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
This office action is in response to the amendment filed 5/4/26. Claims 1, 3, 13, 20, 22, 32-33, 36, 40, 43, 48, 49, 50, 53, 54, and 56 are amended. Claims 4-6, 9, 10-12, 14-19, 21, 23-27, 30-31, 37, and 39 are canceled. Claims 20, 36, 49, and 56 are withdrawn. Claims 1-3, 7-8, 13, 22, 28-29, 32-33, 38, 40, 43, 48, and 50-59 are rejected finally for the reasons provided below.
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 48 and 61 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.
The term “low molecular weight” in claims 48 and 61 is a relative term which renders the claim indefinite. The term “low molecular weight” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The limitation “low molecular weight” will not be given patentable weight.
The rejections of claims 1-3,7-8,12-13,15,22-28,32-33,35-36,38,50-55 and 57-60 under 35 U.S.C. 112(b) are withdrawn in light of the amendments.
Claim Interpretation
Claims 1, 48, 50-55, and 57-60 include product-by-process limitations, specifically to a “dry-process” and “coextruding” layers. The examiner finds that process of making the membrane does not appear, nor would the person having ordinary skill in the art expect the process, to impart any particular structural characteristics that are not found in other processes of making the membrane. MPEP 2113 I
More specifically, as discussed above, the examiner finds that the terms as used in the claims do not specifically impart the structure believed by Applicant to be imparted. See Response to Arguments, below.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 8, 33, 35, 40, 43, 48, 54-55, 58-59, and 61 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takita et al. (US 2009/0253032).
Regarding claim 1, Takita teaches a multi-layer porous membrane (abstract) comprising:
two exterior layers, or first microporous layers constituting both surface layers, comprising polypropylene (options (i) and (ii)); and
one interior layer, or second microporous layer, which is (iii) polypropylene mixed with a mixture of (i) 7% or less by mass of ultra-high-molecular weight polyethylene, which reasonably suggests to the skilled artisan that the remaining portion of the second layer is therefore 93% polypropylene (see MPEP 2123: Patents are relevant as prior art for all they contain);
wherein the average pore size of the interior layer is larger than the average pore size of the exterior layers ([0014]).
It is noted that the membrane of Takita is made by a dry-process in that dry blending is used to form the first and second polyolefins (see, e.g. [0165], [0184]).
Regarding claims 8, 48, 54-55, and 58-59, it is noted that Takita teaches co-extruding the layers ([0017]); however, the examiner maintains that the process does not appear to impact the implied structure as discussed above.
As for claims 48, 58, 59, and 61, Takita teaches that the second microporous layer is a blend of polypropylene and an ultra-high-molecular-weight polyethylene such as an ethylene-α-olefin ([0013], [0036]).
Regarding claims 33 and 54, Takita teaches that the membrane has a thickness of 20.2µm (Table 1 Example 4).
As for claims 35 and 55, Takita teaches wherein the membrane comprises only one interior layer (Table 1 Example 4).
As for claims 40 and 59, the examiner finds that the membrane is used as a separator in a battery ([0001]), and further comprises a monomer-grafting (i.e. polymer) coating on a surface (i.e. after formation of the separator) ([0060], [0101]-[0102]).
Regarding claim 43, Takita teaches that the cathode may comprise lithium cobaltate (i.e. lithium cobalt oxide) ([0161]).
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.
Claims 2-3, 7, 13, 22, 28-29, 32, 38, 50-53, and 57 are rejected under 35 U.S.C. 103 as being unpatentable over Takita as applied to claims 1, .
The teachings of Takita as discussed above are incorporated herein.
