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 .
Response to Amendment
In response to the amendment received 12/01/2025, the following rejections have been withdrawn from the previous office action:
35 U.S.C. 102 rejections of claims 1, 4, 7, 8, 10, 11, 13, and 14
35 U.S.C. 103 rejections of claims 3, 5, 6, 9, 12, and 16
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3-8, and 10-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Foreign Publication JP2019160707A, hereafter Matsumoto (supplied by applicant, used previously attached machine translation), in view of Published Application US20190237732A1, hereafter Hu.
Regarding claim 1, Matsumoto discloses a separator for an electricity storage device ([0115] separator; [0001] for battery), comprising:
a layer (A) ([0111] porous resin sheet) comprising a polyolefin ([0115] porous resin sheet is polyolefin microporous membrane); and
a layer (B) ([0111] porous layer) disposed on at least one surface of the layer (A) ([0111] porous layer integrated with porous resin sheet) and comprising an inorganic filler ([0075] inorganic fine particles), a water-insoluble binder ([0066] water-insoluble resin binder), and a water-soluble binder ([0066] water soluble resin (A)),
wherein a heat shrinkage rate S1 of the separator for the electricity storage device at 140°C in propylene carbonate is 5% or less ([0119] heat shrinkage of 5% or less at 150°C measured in solvent; [0148] solvent may be propylene carbonate; the examiner notes that if the heat shrinkage at 150°C is 5% or less, then it will necessarily also be 5% or less at 140°C, since heat shrinkage increases with increasing temperature).
Matsumoto further discloses the inclusion of a dispersant ([0070] coating solution may also contain other water-soluble resins in combination with water-soluble resins (A) and (B) as dispersants).
Matsumoto is silent on wherein layer (B) comprises a polyacrylic acid-based dispersant, wherein the polyacrylic acid-based dispersant comprises a neutralized monovalent metal ion salt of polyacrylic acid having a weight average molecular weight of 500 or more and 10,000 or less.
In the analogous art of battery separator materials, Hu discloses wherein layer (B) comprises a polyacrylic acid-based dispersant ([0092] alkali neutralized polyacrylic acid dispersant), wherein the polyacrylic acid-based dispersant comprises a neutralized monovalent metal ion salt of polyacrylic acid ([0092] alkali neutralized polyacrylic acid dispersant) having a weight average molecular weight of 1000 or more and 100,000 or less ([0092] weight average molecular weight of dispersant is 1000-100000), which overlaps with the claimed range of 500 or more and 10,000 or less (see MPEP 2144.05 (I)).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to modify the invention of Matsumoto to use an alkali neutralized polyacrylic acid dispersant as disclosed by Hu as a selection of a material based on its suitability for the intended purpose (see MPEP 2144.07), that purpose being as a dispersant.
Regarding claim 3, Matsumoto discloses wherein the separator has a puncture strength of 50 g or more ([0122] strength of 50 g or more, converting to gf = 50 x 9.80665 x 1/1000= 0.4903325 x 101.97162 = 49.9999994 gf or more). Matsumoto further discloses that if the piercing strength is too small, generated lithium dendrite crystals may pierce the separator and a short circuit will occur ([0122]).
Matsumoto is silent on wherein a basis weight-equivalent puncture strength, of the layer (A) is 40 gf/(g/m2) or more.
The examiner further notes that basis weight-equivalent puncture strength, while not precisely the same property as puncture strength, is a species of the property puncture strength, and as such, one skilled in the art would have understood Matsumoto’s disclosure of piercing strength being too small increasing the risk of lithium dendrite crystals piercing the separator leading to a short circuit also applies to the case where the basis weight-equivalent puncture strength is too small.
