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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12 February 2026 has been entered.
Status of Claims and Other Notes
Claims 1–6 and 8–13 are pending.
Claims 1–6, 8, 9, 12, and 13 are being treated on their merits.
Claims 10 and 11 are withdrawn from consideration.
Claim 7 is canceled.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The paragraph numbers cited in this Office Action in reference to the instant application are referring to the paragraph numbering of the PG-Pub of the instant application. See US 2023/0170579 A1.
Claim Rejections - 35 USC § 112
Applicants' amendments have overcome the rejections of claim 9 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Claim 13 is 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.
Claim 13 recites the limitation "the low density particles." The term "low" is a relative term which renders the claim indefinite. The term "low" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the limitation "the low density particles" is indefinite.
Claim 13 recites the limitation "the low density particles" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
Claims 1–3, 5, 6, 8, 9, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Lai (CN 106935778 A) in view of Kim et al. (US 2015/0140402 A1, hereinafter Kim).
Regarding claims 1, 2, and 12, Lai discloses a separator for an electrochemical device (100, [0030]), comprising:
a porous separator substrate (1, [0044]); and
a coating layer (2, 3) on at least one surface of the porous separator substrate (1, [0044]),
wherein the coating layer (2, 3) comprises first inorganic particles (see zirconium oxide, [0047]), second inorganic particles (see aluminum nitride, [0048]) and a particulate binder resin (see polyacrylic acid; [0047], [0048]),
wherein a ratio of a density of the particulate binder resin (i.e., 1.2 g/mL; see poly(acrylic acid), Chemical Book) to the density of the first inorganic particles (i.e., 5.68 g/mL; see zirconium oxide, MatWeb) is equal to or more than 0.2 and less than 0.33 (i.e., 1.2/5.68 = 0.21), and
wherein a ratio of the density of the particulate binder resin (i.e., 1.2 g/mL) to the density of the second inorganic particles (i.e., 3.26 g/mL; see aluminum nitride, MatWeb) ranges from 0.33 to 0.5 (i.e., 1.2/3.26 = 0.36),
wherein the coating layer comprises a first layer (2) adjacent to the porous separator substrate (1, [0044]) and a second layer (3) on a surface of the first layer (2, [0044]),
wherein the first layer (2) comprises at least some of the first inorganic particles (see zirconium oxide, [0047]),
wherein the second layer (3) comprises at least some of the second inorganic particles (see aluminum nitride, [0048]), and
wherein the second layer (3) has a larger thickness as compared to the first layer (2, [0044]);
wherein the first layer (2, [0047]) comprises an amount of the first inorganic particles that is higher than an amount of the first inorganic particles present in the second layer (3, [0048]) or the electrode adhesive portion (FIG. 2, [0044]),
wherein the second layer (3, [0048]) comprises an amount of the second inorganic particles that is higher than an amount of the second inorganic particles present in the first layer (2, [0047]) or the electrode adhesive portion (FIG. 2, [0044]).
Lai does not explicitly disclose:
wherein the second inorganic particles comprise at least one selected from the group consisting of aluminum hydroxide (Al(OH)3) and Mg(OH)2;
wherein the coating layer comprises an electrode adhesive portion on a surface of the second layer,
wherein the electrode adhesive portion comprises an amount of the particulate binder resin that is higher than an amount of the particulate binder resin present in the first layer or the second layer; and
wherein the particulate binder resin comprises styrene acrylate.
Kim discloses a separator (10) comprising a coating layer including an electrode adhesive portion (3) comprises an amount of a particulate binder resin that is higher than an amount of a particulate binder resin present in the first layer or the second layer (see styrene-butadiene copolymer, [0102]); second inorganic particles comprise at least one selected from the group consisting of aluminum hydroxide (Al(OH)3) and Mg(OH)2 (see ceramic, [0044]); and wherein the particulate binder resin comprises styrene acrylate (see acrylonitrile-styrene-acrylate copolymer, [0036]) to enhance the adhesion between the separator and the electrode (see patterns, [0038]). Lai and Kim are analogous because they are directed to separators for electrochemical devices. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify the coating layer of Lai as taught by Kim in order to enhance the adhesion between the separator and the electrode.
