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 .
Election/Restrictions
Applicant's election with traverse of claims 1-11, 14-27, 31, 33, 35, and 37 in the reply filed on October 6th, 2025 is acknowledged. The traversal is on the ground(s) that searching for the existence of a trap layer and then determining its location is not a serious search burden. This is not found persuasive because finding a trap layer comprised of a coating on the anode side of a separator is not the same as finding a trap layer inside of a separator. Determining the presence of the claimed coating layer in the state of the prior art requires a different search than determining the presence of a layer inside of a separator. An external coating layer may be completely different than a layer designed to be in the internal space of a membrane.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 17, 22, 25, 27, 31, and 35 are objected to because of the following informalities: they are duplicitous claims.
Claim 17 is identical to claim 31.
Claim 22 is identical to claim 35.
Claim 25 is identical to claim 37.
Appropriate correction is required.
Claim Interpretation
The claims are drawn to a “trap layer” that is present in a battery separator, but based on the claim language, it is not immediately apparent what the function of the trap layer actually is. The specification does mention that “trapping of the transition metal ions may mean plating of the ions on the trap layer surface” (page 10 of the specification as filed). Additionally, Fig. 19 seems to indicate that copper ions are deposited on carbon nanotubes (the coating layer comprises carbon nanotubes in certain embodiments). Although claims are interpreted in view of the specification, patentable weight is given to the claim language and not unclaimed features described in the specification. Therefore, for the purpose of this Office Action and prior art rejections, the “trap layer” may be interpreted as any layer that binds metal ions.
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 4-6, 8, 10, 11, 20, 21, 23, and 33 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation +0.0 to +3.39 V, and the claim also recites +0.0 to +3.0 V which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the sake of this Office Action, prior art that anticipates or renders obvious either range will be appropriate for a rejection.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 5, 20, and 33 recite the broad recitation 104 to 109 ohms-cm, and the claim also recites 104 to 108 ohms-cm which is the narrower statement of the range/limitation. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the sake of this Office Action, prior art that anticipates or renders obvious either range will be appropriate for a rejection.
Regarding claims 8 and 23, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the sake of this Office Action, the phrase “carbon is a conductive carbon such as carbon nanotubes” will be interpreted as “carbon is a conductive carbon material”.
Claim 10 recites the limitation "the conductive coating" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the sake of this Office Action, “the conductive coating” will be interpreted as the “coating” recited within claim 2.
Claim 6 is rejected as being dependent on the rejected claim 5. Claim 11 is rejected as being dependent on the rejected claim 10. Claim 21 is rejected as being dependent on the rejected claim 20.
Claim Rejections - 35 USC § 102
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 1-4, 7, 14, 15, 17-19, 22, 27, 31, and 35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Halalay (US 2019/0013551 A1).
Regarding claims 1, 2, 14, and 27, Halalay discloses a lithium-ion battery with a cathode composed of the claimed lithium compounds [0060] that generates transition metal ion contaminants, including (but not limited to) nickel, iron, cobalt, manganese, chromium, and tin ions [0077]. The battery further comprises an anode [0058], an electrolyte [0048], and separator comprising at least one transition metal ion-trapping moiety coated on the surface of the separator which creates a coating comprised of a trap layer (as required by claim 2; abstract and [0065]). Halalay’s disclosure does not limit the coating layer to being on only one side of the separator [0017]. Therefore, the trap layer may be on either the side of the separator whether it faces the cathode or it is on the anode-facing side of the separator (as required by claims 2 and 14).
Regarding claims 3, 4, 17-19, and 31, Halalay does not explicitly discuss the potential difference of the trap layer. However, the Applicant, in their published application, states that in order for the trap layer to trap ions, they must have a specific potential difference [0052]. The Applicant provides a table that lists the minimum potential differences required to trap certain kinds of ions (see Table 1 below).
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Since Halalay’s trap layer is capable of trapping including nickel, iron, cobalt, manganese, chromium, and tin ions (all of which have a minimum potential difference in order to have a functional trap layer), Halalay’s trap layer must have said potential differences based on the information disclosed by the Applicant. All of those potential differences are within the range of +0.0 - +3.0 V, the narrowest range recited in claims 3, 4, 17-19, and 31. Therefore, the potential difference of Halalay’s layer anticipates the ranges recited in said claims.
Regarding claims 7, 22, and 35, Halalay discloses that the trap layer may comprise a polymer and succinates (abstract). Succinates are comprised of carbon atoms. Therefore, Halalay’s trap layer is also comprised of carbon in the form of carbon atoms.
