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 Claims and Other Notes
Claims 1, 3, 5–8, and 11–18 are pending.
Claims 1, 3, and 5–8 are being treated on their merits.
Claims 11–18 are withdrawn from consideration.
Claims 2, 4, 9, and 10 are canceled.
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.
The paragraph numbers cited in this Office Action in reference to the instant application are referring to the paragraph numbering of the PG-Pub of the instant application. See US 2023/0307785 A1.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 16 March 2026 was filed after the mailing date of the non-final Office Action on 06 February 2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
Applicants' amendments have overcome the rejections of claims 1–3 and 5–9 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Claim Rejections - 35 USC § 103
Claims 1, 3, and 5–8 are rejected under 35 U.S.C. 103 as being unpatentable over Akashi (JP 5031150 B2) in view of Li et al. (CN 109148790 A, hereinafter Li) in view of Xu et al. (CN 107180998 A, hereinafter Xu).
Regarding claims 1, 5, 6, and 9, Akashi discloses a method for manufacturing a porous membrane suitable for use as a separator of a lithium ion battery, comprising the following steps:
1) compounding a polymer and a filler (see inorganic filler, [0030]) by a dry mixing process (see mixture, [0048]);
2) extruding a compounded mixture prepared in step 1) to obtain a cast film (see extruder, [0049]); and
3) stretching the cast film prepared in step 2) to obtain the porous membrane (see stretching, [0049]);
wherein the porous membrane is a monolayer membrane (see sample, [0049]);
wherein the method excludes liquids except the polymer in liquid state compounded with the hydrophobic filler (see without a solvent or a plasticizer, [0032]; [0049]); or
wherein the amount of the liquid is below 1% by weight, based on the total weight of the polymer and the hydrophobic filler (see without a solvent or a plasticizer, [0032]; [0049]), and
wherein the compounding is carried out in a twin-screw extruder with at least one side feeder at a rotation speed of 100 rpm to 1000 rpm (see 300 revolutions per minute, [0049]).
Akashi does not explicitly disclose:
wherein the hydrophobic filler is a pyrogenically prepared, hydrophobic surface treated, aluminum oxide;
wherein the amount of the hydrophobic filler is from 5% to 40% by weight, based on the total weight of the polymer and the hydrophobic filler; and
wherein the amount of the hydrophobic filler is from 10% to 30% by weight, based on the total weight of the polymer and the hydrophobic filler.
Li discloses a separator comprising a polymer and a hydrophobic filler (see separator, [0030]), wherein the hydrophobic filler is a pyrogenically prepared, hydrophobic surface treated, aluminum oxide (see hydrophobic fumed alumina, [0030]); wherein the amount of the hydrophobic filler is from 5% to 40% by weight, based on the total weight of the polymer and the hydrophobic filler (see mass ratio, [0030]); and wherein the amount of the hydrophobic filler is from 10% to 30% by weight, based on the total weight of the polymer and the hydrophobic filler (see mass ratio, [0030]); and wherein the hydrophobic filler is selected from ZrO2, MgO, ZnO, hydrophobic surface treated alumina, or mixtures thereof (see hydrophobic fumed alumina, [0030]) to improve the tensile and puncture strength of the separator (see mechanical properties, [0030]). Akashi and Li are analogous because they are directed to separators. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to make the filler of Akashi with the hydrophobic filler of Li in order to improve the tensile and puncture strength of the separator.
Modified Akashi does not explicitly disclose:
alkyl silane modified aluminum oxide.
Xu discloses a hydrophobic filler that is a pyrogenically prepared, hydrophobic surface treated, alkyl silane modified aluminum oxide improves the safety of the battery (see lithium batteries, [0031]). Akashi and Xu are analogous because they are directed to lithium batteries. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to make the aluminum oxide of modified Akashi with the alkyl silane modified aluminum oxide of Xu in order to improve the safety of the battery.
Regarding claim 3, modified Akashi discloses all the claim limitations as set forth above and further discloses a method:
wherein the compounding is carried out in a twin-screw extruder with at least one side feeder at a rotation speed of 300 rpm to 600 rpm (see 300 revolutions per minute, [0049]).
Regarding claim 7, modified Akashi discloses all the claim limitations as set forth above and further discloses further a method:
wherein the polymer is selected from polyolefin, polyamide, polyethylene terephthalate and polyimide, and mixtures thereof (see polyethylene, [0048]).
Regarding claim 8, modified Akashi discloses all the claim limitations as set forth above and further discloses further a method:
wherein the polyolefin is selected from polyethylene, polypropylene, polyisobutylene, poly-1-butene, copolymers of ethylene and propylene, and copolymers of ethylene and alpha olefins (see polyethylene, [0048]).
Response to Arguments
Applicant's arguments filed 05 May 2026 have been fully considered but they are not persuasive.
Applicants argued there is no basis for limiting the amount of liquid below 1% by weight in the cited art (P5/¶6). Akashi discloses the compounding is performed without mixing a solvent or plasticizer with the polyolefin resin (see extrusion molding, [0032]). The term without, which is defined as "in the absence of" (see without, New Oxford American Dictionary) indicates that a solvent or plasticizer is not present in the mixture (i.e., the amount of liquid is 0% by weight). Further, Akashi discloses a specific example where no liquid is present in the mixture (e.g., [0049]). "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). See MPEP § 2131.03 I. Therefore, there is a basis for limiting the amount of liquid below 1% by weight in the cited art.
