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
The Amendment filed on 12/4/2025 has been entered. Claims 10-11 are added. Claims 1-11 remain pending in the application.
Information Disclosure Statement
The IDS filed 11/4/2025 has been considered by examiner.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 5-7, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (US 2002/0076615, hereinafter "Tanaka").
Regarding claims 1 and 2, Tanaka teaches a separator for a secondary battery comprising a sheet-shaped porous material (“porous substrate”) [Abstract, “The inventive separator for a secondary battery”, 0036, “It is recommended to … sheet-shaped porous materials such as porous films and porous foamed materials for the inventive separator”]. Tanaka teaches that the separator has an uneven surface (“surface irregularities”) [0049, “such an uneven surface is desired”]. Tanaka further discloses that a rate of an area of recessed portions (“protrusion valleys”) to the entire area of the uneven surface of the separator is preferably 3% to 50% [0054, “ a rate of an area of the recessed portions to the entire area of the uneven surface of the separator”, “This rate is preferably 3% or higher, more preferably 5% or higher and preferably 50% or lower, more preferably 30% or lower if the separator is made of a porous film”].
Tanaka is silent regarding the method of measurement of the area of the recessed portions based on the entire area of the uneven surface of the separator. However, Tanaka does teach that when the area rate of the recessed portions falls within the range disclosed, oxygen gas produced during excessive charging may be effectively dispersed, which suppresses an increase in the inner pressure of the battery [0054]. Tanaka also teaches that if the area rate of the recessed portions falls below this range the effect of reducing internal pressure may not be sufficient, and if the area rate of the recessed portions exceeds the range, adhesion to the electrode may be reduced, thereby increasing the internal resistance of the battery [0054]. Tanaka thus teaches that the area rate of the recessed portions is a result-effective variable.
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have discovered an optimum range of the area rate of the recessed portions in the separator, regardless of how it was measured, through routine experimentation in order to suppress an increase in inner pressure in a battery comprising the separator and prevent an increase in internal resistance, as taught by Tanaka. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [See MPEP 2144.05(II)(A)].
Further regarding claim 5, Tanaka teaches the separator of claim 1, as described in the rejection for instant claim 1. While Tanaka does not specifically teach a difference between a static BDV and a mobile BDV, the separator taught by Tanaka has the same structure of the porous substrate and the area of protrusion valleys in the surface irregularities as the claimed separator. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 I). Therefore, a person having ordinary skill in the art would expect the same physical separator to have the same measured characteristics of static BDV and mobile BDV, and thus the difference there between.
Further regarding claim 6, Tanaka teaches that the thickness of the separator is preferably 15 µm or larger and 150 µm or smaller, which overlaps the recited range of 1 µm to 100 µm [0048, “The thickness of the inventive separator is not particularly limited, but is preferably 15 µm or larger, more preferably 50 µm or larger, further more preferably 70 µm or larger, and preferably 150 µm or smaller”]. ”]. 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 MPEP 2144.05 I).
Further regarding claim 7, Tanaka teaches that the porous film making up the separator comprises polyolefin [0057, “The inventive separator is made of an unwoven fabric, a porous film or the like as described above. Any desired organic resin can be used as a raw resin. However, a resin composition mainly composed of a polyolefin is recommendable”].
Further regarding claim 10, Tanaka teaches that the unevenness is preferably formed on opposite surfaces of the separator [0051, “Such an unevenness is preferably formed on at least one surface of the separator, more preferably formed on the opposite surfaces of the separator”], which would mean that the recesses on the opposite surfaces would protrude into the separator and face each other.
Further regarding claim 11, Tanaka teaches the separator of claim 1, as described in the rejection for instant claim 1. While Tanaka does not specifically teach a dV defect rate relative to a thickness of the separator, the separator taught by Tanaka has the same structure of the porous substrate and the area of protrusion valleys in the surface irregularities as the claimed separator. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 I). Therefore, a person having ordinary skill in the art would expect the same physical separator to have the same measured characteristics of a dV defect rate relative to a thickness of the separator.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (US 2002/0076615) as applied to claim 1 above, and further in view of Kaneda et al. (US 2017/0373291, hereinafter "Kaneda").
Regarding claim 3, Tanaka teaches the separator of claim 1, as described in the rejection for instant claim 1. Tanaka is silent regarding a static BDV per unit thickness of the separator.
