 cited herein as an English language equivalent) in view of WO 2020/067778 A1 (“Kim” – US 2021/0280945 A1 cited herein as an English language equivalent) and EP 2 830 125 A1 (“Niemöller” – machine translation cited herein).
Regarding claims 1 and 6-7, Jeong discloses a separator comprising a porous coating layer formed on at least one surface of a porous polymer substrate (Abstract). The porous coating layer comprises a plurality of inorganic particles and a binder polymer ([0014]), wherein the weight ratio of the inorganic particles to the binder polymer is 90:10-50:50 ([0026]). The binder polymer comprises an amorphous adhesive binder polymer ([0015]).
Jeong discloses examples of the amorphous adhesive binder polymer which include polyvinyl acetate (“first binder resin”) ([0020]-[0021], [0070]). In an example, the glass transition temperature of the polyvinyl acetate is 30° C (Table 1). See also the broader discussion in [0069]-[0070].
Jeong further discloses the amorphous adhesive binder polymer (i.e. polyvinyl acetate) is included in an amount of 50-84 parts by weight based on 100 parts by weight of the total binder polymer content ([0053]).
Jeong does not expressly disclose a second binder resin, wherein the second binder resin is an acrylic binder resin having a glass transition (Tg) of 80°C to 120°C.
Kim discloses a separator including a porous polymer substrate and an inorganic coating layer formed on at least one surface of the porous polymer substrate. The inorganic coating layer includes inorganic particles and a binder resin, which includes a second binder resin comprising an acrylic polymer (“second binder resin”). The acrylic polymer has an acid value of 1 or less and a glass transition temperature, Tg, of 90°C to 130°C (Abstract). An example of the acrylic polymer is poly(methyl methacrylate) (PMMA) having a molecular average molecular weight (Mw) of 100,000-200,000 ([0013], [0072]). In examples, the PMMA has a Tg of 110°C (Table 1). Kim further discloses the acrylic polymer is used in an amount of 10 wt % to 50 wt % based on 100 wt % of the binder resin ([0015], [0068]). Electrode adhesion is improved by inclusion of the acrylic polymer and phase separation ([0007], [0023], [0067]-[0068]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include the acrylic polymer taught by Kim to improve the electrode adhesion of the coating layer.
Modified Jeong does not expressly disclose the third binder resin is a polymer of a polymerization unit including polyfunctional acrylate monomer.
Niemöller discloses a separator for an electrochemical cell comprising a porous layer which comprises at least one organic binder and at least one functionalized aluminum oxide hydroxide (Abstract). Niemöller discloses a crosslinking component can be added to the coating dispersion to reduce solubility of the binder in the electrolyte and improve mechanical properties of the separator. An example of a monomer of the crosslinking component includes trimethylolpropane triacrylate (pg. 14). Trimethylolpropane triacrylate is a polyfunctional acrylate monomer as it contains three acrylate groups. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include trimethylolpropane triacrylate as taught by Niemöller to reduce solubility of the binder in the electrolyte and improve mechanical properties of the separator.
Niemöller discloses the crosslinking component (e.g. trimethylolpropane triacrylate is provided in an amount of 1 wt% to 30 wt% in order to achieve crosslinking (pg. 14). The range would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because the range disclosed by Niemöller overlaps the range as claimed. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Furthermore, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); and MPEP 2144.05.
Regarding claim 5, modified Jeong discloses the separator of claim 1. Jeong discloses in examples that the polyvinyl acetate used is Sigma Aldrich Co., CAT. 387932 (Table 1). As shown in the product specification for product number 387932, the average molecular weight Mw is ~500,000. See also the broader discussion in [0065].
Regarding claim 8, Jeong discloses a separator comprising a porous coating layer formed on at least one surface of a porous polymer substrate (Abstract). The porous coating layer comprises a plurality of inorganic particles and a binder polymer ([0014]), wherein the weight ratio of the inorganic particles to the binder polymer is 90:10-50:50 ([0026]). The binder polymer comprises an amorphous adhesive binder polymer ([0015]).