As the risk of short circuit due to piercing of the separator is/are variable(s) that can be modified, among others, by adjusting the basis weight-equivalent puncture strength of the layer (A), with the risk of short circuit increasing as the basis weight-equivalent puncture strength of the layer (A) is decreased, the basis weight-equivalent puncture strength of the layer (A) would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the present invention. As such, without showing unexpected results, the claimed basis weight-equivalent puncture strength of the layer (A) cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the present invention, would have optimized, by routine experimentation, the basis weight-equivalent puncture strength of the layer (A) in the invention of Matsumoto to obtain the desired reduced risk of short circuit due to piercing of the separator (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 4, Matsumoto discloses wherein a heat shrinkage rate S2 of the separator for the electricity storage device at 150°C in air is 5% or less (this is inherent, since [0057] of the present specification states the heat shrinkage rate S2 tends to be within the range by use of the water-insoluble binder, a water-soluble binder, and a polyacrylic acid-based dispersant in combination as the layer (B), which is met by Matsumoto as stated above for claim 1, and further [0057] of the present specification states the heat shrinkage rate S2 tends to be a further smaller value by adjusting the volume average particle diameter D50 of the inorganic filler to be within the preferable range, where the preferable range is disclosed in [0038] to be 0.10 µm – 0.70 µm, and Matsumoto discloses in [0083] an average particle size of 0.1 – 1 µm. See MPEP 2112).
Regarding claim 5, Matsumoto discloses wherein heat shrinkage rate S1 is 5% or less as stated above for claim 1 ([0119]), which overlaps with the claimed range of 2.5% 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 (MPEP 2144.05 (I)).
Regarding claim 6, Matsumoto discloses wherein a thickness T of the separator for the electricity storage device is 3 µm or more and 30 µm or less ([0117]), which overlaps with the claimed range of 3 µm or more and 16 µm 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 (MPEP 2144.05 (I)).
Regarding claim 7, Matsumoto discloses wherein a ratio of a thickness of the layer (B) TB to the thickness T, TB/T, is from 0.1 to 0.3 ([0159] PE microporous membrane 16 µm, total thickness 20 µm, thus, porous layer is 4 µm, with 4/20 = 0.2).
Regarding claim 8, Matsumoto discloses wherein a puncture strength of the separator for the electricity storage device is 50 gf or more ([0122] strength of 50 g or more, converting to gf = 50 x 9.80665 x 1/1000= 0.4903325 x 101.97162 = 49.9999994 gf or more), which overlaps with the claimed range of 200 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 (MPEP 2144.05 (I)).
Regarding claim 10, Matsumoto further discloses the use of multiple dispersants ([0070]).
Hu discloses wherein the polyacrylic acid-based dispersant further comprises a copolymer of the neutralized monovalent metal ion salt of acrylic acid and acrylic acid ([0092] acrylic acid-acrylate copolymer).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to further modify the invention of Matsumoto to select a copolymer of the alkali neutralized polyacrylic acid dispersant as disclosed by Hu as a selection of a material based on its suitability for the intended purpose (see MPEP 2144.07), that purpose being as a dispersant.
Regarding claim 11, Matsumoto discloses wherein the water-soluble binder comprises a cellulose ether ([0044] carboxymethyl cellulose).
Regarding claim 12, Matsumoto discloses wherein the inorganic filler has a D50 particle diameter of 0.1 µm or more and 1 µm or less ([0083]), which overlaps with the claimed range of 0.1 µm or more and 0.7 µm 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 (MPEP 2144.05 (I)).
Regarding claim 13, Matsumoto discloses wherein an air permeability of the separator for the electricity storage device is from 50 to 500 seconds/100 cc ([0123] 10 to 300 seconds / 100 ml).
Regarding claim 14, Matsumoto discloses wherein an air permeability of the layer (A) 30 to 450 seconds/100 cc ([0123] 10 to 300 seconds / 100 ml for the separator; [0124] Gs ≤ max {Ga, Gb} + 10; [0125] Gb = Gs – Ga; Gs of 300 would give 300 ≤ max {Ga, Gb} + 10, then 290 ≤ max {Ga, Gb}. Thus, either of Ga or Gb may be 290, with the other being 10, since Gb = 300 – 290 = 10 or Gb = 300 – 10 = 290, and the air permeability of Ga may therefore be 290, which lies within the range of 30 to 450, as claimed).
