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
Claims 1-9, and 11-13 are pending.
Claim 1 has been amended.
Claim 10 has been canceled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/28/2026 has been entered.
Status of Rejections Pending since the Office Action of 12 January 2026
All the 103 rejections from the previous Office Action are withdrawn in view of Applicant’s amendment. However, new ground(s) of Rejection has been set forth below as necessitated by Applicant’s amendment.
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.
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.
Claim(s) 1, 2, 3, 5, 7, 8, 9 and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murata et al., U.S. Publication No. 2017/0194612 A1 in view of Shi et al., U.S., Publication No. 2017/0025658 A1.
Regarding claims 1 and 2, Murata teaches a separator disposed between a positive and a negative electrode in batteries [0001], wherein the separator is a multilayer porous membrane comprising a porous membrane and a porous layer (abstract), corresponding to the claimed “inorganic-containing layer”, containing an inorganic filler and a resin binder (abstract), wherein the inorganic filler is inorganic particles [0073] and the resin binder is a polyolefin resin [0082],
Wherein in a cross-section of the inorganic-containing layer, a ratio of an area occupied by the inorganic particles to an area of the entire cross section of the inorganic-containing layer is about 2% to 80% [0074-0077]. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Murata teaches that the porosity of the porous membrane is 50 to 90%, but does not specifically teach a ratio of an area occupied by pores in relation with the inorganic-containing layer. However, Murata teaches that the pores in the porous membrane are adjusted to achieve high ion conductivity and high voltage endurance [0047]. Moreover, Murata teaches that the average pore size and the number of pores can be adjusted by controlling the composition ratio, the rate of cooling an extruded sheet, the stretching temperature, the stretch ratio, the heat setting temperature, the stretch ratio during heat setting, and the relaxation rate during heat setting [0049].
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to optimize the ratio of an area occupied by pores in the inorganic-containing layer to be within the claimed range by adjusting the composition ratio, the rate of cooling an extruded sheet, the stretching temperature, the stretch ratio, the heat setting temperature, the stretch ratio during heat setting, and the relaxation rate during heat setting in order to achieve high ion conductivity and high voltage endurance [0047]. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Additionally, Murata teaches that the separator has a TD heat shrinkage rate at 150 degree Celsius is not less than 0% and not more than 5%, overlapping with the 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Murata teaches a microporous outer layer (porous membrane; [0036]) having a polypropylene resin as a main component [0039], corresponding to the claimed “first microporous layer”, on one surface of the inorganic containing layer (porous layer) [0036].
Murata does not specifically teach that the separator has a three-layer structure laminated in the order of the first microporous layer having a propylene resin as a main component, the inorganic-containing layer, and a second microporous layer having a polypropylene resin as a main component.
However, Shi et al. teaches a reinforced separator for an energy storage device (Fig.38) comprising a top microporous membrane, corresponding to the claimed “first microporous layer”, a bottom microporous membrane, corresponding to the claimed “second microporous layer”, and a ceramic layer, corresponding to the claimed “inorganic-containing layer”, between the top and bottom microporous membranes, wherein said ceramic layer comprising a layer of ceramic particles and a polymer binder [0002]. Shi teaches that the microporous membranes are made of polypropylene [0135] and wherein the ceramic particles of the ceramic layer comprise at least one of inorganic particles [0135]. She teaches this configuration of the reinforced separator improves safety, cycle life, or high temperature performance, an oxidation or reduction reaction interface, surface or boundary, an oxidized or reduced interfacial layer between the separator and battery electrodes during use, prevents or stops further oxidation or reduction reactions from occurring during use, improves safety, cycle life, or high temperature performance of a lithium ion battery, and high dimensional stability at elevated temperatures [0002].
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to add adapt the configuration of the reinforced separator of Shi for multi-layer separator of Murata by adding a second microporous layer to the opposite side of the inorganic containing layer so that the organic containing layer of Murata would be sandwiched between two microporous layers made of polypropylene similar to Fig.38 of Shi, in order to improve safety, cycle life, or high temperature performance, an oxidation or reduction reaction interface, surface or boundary, an oxidized or reduced interfacial layer between the separator and battery electrodes during use, prevent or stop further oxidation or reduction reactions from occurring during use, improve safety, cycle life, or high temperature performance of a lithium ion battery, and high dimensional stability at elevated temperatures as taught by Shi [0002].