Regarding claim 15, Halalay discloses that their separator may be a multi-layer laminate [0051], implying that the separator was made via a lamination process. This limitation is also a product-by-process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
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.
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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Halalay as applied to claim 15, and further in view of Nada (JP 2016022678 A). As mentioned in the rejection of claim 15 above, Halalay implicitly discloses that their separator may be formed through a lamination process (Halalay, [0051]), but fails to teach that the separator may be formed through a coextrusion process or a combination of a coextrusion process and a lamination process. Nada is analogous art to Halalay because both teach materials for battery separators. Nada teaches that a combination of a lamination process and a coextrusion process results in the separator having improved air permeability [0020]. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to use a combination of the coextrusion and lamination processes as taught by Nada in order to improve the air permeability of Halalay’s separator.
Claims 8, 9, 23, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Halalay as applied to claims 7 and 22 above, and further in view of Yu (JP 20130139200 A). Halalay discloses that the trap layer comprises a polymer and carbon (Halalay, abstract), but fails to explicitly disclose a conductive carbon. Yu is analogous art because both teach materials that are used in secondary batteries. Yu teaches that using carbon-based materials to adsorb excess metal ions can help secure the safety of the battery [0016]. Yu continues to teach that some examples of said carbon materials may be carbon black, acetylene black, or graphene [0017]. It is well known within the art that these materials are conductive. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to use the carbon materials taught by Yu in Halalay’s trap layer to help secure the safety of the battery.
Claims 5, 6, 20, 21, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Halalay as applied to claims 2 and 14 above, and further in view of Laramie (US 2015/0236320 A1).
Halalay discloses the claimed trap layer, but fails to discuss its bulk or volume resistivity. Laramie is analogous art to Halalay since both teach materials used in electrochemical cells. Laramie teaches that the separator of a battery “can be configured to be substantially electronically non-conductive, which can inhibit the degree to which the separator causes short circuiting of the electrochemical cell”. Laramie continues to teach that portions of the separator can be formed of a material with a bulk electron resistivity of at least 106 ohm-cm in order to achieve this [0101]. This range overlaps with the narrowest claimed range of 104 to 107 ohm-cm. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 (I). Furthermore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to ensure that Halalay’s trap layer has a bulk resistivity within the claimed range of 104 to 107 ohm-cm in order to prevent short-circuiting as taught by Laramie.
Claims 10, 11, 25, 26, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Halalay as applied to claims 2 and 14 above, and further in view of Yoshitake (JP 2013157266 A).
Regarding claims 11 and 26, Halalay teaches the use of a coating layer comprising at least one transition metal ion-trapping moiety including polymers (Halalay, abstract), but fails to teach the specific usage of the claimed polymers. Yoshitake is analogous art to Halalay because both disclose materials for secondary batteries. Yoshitake teaches the usage of compounds capable of adsorbing cations (in other words, trapping the claimed metal ion contaminants) such as poly-thiophene or poly-pyrrole in a coating layer ([0010], [0017], and [0019] – [0021]). Since Halalay discloses a non-limiting, broad scope of ion-trapping moieties, it would be obvious to include the polymers that Yoshitake teaches into Halalay’s coating layer since they perform the same function. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to include the specific polymers taught by Yoshitake in Halalay’s coating layer with a reasonable expectation of success.
Regarding claims 10, 25, and 37, Yoshitake fails to explicitly teach that these polymers are conductive polymers, but claim 11 includes poly-thiophene and poly-pyrrole in a Markush group that corresponds to “the conductive polymer” of claim 10. Therefore, the claimed language implies that all of the polymers claimed in claim 11 are conductive polymers. Therefore, poly-thiophene and poly-pyrrole are conductive polymers as required by claims 10, 25, and 37.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Song (KR 20190052249 A, but citations will be drawn to US 2021/0151833 A1) lithium-sulfur battery with a separator coated by a coating layer comprised of carbon nanotubes and a conductive polymer [0013]. This prevents lithium sulfide from the positive electrode from crossing the separator and depositing onto the negative electrode. This concept is similar to the claimed invention, but the electrodes and contaminants are different.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN K BLACKWELL-RUDASILL whose telephone number is (571)270-0563. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m.
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/R.B.R./Examiner, Art Unit 1722
/ANCA EOFF/Primary Examiner, Art Unit 1722