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 .
Status of the Claims
The amendment/remarks submitted 10/30/2025 has been entered and fully considered. Claims 1-6 and 8-19 are pending. Claim 7 is cancelled. Claim 1 is amended. Claims 1-6 and 8-19 are examined herein.
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.
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.
Claims 1-6 and 8-19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0136100 A1 (“Yamamoto”) in view of US 2022/0209361 A1 (“Huang”) and JP 2012-119224 A (“Yoshitomi” – machine translation provided by applicant dated 04/12/2024 cited herein).
Regarding claims 1-6 and 8, Yamamoto discloses a separator 300 comprising a base material 310 (“porous polymer substrate”) and insulating layers 320 (“organic/inorganic composite porous layer”) disposed on two surfaces of the base material 310 (Fig. 3; [0023]). The base material 310 comprises a resin and is porous ([0066], [0069]). Each of the insulating layers 320 comprises an inorganic filler and a resin ([0071]-[0072]). A ratio of a thickness of the insulating layer 320 to a thickness of the base material 310 may be equal to or greater than 1.50 and equal to or less than 3.00 (Abstract; [0014], [0023], [0025], [0100]).
Yamamoto does not expressly disclose the inorganic particles have a BET specific surface area of 50-150 m2/g or the inorganic particles have an average particle diameter (D50) of 20-47 nm.
Huang discloses a separator for a lithium-ion battery contains an organic substrate coated with a coating layer, containing a binder and alumina particles (Abstract). The alumina preferably has a surface of 50 m2/g to 150 m2/g ([0039]). Huang discloses the separators with the coating layer demonstrated lower AC impedance increase ([0131]) and higher cycle performance retention ([0134]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to optimize the BET specific surface area through routine experimentation in the pursuit of lower AC impedance increase and higher cycle performance retention.
Huang discloses the alumina preferably has a number mean particle diameter d50 of 30 nm-700 nm ([0041]). This overlaps the claimed ranges. The D50 would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because the D50 disclosed by Huang overlaps the D50 as claimed. 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). Furthermore, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); and MPEP 2144.05.
Yamamoto does not expressly disclose a surface of the organic/inorganic composite porous layer has an arithmetic mean roughness of 100-500 nm.
Yoshitomi discloses a separator for a nonaqueous electrolyte battery comprises a porous base material containing polyolefin, and a heat-resistant porous layer disposed on one side or both sides of the porous base material and containing a heat-resistant resin. On the side with the heat-resistant porous layer, the center line average roughness (Ra) satisfies 0.1 µm ≤ Ra ≤ 0.5 µm (Abstract). If the Ra is less than 0.1 µm, the smoothness is too high, which is undesirable as it causes slippage with the electrode active material. On the other hand, if Ra exceeds 0.5 µm, unevenness occurs in the spacing between the electrode active materials, and good cycle characteristics may not be obtained ([0015]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the claimed arithmetic mean roughness because Yoshitomi discloses it prevents slippage with the electrode active material, prevents unevenness from occurring in the spacing between the electrode active materials, and provides good cycle characteristics.
Regarding claims 9-10, modified Yamamoto discloses the separator of claim 1. Huang discloses an inorganic particle of fumed alumina ([0037]-[0038]).
Regarding claim 11, modified Yamamoto discloses the separator of claim 1. Yamamoto discloses the total of the thickness of the insulating layer 322 and the thickness of the insulating layer 324 may be suitably determined, and may be, for example, equal to or greater than 10.0 µm and equal to or less than 20.0 µm ([0074]). This overlaps the claimed range. The thickness would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because the thickness disclosed by Yamamoto overlaps the thickness as claimed. 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). Furthermore, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); and MPEP 2144.05.
Regarding claim 12, modified Yamamoto discloses the separator of claim 1. Yamamoto discloses a thickness of the base material 310 may be suitably determined, and may be, for example, equal to or greater than 5.0 µm and equal to or less than 10.0 µm ([0073]).
Regarding claim 13, modified Yamamoto discloses the separator of claim 1. Yamamoto discloses a thickness of the separator 300 may be suitably determined, and may be, for example, equal to or greater than 15.0 µm and equal to or less than 30.0 µm ([0075]). This overlaps the claimed range. The thickness would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because the thickness disclosed by Yamamoto overlaps the thickness as claimed. 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). Furthermore, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); and MPEP 2144.05.