Claim(s) 9, 16, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Foreign Publication JP2019160707A, hereafter Matsumoto (supplied by applicant, used previously attached machine translation), in view of Published Application US20190237732A1, hereafter Hu, as stated above for claim 1, and further in view of Published Application US20170162846A1, hereafter Ogata.
Regarding claim 9, Matsumoto discloses corona discharge treatment of one side of the polyolefin layer, where the layer (B) is to be coated ([0159]).
Matsumoto is silent on wherein an absorption peak ratio at 1734 cm-1/2918 cm-1, which is obtained by measuring the surface of the layer (A) on the layer (B) side with ATR-IR, is from 0.025 to 0.125.
In the analogous art of coated battery separators, Ogata discloses a corona discharge treatment at an intensity of 20 W/(m2/min) on the surface of the layer to be coated ([0106]), which lies inside the range stated by applicant to result in the claimed absorption peak ratio range. Ogata further discloses that the corona treatment is advantageous in that a porous membrane can be hydrophilized in a relatively short time, and reforming by corona discharge is limited to the surface and the vicinity of the porous membrane, so that high coating properties can be ensured without causing change in the properties of the interior of the porous membrane ([0085]).
In the present specification, applicant discloses in [0081] that the claimed absorption peak ratio represents the degree of hydrophilization imparted to the polyolefin layer by the corona discharge treatment, and is adjusted by the corona discharge treatment intensity, with an intensity range of preferably 1 W/(m2/min) to 50 W/(m2/min).
As the surface hydrophilization of the layer (A) is/are variable(s) that can be modified, among others, by adjusting the corona discharge treatment intensity, the corona discharge treatment intensity would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the present invention. As such, without showing unexpected results, the claimed absorption peak ratio, which is a function of the corona discharge treatment intensity and the polyolefin surface material, cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the present invention, would have optimized, by routine experimentation, the corona discharge treatment intensity in the invention of Matsumoto to an appropriate level, such as 20 W/(m2/min) as disclosed by Ogata, to obtain the desired surface hydrophilization for coating with the second layer (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
The examiner notes that since the polyolefin substrate is disclosed by Matsumoto ([0115]), and modified Matsumoto discloses 20 W/(m2/min) corona discharge intensity, which is within the range disclosed by applicant to effect the measured absorption peak ratio at 1734 cm-1/2918 cm-1 to be within the range of 0.025 to 0.125, this limitation is inherently met as the natural result of the modification of Matsumoto. "[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." MPEP 2112 (IV)
Regarding claim 16, Matsumoto discloses wherein:
a thickness T of the separator for the electricity storage device is 3 µm or more and 30 µm or less ([0117], which overlaps with the claimed range of 3 µm or more and 16 µm 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 (MPEP 2144.05 (I)));
a ratio of a thickness of the layer (B) TB to the thickness T, TB/T, is from 0.1 to 0.3 ([0104] porous layer thickness of 0.5 – 10 µm, [0117] total separator thickness of 3 – 30 µm; 0.5/3 = 0.167);
a puncture strength of the separator for the electricity storage device is 200 gf or more ([0122] strength of 50 g, converting to gf = 50 x 9.80665 = 490.3325);
the water-soluble binder comprises a cellulose ether ([0044] carboxymethyl cellulose);
the inorganic filler has a D50 particle diameter of 0.1 µm or more and 1 µm or less ([0083], which overlaps with the claimed range of 0.1 µm or more and 0.7 µm 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 (MPEP 2144.05 (I)));
an air permeability of the separator for the electricity storage device is from 50 to 500 seconds/100 cc ([0123] 10 to 300 seconds / 100 ml); and
an air permeability of the layer (A) 30 to 450 seconds/100 cc ([0123] 10 to 300 seconds / 100 ml for the separator; [0124] Gs ≤ max {Ga, Gb} + 10; [0125] Gb = Gs – Ga; Gs of 300 would give 300 ≤ max {Ga, Gb} + 10, then 290 ≤ max {Ga, Gb}. Thus, either of Ga or Gb may be 290, with the other being 10, since Gb = 300 – 290 = 10 or Gb = 300 – 10 = 290, and the air permeability of Ga may therefore be 290, which lies within the range of 30 to 450, as claimed).