As for claims 2-3, 7, 22, and 50, Takita teaches that the ratio of the average pore sizes of the internal to external layer is result effective for improving electrolyte solution absorption and retention ([0014], [0138], [0221]). It has been held that it is within the ordinary level of skill in the art to discover optimum or workable ranges by routine experimentation. MPEP 2144.05 I
Regarding claim 13, Takita teaches that the ultra-high-molecular-weight polyethylene such as an ethylene-α-olefin is 7% or less by mass ([0048]). The examiner takes note of the fact that the prior art ranges overlap the claimed range. Absent any additional and more specific information, a prima facie case of obviousness exists. MPEP 2144.05
With regard to claims 28-29 and 51-52, Takita teaches that the exterior layer has an average pore size of 0.005-0.1µm and the interior layer has an average pore size of 0.02-0.5µm ([0014]). The examiner takes note of the fact that the prior art ranges overlap the claimed range. Absent any additional and more specific information, a prima facie case of obviousness exists. MPEP 2144.05
As for claims 32 and 53, Takita teaches different melt-blending temperatures for the first and second solutions ([0066], [0071]). The examiner finds that melt-blending temperature is an analogous measure of melt flow rate.
Regarding claims 38 and 57, Takita teaches that the puncture strength of the membrane is result effective to prevent short circuit ([0149]). It has been held that it is within the ordinary level of skill in the art to discover optimum or workable ranges by routine experimentation. MPEP 2144.05 I
Claim 62 is rejected under 35 U.S.C. 103 as being unpatentable over Takita as applied to claim 61 above, and further in view of Hamasaki et al. (US 2021/0637309).
The teachings of Takita as discussed above are incorporated herein.
Takita teaches the membrane of claim 61 including the another component that is ethylene-α-olefin but fails to teach a styrenic elastomer.
Hamasaki teaches that styrenic elastomers are substitutable for ethylene-α-olefin in battery membranes ([0158]).
It would have been obvious to substitute a styrenic elastomer for the ethylene-α-olefin of Takita such as suggested by Hamasaki and the results of the substitution, i.e. a suitable polyolefin for a membrane, would have been predictable. MPEP 2143 I B
Response to Arguments
Applicant's arguments filed 5/4/26 have been fully considered but they are not persuasive.
Regarding the arguments concerning the interpretation of “dry process” on pages 12-13, the examiner is not convinced. Since Applicant fails to provide the reference discussed on page 12, the examiner is unable to respond. However, the examiner notes that the reference appears to refer to “sinter process” but not specifically “dry process,” so it appears unlikely that the reference actually conveys to the skilled artisan the meaning of “dry process” as specifically as is argued.
Next, concerning the arguments on page 13, these arguments to an assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness, per MPEP 2145 I
With specific regard to the second paragraph of page 13, this argument appears to support the restriction requirement.
Overall, Applicant argues that “dry process” has a specific meaning in the separator art which imparts specific pore structure. However, the examiner notes that the structure allegedly imparted by “dry process” is not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Further, based on this argument, it appears that it is the dry stretching process that Applicant is attempting to argue is required by the claims. For support of this interpretation, Applicant is directed to Kia et al. (US 2012/0156568), which describes different pore structure for wet and dry stretching processes (abstract, Figs. 2 and 3). However, the claims do not require dry stretching, particularly because stretching is not included in the claims and because the claims are product claims, not method claims.
The examiner finds that the very broad limitation “dry process” does not refer to any specific process for forming the membrane, and does not require that all steps are “dry.” Applicant is directed to Bauer et al. (US 2021/0273290), which teaches that a dry production process is without (further) addition of liquid in coating and/or printing and/or pressing and/or rolling-out, and/or extrusion ([0070]). The skilled artisan will easily understand that a dry process does not require that every process is dry, only that some are.
This is further supported by the instant specification, where dry process is only mentioned in a single paragraph and does not specify that all processes or dry, merely that there is minimal use of solvents or oils:
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Regarding the arguments, on page 14, concerning the “consisting essential of” limitations, the examiner notes that Takita suggests to the skilled artisan that the second microporous layer, which is (iii) polypropylene mixed with a mixture of (i) 7% or less by mass of ultra-high-molecular weight polyethylene, contains the remaining portion of the second layer at 93% polypropylene (see MPEP 2123: Patents are relevant as prior art for all they contain, and MPEP 2131.05: A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it).
As to the arguments on pages 14-15 concerning the “dry blending” of Takita, the examiner maintains that any part of the process that is dry is interpreted as a dry process as discussed above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALIX ECHELMEYER EGGERDING whose telephone number is (571)272-1101. The examiner can normally be reached 8:30am - 4:30pm.
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/ALIX E EGGERDING/ Primary Examiner, Art Unit 1729
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