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
The amendment filed September 16, 2025 has been entered but does not place the application in condition for allowance. Accordingly, claims 1-4 and 8-12 remain pending in the application. Applicant’s amendment to claim 1 overcomes the 35 U.S.C. § 102(a)(1) rejection over Sano set forth in in the Non-Final Office Action mailed July 1, 2025. Additionally, the amendment to claim 12 overcomes the objection to the original claim. New rejections follow below.
Response to Arguments
Applicant’s arguments with respect to claim 1 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.
Claim Objections
Claim 1 is objected to because of the following informalities: lines 8-9 recite “when the electrical resistance has decrease to a within the range of...” The underlined “a” is not needed. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-4 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Sano et al (JP 2009158266 A) in view of Kajikawa et al (JP2003045500A).
Sano teaches an evaluation method for an insulation layer (12) for a battery ([0026], [0037]), and teaches that the insulation layer can be a separator for a battery ([0033]). Sano additionally provides an apparatus used for the evaluation method (Fig. 1, [0037], [0036]), and teaches it comprises preparing a test piece by placing a separator (12) on a surface of a substrate (10) ([0029]), sticking a needle (4, 4a) as a puncturing tool into the separator (12) ([0040]), from a side of the test piece opposite to where the substrate is placed, in a thickness direction of the separator ([0039], Fig. 2). Sano additionally teaches measuring an electrical resistance with a resistance measuring device (8) between the tip 4a of the puncturing tool and the substrate (10) while the puncturing tool is being stuck onto the separator (Fig. 1, [0041], [0043]). Fig. 5 of Sano teaches detection of a load at the point when the electrical resistance between the needle tip 4a (puncturing tool) and the substrate (10) discontinuously decreases. Additionally, Sano also teaches the substrate (10) comprising of active material-containing layer (14) and the current collector (16) is electrically conductive ([0044], [0032]), and also that the tip portion 4a of the puncturing tool is electrically conductive ([0044]).
Sano does not teach evaluating the separator based on a magnitude of a load applied to the puncturing tool at the time when the electrical resistance has decreased to within the range of 5 MΩ to 100 MΩ.
In the same field of endeavor, Kajikawa teaches a battery screening method for detecting batteries having problems with micro-short circuits between electrodes as the result of metal impurities precipitating as dendrites at the potential of the negative electrode (machine translation [0007]-[0008]), which is relevant to the problem identified by Sano’s invention, as stated in paragraph [0006].
Kajikawa teaches an AC impedance can be measured and used to calculate a resistance R21 ([0020]-[0023]) that is the electrical resistance mainly due to the separator interposed between the positive and negative electrodes and which is greatly affected by micro-short circuits ([0024] lines 1-2). Kajikawa further teaches that the value of R21 is indicative of the presence or absence of a short circuit ([0024] lines 13-14) and any battery whose AC impedance, phase angle or resistance R21 value is outside the predetermined range is deemed to be a defective product and is rejected from the process ([0048]). Both Sano and Kajikawa demonstrate motivation to preemptively address failure modes arising from short circuits associated with inferior separator conditions. Specifically, primary reference Sano is concerned with durability of the insulating layer to prevent short circuits under acute failure ([0010]- [0011]), and Kajikawa is concerned with micro-short circuit vulnerabilities that negatively affect discharge capacity or voltage of batteries being left unused for a long period of time after charging ([0024] lines 6-7), stating in paragraph [0025] that “However, if the resistance is 1 MΩ or less, the discharge capacity will decrease after long-term storage and the battery voltage will drop too much to withstand practical use, so it is preferable that the resistance be 1 MΩ or more, and more preferably 100 MΩ or more.” One of ordinary skill in the art would have been motivated to improve Sano's method to include an additional step of evaluating the separator based on a magnitude of a load applied to the puncturing tool at the time when the electrical resistance has already decreased to below 100 MΩ, given that Kajikawa teaches the practical implications that the discharge capacity will decrease after long-term storage and the battery voltage will drop too much to withstand practical use if R21, or the resistance mainly due to the separator interposed between the positive and negative