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 Claims
Claims 1-6, 8, 10-19, 21, 25-28, 30, 32-34, 36, and 38-45 are pending.
Claims 1, 4, 5, 8, 10, 21, 25, and 33 have been amended.
Claims 12, 13, 28, 30, 32, 34, 36, and 38-45 have been withdrawn.
Claims 7, 9, 20, 22-24, 29, 31, 35, and 37 have been cancelled.
Status of Amendment
The amendment filed on May 26th, 2026 has been fully considered but does not place the application in condition for allowance.
Status of Objections and Rejections Pending Since the Office Action of February 23rd, 2026
The 112(b) rejections of claims 4-6, 8, 10, 11, 20, 21, 23, and 33 are withdrawn in view of the Applicant's amendment.
The 102 and 103 rejections of claims 1-6, 10, 11, 14-19, 21, 25-27, and 33 are withdrawn in view of the Applicant's amendment.
The objection to claim 17 is withdrawn in view of the Applicant's amendment.
The objections and/or rejections pertaining to claims 20, 22, 31, 35, and 37 are moot because said claims have been cancelled.
Response to Arguments
Applicant’s arguments, see pages 12-14, filed May 26th, 2026, with respect to the rejection(s) of claim(s) 1-4, 14, 15, 17-19, and 27 under USC 102 and 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Yoshitake (JP 2013157266 A) and further in view of Bosnyak (US 2013/0344396 A1), Halalay (US 2019/0013551 A1), O'Connor (US 2018/0318843 A1), and Nada (JP 2016022678 A)
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.
Claims 1-6, 8, 10, 11, 14, 15, 17-19, 21, 25-27, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshitake (JP 2013157266 A) and further in view of Bosnyak (US 2013/0344396 A1), O’Connor (US 2018/0318843 A1), and Halalay (US 2019/0013551 A1).
Regarding claims 1, 2, 10, 11, 14, and 25-27, Yoshitake teaches a secondary battery comprised of a cathode (that may be lithium iron phosphate, as required by claim 27 [0041]), an anode [0007], and an electrolyte [0001]. Yoshitake continues to teach a separator between the anode and cathode [0007] where a coating layer capable of adsorbing ions [0010] is laminated onto said separator [0016]. Yoshitake does not explicitly state that the coating layer must be on a specific side of the separator. However, a person of ordinary skill in the art would recognize that they could apply the coating layer on the side of the separator closest to the anode (as required by claims 2 and 14) with a reasonable expectation of success.
Yoshitake teaches that the coating layer is comprised of a conductive polymer such as polypyrrole or polythiophene (as required by claims 1, 10, 11, 25, and 26; [0010]).
Yoshitake teaches that the coating layer may comprise carbon as an adsorption material, but does not teach the carbon is carbon black, acetylene black, carbon nanotubes, graphene, or a combination thereof. O’Connor is analogous art to Yoshitake because both discuss ionic binding (O’Connor, [0085]; Yoshitake, [0010]). O’Connor teaches that where a voltage is applied, carbon nanotubes can provide “surface area on which metals can nucleate…and/or on which metals can be collected” [0070].
Therefore, using carbon nanotubes as the “carbon” in Yoshitake’s coating layer as may provide a surface area onto which metal ions can be adsorbed. This is an example of the selection of a known material based on its suitability for its intended use. 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 carbon nanotubes in Yoshitake’s coating layer to function as an adsorption material. See also MPEP 2144.07.
Yoshitake does not explicitly teach that the battery may generate or comprise metal-ion contaminants. However, including their separator capable of adsorbing metal ions onto its surface into a battery and demonstrating that it performs better than typical batteries [0010] into their battery suggests that their separator is actively adsorbing metal ions that must have been present. Yoshitake fails to teach that these contaminants are copper, iron, chromium, nickel, or tin ions. Halalay is analogous art to Yoshitake because both disclosures discuss batteries (Halalay, title; Yoshitake, [0001]). Halalay teaches that those metal ions, namely iron, chromium, nickel, copper, and tin ions may be introduced into lithium-ion batteries during manufacture [0005]. Therefore, one of ordinary skill in the art would recognize that those metal ions are present in many, if not a vast majority of, lithium-ion batteries in the world.
Yoshitake fails to teach a trap layer with a bulk or volume resistivity of 104 to 109 ohms-cm. Bosnyak is analogous art to Yoshitake because both discuss batteries (Bosnyak, [0004]; Yoshitake, [0001]). Bosnyak teaches that a “separator film” has the function of electrical insulation while allowing for ion transport. The degree of electrical conductivity can be controlled by the amount of carbon nanotubes within the film. The inclusion of these nanotubes also increases the strength of the film. Bosnyak teaches that a recommended bulk electrical resistivity of a separator film is greater than 109 ohm-cm and the inclusion of carbon nanotubes with a weight % of less than 10% allows for such a resistivity [0052]. 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 carbon nanotubes with the percentage taught by Bosynak to achieve a strong film with a bulk resistivity of 109 ohm-cm or greater. This overlaps with the claimed range of 104 – 109 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).
Regarding claims 3, 4, and 17-19, Yoshitake fails to teach the claimed potential differences vs Li+/Li. Yoshitake also fails to teach that their layer explicitly captures iron, nickel, cobalt, chromium, copper, or tin ions. Halalay teaches ion-trapping moieties that may capture a transition metal ion [0078] such as iron, copper, tin, chromium, or manganese [0077]. Yoshitake teaches that any compound capable of adsorbing anions or cations can be used in their coating layer (Yoshitake, [0010]). 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 add one of Halalay’s ion-trapping moieties to Yoshitake’s coating layer such that the modified coating layer could definitely trap the transition metal ions mentioned above.
Yoshitake, Bosynak, O’Connor, and Halalay fail to teach the claimed potential differences of the trap layer. However, the Applicant states that in order for the trap layer to trap ions, they must have a specific potential difference ([0052] of the Applicant’s specification as filed). 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 the modified trap layer is capable of trapping as nickel, iron, cobalt, manganese, chromium, and tin ions (all of which have a minimum potential difference in order to have a functional trap layer) the modified trap layer must have said potential differences based on the information disclosed by the Applicant. The minimum potential difference to trap manganese, +1.85V, is within the range of +0.0 - +3.0V, the narrowest range recited in claims 3, 4, and 17-19. 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).
Regarding claims 5, 6, 21, and 33, Bosynak teaches a layer with a bulk resistivity of 109 ohm-cm or greater. Absent objective evidence demonstrating the criticality of the claimed range, this is sufficiently close to the upper limit of the range of 107 ohm-cm that is recited in claims 6 and 21. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 (I). The range recited by claims 5 and 33 has a larger upper limit of 108 ohm-cm and is thus rendered obvious by the reasoning provided immediately above.
Regarding claim 15, Yoshitake teaches that the battery separator is formed via a lamination process [0016].
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshitake, Bosnyak, Halalay, and O’Connor as applied to claim 15 above and further in view of Nada (JP 2016022678 A). Modified Yoshitake et. al fail to teach a coextrusion process. Nada is analogous art to Yoshitake because both discuss batteries (Nada, [0005]; Yoshitake, [0001]). 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 Yoshitake’s modified separator.
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 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
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