Matsumoto further discloses wherein the separator has a puncture strength of 50 g or more ([0122] strength of 50 g or more, converting to gf = 50 x 9.80665 x 1/1000= 0.4903325 x 101.97162 = 49.9999994 gf or more). Matsumoto further discloses that if the piercing strength is too small, generated lithium dendrite crystals may pierce the separator and a short circuit will occur ([0122]).
Matsumoto is silent on wherein a basis weight-equivalent puncture strength, of the layer (A) is 40 gf/(g/m2) or more.
The examiner further notes that basis weight-equivalent puncture strength, while not precisely the same property as puncture strength, is a species of the property puncture strength, and as such, one skilled in the art would have understood Matsumoto’s disclosure of piercing strength being too small increasing the risk of lithium dendrite crystals piercing the separator leading to a short circuit also applies to the case where the basis weight-equivalent puncture strength is too small.
As the risk of short circuit due to piercing of the separator is/are variable(s) that can be modified, among others, by adjusting the basis weight-equivalent puncture strength of the layer (A), with the risk of short circuit increasing as the basis weight-equivalent puncture strength of the layer (A) is decreased, the basis weight-equivalent puncture strength of the layer (A) would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the present invention. As such, without showing unexpected results, the claimed basis weight-equivalent puncture strength of the layer (A) cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the present invention, would have optimized, by routine experimentation, the basis weight-equivalent puncture strength of the layer (A) in the invention of Matsumoto to obtain the desired reduced risk of short circuit due to piercing of the separator (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Matsumoto further discloses corona discharge treatment of one side of the polyolefin layer, where the layer (B) is to be coated ([0159]).
Matsumoto is silent on wherein an absorption peak ratio at 1734 cm-1/2918 cm-1, which is obtained by measuring the surface of the layer (A) on the layer (B) side with ATR-IR, is from 0.025 to 0.125.
In the present specification, applicant discloses in [0081] that the claimed absorption peak ratio is adjusted by the corona discharge treatment intensity, with an intensity range of preferably 1 W/(m2/min) to 50 W/(m2/min).
In the analogous art of coated battery separators, Otsuka discloses a corona discharge treatment at an intensity of 20 W/(m2/min) on the surface of the layer to be coated ([0164]), which lies inside the range stated by applicant to result in the claimed absorption peak ratio.
As the surface energy of the layer (A) is/are variable(s) that can be modified, among others, by adjusting the corona discharge treatment intensity, the corona discharge treatment intensity would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the present invention. As such, without showing unexpected results, the claimed absorption peak ratio, which is a result of the corona discharge treatment intensity, cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the present invention, would have optimized, by routine experimentation, the corona discharge treatment intensity in the invention of Matsumoto to a an appropriate level such as 20 W/(m2/min) as disclosed by Otsuka to obtain the desired surface energy for coating with the second layer (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 21, Matsumoto further discloses the use of multiple dispersants ([0070]).
Hu discloses wherein the polyacrylic acid-based dispersant further comprises a copolymer of the neutralized monovalent metal ion salt of acrylic acid and acrylic acid ([0092] acrylic acid-acrylate copolymer).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to further modify the invention of Matsumoto to select a copolymer of the alkali neutralized polyacrylic acid dispersant as disclosed by Hu as a selection of a material based on its suitability for the intended purpose (see MPEP 2144.07), that purpose being as a dispersant.
Claim(s) 2 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Foreign Publication JP2019160707A, hereafter Matsumoto (supplied by applicant, used previously attached machine translation), in view of Published Application US20220320516A1 (supplied by applicant), hereafter Asai.