Regarding claim 3, Murata teaches an overlapping ratio for the area occupied by inorganic particles (2% to 80% [0074-0077]) and Murata further teaches that the separator has a TD heat shrinkage rate at 150 degree Celsius is not less than 0% and not more than 5%, overlapping with the claimed range of 4% or less. Therefore, Murata should have an overlapping range for the claimed ratio of the TD heat shrinkage rate a with respect to the ratio b of the area occupied by the inorganic particles being -10% or greater and 10% or less. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 5, Murata teaches that the inorganic-containing layer comprises not less than 50% and less than 100% by mass. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding claim 7, Murata teaches the inorganic particles have a particle size of 0.1 µm to 4 µm [0073] overlapping with the claimed range of 100 to 4000 nm. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 8, Murata teaches the inorganic containing layer has a thickness of not less than 1 µm to not more than 50 µm [0092]. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 9, Murata teaches that the porous membrane has an average pore size of 0.035 µm to 0.060 µ overlapping with the claimed range. Murata further teaches that the pore size can be adjusted to achieve high ion conductivity and high voltage endurance [0047]. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 11, Murata teaches the inorganic containing layer has a thickness of not less than 1 µm to not more than 50 µm [0092] and the porous membrane has a thickness of 5 µm to 22 µm [0050]. Therefore, the inorganic containing layer (porous layer) has a thickness that is 1.2% to 65% of an overall thickness (sum of the thickness of the porous layer and the porous membrane) of the separator. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 12, Murata teaches the inorganic containing layer has a thickness of not less than 1 µm to not more than 50 µm [0092] and the porous membrane has a thickness of 5 µm to 22 µm [0050]. Therefore, the overall thickness of the separator is 6 µm to 77 µm. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 13, Murata teaches that the puncture strength of 500 to 1200 gf per 25 µm of the membrane [0052], which overlaps with the claimed range of a puncture strength per 14 µm thickness of the separator to 100 gf or more. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Murata further teaches that the puncture strength can be adjusted by controlling the kind of the polyolefin resin and the composition ratio thereof, the rate of cooling the extruded sheet, the stretching temperature, the stretch ratio, the heat setting temperature, the stretch ratio during heat setting, and the relaxation rate during heat setting, and combination thereof. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murata et al., U.S. Publication No. 2017/0194612 A1 and Shi et al., U.S., Publication No. 2017/0025658 A1 as applied to claim 1 above, and further in view of Sakimoto et al., U.S. Publication No. 2018/0175353 A1.
Regarding claim 4, Murata teaches all the claimed limitations of claim 1 as set forth above, but does not specifically teach a ratio of tensile strength in MD to tensile strength in TD is 1.5 or greater.
However, Sakimoto teaches a separator for batteries comprising a polyolefin micro porous film (abstract) including inorganic fine particles [0065], wherein a ratio of the tensile strength in MD to tensile strength in TD is greater than 1.5 (see table 1). 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the porous separator of Murata to have a ratio of the tensile strength in MD to tensile strength in TD being greater than 1.5 in order to achieve a polyolefin micro porous film which has further improved resistance against a load in a thickness direction and can maintain safety, and which is excellent in balance with the characteristics as a separator film as taught by Sakimoto [0033].
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murata et al., U.S. Publication No. 2017/0194612 A1 and Shi et al., U.S., Publication No. 2017/0025658 A1 as applied to claim 1 above, and further in view of Matsui et al., U.S. Publication No. 2011/0311856 A1.
Regarding claim 6, Murata teaches all the claimed limitations as set forth above, but does not specifically teach that the polyolefin resin has an MFR of 0.2 or greater and 15 or less.
However, Matsui teaches a separator for a power storage device comprising a polyolefin based porous film (abstract), wherein the melt flow rate of the polyolefin based porous film is in the range of 2 to 30 g/10 min. Matsui teaches that if the MFR is out of this range, the processibility will decrease in the stretching step and occasionally making it difficult to produced a biaxial stretched film [0018].
Therefore, it would have been obvious to select the polyolefin based layer of Murata to have a MFR in the range of 2 to 30 g/10 min, because if the MFR is out of this range, the processibility of the layer will decrease in the stretching step and it would be difficult to produce a biaxial stretched film as taught by Matsui [0018].
Response to Arguments
Applicant’s arguments, see Remarks, filed on 05/28/2026, with respect to the rejection(s) of claim(s) 1 under Murata have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made over Murata in view of Shi.
Conclusion
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/NIKI BAKHTIARI/Supervisory Patent Examiner, Art Unit 1722
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