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 .
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.
Claims 27-28 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.
Claims 27 and 28 are dependent upon a now canceled claims 23 and 24, respectfully, therefore, claims 27-28 renders the claim indefinite.
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.
Claims 9, 21, and 26-30 are rejected under 35 U.S.C. 103 as being obvious over Teruhisa et al. (JP 11-354093) as evidenced by Griehl, in view of Tsukuda et al. (JP 2012-138235), in view of Wong et al. (US 2017/0346062),
Regarding claims 9, 21, and 27-29, Teruhisa discloses a battery separator base membrane, wherein the separator base membrane comprises a non-woven fabric, wherein a raw material for the non-woven fabric comprises a main fiber and a binder fiber, wherein the binder fiber comprises a first binder fiber of nylon 12 and a second binder fiber comprises of polyolefin [0026]. Teruhisa discloses that the second binder fiber has a melting point of 110ºC [0026] and the first binder fiber, nylon 12, has a melting point of 178-180ºC, as evidence by Griehl. Thereby, Terushisa as evidence by Griehl discloses that the melting point of the second binder fiber is lower than the melting point of the first binder fiber by 20ºC or more. Further, Teruhisa discloses that the main fiber comprises of nylon 6, which has a melting point of 215ºC [0010], which thereby, Teruhisa discloses that the melting point of the main fiber is higher than the melting point of the first binder by more than 20ºC. With regards to the mass amount for the main fiber and second binder fiber, Teruhisan discloses the amounts as claimed (Examples and Table 1).
With regards to the claimed a concave-convex structure is formed on the surface of the non-woven fabric, the examiner deems that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have determined the optimum value of a results effective variable such as the height variations, or waviness, or convex-concave structure, through routine experimentation, especially given the knowledge in the art that surface roughness of a non-woven fabric can impact the overall properties of the non-woven fabric. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re After, 220 F.2d, 454, 456, 105 USPQ 233, 235 CCPA 1955).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of Applicants' invention to modify the surface of the non-woven fabric to have a concave-convex structure or to form any degree of surface roughness of Teruhisa, since the convex-concave structure of a non-woven fabric surface is a known results effective variable in the fiber nonwoven art. Additionally, given that the claim is open to any degree of concave-convex structure, one of ordinary skill in the art would immediately envisage that there is some small degree of surface roughness of the surface of the non-woven fabric microscopically, since the fabric is comprise of fibers (emphasis added).
Teruhisa discloses a non-woven fabric as set forth above, however, fails to disclose the dimension of the binder fiber and the main fiber as presently claimed.
Tsukuda discloses a separator lithium secondary battery, wherein the separator is made of nonwoven fabric containing ultrafine fibers with a length of 0.5-10 mm and diameter of 3-18 µm [0017-0018] and synthetic short fibers having a length of 0.1-10 mm and a diameter of 0.1-12.0 µm [0021-0022].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Teruhisa’s binder fiber and main fiber with the dimension as claimed, since Tsukuda discloses that this will increase the mechanical strength of the separators [0018, 0021-0022].
Furthermore, Teruhisa discloses that the secondary battery separator is used in NiCd secondary battery, not in a lithium battery as presently claimed.
Wong discloses a separator for secondary battery wherein it is known in the art that separator can be used in high operating temperatures such as lithium batteries or nickel-cadmium batteries [0067].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Teruhisa’s secondary battery to be of a lithium battery system, since Wong discloses that it is known in the battery art that separators can be used in variety of battery systems with high operating temperatures [0067]. Additionally, because Wong uses separator in lithium battery and teaches other battery system may be used [0067], and both Teruhisa and Wong teaches that separators must be stable and durable (Teruhisa: [0002-0005],Wong: [0005]), a preponderance of the evidence supports the Examiner’s conclusion that it would have been obvious to have substituted Teruhisa’s NiCd battery system for Wong’s lithium battery with a reasonable expectation of success.
Regarding claim 26, Teruhisa discloses the material as claimed [0018-0019, 0026].
Regarding claim 30, the limitation “preparation process…”, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”, (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113)
Allowable Subject Matter
Claim 25 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Applicant’s evidence, Table 3, will be in commensurate in scope with the claims. Although Teruhisa discloses that the separator comprises of micropores [0003, 0007] and Tsukuda discloses a non-woven fabric with a density of 0.400-0.600 g/cm3 [0028] and a pore size of 3-15 µm [0028-0029], applicant’s evidence demonstrates the combination of the features of the fiber and the non-woven fabric for a lithium battery demonstrates the unexpected result of excellent transverse tensile strength and peel strength.
Response to Arguments
Applicant’s arguments with respect to claim(s) 9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that the effect of the “concave-convex structure” of the nonwoven fabric exhibits substantially higher peel strength. However, the evidence provided is not commensurate in scope with the claims. The provided evidence does not support unexpected results for all the possible combinations of a general non-woven fabric. The instant claims broadly encompass any structural features of a nonwoven fabric, however, the data only use specific structural features, such as density average pore size, and ratio of maximum pore size and average pore size. It is not clear that every non-woven fabric with any ranges of these features would behave the same as the ones employed by Applicant in the instant Examples (Table 3). The examiner contends that the fiber composition alone does not contribute to the unexpected results (Table 2).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785