Regarding claims 14-15, modified Yamamoto discloses the separator of claim 1. Yoshitomi discloses the content of the inorganic filler in the heat-resistant porous layer is preferably 50 to 95% by mass of the total mass of the heat-resistant resin and the inorganic filler, from the viewpoints of improving heat resistance, permeability, and handleability ([0045]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to optimize the ratio of the inorganic particles and binder polymer through routine experimentation to improve heat resistance, permeability, and handleability.
Regarding claim 16, modified Yamamoto discloses the separator of claim 1. Modified Yamamoto is silent regarding the organic/inorganic composite porous layer having a weight corresponding to 50-99 wt% based on a total weight of the separator. However, Yoshitomi discloses the content of the inorganic filler in the heat-resistant porous layer is preferably 50 to 95% by mass of the total mass of the heat-resistant resin and the inorganic filler, from the viewpoints of improving heat resistance, permeability, and handleability ([0045]). It is noted that the content of the organic/inorganic composite porous layer can affect its relative weight. Yamamoto discloses the ratio of a thickness of the insulating layer 320 to a thickness of the base material 310 may be equal to or greater than 1.50 and equal to or less than 3.00 to improve resistance in the nail penetration test (Abstract; [0014], [0023], [0025], [0100]). It is noted that the thickness of the organic/inorganic composite porous layer can affect its relative weight. In view of these facts, it is the opinion of the Office that the claimed weight percentage of the organic/inorganic composite porous layer would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention from the standpoint of improving heat resistance, permeability, and handleability, and improving resistance in the nail penetration test.
Regarding claims 17-18, modified Yamamoto discloses the separator of claim 1. It is deemed that the claimed ratio of light transmission and heat shrinkage are inherent characteristics and/or properties of the specifically disclosed separator. In this respect, MPEP 2112 sets forth the following:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
Regarding claim 19, modified Yamamoto discloses the separator of claim 1. Yamamoto disclose a battery 10 comprising a positive electrode 100, a negative electrode 200, and the separator 300 disposed between the positive electrode 100 and the negative electrode 200 (Fig. 3; [0023]).
Response to Arguments
Applicant's arguments filed 10/30/2025 have been fully considered but they are not persuasive.
Applicant appears to argue the presence of unexpected results in the claimed invention. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). In this case, there are parameters in the inventive examples that are not reflected in the broadest claim. For example, the absolute thicknesses of the porous polymer substrate and composite porous layer, that the composite porous layer is formed on both surfaces, etc. There are also parameters in the inventive examples which are not commensurate in scope with the claimed invention. For example, Ra and BET specific surface area are narrower than what is reflected in the claims. It is not clear that the entire claimed range would appreciate the results shown.
Moreover, it is not clear that the relationship between the thicknesses of the composite porous layer and porous polymer substrate is responsible for nail penetration safety. The specification as filed at pg. 40 states “On the other hand, it can be seen that the separator according to Comparative Example 1 cannot ensure nail penetration safety due to the thickness of the organic/inorganic composite porous layer smaller than the thickness of the porous polymer substrate. In addition, the separator shows a poor heat shrinkage at 190°C in the machine direction and the transverse direction.” Comparative Example 1 is compared with Example 4 and uses a different polyolefin porous film manufactured by a different company. It is unknown if properties of the polyolefin porous film Comparative Example 1 are comparable to those of the polyolefin porous film Example 4 or if the comparative thickness of the polyolefin porous film and composite porous layer is itself responsible for the results. For example, if Example 4 were repeated except with the thickness of the composite porous layer changed to 5 µm from 6 µm, thus falling outside the claimed range, would the separator experience improved results or not? It is not clear from the data presented that the comparative thickness of the polyolefin porous film and composite porous layer is responsible.
Applicant argues that the average particle size (D50) in the examples of Huang is outside the claimed range. Huang is relied upon for the broader teaching of a number mean particle diameter d50 of 30 nm-700 nm ([0041]) which overlaps the claimed ranges. It is noted that 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 2123.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Scott Carrico whose telephone number is (571)270-5504. The examiner can normally be reached Monday-Friday 9:15AM-6PM ET.
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Robert Scott Carrico
Primary Examiner
Art Unit 1727
/Robert S Carrico/Primary Examiner, Art Unit 1727