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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/25/2026 has been entered.
Claim Status
Claims 1 and 20 are amended.
Claim 3 is cancelled.
Claims 1-2, 4-21 are considered on the merits.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/1/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-21 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.
Additionally, applicant’s arguments that the combination of 'inorganic particles + one-dimensional inorganic material + defoamer' provides unexpected and significant synergistic effects in terms of delta Gurley permeability, adhesive force, and battery properties is not commensurate in scope with the claims. Examples 1-2 and Comparative Examples 1-4 are directed towards a very narrow range of compositions. Specifically, Example 1 having a composition including 93 wt% inorganic particles + 7 wt% one-dimensional inorganic material + 200 ppm defoamer (PGPUB [0137]-[0140]) is the only example provided that corresponds to the claimed composition. Claim 1 is directed towards a much larger range of compositions namely “wherein the inorganic composite layer comprises 60 to 99 wt% of the inorganic particles based on a total weight of the inorganic composite layer, wherein the inorganic composite layer comprises 1 to 50 parts by weight of the one-dimensional inorganic material with respect to 100 parts by weight of the inorganic particles” (emphasis added). Further, Claim 1 does not specify a defoamer content.
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 9, 11 and 21 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.
Claim 9 contains the limitation “two or more selected from boehmite, Al2O3, TiO2, CeO2, MgO, NiO, Y2O3, CaO, SrTiO3, SnO2, ZnO, and ZrO2”. The group is made up of only metal oxide compounds (emphasis added) however claim 9 depends from claim 8 which requires “the inorganic particles comprise a mixture of two or more selected from a metal oxide, a metal nitride, a metal carbide, a metal carbonate, a metal hydrate, and a metal carbonitride.” Therefore it is unclear if claim 9 is requiring that the inorganic composite particles contain two of the categories of compounds claimed in claim 8 and in addition also contain two or more of the compounds from the alternates presented in claim 9 (for example Al2O3, TiO2, and a metal nitride) or if claim 9 is requiring the inorganic particles comprise a mixture of two or more metal oxides selected from boehmite, Al2O3, TiO2, CeO2, MgO, NiO, Y2O3, CaO, SrTiO3, SnO2, ZnO, and ZrO2 and do not require an additional component such as a metal nitride, a metal carbide, a metal carbonate, a metal hydrate, and a metal carbonitride. Appropriate correction is required.
Claim 11 contains the limitation “wherein the slurry composition further contains organic particles in an amount of 0.1 to 40 parts by weight with respect to 100 parts by weight of the inorganic particles.” Claim 11 depends from claim 1 which requires that the inorganic composite layer does not contain any organic binder. The organic particles claimed in claim 11 constitute a broad category that encompasses organic binder which are explicitly excluded from claim 1. Appropriate correction is required.
Claim 21 contains the limitation “wherein the polyethylene of the porous substrate comprises one or more selected from high-density polyethylene, low-density polyethylene, linear low-density polyethylene, ultra-high molecular weight polyethylene, polypropylene, and copolymers thereof.” It is unclear how a polyethylene porous substrate can comprise polypropylene. 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.
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, 4-11, 14-15, 17-19, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Hatayama (US 20210273295 A1) in view of Yushin et al. (US 20190198837 A1) and Wood et al. (WO 2019169410 A1).
Regarding claim 1, Hatayama teaches composite separator comprising: (a) a porous substrate; and (b) an inorganic composite layer that is formed on one or both surfaces of the porous substrate ([0053]-[0057]; [0065]) and is formed using a slurry composition containing inorganic particles, and a defoamer ([0065]; [0102] defoaming agent; [0083]), wherein the inorganic composite layer comprises 60 to 100 wt% of the inorganic particles based on a total weight of the inorganic composite layer ([0065]), and wherein the inorganic composite layer does not contain any organic binder ([0023]; [0099]; [0070]).
Hatayama does not teach one-dimensional inorganic particles.