Kaneda teaches analogous art of a polyolefin membrane which may be used as a battery separator [0013, “The second aspect of the present invention is a separator for a battery including the polyolefin microporous membrane”]. Kaneda teaches that the dielectric breakdown voltage (“BDV”) of the membrane is most preferably not less than 164 V/µm and not exceeding 300 V/µm, which is within the recited range of 160 V/µm or more [0056, “The polyolefin microporous membrane according to an embodiment of the present invention preferably has a dielectric breakdown voltage of not less than 135 V/μm, more preferably not less than 150 V/μm and particularly preferably not less than 164 V/μm”, “the typical upper limit thereof is considered not to exceed 300 V/μm”].
Kaneda teaches that within the range taught for the dielectric breakdown voltage, a superior battery durability and withstand voltage may be obtained [0056, “If the dielectric breakdown voltage of the polyolefin microporous membrane is within the range described above, superior battery durability and withstand voltage performance can be expected when used as a battery separator”].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the separator taught by Tanaka to have a dielectric breakdown voltage within the range taught by Kaneda, in order to obtain a battery with superior durability and withstand voltage performance when the separator is used in the battery.
Regarding claim 4, Tanaka teaches the separator of claim 1, as described in the rejection for instant claim 1. Tanaka is silent regarding a static BDV per unit thickness of the separator.
Kaneda teaches analogous art of a polyolefin membrane which may be used as a battery separator [0013, “The second aspect of the present invention is a separator for a battery including the polyolefin microporous membrane”]. Kaneda teaches that the dielectric breakdown voltage of the membrane is most preferably not less than 164 V/µm and not exceeding 300 V/µm, which overlaps the recited range of 160 V/µm or more to 200 V/µm [0056, “The polyolefin microporous membrane according to an embodiment of the present invention preferably has a dielectric breakdown voltage of not less than 135 V/μm, more preferably not less than 150 V/μm and particularly preferably not less than 164 V/μm”, “the typical upper limit thereof is considered not to exceed 300 V/μm”]. 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 MPEP 2144.05 I).
Kaneda teaches that within the range taught for the dielectric breakdown voltage, a superior battery durability and withstand voltage may be obtained [0056, “If the dielectric breakdown voltage of the polyolefin microporous membrane is within the range described above, superior battery durability and withstand voltage performance can be expected when used as a battery separator”].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the separator taught by Tanaka to have a dielectric breakdown voltage within the range taught by Kaneda, in order to obtain a battery with superior durability and withstand voltage performance when the separator is used in the battery.
Claims 1 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Saeki et al. (WO 2020/004205, referring to US 2021/0249735 as translation thereof, hereinafter "Saeki").
Regarding claim 1, Saeki teaches a separator comprising a porous substrate [0038, “The substrate may sufficient if it has high ion permeability and has a function of electrically isolating a positive electrode and a negative electrode. Many conventional porous films used in a nonaqueous electrolyte battery can be used”]. Saeki further teaches that the surface of the substrate has protruding patterns (“surface irregularities”) [Abstract, “a plurality of protruding patterns on at least one principal surface of the substrate”]. Saeki further teaches that the pattern may be formed on the entire main surface of the separator [0082, “The pattern may be formed over the entire main surface”]. Saeki discloses that in the pattern, the ratio of the area surrounded by bottom portions of the convex-shaped patterns (“protrusion valleys”) to the area of a unit grid is preferably 0.80 or less and 0.03 or more, or 30% to 80% [0087, “In the fine pattern, the ratio of the area surrounded by bottom portions of the convex-shaped patterns to the area of a unit grid is preferably 0.80 or less”, “The ratio of the area surrounded by bottoms of the convex-shaped patterns of the fine pattern to the area of a unit grid is preferably 0.03 or more”].
Saeki is silent regarding the method of measurement of the ratio of the area surrounded by the bottom portions of the convex-shaped patterns to the area of a unit grid. However, Saeki does teach that when the ratio is within the range disclosed, stress and pressure are easily concentrated and uniformly applied on the convex part, and the stability of an electrode laminate roll comprising the separator is enhanced [0087]. Saeki thus teaches that the area rate of the recessed portions is a result-effective variable.
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have discovered an optimum range of ratio of the area surrounded by the bottom portions of the convex-shaped patterns to the area of a unit grid, regardless of how it was measured, through routine experimentation in order to enhance the stability of an electrode laminate roll comprising the separator, as taught by Saeki. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [See MPEP 2144.05(II)(A)].
Further regarding claim 6, Saeki teaches that the thickness of the substrate may be 3 to 35 µm, which is within the range recited [0047, “The thickness of the substrate is preferably from 3 to 35 μm”].