electrodes, is too low ([0025]). The additional step of the combination corresponds to the claimed step (d), and the taught electrical resistance range overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists; see 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 2, the combination above teaches the evaluation method for a separator for a battery according to claim 1, and Sano further teaches that the speed of the needle (puncturing tool) and the time points during the needle insertion process are known, as are the electrical resistance values corresponding to each time point (speed: [0052], Example of [0058]; time: [0059], Fig. 5). Therefore, Sano’s evaluation method provides the capability to calculate displacement based on the product of the speed of the needle and the elapsed time, and displacement can be correlated to electrical resistance at each time point. For one of ordinary skill in the art, it is a matter of choice as to whether load or displacement is used to evaluate the separator given that both can be correlated to electrical resistance at a given time. Consequently, one of ordinary skill in the art would have found it obvious to perform the evaluation based on amount of displacement of the puncturing tool rather than on magnitude of a load applied to the puncturing tool at a time when the electrical resistance has decreased to a predetermined value. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Regarding Claim 3, the combination above teaches the evaluation method for a separator for a battery according to claim 1 and Sano further teaches the substrate (10) includes an electrode for a battery (Fig. 1; [0056]).
Regarding Claim 4, the combination above teaches the evaluation method for a separator for a battery according to claim 3. Sano further teaches that the test piece can include a multilayer electrode in which insulating layers (separators) (12) and electrodes (10) are each stacked alternately in multiple layers an electrode assembly for a battery ([0051]), thereby reading on the limitation that the substrate includes an electrode assembly for a battery.
Regarding Claim 8, the combination above teaches the evaluation method for a separator for a battery according to claim 1. For the separator to be evaluated, it must have necessarily been produced. Currently, the way the claim is written is so broad that it reads on the limitation that meets step (A1). Therefore, Sano teaches the production method for a separator for a battery.
Regarding Claim 9, the combination above teaches evaluating a separator by the evaluation method for a separator for a battery according to claim 3, wherein the electrode unit is the test piece. Sano provides (Figs. 1-3) the structure of an electrode unit that has a separator (12) on a surface of an electrode (10) for a battery ([0056], [0017]); therefore, the electrode unit would have necessarily been produced. Currently, the way the claim is written is so broad that it reads on the limitation that meets step (B1). Therefore, Sano teaches the production method for an electrode unit.
Regarding Claim 10, the combination above teaches the production method for an electrode unit according to claim 9, and Sano further teaches the separator (12) is laminated to the surface of the electrode (10) for a battery ([0056]), thereby reading on the limitation that the separator is bonded to the surface of the electrode for a battery.
Regarding Claim 11, the combination above teaches the production method for an electrode unit according to claim 9. Sano further teaches that their invention makes it possible to evaluate an electrode with a structure similar to that of an electrode mounted in a battery ([0029]), and discloses that electrodes are assembled into batteries ([0014]); therefore, a battery including the electrode unit made by the production method of claim 9 must be possible. Currently, the way the claim is written is so broad that it reads on the limitation that meets step (C2). Therefore, Sano teaches the production method for an electrode unit.
Regarding Claim 12, the combination above teaches evaluating a separator by the evaluation method for a separator for a battery according to claim 1. Both Sano and Kajikawa further teach that a battery includes a separator which can be damaged and cause a short-circuit issue (Sano: [0006]; Kajikawa: [0009] lines 6-10, [0014] lines 9-11), which necessitates the usefulness of the taught evaluation method ([0010]). Therefore, the battery must have been produced including the separator. Currently, the way the claim is written is so broad that it reads on the limitation that meets step (D2). Consequently, Sano teaches the production method for a battery as claimed.
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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/G.L.L./Examiner, Art Unit 1726
/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 17 October 2025