However, Yushin teaches a composite separator ([0033]-[0034]; [0055]; [0064]; abstract) wherein a ceramic layer contains small inorganic fibers, such as small (nano)wires, whiskers, (nano)fibers, or (nano)ribbons (0029]; [0019]) used in combination with large inorganic flakes ([0030]; [0055]) in order to improve membrane properties or manufacturability ([0019]-[0022]; [0059]; [0044]). Yushin teaches that small ceramic fibers provide advantages including higher strength, higher toughness, higher flexibility, increased surface smoothness, smaller pore size, and smaller membrane thickness ([0053]). Yushin teaches that small fibers bonded to large fibers or flakes allows enhanced mechanical stability ([0059]). The small inorganic fibers taught by Yushin meet the limitation of “one-dimensional inorganic material” in light of the instant specification which defines ”one-dimensional inorganic material” as an inorganic nanowire, nanofiber or combination thereof (PGPUB [0016]-[0017]).
It would have been obvious to one of ordinary skill in the art to modify the composite separator taught by Hatayama to include on-dimensional inorganic particles as taught by Yushin.
One of ordinary skill in the art would be motivated to modify the composite separator taught by Hatayama to include on-dimensional inorganic particles as taught by Yushin to improve membrane properties such as enhanced mechanical stability and smaller thickness and improve manufacturability ([0059]; [0053]).
Hatayama in view of Yushin does not teach wherein the inorganic composite layer comprises 1 to 50 parts by weight of the one-dimensional inorganic material with respect to 100 parts by weight of the inorganic particles.
However, Wood teaches a composite separator comprising a porous substrate and an inorganic composite layer, wherein the inorganic composite layer comprises inorganic material microparticles and inorganic nanoparticles, wherein the nanoparticles are used in an amount sufficient for achieving good adhesion to a microporous polymer web ([0016]-[0017]; [0044]), wherein the inorganic composite layer comprises 50 to 80 wt% of the inorganic particles ([0017]; [0029]; [0047]) and 20-50 wt% inorganic nanoparticles based on a total weight of the inorganic material ([0047]-[0050]; [0020]; [0023]-[0025]; [0029]; [0044]; [0055). The range taught by Wood overlaps with the claimed ranges.1 Wood teaching tailoring a ratio of microparticles to nanoparticles to achieve sufficient adhesion to a microporous polymer web, minimize moisture content of the porous layer, and maintain sufficient porosity of the porous layer containing inorganic material ([0029]). 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) (see MPEP §2144.05)
It would have been obvious to one of ordinary skill in the art to modify the composite membrane taught by Hatayama in view of Yushin by using a ratio of inorganic nanoparticles to inorganic microparticles within the range taught by Wood.
One of ordinary skill in the art would be motivated to modify the composite membrane taught by Hatayama in view of Yushin by using a ratio of inorganic nanoparticles to inorganic microparticles within the range taught by Wood to achieve sufficient adhesion to a microporous polymer web, minimize moisture content of the porous layer, and maintain sufficient porosity of the porous layer containing inorganic material ([0029]).
Regarding claim 2, modified Hatayama teaches the composite separator of claim 1.
Hatayama does not teach wherein the inorganic composite layer has pores formed by connecting and fixing inorganic particles and one-dimensional inorganic material to each other.
However, both Yushin and Wood teach wherein the inorganic composite layer has pores formed by connecting and fixing inorganic particles and one-dimensional inorganic material to each other (Yushin [0058]-[0059] “small fibers (or small flakes) are bonded to large fibers (or large flakes”; Wood [0024]).
Therefore, absent specific claimed features which result in the pores formed by connecting and fixing inorganic particles and one-dimensional inorganic material to each other, one of ordinary skill in the art would reasonably expect the inorganic composite separator layer taught by modified Hatayama to possess said pore structure.
Regarding claim 4, modified Hatayama teaches the composite separator of claim 1. Modified Hatayama further teaches wherein the one- dimensional inorganic material is an inorganic nanowire, an inorganic nanofiber, or a combination thereof (Yushin [0019]-[0020]).
Regarding claim 5, modified Hatayama teaches the composite separator of claim 1. Modified Hatayama further teaches wherein the one- dimensional inorganic material has an average diameter between about 5-8 nm with an average aspect ratio of around 1,000 (Yushin [0029]; [0097]). The values taught by Yushin are completely encompassed by the claimed range.