Regarding claim 3, modified Lai discloses all the claim limitations as set forth above and further discloses a separator for an electrochemical device:
wherein the coating layer (2, 3) has pores from the interstitial volumes formed between the first inorganic particles, the second inorganic particles and the particulate binder resin (FIG. 2, [0048]).
Regarding claim 5, modified Lai discloses all the claim limitations as set forth above and further discloses a separator for an electrochemical device:
the first inorganic particles have a smaller average particle diameter (see 3 μm, [0044]) as compared to the average particle diameter (see 4 μm, [0044]) of the second inorganic particles (FIG. 2, [0044]).
Lai does not explicitly disclose:
wherein the second inorganic particles have an average particle diameter in a range of 500 nm to 1,000 nm, and
the first inorganic particles have an average particle diameter in a range of 300 nm to 700 nm.
Lai discloses wherein the second inorganic particles have an average particle diameter in a range of 500 nm to 5,000 nm (see average particle diameter, [0012]), and the first inorganic particles have an average particle diameter in a range of 200 nm to 5,000 nm (see average particle diameter, [0012]).
Although Lai does not explicitly disclose a range of 500 nm to 1,000 nm, Lai does disclose an overlapping range. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
Although Lai does not explicitly disclose a range of 300 nm to 700 nm, Lai does disclose an overlapping range. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
Regarding claim 6, modified Lai discloses all the claim limitations as set forth above and further discloses a separator for an electrochemical device:
wherein the particulate binder resin comprises an acrylic binder resin (see polyacrylic acid; [0047], [0048]).
Regarding claim 8, modified Lai discloses all the claim limitations as set forth above and further discloses a separator for an electrochemical device:
wherein the first inorganic particles comprise at least one selected from the group consisting of boehmite (AlOOH), alumina (Al2O3) and BaTiO3 (see alumina, [0040]).
Regarding claim 9, modified Lai discloses all the claim limitations as set forth above and further discloses a separator for an electrochemical device:
wherein an amount of the second inorganic particles is 40 wt % to 80 wt % based on 100 wt % of the inorganic particles in the coating layer (FIG. 2; [0044], [0047], [0048]).
Regarding claim 13, modified Lai discloses all the claim limitations as set forth above and further discloses a separator for an electrochemical device:
wherein an amount of the low-density particles is 55 wt% to 80 wt% based on 100 wt% of the inorganic particles in the coating layer (FIG. 2; [0044], [0047], [0048]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lai (CN 106935778 A) in view of Kim (US 2015/0140402 A1) as applied to claim 1 above, and further in view of Sung et al. (WO 2020/096310 A1; see English language equivalent, US 2020/0350546 A1; hereinafter Sung).
Regarding claim 4, modified Lai discloses all the claim limitations as set forth above and further discloses a separator for an electrochemical device:
wherein the particulate binder resin has an average particle diameter of 300 nm to 500 nm.
Sung discloses a separator (100) comprising a coating layer (20, 30) containing a particulate binder resin has an average particle diameter of 300 nm to 500 nm (see average particle diameter, [0118]) to prevent degradation of mechanical properties of the separator (see binder polymer, [0074]). Lai and Sung are analogous because they are directed to separators for electrochemical devices. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to make the particulate binder resin of modified Lai with the average particle diameter as taught by Sung in order to prevent degradation of mechanical properties of the separator.
Response to Arguments
Applicant's arguments filed 12 February 2026 have been fully considered but they are not persuasive.