Further regarding claim 7, Saeki teaches that the porous substrate may comprise polyolefin [0039, “Specifically, a microporous membrane, a nonwoven fabric, etc., each composed of an electrochemically stable material that is stable to a nonaqueous electrolyte in the battery, such as polyolefin”].
Regarding claim 8, Saeki teaches the separator of claim 1, as described in the rejection for instant claim 1. Saeki teaches that the separator is used in a lithium ion secondary battery, the battery further including a positive electrode and a negative electrode [0011, “an object of the present invention is to provide a separator capable of reducing displacement of an electrode laminate or electrode roll including a positive electrode, a separator and a negative electrode, and a lithium ion secondary battery having enhanced life characteristics”].
Further regarding claim 9, Saeki teaches that the lithium ion secondary battery comprises a laminate (“electrode assembly”) comprising the positive electrode, negative electrode, and separator wound into a roll (“jelly roll”) [0027, “a laminate having stacked therein a positive electrode, the separator according to any one of items 1 to 9, and a negative electrode, or a roll of the laminate”].
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (US 2002/0076615) as applied to claim 1 above, and further in view of Hasegawa et al. (JP 2017103208, referring to Examiner-provided translation thereof, hereinafter "Hasegawa").
Regarding claim 11, Tanaka teaches the separator of claim 1, as described in the rejection for instant claim 1. Tanaka does not specifically teach a dV defect rate relative to a thickness of the separator.
Hasegawa teaches analogous art of a separator for a non-aqueous electrolyte battery [0008]. Hasegawa discloses that making a separator thinner can increase energy density, but can lead to a decrease in insulating function and an increase in leakage failures (“dV defects”) [0007]. On the other hand, Hasegawa also teaches that reducing leakage failures can come at the cost of a negative impact on other separator properties, such as ion permeability [0007, “Reducing the porosity of the separator can suppress the occurrence of leakage failures, but it reduces ion permeability”].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have discovered an optimum range of a dV defect rate relative to a thickness through routine experimentation, where energy density and ion permeability are not negatively impacted and the separator retains its insulating function. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [See MPEP 2144.05(II)(A)].
Response to Arguments
Applicant's arguments filed 12/4/2025 have been fully considered but they are not persuasive.
In response to applicant’s argument that Tanaka does not disclose how an area of recessed portions is measured, and thus does not correspond to the area of protrusion valleys recited in amended claim 1, it is noted that Tanaka teaches that the area of the recessed portions is a result effective variable, as described in the rejection of instant claim 1 above. Tanaka teaches that the area of recessed portions has an effect on inner pressure in a battery comprising the separator and on internal resistance [0054]. Therefore, it would have been obvious to optimize an area of protrusion valleys, regardless of how the area of protrusion valleys is measured. As discussed in MPEP 2144.05(II)(A), "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In response to applicant’s argument that Saeki does not disclose how the ratio of an area surrounded by the bottom portions of the convex-shaped patterns to the area of a unit grid is measured, and thus does not correspond to the area of protrusion valleys recited in amended claim 1, it is noted that Saeki teaches that the ratio of the area surrounded by the bottom portions of the convex-shaped patterns to the area of a unit grid is a result effective variable, as described in the rejection of instant claim 1 above. Saeki teaches that when the ratio is within the range disclosed, stress and pressure are easily concentrated and uniformly applied on the convex part, and the stability of an electrode laminate roll comprising the separator is enhanced [0087]. Therefore, it would have been obvious to optimize an area surrounded by the bottom portions of the convex-shaped patterns (“area of protrusion valleys”), regardless of how the area of protrusion valleys is measured. As discussed in MPEP 2144.05(II)(A), "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding applicant’s argument that “the ratio of an area surrounded by the bottom portions of the convex-shaped patterns to the area of a unit grid” taught by Saeki refers to “the area overlapped by bottoms of the convex-shaped patterns (rather than the area of the valley portions)” [Remarks, page 7], it is respectfully noted that Saeki does not equate surrounded with overlapped anywhere in the disclosure. An annotated version of Fig. 3 of Saeki is provided below to illustrate examiner’s interpretation of Saeki’s disclosure:
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Furthermore, even if Saeki were referring to the area of the convex-shaped patterns rather than the area of the valley portions, the area of the valley portions would still be a result-effective variable, as it is dependent on the area of the convex-shaped patterns.
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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/M.F.O./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729