Regarding claim 6, modified Hatayama teaches the composite separator of claim 1. Modified Hatayama further teaches wherein the one- dimensional inorganic material comprises one or a mixture of two or more selected from a metal, a metal oxide, a metal nitride, a metal carbide, a metal hydrate (Yushin [0019]-[0022]; [0053]).
Regarding claim 7, modified Hatayama teaches the composite separator of claim 1. Modified Hatayama further teaches wherein the one- dimensional inorganic material comprises aluminum oxide, magnesium oxide, and/or zirconium oxide (Yushin [0053]).
Regarding claims 8-9, modified Hatayama teaches the composite separator of claim 1. Hatayama further teaches wherein the inorganic particle includes, for example, oxide-based ceramics such as alumina, silica, titania, zirconia, magnesia, ceria, yttria, zinc oxide and iron oxide; nitride-based ceramics such as silicon nitride, titanium nitride and boron nitride; ceramics such as silicon carbide, calcium carbonate, magnesium sulfate, aluminum sulfate, barium sulfate, aluminum hydroxide, aluminum hydroxide oxide, potassium titanate, talc, kaolinite, dickite, nacrite, halloysite, pyrophyllite, montmorillonite, sericite, mica, amesite, bentonite, asbestos, zeolite, calcium silicate, magnesium silicate, diatomaceous earth and quartz sand; and glass fibers alone or in a plurality ([0069]).
Regarding claim 10, modified Hatayama teaches the composite separator of claim 1. Hatayama further teaches wherein a primary particle diameter of the inorganic particle is 3 μm or less ([0066]).
Regarding claim 11, modified Hatayama teaches the composite separator of claim 1. Hatayama further teaches wherein the slurry composition further contains organic particles ([0052]). Hatayama teaches wherein the organic particles are a polyolefin ([0052]).
Hatayama is silent as to the amount of organic particles used.
However, Yushin teaches including an organic polymer component at 0.0-80 wt%, for example 0.1-20 wt %, to better accommodate any change in size of electrodes during cycling ([0119[; [0129]-[0131]; [0133]). Yushin teaches wherein the organic polymer is composed of, for example, ethylene or propylene monomers ([0133]).
It would have been obvious to one of ordinary skill to modify the composite separator taught by modified Hatayama by setting the content of organic polymer within the range taught by Yushin.
One of ordinary skill in the art would be motivated to modify the composite separator taught by modified Hatayama by setting the content of organic polymer within the range taught by Yushin to accommodate size changes in electrodes during cycling ([0053]). Further, 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) (see MPEP §2144.05).
Regarding claim 14 & 21, modified Hatayama teaches the composite separator of claim 1. Hatayama further teaches wherein the porous substrate comprises polyethylene and the polyethylene of the porous substrate comprises one or more selected from high-density polyethylene, low-density polyethylene, linear low-density polyethylene, ultra-high molecular weight polyethylene, and copolymers thereof ([0057]-[0062]).
Regarding claim 15, modified Hatayama teaches the composite separator of claim 1. Hatayama further teaches wherein a thickness of the composite separator is 5 to 100 µm ([0107]-[0108]).
Regarding claim 17, modified Hatayama teaches the composite separator of claim 1. Hatayama teaches the importance of high peel strength in view of heat resistance and shape stability ([0105]).
Modified Hatayama does not teach wherein an adhesive force at 25°C (A25) and an adhesive force at 90°C (A90) between the porous substrate and the inorganic composite layer of the composite separator satisfy the following Expression 1: [Expression 1]
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wherein the adhesive force is obtained by measuring a peel strength between the porous substrate and the inorganic composite layer using a universal testing machine (UTM) (3343, manufactured by Instron Corporation) according to ASTM D903, and a unit thereof is gf/15 mm.