Applicants argue the applied references do not teach or suggest (1) the coating layer comprises first inorganic particles, second inorganic particles, and a particulate binder resin, (2) a ratio of a density of the particulate binder resin to a density of the first inorganic particles is equal to or more than 0.2 and less than 0.33, (3) a ratio of a density of the particulate binder resin to a density of the second inorganic particles ranges from 0.33 to 0.5, (4) the coating layer comprises a first layer adjacent to the porous separator substrate and a second layer on a surface of the first layer, (5) the first layer comprises at least some of the first inorganic particles, (6) the second layer comprises at least some of the second inorganic particles, and (7) the second layer has a larger thickness as compared to the first layer (P6/¶1). Lai discloses a separator for an electrochemical device (100, [0030]), comprising a porous separator substrate (1, [0044]); and a coating layer (2, 3) on at least one surface of the porous separator substrate (1, [0044]), wherein the coating layer (2, 3) comprises first inorganic particles (see zirconium oxide, [0047]), second inorganic particles (see aluminum nitride, [0048]) and a particulate binder resin (see polyacrylic acid; [0047], [0048]), wherein a ratio of a density of the particulate binder resin (i.e., 1.2 g/mL; see poly(acrylic acid), Chemical Book) to the density of the first inorganic particles (i.e., 5.68 g/mL; see zirconium oxide, MatWeb) is equal to or more than 0.2 and less than 0.33 (i.e., 1.2/5.68 = 0.21), and wherein a ratio of the density of the particulate binder resin (i.e., 1.2 g/mL) to the density of the second inorganic particles (i.e., 3.26 g/mL; see aluminum nitride, MatWeb) ranges from 0.33 to 0.5 (i.e., 1.2/3.26 = 0.36), wherein the coating layer comprises a first layer (2) adjacent to the porous separator substrate (1, [0044]) and a second layer (3) on a surface of the first layer (2, [0044]), wherein the first layer (2) comprises at least some of the first inorganic particles (see zirconium oxide, [0047]), wherein the second layer (3) comprises at least some of the second inorganic particles (see aluminum nitride, [0048]), and wherein the second layer (3) has a larger thickness as compared to the first layer (2, [0044]). Kim discloses a separator (10) comprising a coating layer including an electrode adhesive portion (3) comprises an amount of a particulate binder resin that is higher than an amount of a particulate binder resin present in the first layer or the second layer (see styrene-butadiene copolymer, [0102]); the second inorganic particles comprise at least one selected from the group consisting of aluminum hydroxide (Al(OH)3) and Mg(OH)2 (see ceramic, [0044]); and wherein the particulate binder resin comprises styrene acrylate (see acrylonitrile-styrene-acrylate copolymer, [0036]) to enhance the adhesion between the separator and the electrode (see patterns, [0038]). Therefore, the applied references teach and suggest a separator for an electrochemical device, comprising a porous separator substrate, and a coating layer on at least one surface of the porous separator substrate, (1) the coating layer comprises first inorganic particles, second inorganic particles, and a particulate binder resin, (2) a ratio of a density of the particulate binder resin to a density of the first inorganic particles is equal to or more than 0.2 and less than 0.33, (3) a ratio of a density of the particulate binder resin to a density of the second inorganic particles ranges from 0.33 to 0.5, (4) the coating layer comprises a first layer adjacent to the porous separator substrate and a second layer on a surface of the first layer, (5) the first layer comprises at least some of the first inorganic particles, (6) the second layer comprises at least some of the second inorganic particles, and (7) the second layer has a larger thickness as compared to the first layer, the second inorganic particles comprise at least one selected from the group consisting of aluminum hydroxide (Al(OH)3) and Mg(OH)2.
Applicants argue the thermal conductivity of aluminum hydroxide and magnesium hydroxide are far below the required threshold in Lai (P6/¶3). The thermal conductivity of aluminum hydroxide has not been demonstrated to be 12 to 38.5 W/(m·K). The URL address provided by the applicant is for a webpage disclosing the properties of aluminum oxide/alumina (see Alumina - Aluminium Oxide - Al2O3 - A Refractory Ceramic Oxide [online], [retrieved on 2026-03-05]. Retrieved from the Internet:< URL: https://www.azom.com/properties.aspx?ArticleID=52>). The thermal conductivity of magnesium hydroxide has also not been demonstrated to be 30 to 60 W/(m·K). The URL address provided by the applicant is for a webpage disclosing the properties of magnesium oxide/magnesia (see Magnesia - Magnesium Oxide (MgO) Properties & Applications [online] [retrieved on 2026-03-05]. Retrieved from the Internet:< URL: https://www.azom.com/properties.aspx?ArticleID=54>). It is noted that "the arguments of counsel cannot take the place of evidence in the record", In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding the thermal conductivities of aluminum hydroxide and magnesium hydroxide must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), "the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001." Further, Lai discloses the porous coating layer may include inorganic particles having thermal conductivities less than 80 W/(m·K) (see heat-resistant ceramic particles, [0013]). Therefore, it has not been demonstrated that the thermal conductivity of aluminum hydroxide and magnesium hydroxide are below the required threshold in Lai.