Regarding claim 2, Matsumoto discloses a separator for an electricity storage device ([0115] separator; [0001] for battery), comprising:
a layer (A) ([0111] porous resin sheet) comprising a polyolefin ([0115] porous resin sheet is polyolefin microporous membrane); and
a layer (B) ([0111] porous layer) disposed on at least one surface of the layer (A) ([0111] porous layer integrated with porous resin sheet) and comprising an inorganic filler ([0075] inorganic fine particles), a water-insoluble binder ([0066] water-insoluble resin binder), a water-soluble binder ([0066] water soluble resin (A)), and a polyacrylic acid-based dispersant ([0059] partially neutralized alkali polyacrylic acid),
the polyacrylic acid-based dispersant comprises a neutralized monovalent metal ion salt of polyacrylic acid ([0059] partially neutralized alkali polyacrylic acid); and
the water-soluble binder comprises a cellulose ether ([0044] carboxymethyl cellulose).
Matsumoto further discloses the importance of a high adhesiveness of the porous layer to provide sufficient heat resistance ([0010]).
Matsumoto is silent on wherein an interfacial peel strength H between the layer (A) and the layer (B) in propylene carbonate is 3 N/m or more.
In the analogous art of laminated battery separators, Asai discloses an interfacial peel strength H between the layer (A) and the layer (B) in propylene carbonate is 3 N/m or more ([0201] peel strength of 60 N/m or more for 'A'; Table 1, example 1, close adherence: 'A'; [0171] propylene carbonate electrolyte).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to modify the invention of Matsumoto to select a peel strength of 60 N/m or more as disclosed by Asai ([0201]) in order to maintain sufficient heat resistance as suggested by Matsumoto ([0010]).
Regarding claim 17, Matsumoto discloses wherein the separator has a puncture strength of 50 g or more ([0122] strength of 50 g or more, converting to gf = 50 x 9.80665 x 1/1000= 0.4903325 x 101.97162 = 49.9999994 gf or more). Matsumoto further discloses that if the piercing strength is too small, generated lithium dendrite crystals may pierce the separator and a short circuit will occur ([0122]).
The examiner further notes that basis weight-equivalent puncture strength, while not precisely the same property as puncture strength, is a species of the property puncture strength, and as such, one skilled in the art would have understood Matsumoto’s disclosure of piercing strength being too small increasing the risk of lithium dendrite crystals piercing the separator leading to a short circuit also applies to the case where the basis weight-equivalent puncture strength is too small.
Matsumoto is silent on wherein a basis weight-equivalent puncture strength, of the layer (A) is 40 gf/(g/m2) or more.
As the risk of short circuit due to piercing of the separator is/are variable(s) that can be modified, among others, by adjusting the basis weight-equivalent puncture strength of the layer (A), with the risk of short circuit increasing as the basis weight-equivalent puncture strength of the layer (A) is decreased, the basis weight-equivalent puncture strength of the layer (A) would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the present invention. As such, without showing unexpected results, the claimed basis weight-equivalent puncture strength of the layer (A) cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the present invention, would have optimized, by routine experimentation, the basis weight-equivalent puncture strength of the layer (A) in the invention of Matsumoto to obtain the desired reduced risk of short circuit due to piercing of the separator (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 18, Matsumoto discloses wherein a thickness T of the separator for the electricity storage device is 3 µm or more and 30 µm or less ([0117]), which overlaps with the claimed range of 3 µm or more and 16 µm 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 (MPEP 2144.05 (I)).
Regarding claim 19, Matsumoto discloses wherein a ratio of a thickness of the layer (B) TB to the thickness T, TB/T, is from 0.1 to 0.3 ([0159] PE microporous membrane 16 µm, total thickness 20 µm, thus, porous layer is 4 µm, with 4/20 = 0.2).
Regarding claim 20, Matsumoto discloses wherein a puncture strength of the separator for the electricity storage device is 200 gf or more ([0122] strength of 50 g or more, converting to gf = 50 x 9.80665 x 1/1000= 0.4903325 x 101.97162 = 49.9999994 gf or more). See MPEP 2131.03.
Response to Arguments
Applicant's arguments filed 12/01/2025 have been fully considered but they are not persuasive.
In response to applicant’s argument regarding claim 1 on pages 9-10 of applicant’s remarks, these arguments are rendered moot in view of the new 35 U.S.C. 103 rejection of claim 1.