However, modified Hatayama teaches all aspects of the composite separator of claim 1. For example, modified Hatayama teaches a composite separator comprising: (a) a porous substrate (Hatayama [0053]-[0057]; [0065]); and (b) an inorganic composite layer that is formed on one or both surfaces of the porous substrate (Hatayama [0065]; [0083]) and is formed using a slurry composition containing inorganic particles, inorganic nanowires with a high aspect ratio and a defoamer (Hatayama [0065], [0083], [0102]; Yushin [0029]-[0030], [0019]-[0022], [0053], [0059]), wherein the inorganic composite layer comprises 60 to 99 wt% of the inorganic particles based on a total weight of the inorganic composite layer (Hatayama [0065]), wherein the inorganic composite layer comprises 1 to 50 parts by weight of the one-dimensional inorganic material with respect to 100 parts by weight of the inorganic particles (Wood [0016]-[0017], [0044], [0047]-[0050]; [0020]; [0023]-[0025]; [0029]; [0044]; [0055]) and wherein the inorganic composite layer does not contain any organic binder (Hatayama [0023], [0099], [0070]). Absent specific claimed features that result in an adhesive force at 25°C (A25) and an adhesive force at 90°C (A90) between the porous substrate and the inorganic composite layer of the composite separator satisfying t Expression 1:
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, any differences between the instant application and the prior art are a result of something not claimed.
Regarding claim 18-19, modified Hatayama teaches the composite separator of claim 1. Hatayama further teaches a lithium secondary battery ([0113]) including a cathode, an anode, a separator, and an electrolyte ([0113]-[0114]).
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hatayama (US 20210273295 A1) in view of Yushin et al. (US 20190198837 A1) and Wood et al. (WO 2019169410 A1), as applied above, in further view of Wang et al. (CN110993863A). Reference is made to the previously enclosed machine translations.
Regarding claim 12, modified Hatayama teaches the composite separator of claim 1.
Modified Hatayama is silent as to the type of defoamer.
However, Wang teaches a slurry for a composite separator containing a defoaming agent ([0006]) wherein the defoamer contains polyoxyalkylene or a unit derived from a polyoxyalkylene compound ([0012]-[0013] for example polyoxypropylene glyceryl ether).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified the composite separator taught by modified Hatayama by selecting a defoamer that contains polyoxyalkylene or a unit derived from a polyoxyalkylene compound, such as polyoxypropylene glyceryl ether, as taught by Wang.
One of ordinary skill in the art could have modified the composite separator taught by modified Hatayama by selecting a defoamer that contains polyoxyalkylene or a unit derived from a polyoxyalkylene compound, such as polyoxypropylene glyceryl ether, as taught by Wang with a reasonable expectation of success because a defoamer that contains polyoxyalkylene or a unit derived from a polyoxyalkylene compound is an art recognized defoamer for use in separator slurry compositions. Further, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP §2144.07).
Claim(s) 13, 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hatayama (US 20210273295 A1) in view of Yushin et al. (US 20190198837 A1) and Wood et al. (WO 2019169410 A1), as applied above, in further view of Hyun et al. (US 10270073 B2) hereinafter "Hyun".
Regarding claim 13, modified Hatayama teaches the composite separator of claim 1.
Modified Hatayama is silent as to the concentration of the defoamer.
However, Hyun teaches a porous substrate with an inorganic composite layer (column 6 lines 44-51; column 8 lines 29-37) comprising inorganic particles, binder, and additives (column 9 lines 11-22; column 12 Example 1) wherein the kind of the additives, such as defoamer, can be appropriately selected and used depending on a desired coating method and a coating characteristic (column 10 lines 10-23). Hyun teaches that additives such as an antifoaming/defoaming agent are used to improve the coating properties of a coating solution, however the concentration of the defoamer should, preferably, be as small as possible to maintain battery properties (column 5 lines 64-67; column 6 lines 1-5). Hyun teaches that a defoamer should be added in an appropriate amount depending on the viscosity or surface energy of the finally obtained coating solution (column 10 lines 10-23). Hyun further teaches wherein the concentration of the defoamer should, preferably, be as small as possible to maintain battery properties (column 5 lines 64-67; column 6 lines 1-5).
It would have been obvious to one of ordinary skill in the art to modify the content of the defoamer in the slurry taught by modified Hatayama to determine the minimum amount of defoamer required as taught by Hyun. Further, one of ordinary skill in the art could reach the claimed range of through routine experimentation in view of modified Hatayama and Hyun which teaches the use of a minimal amount of defoamer to improve coating properties of a slurry.