Applicants argue Lai is silent with respect to the claimed ratios (P6/¶4). Lai discloses a first layer (2) including zirconium oxide (e.g., [0047]), which has a density of 5.68 g/mL (see zirconium oxide, MatWeb) and polyacrylic acid (e.g., [0047]), which has a density of 1.2 g/mL (see poly(acrylic acid), Chemical Book). The first layer (2) is adjacent to a porous separator substrate (1, [0044]). Lai also discloses a second layer (3) including aluminum nitride (e.g., [0048]), which has a density of 3.26 g/mL (see aluminum nitride, MatWeb) and polyacrylic acid, which has a density of 1.2 g/mL. The second layer (3) is on a surface of the first layer (2, [0044]). "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A ratio of a density of polyacrylic acid (i.e., particulate binder resin) to the density of zirconium oxide (i.e., the first inorganic particles) is 0.21 (i.e., 1.2/5.68), which is equal to or more than 0.2 and less than 0.33. A ratio of the density of polyacrylic acid (i.e., particulate binder resin) to the density of aluminum nitride (i.e., the second inorganic particles) is 0.36, which ranges from 0.33 to 0.5. Therefore, Lai is not silent with respect to the claimed ratios.
Applicants argue the claimed density ratios are not inherent in Lai and the Office Action does not establish prima facie inherency (P6/¶4). "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Density is a property of a compound. Zirconium oxide has a density of 5.68 g/mL (see zirconium oxide, MatWeb), polyacrylic acid has a density of 1.2 g/mL (see poly(acrylic acid), Chemical Book), and aluminum nitride has a density of 3.26 g/mL (see aluminum nitride, MatWeb). The Office Action provided and cited the documents disclosing the densities of compounds used in Lai. Therefore, the claimed density ratios are inherent in Lai and the Office Action established prima facie inherency.
Applicants argue the comparative evidence in the specification establishes the unexpected results of the claimed density ratios (P6/¶5). Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973). See MPEP § 2131.04. Further, an affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). Applicants may compare the claimed invention with prior art that is more closely related to the invention than the prior art relied upon by the examiner. In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978); Ex parte Humber, 217 USPQ 265 (Bd. App. 1961). In other words, the evidence of unexpected results must be compared with prior art. Emphasis added. See MPEP § 716.02(e). Applicants have not compared the results with Lai, which is the closest prior art. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). See MPEP § 716.02(b). Applicants have provide no analysis or statement that the results are of both statistical and practical significance. As set forth in § MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range of porous separator substrate, first inorganic particles, second inorganic particles, and particulate binder resin. Therefore, the comparative evidence in the specification does not establish unexpected results of the claimed density ratios.
Applicants argue the dependent claims are also allowable at least based on their dependence on an allowable base claim and for the additional features recited therein (P6/¶7). Claim 1 is not allowable as detailed above and the applied references disclose the additional features.
Applicants argue claim 13 is patentable for the additional features it recites (P7/¶1). Lai discloses the features of claim 13 as detailed above.
Applicants request rejoinder of claims 10 and 11 upon an indication that claim 1 is allowable (P7/¶2). Claim 1 is not allowable as detailed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kim (KR 2019-0110249 A) discloses a separator for an electrochemical device, comprising a porous separator substrate; and a coating layer on at least one surface of the porous separator substrate, wherein the coating layer comprises first inorganic particles, second inorganic particles and a particulate binder resin, wherein a ratio of a density of the particulate binder resin to the density of the first inorganic particles is equal to or more than 0.2 and less than 0.33, and wherein a ratio of the density of the particulate binder resin to the density of the second inorganic particles ranges from 0.33 to 0.5, wherein the coating layer comprises a first layer adjacent to the porous separator substrate and a second layer on a surface of the first layer, wherein the first layer comprises at least some of the first inorganic particles, wherein the second layer comprises at least some of the second inorganic particles, the second inorganic particles comprise at least one selected from the group consisting of aluminum hydroxide (Al(OH)3) and Mg(OH)2 (TABLE 1, [0106]–[0109])
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean P Cullen, Ph.D. whose telephone number is (571)270-1251. The examiner can normally be reached Monday to Thursday 6:00 am to 4:00 pm CT, Friday 6:00 am to 12:00 pm CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia A Ridley can be reached at (571)272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Sean P Cullen, Ph.D./Primary Examiner, Art Unit 1725