Applicants argue Akashi specifically teaches mixing at 50 rpms (P5/¶3). The reference to Akashi used in the rejection is JP 5031150 B2. Akashi discloses the rotational speed of the extruder is 300 rpm (see rotational speed; [0049], [0054]). Therefore, specifically teaches mixing at 300 rpms.
Applicants argue the only relevant disclosure in Akashi on the issue is heating and mixing for10 minutes while setting the temperature of the plastomill at 200 °C and the number of revolutions at 50 rpm (P5/¶3). Akashi used in the rejection is JP 5031150 B2. Akashi does not include the language cited by the applicant. The language cited by the applicant is present in JP 2003-238720 A (see rotation speed, [0024]), which is also to Akashi. However, the reference JP 2003-238720 A is not used in the current rejection. Akashi discloses the rotational speed of the extruder is 300 rpm (see rotational speed; [0049], [0054]). "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). See MPEP § 2131.03 I. Therefore, Akashi has a relevant disclosure of a rotational speed of 300 rpm.
Applicants argue Li and Xu do not teach this feature (P6/¶1). Akashi teaches this feature as detailed above.
Applicants argue no teaching or hint brings Xu into close contact to separator for batteries or dry mixing processes (P6/¶2). Xu discloses the electrolyte is present between and separates the positive electrode and negative electrode of a lithium battery (see electrolyte, [0016]; FIG. 2, [0068]). Xu also discloses a goal of the electrolyte is to improve the safety of the battery (e.g., [0004], [0005], [0016], [0028], [0040], [0067], [0071]). Akashi discloses the separator is present between and separates the positive electrode and negative electrode of a lithium battery (see separator; [0003], [0006]). Akashi also discloses a goal of the separator is to improve the safety of the battery (see safety, [0002]). Both Xu and Akashi are concerned with elements present between and separating the positive electrode and negative electrode of a lithium battery. Xu and Akashi use the elements is improve the safety of the battery. Therefore, there is a teaching and hint that brings Xu into close contact to separator for batteries that are made by a dry mixing process.
Applicants argue the basic knowledge of one in the polyolefin porous membrane arts is likely to be different from the basic knowledge of one making electrolytes (P7/¶2). Xu discloses the electrolyte is present between and separates the positive electrode and negative electrode of a lithium battery (see electrolyte, [0016]; FIG. 2, [0068]). Xu also discloses a goal of the electrolyte is to improve the safety of the battery (e.g., [0004], [0005], [0016], [0028], [0040], [0067], [0071]). Akashi discloses the separator is present between and separates the positive electrode and negative electrode of a lithium battery (see separator; [0003], [0006]). Akashi also discloses a goal of the separator is to improve the safety of the battery (see safety, [0002]). Both Xu and Akashi are concerned with elements present between and separating the positive electrode and negative electrode of a lithium battery. Xu and Akashi use the elements is improve the safety of the battery. The basic knowledge of one in the polyolefin porous membrane arts is concerned with the environment present in and the safety of a lithium battery; and the basic knowledge of one making electrolytes is concerned with the environment present in and the safety of a lithium battery. Therefore, the basic knowledge of one in the polyolefin porous membrane arts is similar to the basic knowledge of one making electrolytes.
Applicants argue the claims achieve a surprising and unexpected results of claimed surface treated fillers can be uniformly incorporated with a reasonable percentage into a polymer matrix by a dry mixing process at high rpms to make a masterbatch containing the filler (P7/¶4). The sole example (i.e., Example 1) present in the specification contains a mixture of HDPE F04660 + 20 wt. % AEROXIDE® Alu C 805 is mixed at rotation speed is 280 rpm with length/diameter ratio of 36, temperature of extruder barrels set with decreasing temperature profile setting down the melt stream, 240° C. for first extruder barrel after main hopper, then decrease to 200° C. for last extruder barrel before die head. The polymer of the mixture in claim 1 is not limited to high density polyethylene nor a polyethylene nor a polyolefin. The rotation speed claimed is 100 rpm to 1000 rpm. No other examples of rotation speeds are provided. Further, the rotation speed of claim 3 does not include the rotation speed of the example. The filler loading is 10 wt% while the filler loading is not claimed in claim 1 and ranges from 5 to 40 wt% in claim 5 and 10 to 30 wt% in claim 6. None of the other parameters of the example are claimed. There is no indication that these other parameters do not affect the uniform incorporation with a reasonable percentage into a polymer matrix by a dry mixing process at high rpms to make a masterbatch containing the filler. the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). The applicants have not provided evidence that differences in results are in fact unexpected and unobvious and of both statistical and practical significance nor compared the results with the closest prior art. Therefore, the specification does not demonstrate the claims achieve a surprising and unexpected results of claimed surface treated fillers can be uniformly incorporated with a reasonable percentage into a polymer matrix by a dry mixing process at high rpms to make a masterbatch containing the filler.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean P Cullen, Ph.D. whose telephone number is (571)270-1251. The examiner can normally be reached Monday to Thursday 6:00 am to 4:00 pm CT, Friday 6:00 am to 12:00 pm CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia A Ridley can be reached at (571)272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Sean P Cullen, Ph.D./Primary Examiner, Art Unit 1725
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