In response to applicant’s argument regarding claim 1 on page 10 of applicant’s remarks that “partially neutralized” as disclosed by Matsumoto does not meet the claimed “neutralized” limitation, and that since “partially” is not used in the current application, one skilled in the art would understand the current application to mean “completely neutralized”, the examiner disagrees. The present specification does not mention “partially neutralized”, however it also makes no mention of “completely neutralized”, and since neutralization would have been known to one of ordinary skill in the art to be partial or complete, it necessarily follows that one of ordinary skill would understand ‘partially neutralized’ to be somewhat neutralized, thus meeting the claim according to the broadest reasonable interpretation of “neutralized”.
In response to applicant’s argument regarding claim 1 on pages 10-11 of applicant’s remarks that Matsumoto teaches away from the use of a completely neutralized monovalent metal ion salt of polyacrylic acid to avoid water absorption, the examiner disagrees. Matsumoto states in [0060] that it is preferred to use partially neutralized polyacrylic acid for the reason of avoiding water absorption, but also states that a porous layer containing a certain amount of completely neutralized polyacrylic acid may have a high water content, but does not state the amount or how unworkable “high water content” would render the invention of Matsumoto. Furthermore, [0063] of Matsumoto specifically is discussing this teaching when using the neutralized polyacrylic acid as a thickener, not necessarily as a dispersant. Thus, Matsumoto does not specifically discourage the use of a completely neutralized polyacrylic acid as a dispersant.
In response to applicant’s argument regarding claim 1 on page 11 of applicant’s remarks that even if one modified Matsumoto to result in using a neutralized monovalent metal ion salt of polyacrylic acid as now presented in amended independent claim 1, such a modification would render Matsumoto unsuitable for its intended purpose due to water adsorption, the examiner disagrees. As stated above, Matsumoto states in [0060] that a porous layer containing a certain amount of completely neutralized polyacrylic acid may have a high water content, but does not state the amount or how unworkable “high water content” would render the invention of Matsumoto, and is further referencing the use of the compound as a thickener, and not necessarily as a dispersant.
In response to applicant’s argument regarding claim 3 on pages 12-13 of applicant’s remarks that even given the correction to 49.996 gf (the examiner expresses gratitude and notes this has been fixed in the present action), the disclosure of Matsumoto does not address basis weight, and further that the result-effective variable of basis weight-equivalent puncture strength asserted in the rejection is not recognized in the prior art, the examiner notes, as stated above in the rejection, that basis weight-equivalent puncture strength, while not precisely the same property as puncture strength, is a species of the property puncture strength, and as such, one skilled in the art would have understood Matsumoto’s disclosure of piercing strength being too small increasing the risk of lithium dendrite crystals piercing the separator leading to a short circuit also necessarily applies to the case where the basis weight-equivalent puncture strength is too small.
In response to applicant’s argument regarding claim 2 on pages 14-15 of applicant’s remarks that the “dry-state measurement” of interfacial peel strength of Asai is not “in propylene carbonate”, and thus does not meet claim 2, and additionally Asai does not disclose a corona discharge treatment and as such would still likely be smaller “in propylene carbonate” for Asai’s disclosed system, the examiner notes first that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The rejection did not apply Asai as a primary reference to be modified, but applied Asai for the teaching of the high peel strength of the separator layers in consideration of the use of a propylene carbonate solvent. That being said, when the invention of Matsumoto, which does disclose such a corona discharge treatment ([0159]), is modified by Asai, which touts high peel strength and close adherence of the heat resistant layer and substrate ([0201-0202]) while also disclosing the use of the propylene carbonate solvent ([0171]), as stated in the rejection, and thus the implication that the peel strength is suitable for use in such a solvent, the result of this modification appears to meet the required 3 N/m or more interfacial peel strength based on a preponderance of evidence.
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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/T.G.H./Examiner, Art Unit 1754
/SUSAN D LEONG/Supervisory Patent Examiner, Art Unit 1754