Jeong discloses examples of the amorphous adhesive binder polymer which include polyvinyl acetate (“first binder resin”) ([0020]-[0021], [0070]). In an example, the glass transition temperature of the polyvinyl acetate is 30° C (Table 1). See also the broader discussion in [0069]-[0070].
Jeong further discloses the amorphous adhesive binder polymer (i.e. polyvinyl acetate) is included in an amount of 50-84 parts by weight based on 100 parts by weight of the total binder polymer content ([0053]).
Jeong does not expressly disclose a second binder resin, wherein the second binder resin has a glass transition (Tg) of 80°C to 120°C and comprises polymethyl methacrylate.
Kim discloses a separator including a porous polymer substrate and an inorganic coating layer formed on at least one surface of the porous polymer substrate. The inorganic coating layer includes inorganic particles and a binder resin, which includes a second binder resin comprising an acrylic polymer. The acrylic polymer has an acid value of 1 or less and a glass transition temperature, Tg, of 90°C to 130°C (Abstract). An example of the acrylic polymer is poly(methyl methacrylate) (PMMA) ([0013], [0072]). In examples, the PMMA has a Tg of 110°C (Table 1). Kim further discloses the acrylic polymer is used in an amount of 10 wt % to 50 wt % based on 100 wt % of the binder resin ([0015], [0068]). Electrode adhesion is improved by inclusion of the acrylic polymer and phase separation ([0007], [0023], [0067]-[0068]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include the acrylic polymer taught by Kim to improve the electrode adhesion of the coating layer.
Jeong does not expressly disclose a third binder resin comprising trimethylolpropane triacrylate as a polymerization unit.
Niemöller discloses a separator for an electrochemical cell comprising a porous layer which comprises at least one organic binder and at least one functionalized aluminum oxide hydroxide (Abstract). Niemöller discloses a crosslinking component can be added to the coating dispersion to reduce solubility of the binder in the electrolyte and improve mechanical properties of the separator. An example of a monomer of the crosslinking component includes trimethylolpropane triacrylate (pg. 14). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include trimethylolpropane triacrylate as taught by Niemöller to reduce solubility of the binder in the electrolyte and improve mechanical properties of the separator.
Niemöller discloses the crosslinking component (e.g. trimethylolpropane triacrylate is provided in an amount of 1 wt% to 30 wt% in order to achieve crosslinking (pg. 14). The range would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because the range disclosed by Niemöller overlaps the range as claimed. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Furthermore, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); and MPEP 2144.05.
Regarding claims 9-10, modified Jeong discloses the separator of claim 1. Jeong further discloses a lithium ion secondary battery ([0113]) comprising a cathode, an anode, and the separator interposed between the cathode and the anode ([0031], [0112], [0114]).
Response to Arguments
Applicant argues that “there is much more to the claimed subject matter than an arrangement in which the first, second, and third binder resins are mixed in a parallel manner. Rather, the claimed subject matter is characterized by a binder composition system in which the glass transition temperature (Tg), polarity, and content range of each binder resin are functionally designed as constitutive features.” In response, it the position of the Office that each of these features has been addressed in the rejection above. Jeong is relied upon for the first binder resin, including its Tg and amount; Kim is relied upon for the second binder resin, including its Tg and amount; and Niemöller is relied upon for the third binder resin, including its Tg and amount.
Applicant presents an argument related to the amount of the third binder resin. However, this argument is unsupported by evidence.
Applicant presents an argument related to the amount of the first and third binder resins. However, this argument is unsupported by evidence.
The provisional double patenting rejection is maintained in view of Niemöller.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Scott Carrico whose telephone number is (571)270-5504. The examiner can normally be reached Monday-Friday 9:15AM-6PM ET.
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Robert Scott Carrico
Primary Examiner
Art Unit 1727
/Robert S Carrico/Primary Examiner, Art Unit 1727