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 currently pending.
Claim 10 has been canceled.
Claim 1 has been amended.
Status of Amendment
The amendment filed on 09/30/20205 has been fully considered, but does not place the Application in condition for allowance.
This Action has been made final.
Status of Objection and Rejections pending from previous Office Action Mailed on 2 June 2025
The drawing objection from the previous office action is withdrawn in view of Applicant’s amendment.
All the 112(b) rejections from the previous office action are withdrawn in view of Applicant’s amendment.
The 103 rejections over Murata are maintained in view of Applicant’s amendment and arguments.
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.
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] on one surface of the inorganic containing layer (porous layer) [0036]. The examiner wishes to point out that each surface of the inorganic containing layer has multiple sides (e.g. left side, right side, front side, back side…), and since the one surface of the inorganic containing layer is coated with the microporous layer, it is considered that the microporous outer layer is at least on two sides of the same surface of the inorganic-containing layer.
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 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 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 filed on 09/30/2025 have been fully considered but they are not persuasive.
Applicant argues that none of the references already on the record disclose or suggest the structural concept of the claimed invention, namely a three-layer sandwich structure in which an inorganic-containing layer is centrally located and polypropylene-based microporous layers are disposed on both sides and pointed out to [0034] of the instant specification describing a three-layer structure of PP microporous layer/inorganic-containing layer/pp microporous layer (See page 6-7 of remarks).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., three-layer sandwich structure in which an inorganic-containing layer is centrally located and polypropylene-based microporous layers are disposed on both sides or a three-layer structure of PP microporous layer/inorganic-containing layer/pp microporous layer ) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Instant claim 1 currently requires “a microporous outer layer having a polypropylene resin as a main component on both sides of the inorganic-containing layer”. The claim does not require a first and a second microporous outer layers having polypropylene resin on opposite surfaces of the inorganic-containing layer and does not require a three-layer structure of PP microporous layer/inorganic-containing layer/pp microporous layer.
As pointed out in the rejection above, Murata teaches a microporous outer layer (porous membrane; [0036]) having a polypropylene resin as a main component [0039] on one surface of the inorganic containing layer (porous layer) [0036]. The examiner wishes to point out that each surface of the inorganic containing layer has multiple sides (e.g. left side, right side, front side, back side…), and since the one surface of the inorganic containing layer is coated with the microporous layer, it is considered that the microporous outer layer is at least on two sides of the same surface of the inorganic-containing layer.
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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/NIKI BAKHTIARI/Supervisory Patent Examiner, Art Unit 1722