Regarding claim 16, modified Hatayama teaches the composite separator of claim 1.
Modified Hatayama is silent as to the pore size and porosity of the separator.
However, Hyun teaches a porous substrate with an inorganic composite layer (column 6 lines 44-51; column 8 lines 29-37) comprising inorganic particles, binder, and additives (column 9 lines 11-22; column 12 Example 1) wherein the kind of the additives, such as defoamer, can be appropriately selected and used depending on a desired coating method and a coating characteristic (column 10 lines 10-23). Hyun teaches wherein a composite separator may be composed of a porous substrate having a pore size of 0.01-50µm and a porosity of 5-95% and a coating layer having a pore diameter of 0.001-10µm and a porosity of 30-80% (column 9 lines 23-25; column 6 lines 64-67; column 7 lines 1-5). Hyun teaches that a pore diameter less than 0.001 results in decrease lithium-ion transfer capability while a pore diameter larger than 10µm results in a deterioration of mechanical properties (column 9 lines 23-32).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified the pore size of the composite separator taught by modified Hatayama to have a diameter of 0.001-10µm as taught by Hyun thereby meeting the claimed limitation.
One of ordinary skill in the art would be motivated to modify the pore size of the composite separator taught by modified Hatayama to have a diameter of 0.001-10µm as taught by Hyun to maximize lithium-ion transfer and mechanical strength (column 9 lines 23-32). 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) (see MPEP§2144.05).
Claim(s) 20 is rejected under 35 U.S.C. 103 as being unpatentable over Hatayama (US 20210273295 A1) in view of Yushin et al. (US 20190198837 A1).
Regarding claim 20, Hatayama teaches a method of manufacturing a composite separator, the method comprising: coating a slurry composition ([0104]) containing inorganic particles, and a defoamer onto one or both surfaces of a porous substrate ([0099]-[0100]; [0102]; [0104]), wherein the slurry composition does not contain any organic binder ([0099] “preferably free of a resin binder”; [0070]); and drying the coated porous substrate to form an inorganic composite layer ([0203]-[0206]; [0211]-[0212]).
Hatayama does not teach one-dimensional inorganic particles.
However, Yushin teaches a composite separator ([0033]-[0034]; [0055]; [0064]; abstract) wherein a ceramic layer contains small inorganic fibers, such as small (nano)wires, whiskers, (nano)fibers, or (nano)ribbons (0029]; [0019]) used in combination with large inorganic flakes ([0030]; [0055]) in order to improve membrane properties or manufacturability ([0019]-[0022]; [0059]; [0044]). Yushin teaches that small ceramic fibers provide advantages including higher strength, higher toughness, higher flexibility, increased surface smoothness, smaller pore size, and smaller membrane thickness ([0053]). Yushin teaches that small fibers bonded to large fibers or flakes allows enhanced mechanical stability ([0059]). The small inorganic fibers taught by Yushin meet the limitation of “one-dimensional inorganic material” in light of the instant specification which defines ”one-dimensional inorganic material” as an inorganic nanowire, nanofiber or combination thereof (PGPUB [0016]-[0017]).
It would have been obvious to one of ordinary skill in the art to modify the composite separator taught by Hatayama to include on-dimensional inorganic particles as taught by Yushin.
One of ordinary skill in the art would be motivated to modify the composite separator taught by Hatayama to include on-dimensional inorganic particles as taught by Yushin to improve membrane properties such as enhanced mechanical stability and smaller thickness and improve manufacturability ([0059]; [0053]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FELICITY B. ALBAN whose telephone number is (703)756-5398. The examiner can normally be reached Monday-Thursday 7:30-6:30.
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/F.B.A./Examiner, Art Unit 1728
/MATTHEW T MARTIN/Supervisory Patent Examiner, Art Unit 1728
1 For example, the case where 20 wt% nanoparticles and 80 wt% inorganic microparticles are used corresponds to a 1:4 ratio or 25 parts per 100 parts.
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