DETAILED ACTION
The applicant’s amendment filed on January 13, 2026 was received. Claims 2 and 3 were cancelled. Claims 1 and 4 were amended.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 § 102
Claims 1 and 4-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wakizaka et al. (hereinafter “Wakizaka”) (EP 2372811 B1, already of record).
Regarding claims 1, 4 and 11, Wakizaka teaches a separator for a lithium ion secondary battery obtained by laminating a porous film (coating layer), including nonconductive particles and a binder, on an organic separator (porous substrate) (see paragraph 14). The binder of the porous film comprises a copolymer obtained by copolymerizing (meth)acrylonitrile units (a first structural unit) and (meth)acrylic ester monomer units (a second structural unit) (see paragraph 28). The copolymer of the binder may further contain a thermal crosslinkable group (see paragraph 49). The thermal crosslinkable group may include an N-methylolamido group such as (meth)acrylamides (third structural unit) (see paragraph 54).
The ratio of the (meth)acrylonitrile and (meth)acrylic ester monomer units is in the range of 5/95 to 50/50 (see paragraph 33). The total content of (meth)acrylonitrile and (meth)acrylic ester monomer units in the copolymer is 50 mass% or more (see paragraph 34). The thermal crosslinkable group may be present in an amount of 0.1 to 10 mass% per 100 mass% of whole unit of monomer (see paragraph 56).
Regarding claims 5 and 12-14, Wakizaka teaches that the organic separator may comprise a microporous film formed from polyethylene, polypropylene, polybutene, and polyvinyl chloride, a mixture thereof, or a copolymer thereof; polycycloolefin, polyethersulfone, polyamide, polyimide, polyimideamide, and polytetrafluoroethylene (see paragraph 15).
Regarding claims 6, 7, 15 and 16, Wakizaka teaches that the separator may formed by coating a slurry for a porous film on an organic separator, and drying the same (see paragraph 78). The slurry for a porous film comprises the nonconductive particles, the binder, and a solvent (see paragraph 80).
Regarding claims 8 and 17, Wakizaka teaches that the inorganic particles may comprise oxide particles such as silicone oxide, aluminum oxide, magnesium oxide and titanium oxide (see paragraph 22).
Regarding claims 9 and 18, Wakizaka teaches that a content amount of nonconductive particles in the porous film is preferably within a range of 50 to 98 mass% (see paragraph 27).
Regarding claims 10 and 19, Wakizaka teaches that a thickness of the porous film may be 0.5 to 10 µm (see paragraph 89).
Response to Arguments
Applicant's arguments filed January 4, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are as follows:
Wakizaka does not disclose a copolymer that essentially includes a structural unit derived from an (acet)amide-based compound. Instead, Wakizaka merely states that if a thermal crosslinking group is included, an N-methylolamido group may optionally be selected as one possible example. Thus, Wakizaka neither requires nor clearly specifies that a structural unit derived from an (acet)amide-based compound is an essential constituent of the copolymer, nor does it directly and unambiguously disclose that the binder copolymer must be a three-component copolymer.
The separators according to Examples 1 to 3 of the present invention exhibit a higher average adhesion strength and a smaller standard deviation, while maintaining an equivalent or superior thermal shrinkage rate, as compared with Comparative Example 1, which does not include (acet)amide, and Comparative Example 2, which includes PVA, but does not include (acet)amide.
In response to Applicant’s arguments, please consider the following comments:
Wakizaka’s disclosure of N-methylolamido groups in the copolymer may not be disregarded merely because the inclusion of the N-methylolamido groups is optional. Were it to be improper, as Applicant suggests, to rely upon a teaching not regarded as “an essential constituent,” any reference disclosing multiple alternative embodiments would essentially be considered to disclose nothing for prior art purposes, as no embodiment would be required (or essential) over any other.
The MPEP states that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. See Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Furthermore, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP § 21323.
Here, if Applicant is intending to assert unexpected results, it is noted that evidence of unexpected properties must be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980); In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). See MPEP § 716.02.
In this case, a comparison of the instant invention with separators which do not include (acet)amide cannot qualify as a comparison with the closest prior art when Wakizaka provides a separator which does include (acet)amide.
Conclusion
THIS ACTION IS MADE FINAL. 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 STEPHAN J ESSEX whose telephone number is (571)270-7866. The examiner can normally be reached Monday - Friday, 8:30 am - 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (571) 272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHAN J ESSEX/Primary Examiner, Art Unit 1727
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